DETAILED ACTION
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 .
This action is responsive to the amendment filed on April 20, 2026.
The rejection of claims 5-7 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendment.
The rejection of claims 1-2, 4-5, 8-9, 12-14, 22-23 under 35 U.S.C. 102(a)(1) as being anticipated over He et al is withdrawn.
Claims 1-5, 8-14, 16, 21-21 stand rejected under 35 U.S.C. 103 as being unpatentable over Obot et al in view of He et al.
Claims 1-5, 8-14, 16, 21-24 stand rejected under 35 U.S.C. 103 as being unpatentable over Obot et al in view of Duan et al.
Claims 1-4, 7-14, 16, 21-24 stand rejected under 35 U.S.C. 103 as being unpatentable over Obot et al in view of Duan et al (2).
Claim Rejections - 35 USC § 112
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 1-16, 24-24 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. Claim 1 recites “wherein the substituted carboxamide is an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione”; this renders the claim indefinite because it is unclear what Applicant is intending to claim. It is unclear if Applicant is attempting to further limit the structure of the substituted carboxamide or the reaction for producing the carboxamide. For prior art purposes, the Examiner does not construe this limitation as an active step in the method. Claims 2-16, 21-24 are subsumed under the rejection.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4-5, 8-9, 12-14, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over He et al (US Patent 5,746,946).
Regarding claims 1-2, 4-5, 8-9, 12-14, 22-23, He et al teaches imidazolidinone derivatives and their compositions and use as corrosion inhibitors and/or surfactants (Abstract). He et al further teaches the compositions permits use in water treating systems, metal cutting fluids and rust inhibitors for coatings. When the composition is used to protect metals in aqueous environments such as water, the amount of the imidazolidinone compound can vary from 0.01-10wt% (Col. 4, Lines 50-51). He et al further teaches imidazolidinone having the formula
PNG
media_image1.png
163
544
media_image1.png
Greyscale
(Col. 9). He et al further teaches a composition comprising of 0.05wt% of the imidazolidinone which contacts a metal surface (Example 9). He et al further teaches the addition of solvents in the corrosion inhibiting compositions (Tables 1 and 2). However, He et al fails to specifically disclose the substituted carboxamide comprises functional groups which adsorb to the metal surface to form a monolayer on the metal surface and an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione.
With regard to an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione in He et al as He et al teaches the same substituted carboxamide as the instant claims.
Claims 1-5, 8-14, 16, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Obot et al (US Patent Application 2020/0339871) in view of He et al (US Patent 5,746,946).
Regarding claims 1-5, 8-14, 16, 21-24, Obot et al teaches method of inhibiting corrosion of metal of an oil and gas well (Paragraph 12). Obot et al further teaches the fluid is injected into the well to react with and dissolve the area surrounding the well to remove damage around the wellbore or introduced into the subterranean formation under pressure so the composition flows into the pore spaces of the formation and react with the material contained in the formation; subterranean formation is the corrosion of metal surfaces in piping, tubing, downhole tools (which satisfies claimed introducing the inhibitor from fluid supply into wellbore through tubing and mixing with produced fluid and transporting to wellbore) (Paragraphs 55-56). Obot et al further teaches the composition further comprises an organic solvent, including methanol, ethanol, isopropanol, ethylene glycol, propylene glycol, in the amount of 1-50wt% (which overlaps the instantly claimed range) (Paragraphs 59, 119) and a secondary corrosion inhibitor in the amount of 0.01-20wt% (which overlaps claimed 10-500ppm) (Paragraph 94). Obot et al further teaches any metal surface may be protected by the corrosion inhibitor compositions and include typical oil field tubular steels including J-55, N-80, P110 (Paragraph 133). Obot et al further teaches the inhibitor forms a protective adsorbed layer on the metal (Paragraph 158). However, Obot et al fails to specifically disclose the substituted carboxamide as claimed and an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione.
In the same field of endeavor, He et al teaches imidazolidinone derivatives and their compositions and use as corrosion inhibitors and/or surfactants (Abstract). He et al further teaches the compositions permits use in water treating systems, metal cutting fluids and rust inhibitors for coatings. When the composition is used to protect metals in aqueous environments such as water, the amount of the imidazolidinone compound can vary from 0.01-10wt% (Col. 4, Lines 50-51). He et al further teaches imidazolidinone having the formula
PNG
media_image1.png
163
544
media_image1.png
Greyscale
(Col. 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the corrosion inhibitor in He et al in Obot et al as Obot et al teaches an additional corrosion inhibiting compound into the composition. Furthermore, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
With regard to an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione in Obot et al in view of He et al as Obot et al in view of He et al teaches the same substituted carboxamide as the instant claims.
