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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 16, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 February 16, 2026 have been fully considered and sufficiently responded to in the new grounds of rejection as set forth above.
Response to Arguments
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.
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/PETER F GODENSCHWAGER/ Primary Examiner, Art Unit 1767 February 24, 2026