DETAILED ACTION
Applicant’s reply filed 7 May 2026 in response to the non-final Office action mailed 7 January 2026, has been fully considered. As per Applicant’s filed claim amendments claims 38-42 and 46 are pending under examination, wherein: claims 38 and 42 have been amended, claims 39-41 are as previously presented, claims 46 is new, claims 1-25 and 45 have been cancelled by this and/or prior amendment(s), and claims 26-37 and 43-44 are withdrawn.
Claim Rejections - 35 USC § 103
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.
Claims 38-42 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Marukame et al. (JP 2019203178A; using Clarivate Analytics machine translation for English language citations) in view of Lee (US 4,289,815).
Regarding claims 38-39 and 46, Marukame teaches metal fatigue resistance adding agent compositions, suitable to be added to cooling waters for aqueous systems in contact with metal (abstract; pg3 (9),(10)). Marukame teaches the compositions comprise: a component a) present from 1 to 40 mass% of a carboxylic acid or salt (abstract; pg2 (1),(2); pg4); a component b) present from 1 to 10 mass% of a compound selected from a Group 6 element oxoanion, a tin compound, a manganese compound, or a calcium compound (abstract; pg2 (3),(4); pg4-5); a component c) present from 1 to 50 mass% of an amine compound (abstract; pg2 (6),(7), structures; pg5); optional additives (pg5); and may be used as-is(stock solution) (i.e. concentrate: meets ‘less than 20% water by volume’, a range including zero) or may be diluted with a solvent such as water, methanol, ethanol, etc. (pg 5, bottom).
Marukame teaches component a) is preferably gluconic acid in the form of its metal salt, most preferably sodium (pg4,top; exemplified). Marukame teaches component b) is preferably an oxoanion of Group 6, preferably selected from molybdenum and tungsten, specifically including sodium molybdate (pg4; exemplified). Marukame teaches the component c) is an amine selected from morpholine, cyclohexylamine, tetraethylenepentamine, compounds of formula (I) and compound of formula (II), including diethanolamine, triethanolamine, butoxypropylamine, etc. (pg2-3 (6),(7); pg5). As such, Marukame teaches compositions comprising a stock solution of a) 1-40 mass% sodium gluconate, b) 1-10 mass% sodium molybdate, c) 1-50 mass% amine, and optional additives or diluents. While Marukame teaches mass% and not volume% (as claimed) the amounts of Marukame are sufficient to substantially overlap with and render taught instant ‘at least 30% by volume’ amine, ‘at least 5% by volume’ sodium molybdate, ‘at least 5% by volume’ sodium gluconate, and ‘less than 20% by volume water’ (where the range includes zero).
Marukame teaches forming the metal fatigue resistance solutions and adding them to the flow path of the cooling water system or bringing them into contact with the site of stress (pg6-7; examples). Marukame does not specifically teach encapsulation in a water-soluble film or a container (claims 38 and 46) or polyvinyl alcohol film (claim 39). However, Lee demonstrates it is long known to encapsulate active ingredients for treatment of an aqueous system in a sealed envelope of cold water-insoluble polyvinyl alcohol (abstract; col 2; col 3 ln 50-65)(instant encapsulated in film (claim 38); pouch also being readable over instant ‘container’ (claim 46)) and then introduce the pouches to the aqueous environment being treated (col 4 ln13-15; examples). Lee teaches doing so provides for substantially uniform, controlled release of ingredients, allowing for a zero-order release pattern which meters active ingredients to the surrounding aqueous medium via diffusion at a constant rate for a prolonged and controllable period of time (col 2 ln 22-55). Lee and Marukame are analogous art and are combinable because they are concerned with the same technical feature, namely water treating compositions placed in contact with the aqueous medium being treated. At the time of filing a person having ordinary skill in the art would have found it obvious to incorporate into a water soluble PVA pouch as taught by Lee the compositions of Marukame and would have been motivated to do so as Lee teaches it is well-known to do so and further that such allows for uniform and controlled release of ingredients for a prolonged and controllable period of time.
Marukame teaches the components are combined to form the composition (examples) but does not specifically teach a ‘homogeneous cream’. However, Marukame teaches the exact same claimed components, present in the claimed amounts, and teaches a substantially similar method of mixing the components together. It is held that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
The compositions as taught by Marukame include application to aqueous systems in contact with metal like cooling water systems. The recitation that the basic formulation containing said composition is to be used in protecting a central heating system does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions. This includes claims 39-42 as they incorporate all of the limitations of claim 38, from which it depends (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claims 40-42, Marukame in view of Lee renders obvious the composition as set forth above. Marukame further teaches the above noted stock solution of a) 1-40 mass% sodium gluconate, b) 1-10 mass% sodium molybdate, c) 1-50 mass% amine, and optional additives or diluents. While Marukame teaches mass% and not volume% (as claimed) the amounts of Marukame are sufficient to substantially overlap with and render taught instant ‘at least 40% by volume’ amine, ‘at least 10% by volume’ sodium molybdate, ‘at least 10% by volume’ sodium gluconate, and ‘at most 15% by volume water’ (where the range includes zero).
Response to Arguments/Amendments
The 35 U.S.C. 112(b) rejection of claims 38-42 is withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 112(d) rejection of claim 42 is withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejection of claims 38-42 as unpatentable over Marukame (JP 2019203178 A) in view of Lee (US 4,289,815) is maintained. Applicant’s arguments (Remarks, pages 7-11) have been fully considered but were not found persuasive.
