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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17, 2026 has been entered.
Response to Amendment
The Amendment filed February 17, 2026 has been entered. Examiner acknowledges the addition of new claims 27-35. Claims 7-8 and 18-35 remain pending in the application.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive. Applicant traverses the rejection of claims 7-8 and 18-26 over Yamaguchi in view of Austin and argues that the Office has not established motivation or reasonable expectation of success. The rejection has been reconsidered, and Austin is no longer relied upon. The claims are rejected over Yamaguchi because Yamaguchi itself teaches a maleic acid polymer/copolymer useful as a water-treatment and antiscale agents, teaches decarbonization/decarboxylation during polymerization, and teaches that the amount of decarbonization and resulting carboxyl-group content may be controlled by controlling hydrogen peroxide addition. Applicant’s own declaration quotes Yamaguchi’s teaching that carbon dioxide evolves during polymerization as a result of decarbonization from maleic acid and/or the acid-type maleic acid polymer, and that controlling hydrogen peroxide controls the amount of decarbonization and the amount of carboxyl groups in the acid-type maleic acid polymer. Applicant argues that Yamaguchi provides no motivation to increase decarboxylation and instead treats decarboxylation as a side reaction to be constrained. This argument is not persuasive because the Office’s position is not that one of ordinary skill would have sought to maximize decarboxylation without limit. Rather, Yamaguchi expressly identifies decarbonization/carboxyl-group content as a controllable polymer property. Where Yamaguchi teaches that decarbonization occurs during polymerization and that its degree can be controlled by adjusting hydrogen peroxide, selecting a desired amount of decarboxylation would have been no more that routine optimization of a known result-effective variable, absent persuasive evidence that the claimed threshold is critical or produces unexpected results. Applicant has not established that a polymer having at least 5 molar% decarboxylated maleic acid repeating units exhibits an unexpected property relative to polymers having decarboxylation values immediately below that level.
Applicant’s teaching-away argument is also not persuasive. Applicant relies on Yamaguchi’s statement that more than 100g hydrogen peroxide produces no additional effect and leaves excess hydrogen peroxide in the polymerization system. However, that statement does not teach away from controlling decarboxylation within Yamaguchi’s disclosed operating window. It merely provides an upper process boundary. Yamaguchi still affirmatively teaches that hydrogen peroxide amount controls decarbonization/carboxyl content. A reference does not teach away merely by identifying preferred or bounded operating conditions, particularly where the claimed result is achieve by routine adjustment within or near the disclosed process teachings.
Applicant further argues that the claimed method requires “modifying a crystal habit”, and that the Office has not established motivation to modify Yamaguchi to obtain that result. This argument is not persuasive because Yamaguchi teaches using maleic acid polymer/copolymer as a water-treating agent and antiscale agent. The inhibition of calcium carbonate or other mineral scale formation by a polymeric antiscalant would have been understood to involve modification of precipitation, crystal growth, morphology, adhesion, deposition, or dispersion behavior. Therefore, the recited “modifying a crystal habit” is an expected mechanism or result of using Yamaguchi’s maleic acid polymer/copolymer in an aqueous antiscale treatment. Austin is not necessary to establish a water-treatment antiscalant polymer that suppresses mineral scale formation would modify crystal growth or crystal habit.
Applicant also argues that the Third Farrar Declaration shows no reasonable expectation of success. The Declaration has been carefully considered, but it is not persuasive. First, the experiments identified as reproductions of Yamaguchi Examples 8 and 9 do not appear to reproduce those examples as actually taught. The Declaration states that, for testing both Yamaguchi Example 8 and Example 9, “ferrous ammonium sulphate (FAS)” was added to the reaction vessel. However, Yamaguchi Examples 8 and 9 were Fe3+ examples, not Fe2+ examples. Ferrous ammonium sulfate contains Fe2+. Thus, the Declaration’s reported results are not shown to be representative of Yamaguchi’s actual Examples 8 and 9 and do not establish that Yamaguchi’s disclosed Fe3+ process would fail to achieve, or render obvious, the claimed decarboxylation level. Second, even accepting the Declaration’s modified testing at Face value, the data do not establish a meaningful technical boundary at 5 molar%. In the third round of testing, the Declaration reports decarboxylation values of 4.94% and 4.74%. These values are immediately adjacent to the claimed “at least 5 molar%” threshold. Applicant has not provided evidence that a polymer having 5.00 molar% decarboxylated maleic acid repeating units produces any unexpected result or patentable distinction relative to polymers having 4.94% or 4.74% decarboxylation. Accordingly, the Declaration does not rebut the conclusion that the claimed value would have been an obvious optimization of Yamaguchi’s controllable decarbonization process.
