Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Objections
Claims 6, 7, and 9 are objected to because of the following informalities:
Claim 6 should recite “n = about 3 to about 7” (correcting the typo; adding a space after the “=”).
Claim 7 should recite “n = about 3 to about 5” (correcting the typo; adding a space after the “=”).
Claim 9 should recite “wherein n = about 3 to about 5” (correcting the typo; as in claim 2).
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tellakula (2023/0019003) (also WO 2021/016155 cited by Applicant).
Regarding independent claim 1, Tellakula discloses A treatment fluid comprising an emulsion (abstract “Emulsions, treatment fluids and methods for treating subterranean formations are provided, wherein the emulsions comprise water, a water-immiscible liquid, one or more polymers, and an inverting surfactant composition comprising … alkyl polyethyleneglycol ether carboxylic acid compounds, and salts or esters thereof”), the emulsion comprising:
water ([0066] “The water present in the emulsions generally includes freshwater, but saltwater or combinations with saltwater also may be used”);
a water-immiscible liquid ([0067] “Suitable water-immiscible liquids may include, but are not limited to, water-immiscible solvents, such as paraffin hydrocarbons, naphthene hydrocarbons, aromatic hydrocarbons, olefins, oils, stabilizing surfactants and mixtures thereof”);
poly(acrylamide-acrylic acid-acrylamide tertiary butyl sulfonic acid) ([0022] “In exemplary embodiments, the one or more polymers is a water soluble, acrylamide-containing … terpolymer” that is [0065] “wherein the one or more polymers comprises acrylamide and one or more monomers selected from the group consisting of acrylamido-tert-butyl sulfonic acid (ATBS), acrylic acid, and salts thereof”; “terpolymer” must refer to the embodiment that comprises acrylamide, acrylic acid, and ATBS), and
“alkyl polyethyleneglycol ether carboxylic acid compounds”, in an amount of from about 1wt% to about 3wt% (by weight of the emulsion composition) (e.g. [0065] “about 1% to about 5%, about 2% to about 4%, or about 2% to 3% by weight of an inverting surfactant composition comprising one or more surfactants selected from the group consisting of Surfactant A compounds… Accordingly, if 3% by weight of inverting surfactant composition were added to the emulsion, and the inverting surfactant composition contained 67% by weight Surfactant A, and then the amount of Surfactant A in the emulsion would be about 2.01%”) and salts or esters thereof (“and salts or esters thereof”)...
Regarding the “oleyl ether polyglycol carboxylic acid” etc., as above, Tellakula discloses “As referred to herein, Surfactant A compounds include, for example, compounds comprising a C8 to C26 unsaturated or saturated alkyl chain substituted with an (OCH2CH2)yOCH2CO2H wherein the average value of y is about 2 to about 20, or about 2 to about 10” ([0047]) such as wherein “Surfactant A compounds comprise a C14 to C22 unsaturated alkyl chain, for example an unsaturated alkyl chain derived from a fatty acid residue, such as oleic acid” i.e. “In exemplary embodiments, the Surfactant A is selected from the group consisting of glycolic acid ethoxylate oleyl ether” ([0048]). “Oleic acid” has an “oleyl” alkyl chain group, which is well-known to be the functional group CH3(CH2)7−CH=CH−(CH2)8-.
Applicant should note that, as in MPEP 2131.02, a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." When a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be "at once envisaged."
In this case, one of ordinary skill in the art would at once envisage the nine possible embodiments of an “oleic acid” fatty acid residue alkyl chain substituted with “(OCH2CH2)yOCH2CO2H wherein the average value of y is … about 2 to about 10,” such as “glycolic acid ethoxylate oleyl ether,” and the nine possible embodiments would include oleyl ether polyglycol carboxylic acid component of formula RO(CH2CH2O)n-CH2COOH, where n = 2, 3, 4, 5, 6, 7, 8, 9, and 10. Accordingly, Tellakula anticipates:
“oleyl ether polyglycol carboxylic acid component of formula RO(CH2CH2O)n-CH2COOH, in an amount of from about 1wt% to about 3wt% (by weight of the emulsion composition) and salts or esters thereof, where n = about 3 to about 7,” because the classes of substituents are sufficiently limited and one of ordinary skill would be able to draw the structural formula of each of the compounds included in the generic formula.