Applicant asserts (Remarks, pages 7-8) the Examiner has advanced an inherency argument regarding the claimed range of water as met by Marukame. This is not the basis of the rejection.
Firstly, it is noted that the claimed range of less than 20 vol% water is a range that includes zero vol%. Secondly, it is noted that Marukame requires only three components: a) the carboxylic acid-salt (preferred gluyconic acid sodium salt = instant sodium gluconate), b) the Group 6 oxoanion (preferred and exemplified as sodium molybdate = instant sodium molybdate), and c) the amine (= instant amine), where all other components are recited as optional. Marukame further teaches the composition may be used as is (a stock solution) where the stock solution contains only the required components, or the solution may then be diluted but again, dilution is optional (pg5).
Secondly, Applicant admits “in this context, “stock solution” means nothing more than the agent as-prepared prior to optional further dilution”. Applicant’s conclusion that “it carriers no implication that the water content is low or near zero” is incorrect and not in line with the explicit teaching of Marukame Applicant themselves admits to i.e. that the “stock solution” means nothing more than the agent as-prepared prior to optional further dilution. If Marukame teaches a composition requiring only components a), b) and c) (none of which is water), teaches that as-prepared solution is a complete composition (no water taught as included), and teaches any dilution is optional (water not required; dilution not required), then Marukame meets the claimed recitation of “less than 20 % water by volume”.
Applicant’s assertion that Marukame lists water as an optional diluent “confirms that the stock solution is itself an aqueous composition” lacks factual support. One could just as easily select from one of the other also optional diluents listed by Marukame of ethanol (for example) and conclude that the stock solution is therefore an alcoholic composition which still does not require water and therefore still meets the instant claim. Or, one could select the explicit embodiment of Marukame of an as-is stock solution (no water, no diluent, etc.). Simply put, Applicant’s interpretation of Marukame is inaccurate and not in line with the teachings of the reference i.e. that water is not required and is at best optional.
Applicant argues the examples of Marukame. It is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (see MPEP 2123; see Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). The example of Marukame relied upon by Applicant of a diluted composition does not serve to negate the broader teachings of Marukame.
Applicant argues (Remarks, pages 8-9) that the Examiner’s reliance on MPEP 2112.01 to meet the recitation that the composition is a homogeneous cream is “misplaced”. Applicant basis this on an assertion that one of ordinary skill ‘understands’ that the solution of Marukame contains “a high percentage of water and is not a cream”. This, as noted above, is not what Marukame teaches. As Marukame teaches the claimed components, present in the claimed amounts, and obtained by a substantially similar method, one of ordinary skill would necessarily expect a similar result i.e. a homogeneous cream. Applicant has not provided any evidence that such is not the case.
Applicant argues (Remarks, page 9) that Marukame fails to disclose the ‘specific combination of compounds’ and asserts that each of the required components A, B and C is defined by “a long list of alternatives” which results in an insurmountable number of combinations and thus constitutes improper hindsight by the Examiner.
Firstly, Marukame provides sufficient direction to one of ordinary skill in the art to arrive at the instant invention with a more than reasonable expectation of success. Marukame teaches: component a) is preferably gluconic acid in the form of a metal salt, most preferably sodium (pg4; also exemplified as a preferred component a) ); component b) is preferably a Group 6 oxoanion selected from molybdenum and tungsten, specifically sodium molybdate (pg4; also exemplified as a preferred component b)); and component c) is an amine (pg 2-3; pg 5) where any amine meets the instant claim. Applicant’s assertion that the genus of Markumake is ‘neither small nor well-delineated’ appears to be a difference of opinion arising from an overly narrow interpretation and ignores the direction provided by Marukame.
Secondly, in response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues (Remarks, pages 9-11) the claimed amounts are not likely met as the ranges of Markuame are not ‘sufficiently specific’ to meet the ‘narrow ranges claimed’. Firstly, Applicant’s claimed ranges are not narrow (claim 1: at least 30% with no upper limit; at least 5% with no upper limit; at least 5% with no upper limit; less than 20% including zero). Secondly, Marukame teaches ranges in mass% of the claimed components which are sufficiently and substantially overlapping and teaches the very same components as claimed. Applicant’s assertion that composition-specific density analysis would be required does not serve to prove that Marukame who teaches the same components in the disclosed ranges of mass% would not convert to vol% ranges that meet the instant claims. Again, Applicant’s assertion of too many combinations lacks merit as does Applicant’s assertion of water content.
Applicant argues (Remarks, pages 10-11) that the secondary reference of Lee “says nothing about how to reduce the water concentration of a corrosion inhibitor to a level low enough for that packaging system to work”. The Examiner notes that the secondary reference of Lee was not relied upon to do so, does not have to teach such and further that the primary reference of Marukame meets the claimed water content.
Applicant argues that the combination of Lee and Marukame does not lead to the instant invention because Lee teaches cold water-insoluble PVA film. The Examiner notes that one of ordinary skill would understand that “cold water-insoluble” means only that the PVA film is not soluble in cold water and does not mean that the film is otherwise insoluble, i.e. in warm or hot water, where ‘cold’ is specified only as the temperature at which it will not dissolve in water. Lee further teaches one-shot polyvinyl alcohol versions are well known (col 1). Applicant’s assertion that the compositions envisaged by Marukame cannot be encapsulated by the films of Lee, would be unstable, or would require substantial dilution so as to dissolve the film they are placed in appears to be mere assertion lacking support and ignores the direction provided by the cited arts.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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