Ex Parte Carlise et al

Patent Trials and Appeals BoardMar 29, 2019

12253529 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/253,529 10/17/2008 Joseph R. Carlise 124929 7590 04/02/2019 STINSON LEONARD STREET LLP (Ecolab USA Inc.) 7700 FORSYTH BOULEVARD, SUITE 1100 SAINT LOUIS, MO 63105 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. ECL E8092.US 9532 EXAMINER BUIE-HATCHER, NICOLE M ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 04/02/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ecolab_PAIR@firsttofile.com stl.uspatents@stinson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH R. CARLISE, OLGA E.S. LINDEMAN, PETER E. REED, PETER G. CONRAD, and LEONARD M. VER VERS Appeal2017-005106 Application 12/523,529 Technology Center 1700 Before JULIA HEANEY, MONTE T. SQUIRE, and JANEE. INGLESE, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 request review pursuant to 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1, 3-18, 21, 22, 24, 30, and 31 of Application 12/523,529. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 This Decision refers to the Specification dated Oct. 17, 2008 ("Spec."), Final Rejection dated Sept. 3, 2015 ("Final Act."), Appeal Brief dated Apr. 11, 2016 ("Appeal Br."), Examiner's Answer dated Dec. 6, 2016 ("Ans."), and Reply Brief dated Feb. 6, 2017 ("Reply Br."). 2 Appellants identify the real party in interest as Nalco Company. Appeal Br. 2. Appeal2017-005106 Application 12/523,529 BACKGROUND The subject matter on appeal relates to hydrate inhibitor compositions and methods of inhibiting gas hydrates, which are ice-like solids that form at low temperature and increased pressure, and which can block or damage pipelines and related oil and gas equipment. Appeal Br. 2, 7. Kinetic hydrate inhibitors ("KHis") are polymer compositions that prevent blockages by preventing the formation of hydrate crystals. Spec. 2, 11. 14-- 15. According to Appellants, the most important factors in evaluating the performance of a hydrate inhibitor are subcooling and hold time, which respectively refer to the degree to which the temperature of the system can be lowered below the theoretical hydrate formation temperature, and the amount of time the sub-cooled system can be kept hydrate-free in the presence of a given KHI. Appellants' claimed subject matter is directed to providing hydrate inhibitor compositions that include N-alkyl (alkyl)acrylamide monomer polymerized in a solvent comprising one or more glycol ether solvents. Id. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method of inhibiting hydrates in a fluid comprising water, gas and optionally liquid hydrocarbon comprising treating the fluid with an effective hydrate-inhibiting amount of an inhibitor composition comprising a polymer prepared by polymerizing one or more N-alkyl (alkyl)acrylamide monomers in a solvent comprising one or more glycol ether solvents of formula CH3-(CH2)m-(O-CH2- CH2)n-OH where mis an integer of 0-1, and n is an integer from 1 to 4, wherein the solvent modifies at least one end group of the polymer and 2 Appeal2017-005106 Application 12/523,529 wherein said polymer has a distribution of molecular weights with about 60-100 percent in the range of 1,000 to 20,000 Dalton and about 0-25 percent in the range from 20,000 to 6,000,000 Dalton, has the property of maintaining a hold time of four hours or greater in a high pressure rocking cell test using test conditions of 1600 psi, an initial temperature of 25 Â°C, a final temperature of 6 Â°C, and a temperature ramp down time of less than two hours and a test fluid containing 25% oil, 72% water, 2.5% gas, and 0.5% sodium chloride, and achieves a solubility in aqueous solution of less than 200 nephelometric turbidity units (NTU). Claims App. Independent claim 30 is directed to the method of inhibiting hydrates in a fluid as recited in claim 1, but does not include a hold time requirement of the polymer. Appeal Br. 7. Independent claims 22 and 31 are directed to hydrate inhibitor compositions used in the methods of claims 1 and 30, respectively, and further require that the polymers are polymerized through initiation by redox decomposition of a peroxide with a redox co- catalyst as a solvent. Id. at 6-7. 3 Appeal2017-005106 Application 12/523,529 THE REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claims 1, 3-18, 21, 22, 24, 30, and 31 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination ofToyama, 3 Kondo, 4 and Tsumori. 5 Final Act. 3, 6, 9, 12. 2. Claim 23 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Toyama, Kondo, Tsumori, Graham, 6 and Siano. 7 Final Act. 8. 3. Claim 25 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Toyama, Kondo, Tsumori, Graham, and Levy. 8 Id. at 9. DISCUSSION Rejection 1 The Examiner finds that Toyama teaches dissociation-controlling agents for gas hydrates which are amphipathic polymers, including a hydrate-forming substance dissolved in an aqueous solvent. Final Act. 3 ( citing Toyama ,r,r 16, 48). The Examiner further finds that the 3 Toyama et al., US 2004/0024152 Al; Feb. 5, 2004. 4 Kondo et al., US 5,681,889; Oct. 28, 1997. 