Alternatively, even if it were somehow found that Tellakula fails to anticipate these five structures per se, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tellakula to include, specifically, “glycolic acid ethoxylate oleyl ether,” with an “average value of y” of e.g. 3-7, with a reasonable expectation of success, in order to provide suitable “alkyl polyethyleneglycol ether carboxylic acid compounds” within the general conditions disclosed by Tellakula. Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding independent claim 8, Tellakula discloses A method of forming a self-inverting poly(acrylamide-acrylic acid-acrylamide tertiary butyl sulfonic acid) water-in-oil emulsion (abstract “Emulsions, treatment fluids and methods for treating subterranean formations are provided, wherein the emulsions comprise water, a water-immiscible liquid, one or more polymers, and an inverting surfactant composition comprising … alkyl polyethyleneglycol ether carboxylic acid compounds, and salts or esters thereof” and e.g. [0029] “Among other things, an inverting surfactant or inverting surfactant composition may facilitate the inverting of the water-in-oil emulsion upon addition to the aqueous treatment fluids”; and [0022] “In exemplary embodiments, the one or more polymers is a water soluble, acrylamide-containing … terpolymer” that is [0065] “wherein the one or more polymers comprises acrylamide and one or more monomers selected from the group consisting of acrylamido-tert-butyl sulfonic acid (ATBS), acrylic acid, and salts thereof”; “terpolymer” must refer to the embodiment that comprises acrylamide, acrylic acid, and ATBS), comprising
adding to the water-in-oil emulsion ([0071] “In some embodiments, emulsion polymerization may be used to prepare exemplary emulsions” and [0086] “Following completion of the polymerization, the pH of the emulsion may be adjusted… A breaker or inverting surfactant, or blend of inverting surfactants, is generally added to yield a single package of final product. In exemplary embodiments, an inverting surfactant composition, as described herein, is added to the polymer emulsion”) “alkyl polyethyleneglycol ether carboxylic acid compounds”, in an amount of from about 1wt% to about 3wt% (by weight of the emulsion composition) (e.g. [0065] “about 1% to about 5%, about 2% to about 4%, or about 2% to 3% by weight of an inverting surfactant composition comprising one or more surfactants selected from the group consisting of Surfactant A compounds… Accordingly, if 3% by weight of inverting surfactant composition were added to the emulsion, and the inverting surfactant composition contained 67% by weight Surfactant A, and then the amount of Surfactant A in the emulsion would be about 2.01%”) and salts or esters thereof (“and salts or esters thereof”)...
Regarding the “oleyl ether polyglycol carboxylic acid” etc., as above, Tellakula discloses “As referred to herein, Surfactant A compounds include, for example, compounds comprising a C8 to C26 unsaturated or saturated alkyl chain substituted with an (OCH2CH2)yOCH2CO2H wherein the average value of y is about 2 to about 20, or about 2 to about 10” ([0047]) such as wherein “Surfactant A compounds comprise a C14 to C22 unsaturated alkyl chain, for example an unsaturated alkyl chain derived from a fatty acid residue, such as oleic acid” i.e. “In exemplary embodiments, the Surfactant A is selected from the group consisting of glycolic acid ethoxylate oleyl ether” ([0048]). “Oleic acid” has an “oleyl” alkyl chain group, which is well-known to be the functional group CH3(CH2)7−CH=CH−(CH2)8-.
Applicant should note that, as in MPEP 2131.02, a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." When a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be "at once envisaged."
