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 .
Claim Rejections - 35 USC § 103
Claims 1, 3-14, 16-17, 19, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kalakodimi (U.S. Pat. No. 10,174,429, “Kalakodimi ‘429”) in view of Lipinski (U.S. Pat. No. 4,913,823) and Ito (JP 2012-041606 A)
In column 2 lines 7-33 Kalakodimi ‘429 discloses a method of suppressing corrosion of a corrodible metal surface that contacts a water stream in a water system, comprising introducing into the water stream a treatment composition including a tin(II) corrosion inhibitor and a hydroxycarboxylic acid promoter, as recited in claim 1. In column 5 lines 17-30 Kalakodimi ‘429 discloses that the tin(II) corrosion inhibitor is present in the water stream in an amount of 0.01 to 3 ppm and the hydroxycarboxylic acid promotor is present in an amount of 0.1 to 40 ppm, leading to a total concentration of 0.11 to 43 ppm, within the range recited in claim 1. From column 1 line 65 through column 2 line 6, column 4 lines 7-16, and in the reference’s claim 8, Kalakodimi ‘429 discloses that the treatment composition is provided in sufficient amount and for sufficient time to form a stable protective tin film on at least a portion of the corrodible steel surface, as recited in claim 1. In column 8 lines 30-33 Kalakodimi ‘429 discloses that the treatment composition can be applied to the water stream while the water system is on-line, indicating that a step of contacting the corrodible metal surface can be performed prior to introducing the treatment composition into the water stream, as recited in claim 1.
As discussed above, Kalakodimi ‘429 discloses that the treatment composition is present in an amount of 0.11 to 43 ppm, encompassing the range recited in amended claim 1 as well as claims 3-4. Kalakodimi ‘429 discloses in column 2 lines 13-14 that the concentration of tin in the water stream can range from 0.01 to 3 ppm, as recited in claim 5, and encompassing the ranges recited in claims 6-7. As discussed above, Kalakodimi ‘429 discloses a promoted concentration of 0.1 to 40 ppm, as recited in claim 8 and encompassing the ranges recited in claims 9-10. In column 5 lines 24-26 Kalakodimi ‘429 further discloses narrower concentration ranges for the promoter meeting the limitations of claims 9-10. In column 5 lines 1-10 Kalakodimi ‘429 discloses that the promoter can be various acids recited in claim 11, and meeting the limitations of claim 21. In column 4 lines 56-61 Kalakodimi ‘429 discloses that the tin can be provided by various compounds recited in claim 12. In column 7 lines 29-38 Kalakodimi ‘429 discloses that the treatment composition can comprise a reducing agent, as recited in claim 13. In column 2 lines 44-50 Kalakodimi ‘429 discloses that that the water systems can be the types recited in claim 14. Introducing the treatment composition into the water stream while the water system is on-line, as discussed above, meets the limitations of claim 16. In column 5 lines 11-17 Kalakodimi ‘429 discloses that the ratio of corrosion inhibitor to promoter matches or falls within the range recited in claim 17. The differences between Kalakodimi ‘429 and the currently presented claims are:
i) Kalakodimi ‘429 discloses in column 4 lines 31-34 and the reference’s claim 7 that the corrodible metal surface can be a steel, but does not specifically disclose stainless steel, and does not disclose the skin temperature of the stainless steel. Kalakodimi ‘429 does disclose that the water system can be a cooling tower.
ii) Kalakodimi ‘429 discloses in the examples that the treatment composition provides protection against corrosion from chloride-containing water (see the table in column 8), but does not disclose water containing chloride in the specific amounts recited in claims 1 and 19. Kalakodimi ‘429 also does not specifically disclose the use of the treatment composition in water containing sulfates, as in newly added claim 23.
iii) Some of the ranges of Kalakodimi ‘429 and Ito overlap or encompass the claimed ranges rather than falling within them.
With respect to i), Lipinski discloses in column 7 lines 1-12 “simulated cooling tower units” containing a stainless steel heating coil having a skin temperature of 145° F, within the range recited in 1 and 19 and meeting the limitations of the claimed stainless steel.
It would have been obvious to one of ordinary skill in the art to perform the method of Kalakodimi ‘429 in a system where the metal surface is a stainless steel surface having the skin temperature taught by Lipinski, since Lipinski indicates that they are representative of components present and contacted by water in a cooling tower.
With respect to ii), an English-language machine translation of Ito, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 1 Ito discloses an aqueous liquid composition for preventing corrosion and scale, and in paragraphs 57-58, 76, and 80-81 discloses that the composition is used in a water system such as a cooling tower (paragraphs 76, 81, and Figure 1). In paragraph 56 Ito discloses that the water to be treated has a chloride content of 0 to 3000 mg/L, which equates to 0 to 3000 ppm (1L water = 1000000 mg), overlapping the ranges recited in amended claim 1 and newly added claim 22, and further teaches that the water can comprise up to 3000 mg/L of sulfates, meeting the limitations of newly added claim 23.
