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
Note to Applicant
As in parent Application 18/403,472, Applicant may consider Amending independent claims 1, 5, and 11 to incorporate the particular degree of reduction of solid build-up imparted by including the biodegradable fatty acid ester (e.g., as in current [0021]-[0022] and Table 1) to overcome Kommareddi in view of Asirvatham. However, Applicant should file an e-Terminal Disclaimer over parent patent No. 12,398,312.
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 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 1-13 are rejected under 35 U.S.C. 103 as obvious over Kommareddi (9,644,161) in view of Asirvatham (2021/0198555) (both cited by Applicant).
Regarding independent claim 5, Kommareddi discloses A method of using a drag-reducing formulation (abstract “an effective amount to reduce drag of a drag reducing composition is added to a liquid hydrocarbon”) comprising the steps of:
…
mixing a solvent (Col. 3, lines 59 “diluting the monomer with a solvent” wherein Col. 4, lines 8-11 “Upon completion of the polymerization reaction, the monomer might fully (100%) convert to polymer, but the plasticizer/solvent will restrict the % polymer in each latex particle”) with a polymer composition comprising at least one latex polymer (Col. 2, lines 40-45 “The latex DRA particles may be formed by polymerizing at least one monomer selected from the group consisting of acrylates, methacrylates including, but not necessarily limited to, 2-ethylhexyl methacrylate, isobutyl methacrylate, butyl methacrylate, styrene, acrylic acid, and combinations thereof”) to obtain the drag-reducing formulation; and
introducing the drag-reducing formulation at an injection point (Col. 3, lines 2-7 “After mixing is complete, the latex may be put into an injection test rig, where it is pumped against a high pressure relief valve to simulate injection into a pipeline, such as is done in the injection of latex DRA particles into a flowing hydrocarbon stream, such as crude oil”).
Regarding the biodegradable fatty acid ester, as above, Kommareddi discloses including plasticizer or solvent, wherein “A solvent would need to be selected that is substantially insoluble in water and is a solvent for both the monomer and the polymer being produced” (Col. 3, lines 60-623) and “Suitable solvents may include, but are not necessarily limited to, kerosene, toluene, xylene, C6-C16 alkanes or cycloalkanes, toluene, mineral oil solvents, and the like and combinations thereof” (Col. 3, line 66-Col. 4, line 3).
However, Kommareddi fails to specify if such solvents may include biodegradable fatty acid ester as claimed.
Nevertheless, these are well-known to be solvents in the art similar to those listed in Kommareddi. For example, Asirvatham teaches “the recovery and or production of bio-based oils” (abstract) wherein “Other suitable water-insoluble solvents may include aromatic hydrocarbons, mixed naphthalene and alkyl naphthalene fractions, aromatic solvents, particularly alkyl substituted benzenes such as xylene or propylbenzene fractions, and the like; C1-C6 esters of fatty acids derived from vegetable, seed or animal oils such as, methyl caproate, methyl caprylate, methyl caprate, methyl laurate, methyl myristate, methyl palmitate, methyl stearate, methyl oleate, methyl linoleate, methyl linolenate, and the like” ([0155]) which can be used with “friction reducers, and latex” (claim 10). Toluene is an alkyl substituted benzene (substituted with a methyl group).
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 Kommareddi to alternate solvents such as methyl caprylate (R1 = C8; R2 = C1), methyl caprate (R1 = C10; R2 = C1), methyl laurate (R1 = C12; R2 = C1), methyl myristate (R1 = C14; R2 = C1), methyl palmitate (R1 = C16; R2 = C1), methyl stearate (R1 = C18; R2 = C1), methyl oleate (R1 = C18; R2 = C1, 1 C=C), methyl linoleate (R1 = C18; R2 = C1, 2 C=C), or methyl linolenate (R1 = C18; R2 = C1, 3 C=C) “derived from vegetable, seed or animal oils,” with a reasonable expectation of success, in order to provide a suitable solvent that is “substantially insoluble in water” well-known in the art within the general conditions disclosed by Kommareddi (thereby including:
“deriving a biodegradable fatty acid ester from a renewable source;
mixing the biodegradable fatty acid ester with a polymer composition comprising at least one latex polymer to obtain the drag-reducing formulation”).
Second, the modification is obvious as no more than the use of familiar elements (known latex DRA, plasticizers, solvents) according to known techniques (adding plasticizer/solvent to latex) in a manner that achieves predictable results (softening the latex). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness. For example, Applicant may also see the reference to Harris in the Conclusion below, for further evidence that alkyl esters are well-known as solvents for latex drag reducers.