5 Tsumori et al., US 2005/0113541 Al; May 26, 2005. 6 Donald P. Graham, Promoter Action in Reactions of Oxidation Concomitant with the Catalytic Decomposition of Hydrogen Peroxide, 52 Journal of the American Chemical Society 3035-3045 (1930) 7 Siano et al., US 4,673,716; June 16, 1987. 8 Levy et al., US 4,081,402; Mar. 28, 1978. 4 Appeal2017-005106 Application 12/523,529 polymerization solvent used in Toyama includes alcohols and ethers which can introduce solvent-derived end groups into the polymer by chain transfer (id., citing Toyama ,r 29), and that the polymer has a weight-average molecular weight within the range recited in appealed claim 1. Id. ( citing Toyama Examples 1 and 10). The Examiner acknowledges that Toyama does not disclose glycol ether as a solvent, but finds that Kondo teaches inter alia diethylene glycol monoethyl ether as a polymerization solvent, and that Kondo is analogous art concerned with a similar technical problem to Toyama, i.e., polymerization of (meth)acrylamide monomers and hydrophilic monomers. Id. (citing Kondo 7:12-18, 19-27). The Examiner further finds that Tsumori teaches diethylene glycol and ethylene glycol monoalkyl ether as solvents having a small chain transfer constant. Id. at 4 ( citing Tsumori ,r 68). The Examiner determines that it would have been obvious to a person of ordinary skill in the art to substitute Toyama's solvent with Kondo's solvent because Kondo suggests its solvent is useful in polymerization of hydrophilic monomers and (meth)acrylamide type monomers, and further teaches polymerization stability, and that based on Tsumori's teachings, a person of ordinary skill in the art would have expected that Kondo's glycol monoethyl ether solvent would be able to chain transfer like other solvents having a small chain transfer constant, including diethylene glycol and ethylene glycol monoalkyl ether. Id. at 3--4. The Examiner also finds that the references at issue in this rejection do not disclose the claimed properties of solubility or hold time, or that the glycol ether solvent modifies at least one end group of the polymer. Id. at 4. The Examiner finds, however, that the claimed properties "would implicitly be achieved by a composition with all the claimed ingredients, claimed 5 Appeal2017-005106 Application 12/523,529 amounts, and substantially similar process of making." Id. ( citing Manual of Patent Examining Procedure ("MPEP") Â§ 2112.01). Appellants argue that the Examiner's rationale for combining the references would not have led a person of ordinary skill in the art to make the combination. Appeal Br. 8-12. As to the Examiner's inherency rationale, Appellants argue that even assuming a person of ordinary skill in the art would have been led to combine the references, there would have been no reasonable expectation that the resulting combination would have achieved the claimed properties of "solubility, hold time, and effectiveness in inhibiting gas hydrates." Id. at 12. Appellants assert that Kondo's Examples 4---6 and comparative Examples 4---6 show that the combination of a hydrophilic monomer, an acrylamide, and a glycol ether solvent similar to the solvent of claim 1 in a polymerization reaction did not predictably achieve the desired polymer fine particles. Id. at 13-14 (citing Kondo Example 4---6 and Comparative Examples 4---6). In the Answer, the Examiner does not respond to Appellants' assertion as to Kondo, but finds that the Specification "does not provide any guidance how to achieve [the claimed] properties other than the polymerization process itself." Ans. 15. The Examiner further finds Examples 9, 12, 14, 21, and 25 in the original [S]pecification each use the claimed solvent, but fail the test for either the hold time or solubility. Therefore, it is unknown which components or conditions produces the claimed properties. Id. at 15-16. Appellants' argument is persuasive of harmful error in the Examiner's finding of inherency in this obviousness rejection. The Examiner has not come forward with adequate evidence and explanation supporting the 6 Appeal2017-005106 Application 12/523,529 reasonableness of the conclusion that the claimed properties of solubility and hold time would necessarily result from the substitution of Kondo' s solvents into Toyama's polymer composition. The Examiner has not identified evidence in the prior art that the properties of the claimed polymer would have been predictable or reasonably expected to a person of ordinary skill in the art. Further, the Examiner offers no response to Appellants' assertion that Kondo shows that a person of ordinary skill would not have expected properties of a polymer necessarily to follow from the solvent used. For the foregoing reasons, we conclude that Appellants have demonstrated harmful error in the appealed rejection, and we therefore reverse. Rejections 2 & 3 These rejections are based on the same erroneous finding of inherency as Rejection 1. Therefore, we also reverse Rejections 2 and 3. SUMMARY We reverse the rejections of claims 1, 3-18, 21, 22, 24, 30, and 31 as unpatentable under 35 U.S.C. Â§ 103(a). REVERSED 7