In this case, one of ordinary skill in the art would at once envisage the nine possible embodiments of an “oleic acid” fatty acid residue alkyl chain substituted with “(OCH2CH2)yOCH2CO2H wherein the average value of y is … about 2 to about 10,” such as “glycolic acid ethoxylate oleyl ether,” and the nine possible embodiments would include oleyl ether polyglycol carboxylic acid component of formula RO(CH2CH2O)n-CH2COOH, where n = 2, 3, 4, 5, 6, 7, 8, 9, and 10. Accordingly, Tellakula anticipates:
“adding to the water-in-oil emulsion an oleyl ether polyglycol carboxylic acid component of formula RO(CH2CH2O)n-CH2COOH, in an amount of from about 1wt% to about 3wt% (by weight of the emulsion composition) and salts or esters thereof, where n = about 3 to about 7,” because the classes of substituents are sufficiently limited and one of ordinary skill would be able to draw the structural formula of each of the compounds included in the generic formula.
Alternatively, even if it were somehow found that Tellakula fails to anticipate these five structures per se, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tellakula to include, specifically, “glycolic acid ethoxylate oleyl ether,” with an “average value of y” of e.g. 3-7, with a reasonable expectation of success, in order to provide suitable “alkyl polyethyleneglycol ether carboxylic acid compounds” within the general conditions disclosed by Tellakula. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 2, 3, 6, 7, 9, 10, and 13, as in claims 1 and 8, Tellakula discloses “As referred to herein, Surfactant A compounds include, for example, compounds comprising a C8 to C26 unsaturated or saturated alkyl chain substituted with an (OCH2CH2)yOCH2CO2H wherein the average value of y is about 2 to about 20, or about 2 to about 10” ([0047]) such as wherein “Surfactant A compounds comprise a C14 to C22 unsaturated alkyl chain, for example an unsaturated alkyl chain derived from a fatty acid residue, such as oleic acid” i.e. “In exemplary embodiments, the Surfactant A is selected from the group consisting of glycolic acid ethoxylate oleyl ether” ([0048]). “Oleic acid” has an “oleyl” alkyl chain group, which is well-known to be the functional group CH3(CH2)7−CH=CH−(CH2)8-. Tellakula also discloses “In certain exemplary embodiments, Surfactant A is a compound or a mixture of compounds represented by the formula: CH3(CH2)xCH═CH(CH2)8(OCH2CH2)yOCH2CO2H, wherein x is 1-12 and y is 2-20” ([0049]).
As in claims 1 and 8, in this case, one of ordinary skill in the art would at once envisage the nine possible embodiments of an “oleic acid” fatty acid residue alkyl chain substituted with “(OCH2CH2)yOCH2CO2H wherein the average value of y is … about 2 to about 10,” such as “glycolic acid ethoxylate oleyl ether,” and the nine possible embodiments would include oleyl ether polyglycol carboxylic acid component of formula RO(CH2CH2O)n-CH2COOH, where n = 2, 3, 4, 5, 6, 7, 8, 9, and 10. Accordingly, Tellakula anticipates providing “a mixture of compounds” including these, e.g.:
(claim 2) wherein n = about 3 to about 5; and/or
(claim 3) wherein n is 3, 4 or 5; and/or
(claim 6) comprising oleyl ether polyglycol carboxylic acids having different n values which in combination result in a weight average of n = about 3 to about 7; and/or
(claim 7) comprising oleyl ether polyglycol carboxylic acids having different n values which in combination result in a weight average of n = about 3 to about 5; and/or
(claim 9) wherein n = about 3 to about 5; and/or
(claim 10) wherein n is 3, 4 or 5; and/or
(claim 13) comprising adding oleyl ether polyglycol carboxylic acids having different n values which in combination result in a weight average of n = about 3 to about 5,
because the classes of substituents are sufficiently limited and one of ordinary skill would be able to draw the structural formula of each of the compounds included in the generic formula.
