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 .
Election/Restrictions
Newly submitted claim 33 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 33 is a new claim that is directed to “An aqueous system…” the initial claims examined are directed to “An antiscalant composition…”. The common technical feature between the claims is the composition of Claim 1 as Claim 33 incorporates Claim 1; that is, Claim 1 is the common technical feature. However, as is explained in the rejection below, the subject matter of Claim 1 is not deemed novel and, therefore, does not make a greater contribution over the prior art.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 33 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 7-9, 11, 13, 14, 16, 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Letzelter et al. (US Pub. No. 2016/0222325) in view of Chen et al. (WO02/079106, submitted by Applicant).
Claim 1, 7-9, 11, and 14: Letzelter et al. teach an antiscalant composition, the composition comprising: a silica inhibitor composition, wherein the silica inhibitor composition is an organophosphoric acid comprising 1-hydroxyethylidine-1,1-diphosphonic acid, a phosphonate-based compound [0035, “HEDP” is the claimed compound]; and a dispersant composition comprising a sulphonated acrylic acid polymer [0051], wherein the molecular weight of the sulphonated acrylic acid polymer ranges from about 10,000 to about 30,000 [0051]. The dispersant polymer “is a polymer capable of: i) dispersing inorganic salts such as those coming from water hardness…”[0011]. Water hardness comprising inorganic salts causes what is known in the art as “scale” on surface which appears as filming and spotting. This filming and spotting is targeted by Letzelter et al. for removal [0006].
Letzelter et al. do not teach the specific terpolymer structure recited in claims 7-9.
Chen et al. teach a water-soluble water-dispersible polymer useful for inhibiting formation and deposition of scale forming in aqueous systems comprising the structure of Claims 6-9 (See Formula IV on Page 8). Chen et al. specifically teach that the dispersible terpolymer they disclosed is intended to be combined with phosphoric acid derivatives. Said phosphoric acid derivative is hydroxyethylidene diphosphonic acid (page 10, lines 23-24), which is the same exact dispersant disclosed by Letzelter et al. Chen et al. teach that the combination of dispersible terpolymer with an inorganic phosphoric acid/acid derivative “enhance[s] the corrosion inhibition and scale controlling properties” of the dispersible terpolymer.
One of ordinary skill in the art at the time of the invention would have found it obvious to include Chen et al.’s terpolymer in Letzelter et al.’s combination of chemicals because Chen et al. teach that doing enhances corrosion inhibition and scale control. One of ordinary skill in the art at the time of the invention would have found it obvious to try Chen et al.’s Formula IV in Letzelter et al.’s composition because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Letzelter et al. do not teach the concentration ratio of silica inhibitor to the dispersant composition. Letzelter et al. teach that the HEDP is present in an amount of from about 0.01-1 grams [0107]. They teach that the dispersant polymer (i.e. sulphonated acrylic acid polymer) is present from about 0.1 to 1 grams [0040]. While these are not concentration ratios, the concentration ratio of silica inhibitor to polymer dispersant is a result effective variable wherein it is optimized to control and fine-tuned to impart particular properties on the composition. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). There is no discernable criticality associated with the claimed range of about 1:1.6 to 1:2.
Letzelter et al. do not teach that the intended use or application of the antiscalant composition is “for inhibiting silica scale formation in plant operations with high silica water containing silica levels of at least 300 ppm”. However, the claims are to a composition. A statement of intended use may not render a known composition patentable. Further, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
Claims 13 and 16 are product-by-process claims. The solid components are mixed (Examples) which include the polymer and silica inhibitor ([0111]). The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Claim 32: Chen et al. teach that the amount of topping agent (i.e. HEDP as the silica inhibitor composition) is added in an amount from about 1 to 500ppm (page 10, lines 8-15). They teach the terpolymer is to be added from 0.1-500 ppm to the water to be added.
They do not teach the amount in wt. % with respect to eachother.
