DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19 in the reply filed on 02/16/26 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/16/26.
Applicant’s election without traverse of the presence of the activator and immersion of the apparatus in the solution in the reply filed on 02/16/26 is acknowledged.
Claims 11-13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/16/26.
Claim Objections
Claim 9 is objected to because of the following informalities: In line 2, “lead” is repeated twice. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 7 recites the limitation "the total weight percent" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim as ‘a total weight percent’ was not previously claimed; moreover, it is unclear as to how the total weight percent of the dissolver and activator in the aqueous dissolver solution can be 100 wt% when “the total weight percent of the dissolver and activator” does not account for an aqueous component that must indeed be present in order for the dissolver solution to be an aqueous solution. Clarification is required.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 5 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hull et al. (US 2018/0142190).
With respect to independent claim 1, Hull et al. discloses a method for removing materials from an apparatus surface ([0028]) comprising:
contacting an aqueous ([0029]; [0066]) dissolver solution comprising a dissolver having the formula [C]+[A]- ([0031]; [0040]) with the apparatus surface having a metal containing scale ([0028]); and
maintaining contact between the aqueous dissolver solution and the metal containing scale for a duration selected to remove at least a portion of the scale ([0056]), wherein [C]+ comprises ions from a Group as claimed ([0031], wherein potassium is disclosed; [0040]).
With respect to dependent claim 2, Hull et al. discloses wherein [C]+ comprises ions selected from the group as claimed ([0031]; [0040]).
With respect to dependent claim 5, Hull et al. discloses wherein the aqueous dissolver solution further comprises an activator ([0050]).
With respect to dependent claim 16, Hull et al. discloses contacting for one or more periods of time for a total time as claimed ([0056]).
Claims 1-7, 9, 10, 14 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEE (US 2001/0008141).
With respect to independent claim 1, LEE discloses a method for removing materials from an apparatus surface ([0099]) comprising:
contacting an aqueous ([0054]) dissolver solution having the formula [C]+[A]- ([0058]-[0059]) with the apparatus surface having a metal containing scale ([0050]); and
maintaining contact between the aqueous dissolver solution and the metal containing scale for a duration selected to remove at least a portion of the scale ([0043]), wherein [C]+ comprises ions from Groups 1, 2, 8, 12, 13, or combinations thereof ([0074]-[0075]).
With respect to dependent claims 2 and 3, LEE discloses wherein [C]+ comprises ions selected from the group as claimed ([0074]-[0075]), and, further, wherein [A]- comprises nitrate ions and the dissolver comprises one as claimed ([0074]).
With respect to dependent claim 4, LEE discloses wherein the dissolver is present in the aqueous dissolver solution at a concentration from about 5 wt% to 100 wt% ([0088]; [0090]).
With respect to dependent claims 5-7, LEE discloses wherein the aqueous dissolver solution further comprises an activator, and, further, wherein the activator comprises hydrogen peroxide ([0083]) and wherein the activator is present in the aqueous dissolver solution at a concentration from about 1 wt% to about 30 wt% ([0090]), and wherein the total weight percent of the dissolver and activator in the aqueous dissolver solution is 100 wt% ([0087]; [0088]; [0090]).
With respect to dependent claim 9, LEE discloses wherein the apparatus surface comprises a material selected from the group as claimed ([0007]; [0177]).
With respect to dependent claim 10, LEE discloses wherein the contacting the aqueous dissolver solution with the apparatus surface comprises immersing the apparatus in the aqueous dissolver solution ([0099]).
With respect to dependent claim 14, LEE discloses wherein the contacting the aqueous dissolver solution with the apparatus surface comprises contacting at a temperature from about 10-70oC ([0142]) in the presence of an activator ([0152], Table 6, wherein the activators are added and tested according to the conditions of Example 4, wherein a temperature within the range as claimed is disclosed).
With respect to dependent claim 18, LEE discloses wherein the aqueous dissolver solution comprises: from about 10-95 wt% of dissolver ([0087]-[0088]); from about 1-30 wt% of activator ([0090]); and the remainder is water ([0054], wherein an aqueous solution is disclosed).
Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 17 is 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 Hull et al..
