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, 6-14 and 22, in the reply filed on 03/30/26 is acknowledged.
Claims 15-21 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 03/30/26.
Applicant’s election without traverse of species (3), a cationic ammonium compound having the structure of IIIb as the AA-LDHI, in the reply filed on 03/30/26 is acknowledged.
Claim Rejections - 35 USC § 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 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.
Claims 1, 6-14 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Webber et al. (US 2015/0148266) in view of Bartels et al. (US 2018/0346791).
With respect to independent claim 1, Webber et al. discloses a hydrate inhibitor and corrosion inhibitor composition ([0011]) comprising: from about 10 wt% to about 99.9 wt% ([0011]) of an anti-agglomerant low dose hydrate inhibitor (AA-LDHI), wherein the AA-LDHI is a cationic ammonium compound ([0009], wherein Applicant’s elected formula of Formula IIIb is disclosed); a corrosion inhibitor ([0011]; [0046]; [0056]; [0058]); and at least one additional functional ingredient ([0046]; [0056]), solvent ([0058]), or a combination thereof ([0046]; [0056]; [0058]).
Webber et al. discloses the composition as set forth above, wherein a corrosion inhibitor is injected with the hydrate inhibitor; the reference further specifies wherein the hydrate compositions do not interfere or react with any corrosion inhibitor used in the system ([0046]). Webber et al., however, fails to specify a specific corrosion inhibitor employed and/or amount thereof.
Bartels et al. teaches compositions including low dose hydrate inhibitors, including anti-agglomerate hydrate inhibitors ([0042]), wherein corrosion inhibitors are employed therewith, and generally suggested as included in an amount of 0.1-20 wt%, wherein specific amounts vary based on the system with which it is used ([0056]); exemplary corrosion inhibitors are suggested to include quaternary ammonium compounds having a formula corresponding to that which is instantly claimed as Formula (IV) ([0064]-[0066]).
Since Webber et al. suggests wherein the AA-LDHI does not react with any corrosion inhibitor and Bartels et al. teaches quaternary ammonium compounds of Formula IV as suitable for use as a corrosion inhibitor with anti-agglomerate low dose hydrate inhibitors, it would have been obvious to one having ordinary skill in the art to try a corrosion inhibitor according to instantly claimed Formula IV in the composition of Webber et al. in order to yield the predictable result of imparting corrosion inhibition to the AA-LDHI composition therewith. Since Webber et al. discloses the hydrate inhibitors do not react with any corrosion inhibitors in the system and Bartels et al. teaches quaternary ammonium compounds of Formula IV as selected from a finite list of possibilities suitable for use as a corrosion inhibitor in a system that includes low dose hydrate inhibitors, one having ordinary skill in the art would recognize the ability to employ such in the composition of Webber et al. in order to yield predictable results.
With further regard to the amount of corrosion inhibitor, given the suggested amount of 0.1-20 wt% by Bartels et al., as well as the suggestion wherein the amount employed in a system in which it is used can vary, one having ordinary skill in the art would recognize the optimal amount thereof to employ in the composition of Webber et al. in order to effectively provide corrosion inhibition therewith 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). (“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 weight percent of corrosion inhibitor as critical, as exemplified by the extensiveness thereof, and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents. Since the corrosion inhibitor of Bartels et al. is suggested as being provided for in an amount that overlaps the instantly claimed range, and, further, in an amount for inhibiting corrosion inhibition therewith in a composition that further provides anti-agglomerate hydrate inhibition, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent of corrosion inhibitor, and, as such, the determination of optimal percent thereof in the composition of Webber et al. would be achievable through routine experimentation in the art.
With respect to dependent claim 6, Bartels et al. further suggests wherein the corrosion inhibitor further comprises one as claimed ([0057], wherein a combination thereof is suggested; [0068]-[0073], wherein additional corrosion inhibitors are suggested). As such, when utilizing the quaternary ammonium corrosion inhibitor of Bartels et al., the further inclusion of a compound as claimed therewith would be obvious to one having ordinary skill in the art to try in order to yield predictable results, for at least the reasons set forth above.
With respect to dependent claim 7, neither Webber et al. nor Bartels et al. suggests the inclusion of a boron-hydroxylalkyl(amine) compound, urea or calcium nitrate corrosion inhibitor. As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to exclude such compounds from the composition of Webber et al. in view of Bartels et al. since such corrosion inhibitors are not required for inclusion by Webber et al. in view of Bartels et al. and it has been held that the omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). In the instant case, Bartels et al. suggests suitable alternative corrosion inhibitors for use with the AA-LDHI, and, thus, any corrosion inhibiting function that would be imparted by the compounds of claim 7 is not necessary and/or desired.