Nevertheless, Applicant may consider Amending claims 1, 5, and 11to incorporate the particular degree of reduction of solid build-up imparted by including the biodegradable fatty acid ester (e.g., as in current [0021]-[0022] and Table 1) to overcome Kommareddi in view of Asirvatham. For example, the current claims appear to encompass any degree of reduction, but Applicant discloses that even castor oil alone also reduces solid build-up. (Castor oil is a triglyceride, not a fatty acid ester.)
Regarding independent claim 1, Kommareddi discloses A method of using a drag-reducing formulation (abstract “an effective amount to reduce drag of a drag reducing composition is added to a liquid hydrocarbon”) comprising the steps of:
…
mixing a solvent (Col. 3, lines 59 “diluting the monomer with a solvent” wherein Col. 4, lines 8-11 “Upon completion of the polymerization reaction, the monomer might fully (100%) convert to polymer, but the plasticizer/solvent will restrict the % polymer in each latex particle”) with a polymer composition comprising at least one latex polymer (Col. 2, lines 40-45 “The latex DRA particles may be formed by polymerizing at least one monomer selected from the group consisting of acrylates, methacrylates including, but not necessarily limited to, 2-ethylhexyl methacrylate, isobutyl methacrylate, butyl methacrylate, styrene, acrylic acid, and combinations thereof”) to obtain the drag-reducing formulation; and
introducing the drag-reducing formulation at an injection point (Col. 3, lines 2-7 “After mixing is complete, the latex may be put into an injection test rig, where it is pumped against a high pressure relief valve to simulate injection into a pipeline, such as is done in the injection of latex DRA particles into a flowing hydrocarbon stream, such as crude oil”).
Regarding the biodegradable fatty acid ester, as above, Kommareddi discloses including plasticizer or solvent, wherein “A solvent would need to be selected that is substantially insoluble in water and is a solvent for both the monomer and the polymer being produced” (Col. 3, lines 60-623) and “Suitable solvents may include, but are not necessarily limited to, kerosene, toluene, xylene, C6-C16 alkanes or cycloalkanes, toluene, mineral oil solvents, and the like and combinations thereof” (Col. 3, line 66-Col. 4, line 3).
However, Kommareddi fails to specify if such solvents may include biodegradable fatty acid ester as claimed.
Nevertheless, these are well-known to be solvents in the art similar to those listed in Kommareddi. For example, Asirvatham teaches “the recovery and or production of bio-based oils” (abstract) wherein “Other suitable water-insoluble solvents may include aromatic hydrocarbons, mixed naphthalene and alkyl naphthalene fractions, aromatic solvents, particularly alkyl substituted benzenes such as xylene or propylbenzene fractions, and the like; C1-C6 esters of fatty acids derived from vegetable, seed or animal oils such as, methyl caproate, methyl caprylate, methyl caprate, methyl laurate, methyl myristate, methyl palmitate, methyl stearate, methyl oleate, methyl linoleate, methyl linolenate, and the like” ([0155]) which can be used with “friction reducers, and latex” (claim 10). Toluene is an alkyl substituted benzene (substituted with a methyl group).
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 Kommareddi to alternate solvents such as methyl caprylate (R1 = C8; R2 = C1), methyl caprate (R1 = C10; R2 = C1), methyl laurate (R1 = C12; R2 = C1), methyl myristate (R1 = C14; R2 = C1), methyl palmitate (R1 = C16; R2 = C1), methyl stearate (R1 = C18; R2 = C1), methyl oleate (R1 = C18; R2 = C1, 1 C=C), methyl linoleate (R1 = C18; R2 = C1, 2 C=C), or methyl linolenate (R1 = C18; R2 = C1, 3 C=C) “derived from vegetable, seed or animal oils,” with a reasonable expectation of success, in order to provide a suitable solvent that is “substantially insoluble in water” well-known in the art within the general conditions disclosed by Kommareddi (thereby including:
“deriving a biodegradable fatty acid ester with a structure of R1C(=O)OR2 from a renewable source, where R1 is a C8-C40 alkyl or alkenyl group comprising between zero to three C=C double bonds, where R2 is a C1-C15 alkyl or alkenyl group;
mixing the biodegradable fatty acid ester with a polymer composition comprising at least one latex polymer to obtain the drag-reducing formulation”).