Applicant also argues that certain modified experiments produced discoloration and therefore would render Yamaguchi unsuitable for its intended purpose. This argument is not persuasive because the discoloration evidence is not commensurate with the full scope of Yamaguchi’s disclosure or the pending claims. As noted above, the experiments used ferrous ammonium sulphate rather than reproducing Yamaguchi’s Fe3+ Examples 8 and 9. The Declaration therefore does not establish that Yamaguchi’s actual examples, or Yamaguchi’s broader disclosed metal-ion systems, would necessarily produce unacceptable discoloration when adjusted to obtain the claimed decarboxylation level. Moreover, the claims do not recite color, absence of discoloration, or any limitation requiring a particular commercial appearance of the polymer.
Finally, Applicant’s assertion that “every one of the Examiner’s guesses was experimentally wrong” is not supported by the Declaration’s own data. The reported 4.94% value is immediately adjacent to the claims 5 molar% threshold, and the Declaration does not show that the difference between 4.94% and 5.00% is technically meaningful. The evidence therefore does not show lack of predictability sufficient to overcome the prima facie case. Rather, the data confirm that Yamaguchi’s disclosed process can produce decarboxylation levels very close to the claimed amount, and the record lacks evidence of criticality or unexpected results at the claimed threshold.
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 7-8, 18-31 and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US5135677).
Regarding claim 7, Yamaguchi discloses a method comprising: modifying a crystal habit of an inorganic compound in an aqueous system with a polymaleic acid copolymer. (Yamaguchi claim 11 discloses a water-treating agent which is an antiscale agent. Antiscalants can modify crystal habits by interacting with process ions or crystals during formation, which can influence the nucleation, growth, and morphology of the crystals.)
Yamaguchi does not use the phrase “modify a crystal habit” and does not expressly disclose the polymaleic acid copolymer having at least 5 molar % decarboxylated maleic acid repeating units.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to adjust Yamaguchi’s aqueous maleic-acid polymerization process to obtain at least 5 molar% decarboxylated maleic acid repeating units because Yamaguchi expressly teaches that decarbonization occurs during polymerization and that the amount of decarbonization/carboxyl content may be controlled by controlling the amount of hydrogen peroxide added. Thus, Yamaguchi identifies the degree of decarbonization/carboxyl content as a result-effective variable affecting the physical properties and performance of the acid-type maleic acid polymer. Selecting a decarboxylation level of at least 5 molar% would have amounted to routine optimization of Yamaguchi’s disclosed decarbonization-controlled polymerization process to obtain a desired polymer composition and antiscale performance. Further, because Yamaguchi teaches using the resulting maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates suppression of calcium carbonate scale in aqueous solution, It would have been obvious that the polymer modifies the precipitation, growth, morphology, adhesion, deposition, or dispersion behavior or the inorganic scale. Accordingly, he recited “modifying a crystal habit” is an expected mechanism or result or applying Yamaguchi’s maleic acid polymer/copolymer antiscale agent to an aqueous system containing scale-forming inorganic compounds.
Regarding claim 8, Yamaguchi discloses the method according to claim 7, wherein the aqueous system is selected from the group consisting of industrial water systems (Yamaguchi abstract “industrial field of water treatment” indicates use in any one of these systems), boilers, cooling towers, evaporators, digestors, membranes, thermal desalination systems, recreational water systems, swimming pools, spas, hot tubs, decorative fountains, potable water systems, reverse osmosis membranes, filtration systems, top-side oil systems, down-hole oil systems, top-side gas systems, down-hole gas systems, squeeze treatments, flood treatments, drilling systems, fracturing applications, mining systems, pulp-and-paper systems, sugar evaporators, ethanol evaporators, household cleaning systems, laundry systems, and textile processing systems.
