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 .
Claims 1-16, 21-24 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on December 19, 2025 is acknowledged.
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 5-7 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. Claims 5-7 recite formulas wherein “X1 is individually selected from the group consisting of a thione or ketone”; this renders the claim indefinite because it is unclear if Applicant is limiting X1 to be S or O, which forms a thione or ketone group in the formula or if X1 provides a thione or ketone group. Clarification is requested. For prior art purposes, the Examiner construes the limitation as X1 is S or O.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-5, 8-9, 12-14, 22-23 are rejected under 35 U.S.C. 102(a) as being anticipated by 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
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(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).
He et al teaches the limitations of the instant claims; hence, He et al anticipates the claims.
With respect to the substituted carboxamide comprises functional groups which adsorb to the metal surface to form a monolayer on the metal surface, He et al inherently teaches as He et al teaches the same method and composition and substituted carboxamide.
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.
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 1-5, 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.
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
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(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).
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.
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
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(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).
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.
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
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(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).
Conclusion
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.
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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.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 January 23, 2026