COMMISSIONER'S DECISION
Double Patenting - Oil Recovery Process
Two applications were found to overlap but by amendment the applicant restricted
the second application to an inventive improvement encompassed by the first
application. This type of overlap is permissible provided there are in fact
separate inventions. Normally two applications for patent should not be
refused for double patenting until one of them has issued to patent, but
the examiner is justified in pointing out the existence of overlap prior
to grant. In this instance, the applicant requested the issue to be
settled prior to grant so he could select which application should proceed.
Rejection overcome by amendment.
****
Patent applications 243466 and 244897 were filed by the Marathon Corpora-
tions for a process to recover oil from subterranean deposits. Both are
in class 31, sub-class 31. The inventors involved in both applications
are the same (Donald E. Schroeder, Mark A. Plummet and Wayne Roszelle).
The Examiner in charge of the applications rejected both of them on
July 24, 1979 on the grounds of overlap. The Applicant has asked that
those rejections be reviewed.
In our view two pending applications should not normally be refused for
overlap, since until one of them issues to patent the question of double
patenting does not actually arise, and it is double patenting which is
objectionable in patent law. One can refuse an application because a
patent has already issued for the invention, but not because there is
another application for the invention. Nevertheless the Examiner acted
quite properly in pointing out that the applications overlapped, so that
the Applicant would have the opportunity to amend to avoid any difficulties
that might subsequently arise. Furthermore fin this instance the Applicant
has asked that the issue of overlap be settled so that he could select
which application should issue to patent, viz. 243466 (see his letter
of Sept. 18, 1979) if it is considered they do overlap.
Subsequent to the rejection the Applicant removed the claims the Examiner
found objectional in 243466, and on Sept. 10, 1979, submitted fresh claims
to replace them. It is those new claims of Sept. 10 which we will consider,
rather than the claims entered on the file at the moment.
Claims 1 of each application illustrate what is involved. Underlining has
been added to indicate the differences between them.
Claim 1 of 244897
In a process of recovering hydrocarbon from a subterranean
formation having at least one injection means in fluid
communication with at least one production means and
wherein a micellar dispersion comprised of water, hydro-
carbon, cosurfactant, electrolyte and petroleum sulfonate
obtained by solfonating whole or tope crude oil is
injected into the formation and displaced toward the
production means to recover hydrocarbon therethrough, the
improvement comprising incorporating amounts of the
cosurfactant into the micellar dispersion in excess of
the amounts required to cause the micellar dispersion to go
through a maximum viscosity and thereafter increasing the
amount of the cosurfactant to establish a micellar dis-
persion of desired viscosity for the flooding of the
subterranean formation and then injecting the micellar
dispersion into the formation.
Claim 1 of 243466
In a process for recovering hydrocarbon from a subterranean
formation having at least one injection means in fluid
communication with at least one production means and wherein
a micellar dispersion comprised of water, hydrocarbon,
cosurfactant, electrolyte, and petroleum sulfonate obtained
by sulfonating whole or topped crude oil is injected into
the formation and displaced toward the production means to
recover hydrocarbon therethrough and wherein the cosurfactant
concentration is present in excess of that concentration re-
quired to produce in the micellar dispersion a viscosity
maximum, the improvement comprising incorporating within the
micellar dispersion about 1.5 to about 4.5 weight percent of
active sulfonate groups which are attached to the petroleum
sulfonate within the micellar dispersion and thereafter
injecting the micellar dispersion into the formation.
The alleged improvement of having 1.5 to 4.5 weight percent of active sul-
fonate groups present is disclosed in 244897 (page 5, line 26), but is
not specifically claimed in 897. We understand that if there had been no
such disclosure, the Examiner might well have allowed both applications
on the basis that 897 is an inventive improvement over the 466 invention.
The crux of the matter, as we see it, is whether the 1.5 - 4.5 range is an
inventive improvement over the invention claimed in the 466 application.
If it is, it does not really matter that it was disclosed in 466 provided
it was not claimed in 466. Now the claims of the 897 application are
broad enough to encompass those of 466, but the claims of any patent
which is an improvement over a basic patent are bound to infringe the
basic patent.
Since the Examiner would allow the claims of 466 if there was no reference
to the 1.5 - 4.5 range in the disclosure of 897, we conclude that the
subject matter is a different invention from what is claimed in 897. Clearly
it provides improved results, and we find that it is inventively different.
Consequently we recommend that the rejection for overlap should be withdrawn.
There is, of course, no doubt that the claims on file in 897 at the time
of the final rejection, for example claim 4, were directed to the 1.5 to
4.5% range of sulfonate groups and did overlap the invention claimed in 466.
The Examiner was of course fully justified in making his objection at that
time.
G.A. Asher
Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of these applications and agree with the
recommendations of the Patent Appeal Board. The rejections are reversed,
and the applications remanded to the Examiner to resume prosecution in
accordance with this decision.
G.R. McLinton
Acting Commissioner of Patents
Dated at Hull, Quebec
this 12th. day of February, 1982
Agent for Applicant
A.E. MacRae & Co.
Box 806, Stn. B,
Ottawa, Ont.