Alternatively, even if it were somehow found that Tellakula fails to anticipate these five structures per se, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tellakula to include, specifically, “a mixture of compounds” of “glycolic acid ethoxylate oleyl ether,” with an “average value of y” of e.g. 3-5, with a reasonable expectation of success, in order to provide suitable “alkyl polyethyleneglycol ether carboxylic acid compounds” within the general conditions disclosed by Tellakula. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 4, 5, 11, and 12, as in claims 1 and 8, Tellakula either anticipates or renders obvious providing “glycolic acid ethoxylate oleyl ether,” with an “average value of y” of e.g. 3-7 or 3-5 (as above in claims 2, 3, 6, 7, 9, 10, and 13), with a reasonable expectation of success, in order to provide suitable “alkyl polyethyleneglycol ether carboxylic acid compounds” within the general conditions disclosed by Tellakula.
Applicant should note that "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." See MPEP 2112. Also, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention, and "[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." See MPEP 2145.
In this case, it appears that Applicant has merely discovered a previously unappreciated property of a prior art composition (the specific HLB values) or otherwise merely recognized another advantage which would flow naturally from following the suggestion of the prior art. Moreover, since Tellakula provides the same composition as claimed, the fluid, if subjected to HLB testing, would act in the same manner as claimed, i.e., it would be capable of demonstrating:
(claim 4) wherein the oleyl ether polyglycol carboxylic acid has a hydrophilic-lipophilic balance of about 5 to about 10; and/or
(claim 5) wherein the oleyl ether polyglycol carboxylic acid has a hydrophilic-lipophilic balance of 5 to 9.6; and/or
(claim 11) wherein the oleyl ether polyglycol carboxylic acid has a hydrophilic-lipophilic balance of about 5 to about 10; and/or
(claim 12) wherein the oleyl ether polyglycol carboxylic acid has a hydrophilic-lipophilic balance of 5 to 9.6.
A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Alternatively, if there is any difference between the composition and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held "Products of identical chemical composition cannot have mutually exclusive properties." See MPEP 2112.
For example, the Office observes that Applicant has disclosed that “Oleyl ether glycol carboxylic acid” with an EO of 5 has an HLB of 9.6 and “Oleyl ether glycol carboxylic acid” with an EO of 3 has an HLB of 5.0 (Specification [0067] Table 1C). As above, Tellakula provides “glycolic acid ethoxylate oleyl ether,” with an “average value of y” of e.g. 3-5. Accordingly, Tellakula’s same compounds must have the same properties, i.e., an HLB within the claimed range of 5-9.6.
Regarding independent claim 14, as in claim 1, Tellakula discloses A method of treating a subterranean formation (abstract “Emulsions, treatment fluids and methods for treating subterranean formations are provided”), comprising:
providing a treatment fluid of claim 1 (as in claim 1 above) and introducing the treatment fluid into a subterranean formation ([0092] “The treatment fluid, for example an aqueous treatment fluid, containing the emulsions described herein, can be used in any well treatment fluid, including but not limited to stimulation, production and completion operations. For example, the well treatment fluid can be used for hydraulic fracturing applications or in an application where friction reduction is desired”).
Conclusion
In the case of further Amendments, Applicant is advised to consider what are the critical features of the current Invention, and how do these critical features interact in the Invention in order to produce the unique phenomena of the Invention.
For example, the Office observes that Applicant has disclosed the surprising effect that “Examples E1 and E3 exhibit properties of a surprisingly stable self-invertible water-in-oil emulsion” by remaining “Fluid” with no physical state change in 3 days’ time period, instead of becoming “Gel” ([0067] and Table 1C). Accordingly, Applicant may consider incorporating language to this effect (e.g., “wherein the emulsion exhibits stability by remaining a fluid instead of becoming a gel over a 3-day time period”).
Nevertheless, Applicant is advised to beware the inclusion of New Matter.
As always, Applicant may consider contacting the Examiner for an Interview or the like, in the case further explanation or guidance is desired.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The other reference to Tellakula (2019/0211255) discloses substantially the same as Tellakula above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-24137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674