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 .
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.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1, 3-5, 8-12, and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tachiiwa et al. (US Pat. No. 5,080,818).
Regarding Claims 1, 3-5, 10, 16, and 21: Tachiiwa et al. teaches a composition comprising monoethylene glycol and water (base fluid) and isophthalic acid (Table I, Example 3). Tachiiwa et al. teaches the composition may further comprise a silicate (7:15-20) and teaches that the isophthalic acid may alternatively be trimesic acid, a compound of claimed formula (I)a wherein R1-3 are COOH and X1-3 are H. (4:25-40). Example 3 of Tachiiwa et al. teaches the base fluid present in approximately 92 wt% (Table 1). Tachiiwa et al. teaches that the silicate is present in 0.1-3 wt% (7:20-30), and Example 3 teaches the isophthalic acid in 0.3 wt%. Therefore, the ratio of acid to silicate is 3:1-1:10 anticipating the claimed range.
Tachiiwa et al. does not teach a specific embodiment comprising a silicate and trimesic acid. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to include the silicate in the composition with a reasonable expectation of success because Tachiiwa et al. teaches that the silicate is a suitable corrosion proofing agent for the composition (7:15-20). Furthermore, Tachiiwa et al. teaches trimesic acid and isophthalic acid as equivalent alternative aromatic polybasic acids in the composition, therefore, one of ordinary skill in the art at the time of the invention would have been motivated to substitute the isophthalic acid with trimesic acid with a reasonable expectation of success (MPEP 2144.06).
Regarding Claims 8 and 17: Tachiiwa et al. further teaches the composition comprising sodium molybdate in approximately 0.5 wt% (greater than 100 ppm) (Table 1, Example 3).
Regarding Claims 9: Example 3 of Tachiiwa et al. teaches the base fluid present in approximately 92 wt% (Table 1).
Tachiiwa et al. does not specify the silicate is present in 30-150 ppm. However, 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). In the present case, a person of ordinary skill in the art would be motivated to adjust the amount of silicate present to add additional corrosion inhibitor in the smallest amount necessary.
Regarding Claim 11: Tachiiwa et al. teaches the monoethylene glycol present in approximately 84 wt% (95 parts relative to 113.12 parts total, Table 1, Example 3).
Regarding Claim 12: The composition of Tachiiwa et al. is capable of being diluted to the claimed ranges by addition of water and/or alcohol.
Regarding Claim 18: Claim 18 further limits the triazole of claim 8 but does not require its presence. Therefore, the teaching of Tachiiwa et al. still renders obvious the composition of claim 18.
Regarding Claims 19 and 20: Claims 19 and 20 further limit the aliphatic monocarboxylate of claim 8 but do not require its presence. Therefore, the teaching of Tachiiwa et al. still renders obvious the compositions of claim 19 and 20.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tachiiwa et al. (US Pat. No. 5,080,818) in view of Berger (US Pub. No. 2018/0320047).
Tachiiwa et al. renders obvious the composition of claim 1 as set forth above.
Tachiiwa et al. does not specify the silicate as an inorganic silicate. However, Berger teaches silicates such as potassium metasilicate as a silicate corrosion inhibitor for coolants ([0001] and [0035]-[0037]). Tachiiwa et al. and Berger are analogous art because they are concerned with the same field of endeavor, namely coolants comprising corrosion inhibitors such as silicates. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the potassium metasilicate of Berger as the silicate in the composition of Tachiiwa et al. and would have been motivated to do so because Tachiiwa et al. is silent as to any specific silicate, and Berger teaches that potassium metasilicate is a suitable inhibitor for coolants ([0035]-[0037]).
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive.
Applicant argues that Tachiiwa et al. does not exemplify a composition comprising both silicates and trimesic acid. However, a reference must be considered for all that it discloses and must not be limited to preferred embodiments (see MPEP 2123).
Applicant argues that Table I, Example 3 does not disclose a ratio of acid to silicate. However, Tachiiwa et al. teaches that the silicate is present in 0.1-3 wt% (7:20-30), and Example 3 teaches the isophthalic acid in 0.3 wt%. Therefore, the ratio of acid to silicate is 3:1-1:10 anticipating the claimed range.
Applicant argues that trimesic acid provides unexpectedly better corrosion protection than other aromatic acids. However, the data cited by Applicant in the instant specification is not commensurate in scope with the claimed invention (MPEP 716.02(d)). The instant claims allow for any silicate, any polyacid according to formula (I), in any ratio of 20:1-20, and any base fluid. However, the examples cited by Applicant use a single, unnamed silicate, mono ethylene glycol base fluid, and 1-2 specific compounds reading on formula (I) as claimed.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 August 7, 2026
Prosecution Insights