Regarding independent claim 11, Kommareddi discloses A method of using a drag-reducing formulation (abstract “an effective amount to reduce drag of a drag reducing composition is added to a liquid hydrocarbon”) comprising the steps of:
…
mixing a solvent (Col. 3, lines 59 “diluting the monomer with a solvent” wherein Col. 4, lines 8-11 “Upon completion of the polymerization reaction, the monomer might fully (100%) convert to polymer, but the plasticizer/solvent will restrict the % polymer in each latex particle”) with a polymer composition comprising at least one latex polymer (Col. 2, lines 40-45 “The latex DRA particles may be formed by polymerizing at least one monomer selected from the group consisting of acrylates, methacrylates including, but not necessarily limited to, 2-ethylhexyl methacrylate, isobutyl methacrylate, butyl methacrylate, styrene, acrylic acid, and combinations thereof”) to obtain the drag-reducing formulation; and
introducing the drag-reducing formulation at an injection point (Col. 3, lines 2-7 “After mixing is complete, the latex may be put into an injection test rig, where it is pumped against a high pressure relief valve to simulate injection into a pipeline, such as is done in the injection of latex DRA particles into a flowing hydrocarbon stream, such as crude oil”).
Regarding the biodegradable fatty acid ester, as above, Kommareddi discloses including plasticizer or solvent, wherein “A solvent would need to be selected that is substantially insoluble in water and is a solvent for both the monomer and the polymer being produced” (Col. 3, lines 60-623) and “Suitable solvents may include, but are not necessarily limited to, kerosene, toluene, xylene, C6-C16 alkanes or cycloalkanes, toluene, mineral oil solvents, and the like and combinations thereof” (Col. 3, line 66-Col. 4, line 3).
However, Kommareddi fails to specify if such solvents may include biodegradable fatty acid ester as claimed.
Nevertheless, these are well-known to be solvents in the art similar to those listed in Kommareddi. For example, Asirvatham teaches “the recovery and or production of bio-based oils” (abstract) wherein “Other suitable water-insoluble solvents may include aromatic hydrocarbons, mixed naphthalene and alkyl naphthalene fractions, aromatic solvents, particularly alkyl substituted benzenes such as xylene or propylbenzene fractions, and the like; C1-C6 esters of fatty acids derived from vegetable, seed or animal oils such as, methyl caproate, methyl caprylate, methyl caprate, methyl laurate, methyl myristate, methyl palmitate, methyl stearate, methyl oleate, methyl linoleate, methyl linolenate, and the like” ([0155]) which can be used with “friction reducers, and latex” (claim 10). Toluene is an alkyl substituted benzene (substituted with a methyl group).
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 Kommareddi to alternate solvents such as methyl caprylate (R1 = C8; R2 = C1), methyl caprate (R1 = C10; R2 = C1), methyl laurate (R1 = C12; R2 = C1), methyl myristate (R1 = C14; R2 = C1), methyl palmitate (R1 = C16; R2 = C1), methyl stearate (R1 = C18; R2 = C1), methyl oleate (R1 = C18; R2 = C1, 1 C=C), methyl linoleate (R1 = C18; R2 = C1, 2 C=C), or methyl linolenate (R1 = C18; R2 = C1, 3 C=C) “derived from vegetable, seed or animal oils,” with a reasonable expectation of success, in order to provide a suitable solvent that is “substantially insoluble in water” well-known in the art within the general conditions disclosed by Kommareddi (thereby including:
“deriving a biodegradable fatty acid ester from vegetable-based oil, castor oil, soy lecithin, or a biodiesel production source;
mixing the biodegradable fatty acid ester with a polymer composition comprising at least one latex polymer to obtain the drag-reducing formulation”).
Regarding claims 2 and 8, as above, Asirvatham teaches “the recovery and or production of bio-based oils” (abstract) wherein “Other suitable water-insoluble solvents may include aromatic hydrocarbons, mixed naphthalene and alkyl naphthalene fractions, aromatic solvents, particularly alkyl substituted benzenes such as xylene or propylbenzene fractions, and the like; C1-C6 esters of fatty acids derived from vegetable, seed or animal oils such as, methyl caproate, methyl caprylate, methyl caprate, methyl laurate, methyl myristate, methyl palmitate, methyl stearate, methyl oleate, methyl linoleate, methyl linolenate, and the like” ([0155]) which can be used with “friction reducers, and latex” (claim 10).
As in claims 1 and 5, 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 Kommareddi to alternate solvents derived from vegetable oil such as methyl caprylate (R1 = C8; R2 = C1), methyl caprate (R1 = C10; R2 = C1), methyl laurate (R1 = C12; R2 = C1), methyl myristate (R1 = C14; R2 = C1), methyl palmitate (R1 = C16; R2 = C1), methyl stearate (R1 = C18; R2 = C1), methyl oleate (R1 = C18; R2 = C1, 1 C=C), methyl linoleate (R1 = C18; R2 = C1, 2 C=C), or methyl linolenate (R1 = C18; R2 = C1, 3 C=C), with a reasonable expectation of success, in order to provide a suitable solvent that is “substantially insoluble in water” well-known in the art within the general conditions disclosed by Kommareddi (thereby including:
(claims 2 and 8) wherein the step of deriving the biodegradable fatty acid from the renewable source further comprises the step of deriving the biodegradable fatty acid from vegetable-based oil, castor oil, soy lecithin, or a biodiesel production source).