Regarding claim 18, Yamaguchi discloses the method according to claim 7, wherein the polymaleic acid copolymer comprises: mono-carboxylic acids (Yamaguchi col. 5 lines 14-17 and 64-67), terminal hydroxyl groups (reaction with hydrogen peroxide in the presence of the metal ion chosen from the list at the end of Yamaguchi col 6 and par. 1 of col. 7 and heat will form at least one terminal hydroxyl group), and non-ionic functional groups (Yamaguchi col 5. Formula 1 and 2 indicates methyl groups) which aid in adsorption onto a crystal surface, wherein said non-ionic functional groups and said terminal hydroxyl groups are formed during an aqueous polymerization process (Yamaguchi Col. 9 line 13-14), so that said copolymer comprises at least approximately 50 molar % maleic acid and up to 50 molar % free radical polymerized comonomers (Yamaguchi Col 7. Lines 38-57).
Regarding claim 19, Yamaguchi discloses the method according to Claim 7, wherein the inorganic compound is selected from the group consisting of calcium carbonate (Yamaguchi col. 14 line 2), calcium sulfate, barium sulfate, strontium sulfate, calcium fluoride, calcium oxalate, calcium phosphate, an iron oxide, an iron hydroxide, silica, and a silicate.
Regarding claim 20, Yamaguchi discloses the method according to claim 7, wherein modifying the crystal habit of the inorganic compound comprises adsorbing the polymaleic acid copolymer onto a surface of a forming crystal (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. The inhibition of calcium carbonate or other mineral scale formation by a polymeric antiscalant would have been understood to involve adsorbing the polymaleic acid copolymer onto a surface of a forming crystal thereby suppressing formation of scale particularly where the polymaleic acid synthesis has been disclosed by Yamaguchi in a manner which has been optimized for scale suppression).
Regarding claim 21, Yamaguchi discloses the method according to claim 20, wherein adsorbing the polymaleic acid copolymer onto the surface of the forming crystal blocks at least one dimension of directional growth of a crystal lattice of the forming crystal. (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. The inhibition of calcium carbonate or other mineral scale formation by a polymeric antiscalant would have been understood to involve adsorbing the polymaleic acid copolymer onto a surface of a forming crystal thereby blocking at least one dimension of directional growth of a crystal lattice of the forming crystal).
Regarding claim 22, Yamaguchi discloses the method according to claim 20, wherein adsorbing the polymaleic acid copolymer onto the surface of the forming crystal alters a size and a shape of crystals that precipitate from the aqueous system. (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. It would have been obvious that Yamaguchi’s polymeric antiscale agent suppresses calcium carbonate scale by interacting with forming calcium carbonate crystal/crystalloids, including adsorption onto forming crystal surfaces. Because adsorption of a polymeric antiscalant onto a forming crystal surface would interfere with normal crystal growth and precipitation, it would have been obvious that such adsorption would alter the size and shape of the crystals that precipitate from the aqueous system).
Regarding claim 23, Yamaguchi discloses the method according to claim 20, wherein adsorbing the polymaleic acid copolymer onto the surface of the forming crystal results in at least partial dissolution of a resulting crystal lattice and at least partial solubilization of mineral scale in the aqueous system. (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. It would have been obvious that Yamaguchi’s polymeric antiscale agent suppresses calcium carbonate scale by interacting with forming calcium carbonate crystal/crystalloids, including adsorption onto forming crystal surfaces. Because adsorption of a polymeric antiscalant onto a forming crystal surface would result in at least partial dissolution of a resulting crystal lattice and at least partial solubilization of mineral scale in the aqueous system.)
Regarding claim 24, Yamaguchi discloses the method according to claim 20, wherein adsorbing the polymaleic acid copolymer onto the surface of the forming crystal reduces a number of planar faces on crystals that precipitate from the aqueous system. (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. It would have been obvious that Yamaguchi’s polymeric antiscale agent suppresses calcium carbonate scale by interacting with forming calcium carbonate crystal/crystalloids, including adsorption onto forming crystal surfaces and thereby reduces a number of planar faces on crystals that precipitate from the aqueous system).
Regarding claim 25, Yamaguchi discloses the method according to claim 20, wherein adsorbing the polymaleic acid copolymer onto the surface of the forming crystal reduces a surface area of planar faces on crystals that precipitate from the aqueous system. (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. It would have been obvious that Yamaguchi’s polymeric antiscale agent suppresses calcium carbonate scale by interacting with forming calcium carbonate crystal/crystalloids, including adsorption onto forming crystal surfaces and thereby reduces a surface area of planar faces on crystals that precipitate from the aqueous system).
