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 .
Response to Amendment
Applicant’s arguments filed 12/03/2025 have been entered. Claims 1, 3-7, 9-14, 17-27 are pending in the application, claims 6-7, 10-14, 26-27 are withdrawn, the 112 rejections previously set forth are withdrawn in view of the arguments and amendment.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
Applicant argues the claimed ratio weight ratio recited in claim 1 achieves unexpectedly good results and point to Table 2 of the instant specification for support, and that it would not have been obvious to modify Molony with Jakob’s ratio as Jakob’s ratio is used in the specific context of a corrosion system comprising additional components, examiner notes applicant’s arguments and the data are not commensurate in scope with the scope of the present claims. Claim 1 requires an additive comprising about 1-40 wt% biochelant comprising glucaric acid, gluconic acid, salts thereof, or combinations thereof, a sulfide scavenger comprising MEA-triazine, MMA-triazine or combinations thereof, and wherein a weight ratio of biochelant to sulfide scavenger is from about 1:5 to about 1:10, the claim language does not limit any additional components to the additive, sulfide scavenger, or chelant. Moloney teaches a composition to reduce corrosion for metal surfaces in a water system which prevents corrosion of metal surfaces and also prevents microbial/biofilm growth (0010-0014), including cooling water systems (0240), using corrosion control agents including gluconic acids (0053-0061), and sodium gluconate (0147), and sulfide scavengers including MEA and MMA triazines (0109, 0305), about 0.1-25 wt% chelant (Table 2), and about 1 to about 50 wt-% sulfide scavenger (0109). Additionally, it is unclear how a composition with 40 wt % chelant can have a weight ratio of chelant to sulfide scavenger of 1:5 to 1:10. Additionally, while Molony does not teach the recited ratio, as noted below, the ratios in the recited range of triazines (sulfide scavengers) to gluconates (chelants) are known in the art as shown by Jakob and Jakob teaches that triazines show their greatest utility in combination with other materials and provide improved corrosion.
Claim Interpretation
The instant specification discloses the prefix "bio" indicates that the chemical is produced by a biological process such as using an enzyme catalyst [0021], examiner notes “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 art product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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.
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.
Claims 1, 3-5, 9, 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney (US PG Pub 2022/000217), with evidence from Cox (9,701,556), applicant provided prior art, in view of Jacob (US 4,061,589).
With respect to claim 1, Moloney teaches a composition to reduce corrosion for metal surfaces in a water system which prevents corrosion of metal surfaces and also prevents microbial/biofilm growth (0010-0014), a multifunctional additive, the composition comprises a chelant ((0120, a biochelant) see claim interpretation with respect to biochelant) the chelant can be biodegradable (0145-0149) and a sulfide scavenger (0305).
Additional limitations: from about 1 wt.% to about 40 wt.% of a biochelant based on the total weight of the additive, wherein the biochelant comprises glucaric acid, gluconic acid, salts thereof, or combinations thereof: and from about 0.1 weight percent (wt.%) to about 50 wt.% of a sulfide scavenger based on the total weight of the additive, wherein the sulfide scavenger comprises MEA-triazine (monoethanoloamine), MMA-triazine (methyl methacrylate), or a combination thereof.
Moloney teaches the chelant includes sodium gluconate (0147), examiner notes sodium gluconate is the sodium salt of gluconic acid (as evidenced by Cox, Cox teaches sodium gluconate is the sodium salt of gluconic acid (C5/L19-20), the biochelant comprises glucaric acid, gluconic acid, salts thereof, or combinations thereof), 0.1-25 wt% chelant (Table 2, about 1 wt.% to about 40 wt.% based on the total weight of the additive, see MPEP 2144.05 in the case of overlapping ranges a case of prima facie obviousness exists).