It would have been obvious to one of ordinary skill in the art to perform the method of Kalakodimi ‘429 with water having the chloride content taught by Ito, since Ito teaches that it is a suitable chloride content for application of corrosion inhibiting agents in water systems such as cooling towers. It is noted that the corrosion inhibitors taught in paragraph 17 of Ito can also be included in the composition of Kalakodimi ‘429 (column 7 lines 36, 42, 52-53, 59-61), and that Kalakodimi ‘429 also discloses in column 3 lines 7-15 that the tin-based (stannous) inhibitors have advantages over the zinc-based inhibitors of Ito; one of ordinary skill in the art would therefore understand that the tin-based inhibitor system of Kalakodimi ‘429 would also be effective in water systems having the chloride content taught by Ito.
With respect to iii), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
In light of the above, claims 1, 3-14, 16-17, 19, and 21-23 are rendered obvious by Kalakodimi ‘429 in view of Lipinski and Ito.
Claims 1, 3-14, 16-17, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kalakodimi (U.S. Pat. No. 10,174,429, “Kalakodimi ‘429”) in view of Ono (JP 10-214727) and Ito.
In column 2 lines 7-33 Kalakodimi ‘429 discloses a method of suppressing corrosion of a corrodible metal surface that contacts a water stream in a water system, comprising introducing into the water stream a treatment composition including a tin(II) corrosion inhibitor and a hydroxycarboxylic acid promoter, as recited in claim 1. In column 5 lines 17-30 Kalakodimi ‘429 discloses that the tin(II) corrosion inhibitor is present in the water stream in an amount of 0.01 to 3 ppm and the hydroxycarboxylic acid promotor is present in an amount of 0.1 to 40 ppm, leading to a total concentration of 0.11 to 43 ppm, encompassing the range recited in amended claim 1 as well as claims 3-4. From column 1 line 65 through column 2 line 6, column 4 lines 7-16, and in the reference’s claim 8, Kalakodimi ‘429 discloses that the treatment composition is provided in sufficient amount and for sufficient time to form a stable protective tin film on at least a portion of the corrodible steel surface, as recited in claim 1. In column 8 lines 30-33 Kalakodimi ‘429 discloses that the treatment composition can be applied to the water stream while the water system is on-line, indicating that a step of contacting the corrodible metal surface can be performed prior to introducing the treatment composition into the water stream, as recited in claim 1.
As discussed above, Kalakodimi ‘429 discloses that the treatment composition is present in an amount of 0.11 to 43 ppm, overlapping the range recited in claim 2 and encompassing the range recited in claims 3-4. Kalakodimi ‘429 discloses in column 2 lines 13-14 that the concentration of tin in the water stream can range from 0.01 to 3 ppm, as recited in claim 5, and encompassing the ranges recited in claims 6-7. As discussed above, Kalakodimi ‘429 discloses a promoted concentration of 0.1 to 40 ppm, as recited in claim 8 and encompassing the ranges recited in claims 9-10. In column 5 lines 24-26 Kalakodimi ‘429 further discloses narrower concentration ranges for the promoter meeting the limitations of claims 9-10. In column 5 lines 1-10 Kalakodimi ‘429 discloses that the promoter can be various acids recited in claim 11, and meeting the limitations of claim 21. In column 4 lines 56-61 Kalakodimi ‘429 discloses that the tin can be provided by various compounds recited in claim 12. In column 7 lines 29-38 Kalakodimi ‘429 discloses that the treatment composition can comprise a reducing agent, as recited in claim 13. In column 2 lines 44-50 Kalakodimi ‘429 discloses that that the water systems can be the types recited in claim 14. Introducing the treatment composition into the water stream while the water system is on-line, as discussed above, meets the limitations of claim 16. In column 5 lines 11-17 Kalakodimi ‘429 discloses that the ratio of corrosion inhibitor to promoter matches or falls within the range recited in claim 17. The differences between Kalakodimi ‘429 and the currently presented claims are:
i) Kalakodimi ‘429 discloses in column 4 lines 31-34 and the reference’s claim 7 that the corrodible metal surface can be a steel, but does not specifically disclose stainless steel, and does not disclose the skin temperature of the stainless steel. Kalakodimi ‘429 does disclose that the water system can be a cooling tower.
ii) Kalakodimi ‘429 discloses in the examples that the treatment composition provides protection against corrosion from chloride-containing water (see the table in column 8), but does not disclose water containing chloride in the specific amounts recited in claims 1 and 22. Kalakodimi ‘429 also does not specifically disclose the use of the treatment composition in water containing sulfates, as in newly added claim 23.
iii) Some of the ranges of Kalakodimi ‘429 and Ito overlap or encompass the claimed ranges rather than falling within them.
