DETAILED ACTION
Applicant’s reply and supplemental reply, filed 28 January 2026 and 29 January 2026, respectively, in response to the non-final Office action mailed 2 October 2025, has been fully considered. As per Applicant’s filed claim amendments (supplemental), claims 1-5, 7-13 and 15-23 are pending, wherein: claims 1-5, 7-13 and 15-20 have been amended, claims 6 and 14 have been cancelled, and claims 21-23 are new. Note claim 8 contains the improper claim status modifier of ‘previously presented’ but has in fact been amended by the filed claims.
Claim Objections
Claim 9 is objected to because of the following informalities: “more relative” should instead be –more, relative--. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “corresponding alloy” should be –an alloy thereof--. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “equivalents relative” should instead be –equivalents, relative—(i.e. put the comma back). Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “more relative” should instead be –more, relative--. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: “equivalents relative” should instead be –equivalents, relative—(i.e. put the comma back). Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “claim18” should be –claim 18--. Appropriate correction is required.
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 5, 9 and 17 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 5, the parenthesis in lines 2-3 renders the claim indefinite and must be removed (replace the opening parenthesis with a comma) as it is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting.
Regarding claim 9, the as-amended claim contains improper dependency to a cancelled claim. Namely the claim as-amended recites dependency to “claim claim 17 as it depends from claim 9.
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.
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 and 21-23 and Claims 7-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miles et al. (US PGPub 2015/0329728) in view of Kalota et al. (US PG Pub 2003/0162671).
Regarding Claims 1-4 and 22-23 and Claims 7 and 10-11, Miles teaches neutralizing aqueous formulations in need of neutralization by incorporation of an amino acid metal salt (Formula (I)) (abstract; [0006]-[0011]; [0022]-[0032]) (instant claim 1) which functions in the formulation to neutralize residual acid moieties (instant acidic) and/or to raise the pH to a desired value ([0020]). Miles teaches the amino acid metal salts are preferably salts of sodium, potassium, magnesium or calcium ([0032]) and teaches preferred compounds of Formula (I) include aminoacetic acid sodium salt, 6-aminohexanoic acid sodium salt, glutamic acid sodium salt, taurine sodium salt, etc. ([0034]). Miles teaches the aqueous formulations to be treated include metalworking fluids ([0038])(instant claim 7).
Miles teaches treating aqueous metalworking fluids with the amino acid metal salt(s) for the purpose of neutralization of any residual acid moieties and/or to raise the pH as desired. Miles does not specifically teach the acidic group compounds as fatty acid corrosion inhibitors. However, Kalota teaches low odor aqueous metal working fluids ([0021]) comprising corrosion inhibitors ([0022]-[0025]; [0095]) and teaches known and suitable acidic corrosion inhibiting compounds include carboxylic acids, including fatty acids compounds such as azelaic acid, dodecanedioic acid, undecanedioic acid, sebacic acid, etc. ([0033]; [0095]). Kalota and Miles are analogous art and are combinable because they are concerned with the same field of endeavor, namely low odor aqueous metal working fluids having acidic components. At the time of filing a person having ordinary skill in the art would have found it obvious to neutralize corrosion inhibitors including fatty acids of Kalota with the compounds of Miles and would have been motivated to do so as Miles teaches metalworking fluids having acidic compounds are suitably neutralized by the amino acid metal salts and further as Kalota teaches fatty acid compounds as known, suitable, and traditional acidic corrosion inhibitor compounds present in aqueous metal working fluids.
Regarding claim 5, Miles in view of Kalota renders obvious the method as set forth in claim 1 above and further teaches the neutralizing agent is used in an amount sufficient to raise the pH of the formulation to a range of about 7 to 11 ([0053]-[0054]) (readable at least over 1 or more molar equivalents).
Regarding claims 8 and 15-16, Miles in view of Kalota renders obvious the metal working fluids as set forth in claim 7 above. As noted, Miles teaches the amino acid metal salts are preferably salts of sodium, potassium, magnesium or calcium ([0032]) and teaches preferred compounds of Formula (I) include aminoacetic acid sodium salt, 6-aminohexanoic acid sodium salt, glutamic acid sodium salt, taurine sodium salt, etc. ([0034]).
Regarding claims 9 and 18, Miles in view of Kalota renders obvious the metal working fluids as set forth in claim 8 above and further teaches the neutralizing agent is used in an amount sufficient to raise the pH of the formulation to a range of about 7 to 11 ([0053]-[0054]) (readable at least over 1 or more molar equivalents).