Moloney teaches the composition can comprise a sulfide scavenger, suitable sulfide scavengers include, but are not limited to, triazines (e.g., monoethanolamine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof) (0109, 0305), the sulfide scavenger comprises MEA-triazine (monoethanoloamine), MMA-triazine (methyl methacrylate) or a combination thereof, and the composition can comprise from about 1 wt-% to about 50 wt-%, about 0.1 wt-% to about 10 wt-%, sulfide scavenger, based on total weight of the composition (0109, the sulfide scavenger is present in an amount of from about 0.1 weight percent (wt.%) to about 50 wt.% based on the total weight of the additive).
Applicant amended to require: wherein a weight ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:15.
Moloney teaches a composition to reduce corrosion for metal surfaces in a water system which prevents corrosion of metal surfaces and also prevents microbial/biofilm growth (0010-0014), including cooling water systems (0240), using corrosion control agents including gluconic acids (0053-0061), and sodium gluconate (0147), and sulfide scavengers including triazines (e.g., monoethanolamine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof) (0109, 0305), as discussed above, about 0.1-25 wt% chelant (Table 2), and about 1 wt-% to about 50 wt-%, scavenger, (0109). However, Moloney does not explicitly teach a weight ratio of biochelant (gluconate) to sulfide scavenger (triazine) present in the multifunctional additive is from about 1:5 to about 1:15.
Jakob teaches corrosion inhibitors for cooling water systems comprising triazines (abstract), the composition comprising about 1-20 weight percent alkali metal gluconate or salts thereof (C3/L7-10, about 1 wt.% to about 40 wt.% of a gluconic acid, salts thereof), in the preferred embodiment the composition of with the gluconate in a weight ratio of 0.3 to 30 parts to 1 part of the triazine group member (C7/L7-39, a weight ratio of biochelant (gluconate) to sulfide scavenger (triazine) present in the multifunctional additive is from about 1:5 to about 1:15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Moloney’s taught composition to include gluconate in a weight ratio of 0.3 to 30 parts to 1 part of the triazine group member as taught by Jacob as according to Jakob the triazines while having corrosion inhibitive properties, show their greatest utility in combination with other materials and provide improved corrosion rates (C7/L3-6, C5/L45-66, Table 2).
With respect to claims 3-5, the additive of claim 1, is taught above. Moloney teaches sodium gluconate (0147), see instant specification example 1, sodium gluconate a salt of gluconic acid, a uronic acid, wherein the biochelant comprises an aldonic acid, uronic acid, aldaric acid or combinations thereof, sodium a counter cation, an alkali metal, an alkali earth metal or combinations thereof, the counter cation comprises sodium, potassium, magnesium, calcium, strontium, cesium or combinations thereof. Additionally, Jakob teaches sodium and potassium gluconate (C3/L7-10).
With respect to claim 9, the additive of claim 1, is taught above. Moloney teaches the composition can comprise a hydrogen sulfide scavenger, suitable sulfide scavengers include, but are not limited to, triazines (e.g., monoethanolamine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof) (0109, 0305) the sulfide scavenger comprises an amine-based scavenger, the sulfide scavenger comprises MEA-triazine (monoethanoloamine), MMA-triazine (methyl methacrylate) or a combination thereof.
With respect to claim 17, the additive of claim 1 is taught above. Moloney teaches corrosion inhibitors (0074-0094), a corrosion inhibitor.
With respect to claims 18 and 19, the additive of claim 17 is taught above. Moloney teaches the composition can comprise a cationic surfactant (0115, the corrosion inhibitor comprises a cationic film-forming surfactant) cationic surfactants include alkylamines and their salts, alkyl imidazolines, ethoxylated amines, quaternaries, such as alkylbenzyldimethylammonium salts, alkyl benzene salts, heterocyclic ammonium salts, tetra alkylammonium salts, and the like (0204-0210, selected from the group consisting of acetylenic alcohol, amines, cocoamines, amine salts, amide salts, tallow alkyl, ethoxylated alkyl amines, fatty acid amides, ethoxylated amines, phosphate esters, phosphate esters of alkyl phenyl ethoxylate, propargyl alcoho, quaternary amine compounds, quaternary ammonium compounds, tall oil, diethanolamine, imidazolines, fatty acid derived imidazolines, quinolones, thiazoles, triazole, pyrazoles, derivatives thereof and combinations thereof).