Claims 1-5, 8-14, 16, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Obot et al (US Patent Application 2020/0339871) in view of Duan et al (CN101613598).
Regarding claims 1-5, 8-14, 16, 21-24, Obot et al teaches method of inhibiting corrosion of metal of an oil and gas well (Paragraph 12). Obot et al further teaches the fluid is injected into the well to react with and dissolve the area surrounding the well to remove damage around the wellbore or introduced into the subterranean formation under pressure so the composition flows into the pore spaces of the formation and react with the material contained in the formation; subterranean formation is the corrosion of metal surfaces in piping, tubing, downhole tools (which satisfies claimed introducing the inhibitor from fluid supply into wellbore through tubing and mixing with produced fluid and transporting to wellbore) (Paragraphs 55-56). Obot et al further teaches the composition further comprises an organic solvent, including methanol, ethanol, isopropanol, ethylene glycol, propylene glycol, in the amount of 1-50wt% (which overlaps the instantly claimed range) (Paragraphs 59, 119) and a secondary corrosion inhibitor in the amount of 0.01-20wt% (which overlaps claimed 10-500ppm) (Paragraph 94). Obot et al further teaches any metal surface may be protected by the corrosion inhibitor compositions and include typical oil field tubular steels including J-55, N-80, P110 (Paragraph 133). Obot et al further teaches the inhibitor forms a protective adsorbed layer on the metal (Paragraph 158). However, Obot et al fails to specifically disclose the substituted carboxamide as claimed and an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione.
In the same field of endeavor, Duan et al teaches a corrosion inhibitor for use in oil and gas fields and wells (Paragraphs 2-7). Duan et al further teaches an imidazolidinyl thione having the formula
PNG
media_image2.png
89
200
media_image2.png
Greyscale
(Claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the corrosion inhibitor in Duan et al in Obot et al as Obot et al teaches an additional corrosion inhibiting compound into the composition. Furthermore, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
With regard to an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione in Obot et al in view of Duan et al as Obot et al in view of Duan et al teaches the same substituted carboxamide as the instant claims.
Claims 1-4, 7-14, 16, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Obot et al (US Patent Application 2020/0339871) in view of Duan et al (2) (CN103359841).
Regarding claims 1-4, 7-14, 16, 21-24, Obot et al teaches method of inhibiting corrosion of metal of an oil and gas well (Paragraph 12). Obot et al further teaches the fluid is injected into the well to react with and dissolve the area surrounding the well to remove damage around the wellbore or introduced into the subterranean formation under pressure so the composition flows into the pore spaces of the formation and react with the material contained in the formation; subterranean formation is the corrosion of metal surfaces in piping, tubing, downhole tools (which satisfies claimed introducing the inhibitor from fluid supply into wellbore through tubing and mixing with produced fluid and transporting to wellbore) (Paragraphs 55-56). Obot et al further teaches the composition further comprises an organic solvent, including methanol, ethanol, isopropanol, ethylene glycol, propylene glycol, in the amount of 1-50wt% (which overlaps the instantly claimed range) (Paragraphs 59, 119) and a secondary corrosion inhibitor in the amount of 0.01-20wt% (which overlaps claimed 10-500ppm) (Paragraph 94). Obot et al further teaches any metal surface may be protected by the corrosion inhibitor compositions and include typical oil field tubular steels including J-55, N-80, P110 (Paragraph 133). Obot et al further teaches the inhibitor forms a protective adsorbed layer on the metal (Paragraph 158). However, Obot et al fails to specifically disclose the substituted carboxamide as claimed and an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione.
In the same field of endeavor, Duan et al (2) teaches a corrosion inhibitor for use in oil systems (Paragraph 2). Duan et al further teaches a diimidazolidinithiophene having the formula
PNG
media_image3.png
113
476
media_image3.png
Greyscale
(Claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the corrosion inhibitor in Duan et al (2) in Obot et al as Obot et al teaches an additional corrosion inhibiting compound into the composition. Furthermore, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
With regard to an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione in Obot et al in view of Duan et al (2) as Obot et al in view of Duan et al (2) teaches the same substituted carboxamide as the instant claims.
Allowable Subject Matter
Claim 6 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed April 20, 2026 have been fully considered but they are not persuasive.
With respect to the rejection over He et al, Obot et al in view of He et al, Obot et al in view of Duan et al and Obot et al in view of Duan et al (2), Applicant argues that the prior art fails to teach “wherein the substituted carboxamide is an amide of a fatty acid with an aminoalkyl substituted 2-imidazolidinone or 2-imidazolidinethione”. Please see 112(b) rejection above. For prior art purposes, the Examiner does not construe this limitation as an active step in the method.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 June 24, 2026
Prosecution Insights