With respect to dependent claim 17, Hull et al. discloses the aqueous dissolver solution consisting essentially of the same components as instantly disclosed and claimed by Applicant in independent claim 1. The reference, however, fails to explicitly disclose the pH thereof, and, thus, a pH within the range as claimed. Since Hull et al. discloses the same composition as claimed, the pH thereof would inherently act in the same manner as claimed, i.e., fall within the range of 2-5. If there is any difference between the pH of the aqueous dissolver solution of Hull et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." 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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Claim 17 is 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 LEE.
With respect to dependent claim 17, LEE discloses the aqueous dissolver solution consisting essentially of the same components as instantly disclosed and claimed by Applicant in independent claim 1 ([0087]). The reference, however, fails to explicitly disclose the pH thereof, and, thus, a pH within the range as claimed. Since LEE discloses the same composition as claimed, the pH thereof would inherently act in the same manner as claimed, i.e., fall within the range of 2-5. If there is any difference between the pH of the aqueous dissolver solution of LEE and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." 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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Claim Rejections - 35 USC § 103
Claims 4, 7, 8, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hull et al..
With respect to dependent claim 4, Hull et al. discloses wherein the dissolver can have a concentration of about 5 mM to about 2M ([0041]). The reference, however, fails to disclose the weight percent of such a concentration. Given the extensiveness of the instantly claimed weight percent range for the dissolver, it would have been obvious to one having ordinary skill in the art to provide a weight percent thereof within the range as instantly claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent range for the dissolver as critical and it is unclear if any unexpected results are achieved by providing for such. Since the dissolver of Hull et al. dissolves scale from an apparatus, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal weight percent of the dissolver would be achievable through routine experimentation in the art.
With respect to dependent claim 7, Hull et al. discloses wherein the activator is present ([0050]), as provided above in the rejection of claim 5. The reference further suggests wherein an amount thereof can be 25 mM to about 1.0 M ([0051]). Although silent to such as a weight percent, it would have been obvious to one having ordinary skill in the art to provide a weight percent thereof within the range as instantly claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent range for the dissolver as critical and it is unclear if any unexpected results are achieved by providing for such. Since the dissolver of Hull et al. dissolves scale from an apparatus synergistically with the activator ([0050]), it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal weight percent of the activator would be achievable through routine experimentation in the art.
With respect to dependent claim 8, Hull et al. discloses wherein the sulfide scale can be iron sulfide scale ([0027]). The reference further suggests wherein in addition to iron sulfide scales, lead sulfide and zinc sulfide are a problem in subterranean environments as they grow over time in sour gas wells ([0003]). As such, it would have been obvious to one having ordinary skill in the art scales such as lead sulfide may also be present in environments containing iron sulfide in sour gas wells and thus the metal containing scale may further include such as such is a known sulfide scale to exist and form in environments containing iron sulfide scale.
With respect to dependent claim 14, Hull et al. discloses contacting the apparatus surface in the presence of an activator ([0050]), as well as wherein the temperature for such contact may be 60-200oC ([0055]). Although silent to the entirety of the range as instantly claimed, given the overlap in temperatures disclosed by Hull et al., it would have been obvious to one having ordinary skill in the art to contact the apparatus surface with the activator in the presence of an activator at a temperature within the range as claimed since it has been held “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to dependent claim 18, Hull et al. discloses wherein the first oxidizer of the dissolver can have a concentration of 5 mM to about 1 mM ([0031]-[0032]) and the second oxidizer of the dissolver can have a concentration of about 5 mM to about 2M ([0041]). Hull et al. further discloses wherein the activator is present ([0050]) in an amount thereof can be 25 mM to about 1.0 M ([0051]) and wherein the remainder of the composition is water ([0029]). The reference, however, fails to disclose the weight percents of such concentrations. Given the extensiveness of the instantly claimed weight percent range for the dissolver and activator, along with the amounts set forth above, it would have been obvious to one having ordinary skill in the art to provide weight percents thereof within the range as instantly claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percents as critical and it is unclear if any unexpected results are achieved by providing for such. Since the dissolver of Hull et al. dissolves scale from an apparatus, it does not appear that such would be considered an unexpected result of using the presently claimed weight percents, and, as such, the determination of optimal weight percents of the aqueous dissolver solution would be achievable through routine experimentation in the art.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hull et al. as applied to claim 1 above, and further in view of Chen et al. (US 2018/0340113).