With respect to claim 20, the additive of claim 17 is taught above. Moloney teaches the composition can comprise from about 0.1 wt-% to about 20 wt-%, of the one or more additional corrosion inhibitors, based on total weight of the composition (0075, the corrosion inhibitor is present in an amount of from about 1 wt.% to about 20 wt.% based on the total weight of the additive).
With respect to claim 21, the additive of claim 1 is taught above. Moloney teaches the composition comprising a scale inhibitor (0105).
With respect to claim 22, the additive of claim 21 is taught above. Moloney teaches scale inhibitors include, but are not limited to, phosphates, phosphate esters, phosphoric acids, phosphonates, phosphonic acids, polyacrylamides, salts of acrylamidomethyl propane sulfonate/acrylic acid copolymer (AMPS/AA), phosphinated maleic copolymer (PHOS/MA), mono-, bis- and oligomeric phosphinosuccinic acid (PSO) derivatives, polycarboxylic acid, hydrophobically modified polycarboxylic acid, and salts of a polymaleic acid/acrylic acid/acrylamidomethyl propane sulfonate terpolymer (PMA/AA/AMPS) (0105) the scale inhibitor comprises organic acids, phosphate esters, poly/orthophosphates, phosphonates polymeric organic acids, polycarboxylics, aminotrimethylene phosphonic acid (ATMP), 1-hydroxyethylidene-1,1- diphosphonic acid (HEDP), hydrolyzed polymaleic anhydride (HPMA), 2- hydrophosphonocarboxylic (HPAA), polyamino polyether phosphonate(PAPEMP), aminoethlethanolamine (AEEA), diethylenetriaminepenta-methylenephosphonic acid(DETPMP), bis(hexamethylene triamine penta (methylene phosphonic acid) (BHMT), diethylene triamine penta (methylene phosphonic acid) (BTPMP), hexamethylenediamine tetramethylene phophonic acid (HMDP), 2-phosphonobutane- 1,2,4-tricarboxylic acid (PBTC), polymacrylates, maleic acid, polyaspartic acid, sodium aspartic acid, phosphinocarboxylates, acrylic acid-2-acrylamido-2-methylpropane sulfonic acid (AA-AMPS), phosphonate esters, cocamines, fatty acid amides, fatty acid- derived imidazoles, acetylenic alcohol, thiazoles, triazoles, pyrazoles, pyridine, nitrilotris (methylene) tri phosphonic acid (NTP), pentaethylene hexamineoctakis - (methylene phosphonic acid) (PEHOMP), sodiumhexamethylphosphate (SHMP), sodium tripolyphosphate (STP), tetrasodium pyrophosphate (TSPP), bis(hexamethylene triamine penta (methylene phosphonic acid) (BHMT), 1-hydroxyethylidene-1,1- diphosphonic acid (HEDP), derivatives thereof or any combinations thereof.
With respect to claim 23, the additive of claim 21 is taught above. Moloney teaches from about 0.1 wt-% to about 20 wt-%, from about 0.5 wt-% to about 10 wt-%, or from about 1 wt-% to about 5 wt-% of a scale inhibitor, based on total weight of the composition (0105), the scale inhibitor is present in an amount of from about 1 wt.% to about 20 wt.% based on the total weight of the additive.
With respect to claims 24 and 25, the additive of claim 1 is taught above. Moloney teaches dilution of the composition by a diluent such as water or carrier solvent (0132) further comprising a solvent, the solvent comprises water, methanol, ethanol, propanol, butanol, pentanol, isopropanol, ethylene glycol, propylene glycol or combinations thereof.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEANNIE MCDERMOTT whose telephone number is (571)272-4479. The examiner can normally be reached Monday - Friday 8:30 - 5:00 EST.
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/JEANNIE MCDERMOTT/Examiner, Art Unit 1777
/BRADLEY R SPIES/ Primary Examiner, Art Unit 1777