Regarding claims 3, 9, and 12, Kommareddi discloses wherein the step of introducing the drag-reducing formulation at the injection point further comprises injecting the drag-reducing formulation into a pipeline (Col. 3, lines 2-7 “After mixing is complete, the latex may be put into an injection test rig, where it is pumped against a high pressure relief valve to simulate injection into a pipeline, such as is done in the injection of latex DRA particles into a flowing hydrocarbon stream, such as crude oil”).
Regarding claims 4, 10, and 13, Kommareddi discloses wherein the step of introducing the drag-reducing formulation at the injection point further comprises injecting the drag-reducing formulation into a liquid hydrocarbon selected from the group consisting of crude oil, heavy oil, gasoline, diesel fuel, fuel oil, naphtha, asphalt, and mixtures thereof (Col. 3, lines 2-7 “After mixing is complete, the latex may be put into an injection test rig, where it is pumped against a high pressure relief valve to simulate injection into a pipeline, such as is done in the injection of latex DRA particles into a flowing hydrocarbon stream, such as crude oil” and Col. 2, lines 27-30 “The liquid hydrocarbons which compose the hydrocarbon composition may include, but are not necessarily limited to, crude oil, heavy oil, gasoline, diesel fuel, fuel oil, naphtha, asphalt, and mixtures thereof”).
Regarding claims 6 and 7, as in claim 5, 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 Kommareddi to alternate solvents such as methyl caprylate (R1 = C8; R2 = C1), methyl caprate (R1 = C10; R2 = C1), methyl laurate (R1 = C12; R2 = C1), methyl myristate (R1 = C14; R2 = C1), methyl palmitate (R1 = C16; R2 = C1), methyl stearate (R1 = C18; R2 = C1), methyl oleate (R1 = C18; R2 = C1, 1 C=C), methyl linoleate (R1 = C18; R2 = C1, 2 C=C), or methyl linolenate (R1 = C18; R2 = C1, 3 C=C) “derived from vegetable, seed or animal oils,” with a reasonable expectation of success, in order to provide a suitable solvent that is “substantially insoluble in water” well-known in the art within the general conditions disclosed by Kommareddi (thereby including:
(claim 6) wherein the step of deriving a biodegradable fatty acid ester from a renewable source further comprises deriving a fatty acid ester with a structure of R1C(=O)OR2; and further
(claim 7) wherein R1 is selected from a C8-C40 alkyl or alkenyl group comprising between zero to three C=C double bonds, wherein R2 is a C1-C15 alkyl or alkenyl group).
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20 of U.S. Patent No. 12,398,312 (also parent Application 18/403,472).
Regarding independent claims 1, 5, and 11, these correspond to 12,398,312 claims 17 and 18.
Regarding claims 2-4, 6-10, 12, and 13, these correspond to 12,398,312 claims 18, 19, 20, 17, 17, 18, 19, 20, 19, and 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Johnston (11,098,221) (cited by Applicant) discloses an additive to reduce film formation of drag reducing latex (abstract), but this is directed only to polyol esters or polycarboxylic acid esters, not fatty acid esters.
The reference to Harris (2006/0148928) (cited by Applicant) provides evidence that alkyl esters are well-known solvents for latex drag reducers, stating “Suitable solvents for use in forming the modified latex drag reducer include aromatic solvents (such as benzene, toluene, xylene, ethylbenzene, dibenzyl toluene, benzyltoluene, butylxylene, diphenylethane, diisopropylbiphenyl, triisopropylbiphenyl, etc.), partially or fully hydrogenated aromatic solvents (such as tetrahydronaphthalene or decahydronaphthalene), glycols (such as ethylene glycol, propylene glycol, butylenes glycol, hexylene glycol, polyglycols such as diethylene glycol, triethylene glycol, polyethylene glycol, polypropylene glycol and ethylene oxide propylene oxide block copolymers, glycol ethers, polypropylene glycol butyl ether, ethylene glycol butyl ether, propylene glycol methyl ether, propylene glycol butyl ether, propylene glycol phenyl ether, diethylene glycol methyl ether, dipropylene glycol methyl ether, triethylene glycol methyl ether), esters (such as butyl formate, ethyl acetate, lactate esters)” ([0047]).
The reference to Kelly (2015/0175878) (cited by Applicant) teaches using a friction reducing polymer with a co-solvent (abstract) such as fatty acid methyl esters ([0037]) in order to aid dissolving of the friction reducing polymer ([0027]), but this is for dissolving polysiloxane friction reducing polymer into liquefied carbon dioxide (LCO2) (abstract).
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.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674
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