Regarding claim 26, Yamaguchi discloses the method according to claim 20, wherein adsorbing the polymaleic acid copolymer onto the surface of the forming crystal produces a rounded crystal that exhibits a lower contact area with a receiving surface, thereby hindering adhesion. (As discussed in the rejection of claim 7, Yamaguchi teaches using an acid-type maleic acid polymer/copolymer as a water-treating antiscale agent and demonstrates calcium carbonate scale suppression in an aqueous system. As discussed with respect to claim 20, it would have been obvious that Yamaguchi’s polymeric antiscale agent suppresses calcium carbonate scale by interacting with forming calcium carbonate crystal/crystalloids, including adsorption onto forming crystal surfaces. Because adsorption of a polymeric antiscalant onto a forming crystal surface would interfere with normal directional crystal growth and crystal morphology, it would have been obvious that such adsorption would produce altered crystal structures, including rounded and less planar crystals having reduced contact area with receiving surfaces).
Regarding claim 27, Yamaguchi discloses the method according to Claim 7, wherein the polymaleic acid copolymer is prepared by aqueous polymerization of maleic acid monomer components under conditions selected to promote decarboxylation of a portion of the maleic acid monomer components during polymerization (Yamaguchi teaches producing an acid-type maleic acid polymer/copolymer by polymerizing maleic acid, or maleic acid with another water soluble unsaturated monomer, in aqueous solution in the presence of metal ions and hydrogen peroxide as the polymerization catalyst teaching that the polymerization evolves carbon dioxide as a result of decarbonization from maleic acid), the conditions comprising adjustment of at least one process parameter selected from reaction temperature (Yamaguchi col. 7-8), concentration of a metal catalyst, concentration of hydrogen peroxide (Yamaguchi col. 7), and reaction additives.
Regarding claim 28, Yamaguchi discloses the method according to Claim 7, wherein the polymaleic acid copolymer comprises at least approximately 10 percent by weight of in situ formed co-monomers (Yamaguchi does not expressly disclose the polymaleic acid copolymer having at least approximately 10 percent by weight of in situ formed co-monomers, however, Yamaguchi (col. 4) discloses the range of optional comonomers extends from 50-0.1 wt. % which includes 10 percent by weight of in-situ formed comonomers), wherein the in situ formed co-monomers include at least approximately 10 percent by weight of decarboxylated maleic acid. molar % decarboxylated maleic acid repeating units. (Yamaguchi does not expressly disclose in situ formed co-monomers include at least approximately 10 percent by weight of decarboxylated maleic acid, however, Yamaguchi col. 4 discloses that monomer A comprises 50-99.9 wt. % of maleic acid and further discloses that decarbonization of maleic acid occurs during polymerization and that the amount of decarbonization/carboxyl content may be controlled by controlling the amount of hydrogen peroxide added. Thus, Yamaguchi identifies the degree of decarbonization/carboxyl content as a result-effective variable affecting the physical properties and performance of the acid-type maleic acid polymer. Selecting a decarboxylation level of at least 10 molar% would have amounted to routine optimization of Yamaguchi’s disclosed decarbonization-controlled polymerization process to obtain a desired polymer composition and antiscale performance.)
Regarding claim 29, Yamaguchi discloses the method according to Claim 7, wherein the polymaleic acid copolymer remains soluble and retains crystal habit modification and threshold inhibition functionality in an aqueous system due to electrostatic repulsion along the copolymer backbone provided by di-carboxylic acid groups. (Yamaguchi teaches acid-type maleic acid polymers/copolymers having maleic-acid-derived carboxylic acid groups along the polymer backbone and being useful as water-treating agents and antiscale agents. The recited electrostatic repulsion along the copolymer backbone provided by di-carboxylic acid groups is an inherent and expected property of such a carboxylated polymaleic acid copolymer in an aqueous system, because the carboxylic acid/carboxylate groups along the polymer backbone carry like charges under aqueous treatment conditions and repel one another. Likewise, the retained solubility and scale-control functionality are expected properties and intended results of using Yamaguchi’s water-soluble maleic acid polymer/copolymer as a water-treating antiscale agent.
Regarding claim 30, Yamaguchi discloses the method according to Claim 7, wherein the method is performed by introducing the polymaleic acid copolymer to the aqueous system as a treatment additive effective to prevent or remediate mineral scaling (Yamaguchi col. 14, claim 11 and throughout).
