DETAILED ACTION
Applicant’s reply, filed 9 December 2025 in response to the requirement for restriction mailed 10 September 2025, has been fully considered. As per Applicant’s election of Group II, claims 38-42 are pending under examination, claims 26-37 and 43-45 are withdrawn, and claims 1-25 were cancelled by prior amendment(s).
Election/Restrictions
Claims 26-37 and 43-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9 December 2025.
Applicant's election with traverse of Group II, claims 38-42, in the reply filed on 9 December 2025 is acknowledged. The traversal is on the ground(s) that the identified inventions are neither independent nor distinct and that no serious burden exists. This is not found persuasive and Applicant is reminded the instant application is a national stage 371 application and was not subject to US restriction practice rendering Applicant’s arguments not germane as there is no requirement for showing a serious burden under 35 U.S.C. 121. The distinct Groups were identified as lacking unity of invention such that the technical feature noted is not a special one in view of the cited art of Katayama (US 4,512,552; see restriction). Applicant provided no arguments directed to the restriction as was set.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 38-42 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 38, the recitation of “at least 30% or 35% amine by volume” is indefinite. It is not clear if the recitation intended to mean selecting from either “at least 30% or at least 35%” amine by volume, or if the recitation intended to mean selecting from the range of “at least 30% amine by volume” and the discrete value of “35% amine by volume” (see also MPEP 2173.05(c) regarding broad and narrow recitations within the same claim feature). This includes claims 39-42 as they depend from claim 38.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 42 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 38, from which claim 42 depends, recites “less than 20% water by volume”. As such, the recitation of claim 42 or “at most 20% by volume” is broader than the claim from which it depends (‘less than’ meaning up to but excluding 20%, whereas ‘at most’ includes 20%) and therefore fails to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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, 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 (claim 38) 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) 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 20% by volume water’ (where the range includes zero).
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