With respect to i), a machine translation of Ono, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation. In paragraphs 9 and 11-13 Ono disclose a cooling tower outlet pipe made of type 304 stainless steel (SUS304), meeting the limitations of the stainless steel of claims 1 and 20, where the water temperature is 140° F (60° C) or less, which will lead to a skin temperature in the same range during operation, overlapping the ranges recited in claims 1 and 19.
It would have been obvious to one of ordinary skill in the art to use a pipe made of type 304 stainless steel in the cooling tower of Kalakodimi ’429, where the stainless steel has a skin temperature of 140° F or less, since Ono teaches that it is a suitable combination of material and temperature for use in a cooling tower, and because Ono teaches that the use of water having temperature of 140° F or less (leading to the corresponding skin temperature) helps reduce corrosion of the type 304 stainless steel.
With respect to ii), an English-language machine translation of Ito, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 1 Ito discloses an aqueous liquid composition for preventing corrosion and scale, and in paragraphs 57-58, 76, and 80-81 discloses that the composition is used in a water system such as a cooling tower (paragraphs 76, 81, and Figure 1). In paragraph 56 Ito discloses that the water to be treated has a chloride content of 0 to 3000 mg/L, which equates to 0 to 3000 ppm (1L water = 1000000 mg), overlapping the ranges recited in amended claim 1 and newly added claim 22, and further teaches that the water can comprise up to 3000 mg/L of sulfates, meeting the limitations of newly added claim 23.
It would have been obvious to one of ordinary skill in the art to perform the method of Kalakodimi ‘429 with water having the chloride content taught by Ito, since Ito teaches that it is a suitable chloride content for application of corrosion inhibiting agents in water systems such as cooling towers. It is noted that the corrosion inhibitors taught in paragraph 17 of Ito can also be included in the composition of Kalakodimi ‘429 (column 7 lines 36, 42, 52-53, 59-61), and that Kalakodimi ‘429 also discloses in column 3 lines 7-15 that the tin-based (stannous) inhibitors have advantages over the zinc-based inhibitors of Ito; one of ordinary skill in the art would therefore understand that the tin-based inhibitor system of Kalakodimi ‘429 would also be effective in water systems having the chloride content taught by Ito.
With respect to iii), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
In light of the above, claims 1, 3-14, 16-17, and 19-23 are rendered obvious by Kalakodimi ‘429 in view of Ono and Ito.
Response to Arguments
Applicant argues that stainless steel corrosion occurs by a different mechanism than other steels disclosed by Kalakodimi ‘429, and that one of ordinary skill in the art would not have a reasonable expectation of success in using corrosion inhibitors effective for those steels in inhibiting corrosion of stainless steel. Applicant provides a declaration by Kalakodimi containing data which indicates that mild steel in contact with a water containing 10 ppm of a zinc inhibitor or 300 ppm of a molybdenum inhibitor exhibits reduced corrosion, whereas the data provided in the specification indicates that the zinc inhibitor and the molybdenum-based inhibitor do not provide sufficient corrosion protection when used on stainless steel. It is noted, however, that the molybdenum inhibitor (Sample 7) of the specification provides superior corrosion protection relative to water comprising 6 ppm of the inventive RPSI inhibitor (Sample 2), within the claimed range. Increasing the concentration of RSPI leads to a significant improvement in stainless steel corrosion protection (although the chloride content of the water in the specification is less than the chloride content recited in the currently amended claims). Had applicant not also provided data of compositions comprising higher amounts of RPSI, Sample 2 also could have functioned as a counterexample telling the same story applicant tells regarding zinc and molybdenum inhibitors. It is therefore unclear whether the comparative inhibitors, particularly the molybdenum inhibitor, actually do not inhibit stainless steel corrosion, or whether they simply have not been added in sufficient amounts in the comparative examples, noting that both the zinc and molybdenum inhibitors give a higher Epit and Erp than the blank stainless steel. The data provided by applicant is therefore not sufficient to demonstrate that one of ordinary skill in the art would not have had a reasonable expectation of success in using the tin(II) corrosion inhibitor/hydrocarboxylic acid promotor combination of Kalakodimi ‘429 on a stainless steel surface, especially in light of Kalakodimi ‘429’s broad teaching of corrodible metal surfaces, including ferrous metals, and Lipinski and Ono’s teaching that the cooling towers disclosed by Kalakodimi ‘429 can have stainless steel surfaces.
Additionally, from an unexpected results standpoint, the examples provided in the specification use water having a chloride content outside the claimed range, and the composition comprising 6 ppm of RSPI does not produce superior results. Applicant has therefore also not demonstrated evidence of unexpected results sufficient to overcome the prima facie case of obviousness.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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