Regarding claim 31, Yamaguchi discloses the method according to Claim 7, wherein the polymaleic acid copolymer is formulated with at least one phosphonate selected from 2-phosphonobutane-1,2,4-tricarboxylic acid (PBTC) (Yamaguchi col. 7 lines 15-16) and 1-hydroxyethylidene-1,1-diphosphonic acid (HEDP), thereby improving threshold inhibition performance.
Regarding claim 33, Yamaguchi discloses a method comprising: modifying a crystal habit of an inorganic compound in an aqueous system with a polymaleic acid copolymer having at least 5 molar % decarboxylated maleic acid repeating units (Yamaguchi teaches or renders obvious using an acid-type maleic acid polymer/copolymer having controlled decarbonization as a water-treating antiscale agent in an aqueous system, see rejection of claim 7 for greater detail), wherein the polymaleic acid copolymer has a molecular weight between 300 and 3,000 Daltons (Yamaguchi col. 4 teaches the molecular-weight range of 300-5000, preferably 400-3000).
Regarding claim 34, Yamaguchi discloses the method according to Claim 33, wherein the polymaleic acid copolymer comprises maleic acid at greater than 50 molar percent (Yamaguchi col. 4 teaches the maleic acid comprises 50-99.9 wt. %), maleic anhydride at up to 5 molar percent (Yamaguchi col. 2 and in various examples teaches using maleic anhydride and discloses that maleic anhydride readily forms maleic acid in aqueous solution), acrylic acid at up to 50 molar percent (Yamaguchi col. 5 line 14 teaches acrylic acid as a suitable water soluble comonomer (component B) which is from 50-0.1 wt. % (col. 4)), and a 2-carbon alkane group at up to 50 molar percent, the 2-carbon alkane group being formed by decarboxylation of maleic acid monomer components during polymerization (Yamaguchi further teaches that decarbonization occurs during polymerization, that the degree of polymerization may be controlled by hydrogen peroxide amount, and that NMR evidence indicates acrylic acid-type structure originating from decarbonization during polymerization (col. 16 lines 15-21)).
Regarding claim 35, Yamaguchi discloses a method comprising: modifying a crystal habit of an inorganic compound in an aqueous system with a polymaleic acid copolymer (Yamaguchi claim 11 discloses a water-treating agent which is an antiscale agent. Antiscalants can modify crystal habits by interacting with process ions or crystals during formation, which can influence the nucleation, growth, and morphology of the crystals) having at least 5 molar % decarboxylated maleic acid repeating units (Yamaguchi further teaches that decarbonization occurs during polymerization, that the degree of polymerization may be controlled by hydrogen peroxide amount), wherein the polymaleic acid copolymer comprises maleic acid at greater than 50 molar percent, maleic anhydride at up to 5 molar percent, acrylic acid at up to 50 molar percent (Yamaguchi col. 4 teaches the maleic acid comprises 50-99.9 wt. %), and a 2-carbon alkane group at up to 50 molar percent, the 2-carbon alkane group being formed by decarboxylation of maleic acid monomer components during polymerization (Yamaguchi further teaches that decarbonization occurs during polymerization, that the degree of polymerization may be controlled by hydrogen peroxide amount, and that NMR evidence indicates acrylic acid-type structure originating from decarbonization during polymerization (col. 16 lines 15-21)).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US5135677) as applied to claim 7 above, and further in view of Ferguson "Formulating for Cost Performance".
Regarding claim 32, Yamaguchi discloses the method according to claim 7.
Yamaguchi does not expressly disclose wherein the polymaleic acid copolymer is formulated with 2-phosphonobutane-1,2,4-tricarboxylic acid (PBTC) at a copolymer-to-PBTC ratio of about 3:1.