Regarding claim 12, Miles in view of Kalota renders obvious the metal working fluids as set forth in claim 7 above. Miles does not specifically teach the addition of synthetic amines. However, Kalota teaches low odor aqueous metal working fluids ([0021]) comprising corrosion inhibitors ([0022]-[0025]; [0095]) and teaches the inclusion of known and suitable traditional corrosion inhibiting compounds to metalworking fluids already comprising such compounds, wherein said traditional compounds include alkanolamines including triethanolamine ([0095]). Kalota and Miles are analogous art and are combinable because they are concerned with the same field of endeavor, namely low odor aqueous metal working fluids having acidic components. At the time of filing a person having ordinary skill in the art would have found it obvious to include the traditional alkanolamine corrosion inhibitors of Kalota in the metalworking fluids of Miles and would have been motivated to do so as Kalota teaches alkanolamines are traditional pH dependent corrosion inhibitors suitable for inclusion in metal working fluids comprising other corrosion inhibiting components.
Regarding claims 13 and 20 and claim 21, Miles in view of Kalota renders obvious the metal working fluids as set forth in claims 1, 7 and 18 above. Miles does not specifically teach methods of processing of iron, aluminum, magnesium, titanium, beryllium, zirconium, or alloys thereof (claims 13 and 20) or copper, cobalt and/or nickel alloys without leaching (claim 21). However, Kalota teaches it is well-known to use metal working fluids to process ferrous and non-ferrous metals, including aluminum, iron, titanium, copper, etc. ([0096]; [0098]) and further teaches that the work pieces remain relatively free of discoloring deposits, are protected from corrosion, and that it is well-known that an important function of metal working fluids is cooling ([0096]; [0099]). Kalota and Miles are analogous art and are combinable for the reasons set forth above. At the time of filing a person having ordinary skill in the art would have found it obvious to process ferrous and non-ferrous metals as taught by Kalota using the metalworking fluids of Miles and would have been motivated to do so as Kalota teaches processing ferrous and non-ferrous metals is a well-known use for aqueous metal working fluids. Further, as claim 21 recites the broad, undefined term “limited” with respect to leaching, the presence of the fluid is deemed to necessarily meet ‘limited’ leaching, absent evidence to the contrary by virtue of the neutralization of acidic groups and as Kalota teaches both relatively free of discoloring deposits and protection from corrosion.
Regarding claims 17 and 19, Miles in view of Kalota renders obvious the fluids as set forth in claims 9 and 18 above. Miles teaches neutralizing agent is used in an amount sufficient to raise the pH of the formulation to a range of about 7 to 11 ([0053]-[0054]) but does not specifically teach 1-3 molar equivalents or 1.5 molar equivalents. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of neutralizing agent added to neutralize the acidic groups in order to obtain the desired neutralization result and/or to obtain a desired pH in the range of about 7 to 11. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Response to Arguments/Amendments
The objections to claims 1-7 and 9-20 are withdrawn and/or maintained as set forth above and/or are as necessitated by Applicant’s filed claim amendments.
The 35 U.S.C. 101/112(b) rejections of claims 13 and 20 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 112(b) rejections of claims 1-20 are withdrawn as a result of Applicant’s filed claim amendments with the exception of the rejection to claim 5 which is maintained. Note the rejection to claim 13 is now an objection after Applicant’s amendments. Also note the new rejection(s) set forth under 112(b) above as necessitated by said claim amendments.
The 35 U.S.C. 102(a)(1) rejections of claims 1-6 and 14 and of claims 7-9, 11, 15-16 and 18 as anticipated by Miles (US PGPub 2015/0329728) are withdrawn as a result of Applicant’s filed claim amendments incorporating subject matter into independent claims 1 and 7 not previously recited therein. Applicant’s arguments to Miles are addressed by the Examiner below.
The 35 U.S.C. 103 rejection of claims 17 and 19 as unpatentable over Miles (US PGPub 2015/0329728) is withdrawn as a result of depending from a now cancelled rejection.
The 35 U.S.C. 103 rejection of claims 10, 12-13 and 20 as unpatentable over Miles (US PGPub 2015/0329728) in view of Kalota (US PGPub 2003/0162671) is maintained as set forth above. Applicant’s arguments (Remarks, pages 3-6) have been fully considered but were not found persuasive.