Hull et al. discloses the method with respect to claim 1, as set forth above, wherein iron sulfide scale forms on the apparatus surface ([0027]) and wherein the apparatus surface is associated with downstream equipment including pipes, pipelines, vessels and equipment with which crude oil comes in contact ([0028]). The reference, however, fails to disclose the specific material of such surfaces and therefore fails to disclose one as claimed. Chen et al. teaches iron sulfide deposition in oilfield applications and the removal thereof, wherein such scale forms on carbon steel tubing which is used in such applications ([0002]-[0003]). It would have been obvious to one having ordinary skill in the art to try removing the iron sulfide scale from oilfield equipment in Hull et al. that includes carbon steel as such a material is known in the art to be used in oilfield applications and susceptible to scaling by iron sulfide.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hull et al. as applied to claim 1 above, and further in view of Hen (US 5068042).
Hull et al. discloses the method as set forth above with respect to claim 1, wherein downstream equipment may be removed from the subterranean formation and then treated ([0028]). The reference, however, fails to explicitly disclose the manner by which such equipment is treated and, therefore, fails to disclose immersing the apparatus in the aqueous dissolver solution as claimed. Hen teaches compositions for removing sulfate scales from surfaces containing such, including equipment associated with the operation of crude oil and gas wells (abstract), wherein removable production equipment containing such scale may be placed in a vessel and completely immersed in the scale removal composition until the scale is dissolved (col. 4, l. 55-59). Since Hull et al. discloses wherein the equipment may be removed from the formation and then treated and Hen teaches wherein removal production equipment can be immersed in a scale dissolver solution in a vessel, it would have been obvious to one having ordinary skill in the art to try immersing the removal equipment of Hull et al. in the aqueous dissolver solution in order to yield the predictable result of dissolving the scale therefrom.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hull et al. as applied to claim 1 above, and further in view of Reyes et al. (US 11773313).
Hull et al. discloses the method as set forth above with respect to claim 1, wherein it is suggested potential sources of hydrogen sulfide exist within the sour gas wells treated thereby ([0003]) as well as wherein any suitable amount of any suitable material may be present in the fluid ([0085]). The reference, however, fails to disclose the inclusion of a hydrogen sulfide scavenger in the aqueous dissolver solution as claimed. Reyes et al. teaches scale dissolution compositions (abstract) wherein additives may be included therein for the purpose of adjusting a property of the fluid; examples include some of the same additives disclosed by Hull et al., as well as scavengers, including hydrogen sulfide scavengers (col. 9, l. 21-41). It would have been obvious to one having ordinary skill in the art to try a hydrogen sulfide scavenger as an additive in the aqueous dissolver solution of Hull et al. in order to scavenge excess hydrogen sulfide that may be present in the sour gas environment.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over LEE.
With respect to dependent claim 16, LEE discloses wherein the contacting the aqueous dissolver solution with the apparatus comprises contacting for one or more periods of time for a total time (Examples 2 and 3). Although silent to the contact as within the range as claimed, since LEE discloses the same materials disclosed as the aqueous dissolver solution used for the purpose of removing a portion of scale, one having ordinary skill in the art would recognize the optimal contact time of the aqueous dissolver solution with the apparatus surface in order to effectively dissolve and remove the scale therefrom since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed contact time as critical and it is unclear if any unexpected results are achieved by providing for such. Since the aqueous dissolver solution of LEE is suggested as removing scale from an apparatus surface as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of contacting the apparatus with the solution for the instantly claimed amount of time, and, as such, the determination of optimal contact time would be achievable through routine experimentation in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11649558 discloses an aqueous dissolver solution comprising peroxide and nitrates.
US 2023/0102592 discloses scale remediation with an aqueous solution comprising chemical oxidants such as hydrogen peroxide and potassium nitrate.
US 2581490 discloses a potassium nitrate stripping solution.
US 3144361 discloses descaling iron and steel with zinc nitrate and peroxide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
05/27/26
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