However, the amount of the topping agent (i.e. silica inhibitor) and the terpolymer are clearly recognized as result effective variables that are added at amounts based on the amount and condition of the water being treated in order to be effective. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant argues that there is no motivation to combine Letzelter et al. and Chen.
The combination above is made such that Letzelter et al. is being modified by Chen. Letzelter et al. teaches a composition for cleaning and also “preventing filming and spotting” [0007]. In a dishwasher, filming and spotting are caused by deposition of inorganic salts such as those coming from water hardness [0011]. This water hardness is often referred to as “scale” in the art. Letzelter et al. teach that their “dispersant polymer is a polymer capable of: i) dispersing inorganic salts such as those coming from water hardness” [0011].
Likewise, Chen et al. disclose that their compounds are “useful for inhibiting the formation and deposition of scale forming moieties in aqueous systems” (abstract). They describe their scale as including various types of inorganic salts (page 2, lines 4-25). In particular, they recite at least calcium carbonate which is a known “water hardness” compound. They further acknowledge that consider calcium and magnesium salts to be “scale” (page 3, lines 9-22).
As such, it is clear that both Letzelter et al. and Chen et al. are very much related to controlling scale in water-based systems and there is a clear likelihood of success and predictability in combining the teachings of Letzelter et al. by Chen et al.
Applicant argues that Chen et al. teach away from the claimed invention.
This is not a teaching away of a composition having both HEDP and the claimed terpolymer.
Example 12 is a specific embodiment of a combination of a copolymer of "AA/AHPS" which is not the same polymer of Formula IV. AA/AHPS is an Acrylic acid/allyl hydroxylpropyls sulfonate ether. Formula IV is acrylic acid/polyethyleneglycol monoallyl ether sulfate/1-allyloxy-2-hydroxypropylsulfonid acid. Therefore, the results of Example 12 do not teach away because it is not the same compound.
Even assuming arguendo Example 12 did teach that the compound combination is not effective, it does not take away from the rest of the disclosure of Chen et al. which teaches the explicit combination of the terpolymer with HEDP. References are available for all they suggest to one of ordinary skill in the art, including non-preferred embodiments.
Chen et al. teach that their polymers are "not limited to use in any specific category of aqueous system" and would be expected to inhibit scale formation in various systems (page 9, lines 25-30) and particularly mention seawater desalting apparatus (page 10). Regardless, the claims are to a composition, not a method of use.
It is also noted that the primary reference is Letzelter et al., not Chen et al. Applicant’s argument to Chen et al. teaching away does not address the nature of the rejection which is that Letzelter et al. is modified by Chen et al. Applicant has failed to argue or show how or why modifying Letzelter et al. by Chen et al. would be “teaching away”. In fact, Letzelter et al. specifically teaches that their dispersant polymer is intended to disperse inorganic salts such as those coming from water hardness and Chen et al. teach that their polymer is also intended to control hardness (Page 3, lines 9-22). The Applicant’s arguments and claim amendments focus on Applicant’s discovery that the claimed composition is beneficial in treating silica build up. Applicant argues that this is what distinguishes the claims from the prior art. MPEP 2144, IV. addresses this argument in that the prior art need not address the same problem identified by Applicant:
“The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
In In re Lintner, the claimed invention was a laundry composition consisting essentially of a dispersant, cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. The claims were rejected over the combination of a primary reference which taught all the claim limitations except for the presence of sugar, and secondary references which taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that in the claimed invention, the sugar is responsible for the compatibility of the cationic softener with the other detergent components. The court sustained the rejection, stating “The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be [sic, would have been] prima facie obvious from the purpose disclosed in the references.” 173 USPQ at 562.”
Applicant argues “unexpected properties over the cited references”. Applicant discusses the Figures showing the benefit of Formula 1 + HEDP. However, the prior art does teach Formula + HEDP. This does not demonstrate “unexpected properties”. Perhaps Applicant is referring to the “unexpected properties” as the behavior with respect to silica levels. However, as is explained above, the prior art does not need to address the same problem identified by Applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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, Benjamin Lebron can be reached at (571)272-0475. 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.
ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773