Applicant argues (pg3) that Miles is not concerned with corrosion inhibitors. The Examiner notes that Miles is concerned with neutralization of any present acidic species found in an aqueous metal working fluid (see rejection). Further, it is noted Kalota teaches metal working fluids are well-known to contain traditional corrosion inhibitors, which are generally acidic compounds. Miles does not exclude neutralization of corrosion inhibitors and does not exclude any specific acidic species. Kalota teaches metal working fluids will have acidic corrosion inhibitors present and Miles teaches adding amino acid metal salts to metal working fluids for the express purpose of neutralizing acidic species. One of ordinary skill arrives at the instant inventions simply by following the teachings of the prior art.
Applicant argues (pg3-4) Miles does not teach preservation or enhancement of corrosion protection. The Examiner notes that Miles does not have to as i) such is not claimed in any way and ii) Miles is not required to be concerned with that which was of concern to the instant inventors in order to direct one of ordinary skill to the same solution. Furthermore, the secondary reference of Kalota teaches the important functions of metal working fluids include cooling, corrosion inhibition, reducing discoloring deposits, etc. ([0096]-[0099]).
Applicant states (pg4) that Miles teaches metalworking fluids merely as generic and non-specific teachings. Applicant hereby admits that Miles in fact teaches metalworking fluids. The fact that Miles does not do so in a detail desired by Applicant does not serve to negate the teaching of metal working fluids or the specific teaching of adding neutralizing compounds to metal working fluids.
Applicant argues (pg4) Miles does not teach i) corrosion inhibitor present in a metalworking fluids; ii) corrosion-related function of the amino acid salts; or iii) interaction between the amino acid salts and a metal surface. Regarding i) the Examiner notes that the rejection is one based upon 103, wherein the secondary reference of Kalota meets the specific corrosion inhibitor recitation. Regarding ii) and iii) the Examiner again notes that Miles is not required to as neither is claimed or required by the present claims and as Miles is not required to be concerned with that which was of concern to the instant inventors in order to direct one of ordinary skill to the same solution.
Applicant asserts (pg4) that Miles is concerned with only pH-adjusting agents for VOC and odor reduction and further that the compounds of Miles do not posses the instantly desired properties or technical effect ‘not even inherently’. This is not found persuasive. Miles, as repeatedly noted, is concerned with neutralization of acidic species found in metal working fluids, and while pH adjustment and odor reduction are of primary concern they are not the only concern nor are they controlling. It is worth noting that the secondary reference of Kalota teaches odor reduction as a further concern of metal working fluids ([0097]) thus establishing an additional motivation to combine Miles and Kalota. Applicant is invited to provide evidence that the amino acid metal salts of Miles, expressly present to neutralize acidic groups, which are the same amino acid salts as instantly claimed will ‘not even inherently’ achieve substantially the same technical features and/or properties when combined with corrosion inhibitors as claimed (and as taught by Kalota as traditionally known to be present in metal working fluids). Again it is noted that i) the instant claims contain no recitation to corrosion inhibition ‘synergy’, metal-surface interaction or leaching ‘prevention’ and ii) such is met by the secondary reference of Kalota.
Applicant’s stated technical goals (pg5) are noted but do not serve to overcome the combined teachings of Miles and Kalota. Further general assertions of any demonstrated effect via the examples are not commensurate in scope with the instant claims.
Applicant admits (pg6) that Kalota teaches traditional corrosion inhibitors in metal working fluids and notes ‘alkanolamines’. Applicant is apparently referring to claim 12, which is a recitation of additional synthetic amines (not directed to the corrosion inhibitor or the amino acid neutralizer) met by Kalota who teaches alkanolamine corrosion inhibitors present in addition to traditional acidic corrosion inhibitors. Applicant argues that Kalota does not teach neutralization of corrosion inhibitors e.g. alkanolamines. The Examiner notes that no such neutralization of alkanolamines was relied upon the rejection, nor would one be expected as the alkanolamines lack acidic functional groups targeted by the amino acid metal salts of Miles. Furthermore the limitation of neutralization was met by the primary reference of Miles, who teaches neutralization of acidic species present in metal working fluids, not the secondary reference of Kalota. Applicant does not appear to have provided argument as to the acidic corrosion inhibitors recited in claim 10 as met by Kalota.
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.
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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