With respect to further dependent claim 8, Bartels et al. further suggests wherein the corrosion inhibitors comprise the components as claimed ([0068]-[0073]; see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 9, Webber et al. discloses wherein the composition includes a single AA-LDHI ([0009], wherein a compound, i.e., a single AA-LDHI, is disclosed).
With respect to dependent claim 10, Webber et al. discloses wherein the composition does not include any quaternary ammonium compound AA-LDHIs or halide-containing AA-LDHIs (wherein no quaternary ammonium compounds are disclosed; [0037], wherein the anion can alternatively be a carbonate or a carboxylate).
With respect to dependent claim 11, Webber et al. discloses wherein the solvent comprises a polar and/or nonpolar solvent ([0052]-[0054]; [0057]-[0058]; [0061]).
With respect to dependent claim 12, Webber et al. discloses the additional functional ingredients as claimed ([0011]; [0056]).
With respect to dependent claim 13, Webber et al. teaches wherein the composition can include kinetic hydrate inhibitors ([0055]; [0059]). The reference additionally fails to teach any specific inclusion of a fluoroalkyl compound. Since the composition of Webber et al. can include a kinetic hydrate inhibitor, it is the position of the Office that such can therefore also not include such a kinetic hydrate inhibitor and, as such, it would have been obvious to one having ordinary skill in the art to try a composition free of kinetic hydrate inhibitors and fluoroalkyl compounds since such are not required components of the composition of Webber et al. and therefore one of ordinary skill would recognize the omission thereof as obvious should the functions attributed thereto not be desired and/or required, such as, for example, when a kinetic hydrate inhibitor is not necessary and when an alternative substituent to a fluoroalkyl is employed. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
With respect to dependent claim 14, Webber et al. discloses wherein the AA-LDHI can be injected with a corrosion inhibitor, in which instance a polar solvent is used ([0058]), as well as wherein individual inhibitors can be added to the fluid at separate ports ([0059]). Webber et al. additionally suggests wherein various additional functional additives can be used in combination with the corrosion inhibitor ([0056]). The AA-LDHI is further suggested as injected as prepared or formulated in an additional solvent depending on the application and requirements ([0061]). Although silent to the provision of wherein the composition is a two-part composition wherein the first part comprises the AA-LDHI and the second part comprises the corrosion inhibitor and the additional functional ingredient, solvent or combination thereof, it would have been obvious to one having ordinary skill in the art to formulate the composition as a two-part composition wherein the first part comprises the AA-LDHI to which the second part comprising the corrosion inhibitor and additional functional ingredient is added at, for example, a separate port, as suggested in [0059], in order to ensure the addition of the corrosion inhibitor and additional functional ingredient when such is deemed necessary and/or desired.
With respect to dependent claim 22, Bartels et al. teaches wherein the quaternary ammonium compound is as claimed ([0066]; see motivation to combine in the rejection of claim 1, above).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-14 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-8 and 11-14 of copending Application No. 18/461,676 (‘676 herein) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘676 provides for a hydrate inhibitor and corrosion inhibitor composition comprising an amount of AA-LDHI overlapping that which is instantly claimed, and, further, fully recites the structure of Applicant’s instantly elected AA-LDHI, thereby fully encompassing the hydrate inhibitor as instantly claimed in claim 1; ‘676 further recites in independent claim 1 the same weight percent of corrosion inhibitor, wherein such comprises a quaternary ammonium compound which is further identified in the specification of ‘676 as having a formula according to that which is instantly claimed. Lastly, 676 includes at leat one additional functional ingredient, solvent, or a combination thereof within the composition of claim 1, as is instantly claimed. As such, Applicant’s instantly claimed composition in claim 1 is fully encompassed by that which is recited in ‘676 and would thus be obvious thereover.
Instant dependent claims 6-8 and 11-14 mirror dependent claims 6-8 and 11-14 of ‘676 and therefore would also be obvious thereover.
Although instant dependent claims 9 and 10 are not explicitly recited in ‘676, such would indeed be obvious thereover in view of ‘676’s use of “consisting of” in claim 1, wherein the composition consists of an AA-LDHI that is a cationic ammonium compound of Formula (IIIb).
Lastly, with regard to instant dependent claim 22, although not recited within ‘676, ‘676 suggests such quaternary ammonium compounds as used as the corrosion inhibitor within the specification, and, therefore, the use of such within the composition of ‘676 would indeed be obvious thereover.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2015/0011453 discloses corrosion inhibiting compositions that include cationic ammonium compounds.
US 2013/0261032 discloses a gas hydrate inhibitor having a formula corresponding to formula IIIb.
US 2011/0319682 discloses a gas hydrate inhibitor having a formula corresponding to formula IIIb.
US 6,281,172 discloses cationic ammonium compounds corresponding to formula IIIb that can be used in areas prone to gas hydrates.
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.
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 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
04/08/26
Prosecution Insights