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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/18/2026 has been entered. Claims 1, 3-7, 9-14, 17-27 are pending in the application.
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 Claims 1, 3-7, 9-14, 17-27 are pending in the application, claims 6-7, 10-14, 26-27 are withdrawn, the 112 rejections previously set forth are withdrawn in view of the arguments and amendment.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 05/18/2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding Jacob are moot, see modified rejections below.
With respect to applicant’s arguments concerning unexpected results, see MPEP 716.02 for details regarding allegations of unexpected results. The burden of establishing results are unexpected and significant falls on applicant. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims, and must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” The rejections below in view of Molony and Bennett each teach compositions comprising gluconates and scavengers comprising triazines, the table cited by applicant is comparing a scavenger alone to scavenger + chelant, each of Bennett and Molony provide gluconates with triazine scavengers. Additionally, examiner notes the recited limitations of a chelant comprising glucaric acid, gluconic acid, salts thereof, or combinations thereof and sulfide scavenger comprises MEA-triazine (monoethanoloamine), MMA-triazine (methyl methacrylate), or a combination thereof do not appear to be commensurate in scope to the data provided in the specification. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
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 Bennett (US PG Pub 2018/0148632).
With respect to claim 1, Bennett teaches a composition for inhibiting corrosion and/or removing deposits (abstract, a multifunctional additive), comprising an iron sulfide dissolver comprising glucaric acid, gluconic acid, glucuronic acid or salts thereof, or a combination thereof, preferably comprising gluconates (0011, 039, 0048, a biochelant comprises glucaric acid, gluconic acid, salts thereof, or combinations thereof), and examples with compositions comprising 5-40 wt% sodium gluconate (Table 1, from about 1 wt.% to about 10 weiqht percent (wt.%) of a biochelant 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); the composition can comprise from about 0.5-20 wt% of a sulfide scavenger, scavengers can include triazines (e.g. monoethanolamine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof (0094, from about 5 wt.% to about 65 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, see MPEP 2144.05 in the case of overlapping ranges a case of prima facie obviousness exists).
Examiner notes Bennett’s compositions teach ranges including 5% sodium gluconate and 20% scavenger comprising triazine, such that a weight ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:10 is within the recited range.
Alternatively, Bennett teaches the amount of additional agent or additive, when present, will vary according to the particular composition being manufactured and its intended use as one skilled in the art will appreciate (0101, 0127), and as Bennett teaches compositions comprising 5-40 wt% sodium gluconate, and 0.5-20 wt% of a sulfide scavenger including triazines Bennett teaches the amount of additional agent or additive, when present, will vary according to the particular composition being manufactured and its intended use as one skilled in the art will appreciate, such that the amount of scavenger is a variable that can be modified, among others, depending on the desired use, the ratio of chelant to scavenger would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the recited cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount of scavenger such that the recited ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:10, would be reached through said optimization (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
With respect to claims 3-5, the additive of claim 1, is taught above. Bennett teaches sodium gluconate and allaric acid, altaric acid, altraric acid, altronic acid, arabinaric acid, arabinonic acid, dihomocitric acid, fructuronic acid, fuconic acid, galactaric acid, galactonic acid, galacturonic acid, glucaric acid, glucoheptonic acid, gluconic acid, glucuronic acid, gulonic acid, homocitric acid, homoisocitric acid, idaric acid, idonic acid, iduronic acid, isocitric acid, mannaric acid, mannonic acid, octulosonic acid, rhamnonic acid, ribonic acid, tagaturonic acid, xylonic acid, or xyluronic acid, or a salt or derivative thereof, or a combination thereof (0011, 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.
With respect to claim 9, the additive of claim 1, is taught above. Bennett 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, 0094, 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. Bennett teaches corrosion inhibitors (0015), a corrosion inhibitor.
With respect to claims 18 and 19, the additive of claim 17 is taught above. Bennet teaches the composition can comprise an ionic surfactants (0099-0100, a cationic film-forming surfactant) surfactants include quaternary ammonium compounds, tallow compounds etc. (0099-0100, surfactant 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. Bennet teaches the composition can corrosion inhibitors in an amount of about 5 wt% to about 95 wt%, preferably about 20-30 % (0053, 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, see MPEP 2144.05 in the case of overlapping ranges a case of prima facie obviousness exists).
With respect to claim 21, the additive of claim 1 is taught above. Bennett teaches the composition comprising a scale inhibitor (0086, 0089).
With respect to claim 22, the additive of claim 21 is taught above. Bennett teaches scale inhibitors include, but are not limited to phosphates, phosphate esters, phosphoric acids, phosphonates, phosphonic acids, polyacrylam ides, salts of acrylamidomethyl propane sulfonate/acrylic acid copolymer (AMPS/AA), phosphinated maleic copolymer (PHOS/MA), and salts of a polymaleic acid/acrylic acid/acrylamidomethyl propane sulfonate terpolymer (PMA/AA/AMPS) (0089, 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. Bennet teaches the composition can comprise from about 0.1 to 20 wt. %, from about 0.5 to 10 wt. %, or from about 1 to 10 wt. % of a scale inhibitor (0089, 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. Bennett teaches the composition can include a solvent, solvents include water and alcohols (0082, comprising a solvent, the solvent comprises water, methanol, ethanol, propanol, butanol, pentanol, isopropanol, ethylene glycol, propylene glycol or combinations thereof.
Claims 1, 3-5, 9, 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney (US PG Pub 2022/0002175), with evidence from Cox (9,701,556).
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) and a sulfide scavenger (0305).
Additional limitations: from about 1 wt.% to about 10 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 10 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-%, about 0.5 wt% to about 4 wt % sulfide scavenger, based on total weight of the composition (0109, the sulfide scavenger is present in an amount of from about 5 weight percent (wt.%) to about 65 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).
Additional limitations: wherein a weight ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:10.
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). Molony’s taught ranges overlap with the recited ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:10.
Examiner notes Molony’s compositions teach ranges including 0.1-25 wt% chelant and 0.5 wt-% to about 50 wt % scavenger comprising triazine, such that a weight ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:10 is encompassed in Molony’s taught ranges.
Alternatively, Molony teaches agents or additives will vary according to the specific corrosion control composition being manufactured and its intended use as one skilled in the art will appreciate (0116) and as Molony teaches compositions comprising 0.1-25 wt% chelant, and 0.5-50 wt% of a scavenger including triazines, such that the amount of scavenger is a variable that can be modified, among others, depending on the intended use, the ratio of chelant to scavenger would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the recited ratio cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount of scavenger such that the recited ratio of biochelant to sulfide scavenger present in the multifunctional additive is from about 1:5 to about 1:10, would be reached through said optimization (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
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
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/JEANNIE MCDERMOTT/Examiner, Art Unit 1777
/BRADLEY R SPIES/ Primary Examiner, Art Unit 1777
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