Ferguson teaches formulating polymaleic acid/PBTC blends for calcium carbonate scale control at the claimed copolymer-to-PBTC ratio of about 3:1. Specifically, Ferguson teaches that treatment programs may be optimized by selecting potential ingredients, optimizing individual component dosages, considering improvements such as blending polymaleic anhydride with phosphonates to extend useful operating limits for cycles, pH, and temperature, and comparing cost performance. Ferguson further teaches that in the “stressed CaCO3 zone” the PBTC:PMA treatment approach would be the treatment of choice and evaluates blends at 3:1, 1:3 and 1:1 ratios.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date of the claimed invention to modify Yamaguchi’s polymaleic acid copolymer treatment composition to include PBTC at a copolymer-to-PBTC ratio of about 3:1, as taught by Ferguson, because Yamaguchi teaches a polymaleic acid polymer/copolymer useful as a water-treating antiscale agent and further identifies PBTC as a useful phosphonate chelating agent, while Ferguson teaches that PBTC/PMA blends were known treatment approaches for stressed calcium carbonate scale-control conditions and that such blends could be optimized at known formulation ratios including PMA:PBTC 3:1. The motivation would have been to improve calcium carbonate scale-control/threshold inhibition performance and extend the useful operating limits of the treatment program by combining a known polymeric antiscalant with a known phosphonate scale-control agent in a known optimized blend ratio.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-8, 19 and 30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-8, 17 and 21-25 of copending Application No. 18/125,937 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 7 recites a method comprising modifying a crystal habit of an inorganic compound in an aqueous system with a polymaleic acid copolymer having at least 5 molar % decarboxylated maleic acid repeating units. Copending claim 8 of Application 18/125,937 recites a method of treating cooling towers, the method comprising adding a treatment composition to a cooling tower to modify a crystal habit of an inorganic compound in the cooling tower, wherein the treatment composition comprises a copolymer having at least 5 molar % decarboxylated maleic acid repeating units. Although claim 8 is directed specifically to cooling towers, cooling towers are aqueous systems and are expressly included in instant claim 8. As such, the claims are not patentably distinct.
Claim 8 recites the aqueous system is selected from the group consisting of industrial water systems, boilers, cooling towers, evaporators, digestors, membranes, thermal desalination systems, recreational water systems, swimming pools, spas, hot tubs, decorative fountains, potable water systems, reverse osmosis membranes, filtration systems, top-side oil systems, down-hole oil systems, top-side gas systems, down-hole gas systems, squeeze treatments, flood treatments, drilling systems, fracturing applications, mining systems, pulp-and-paper systems, sugar evaporators, ethanol evaporators, household cleaning systems, laundry systems, and textile processing systems. Copending claim 8 of Application 18/125,937 is directed to cooling towers, which are expressly included in the group recited by instant claim 8. Thus, the difference between the claims is merely that the copending claim recites a species of the aqueous systems recited in the instant claim.
Claim 19 recites that the inorganic compound is selected from the group consisting of calcium carbonate, calcium sulfate, barium sulfate, strontium sulfate, calcium fluoride, calcium oxalate, calcium phosphate, an iron oxide, an iron hydroxide, silica, and a silicate. Copending claim 7 of Application 18/125,937 recites the same group and is not patentably distinct from instant claim 19.
Claim 30 recites the method is performed by introducing the polymaleic acid copolymer to the aqueous system as a treatment additive effective to prevent or remediate mineral scaling. Copending claim 8 recites adding the treatment composition to a cooling tower to modify a crystal habit, and copending claim 17 further recites adding the treatment composition at a dosage selected so that precipitated inorganic compounds exhibits a modified crystal habit resulting in reduced adhesion to heat transfer surfaces. These limitations are not patentably distinct from introducing the same copolymer treatment additive to prevent or remediate mineral scaling.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 27 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 18 of copending Application No. 18/125,949 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 27 recites that the polymaleic acid copolymer is prepared by aqueous polymerization of maleic acid monomer components under conditions selected to promote decarboxylation of a portion of the maleic acid monomer components during polymerization, the conditions comprising adjustment of at least one process parameter selected from reaction temperature, concentration of a metal catalyst, concentration of hydrogen peroxide, and reaction additives. Copending claim 1 of Application 18/125,949 recites preparing in-situ a substantially maleic acid copolymer by polymerizing at least a portion of a plurality of maleic acid monomer components, increasing decarboxylation during said polymerizing, forming in-situ a copolymer molecule comprising at least one decarboxylated portion and at least 5 molar percent non-carboxylated monomeric repeating units. Copending claim 2 recites aqueous polymerization and copending claim 3 recites adjusting one or more reaction parameters selected from the group of temperature, metal catalyst concentration, hydrogen peroxide concentration, and other reaction additives. Copending claim 18 further recites wherein said polymerizing is carried out by aqueous free-radical polymerization. Accordingly, claim 27 of the instant application is not patentably distinct from the claims of copending Application 18/125,949.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/W.A.G./Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
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