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 .
Claim Status
The Amendment filed on 12 February 2026 has been entered; claims 1-3, 5-12, 14-20, and 22-25 remain pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 February 2026 has been entered.
Response to Arguments
Applicant's arguments, see Pages 7-11 of the Remarks, filed 12 February 2026, regarding the 103 rejections of claims 1-23 have been fully considered but they are not persuasive. Applicant argues on Page 7 that CN (‘498) in view of Molony does not teach limitations pertaining to the use solution which appear in the last three lines of claim 1; however, as discussed below, the recited composition is rendered obvious by CN (‘498) in view of Molony. If the composition is the same, it must have the same properties (see MPEP § 2112.01, II.), including pH upon dissolving the composition to obtain a 2 wt% solution.
As stated in the Response to Arguments in the Final Rejection, the claimed composition does not preclude the presence of additional components. Applicant has not provided evidence that the presence of sodium gluconate would be incompatible with a solid composition as claimed. Additionally, the ordinary artisan would be aware of packaging considerations to control the amount of relative humidity to which the solid composition would be exposed. The Examiner also notes that the use solution is directed to a particular application which does not further limit the components of the composition of claim 1.
Applicant argues that the pH range disclosed by Molony of 2-11 is broad and therefore does not teach or render obvious the recited pH range of 1-5; however, the Examiner submits that it is not Molony’s composition in particular which is pertinent, as the 103 rejection below modifies the composition of CN (‘498) to be in solid form, with the inclusion of an anhydrous pH regulator. Applicant argues that the anhydrous form of the pH regulator is important and cannot be obtained by removing water from the liquid composition of CN (‘498); in response, the Examiner submits that this limitation is taught by Moloney in any event, which discloses sodium carbonate (an “alkali metal salt” in anhydrous form), but also notes that Applicant’s own Specification teaches that the pH modifier can be provided in anhydrous or hydrated form (see Paragraph [0055] of the published application).
Applicant argues on Pages 9-10 that removal of water according to the example discussed in Final rejection (where 15 wt% polycarboxylate of CN (‘498), 10 wt % polymer dispersant, 10 wt% sodium gluconate, 5 wt% zinc, 3 wt % molybdate. 1 wt % copper corrosion inhibitor, 1 wt % fluorescent tracer, 1 wt % pH regulator, with the balance being ~ 50 wt % water which is removed with modification of CN (‘498) with Molony), allows for 30 wt% polycarboxylate, 20 wt% polymeric dispersant, and 6 wt % molybdate corrosion inhibitor as consistent with the claims. Applicant argues that the Examiner is impermissibly picking and choosing specific embodiments; however, the Examiner merely provided one example which shows that the CN (‘498) in view of Molony composition overlaps with the recited ranges for each claimed component.
With respect to Applicant’s arguments on Page 11 of the Remarks pertaining to “pressed solid” and “uniform distribution” according to claim 12, the Examiner submits that Molony teaches a tablet form (“a pressed solid”, as stated by Applicant) and also CN (‘498) teaches mixing the components. Removal of water from a mixed solution according to the Molony modification would necessarily produce a uniform distribution of constituent components across the solid composition. For at least the foregoing reasons, the rejections of the claims over CN (‘498) in view of Molony are maintained below.
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.
Claims 1-3, 5-12, 14-20, and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over CN Patent # 112047498) in view of Moloney et al. (U.S. Patent Publication # 20200239338), hereinafter “CN (‘498)” and “Moloney”.
With respect to claims 1, 8, and 11, CN (‘498) teaches a phosphorus-free (“devoid of phosphorus”) water treatment composition for cooling water treatment (Abstract; Page 3, Paragraph 4), the composition comprising: (a) 10-20 parts polyaspartic acid (“a polycarboxylic acid”) (Page 2, Paragraph 5 which is highlighted), (b) 10-20 parts acrylic acid/2-acrylamido-2-methylpropanesulfonic acid copolymer (“a polymeric dispersant”) (Page 2, Paragraph 5 which is highlighted), (c) 5-10 parts zinc salt, 3-5 parts molybdate, 1-3 parts copper corrosion inhibitor (“a soluble corrosion inhibitor”) (Page 2, Paragraph 5 which is highlighted), and (d) a fluorescent tracer (Page 2, Paragraph 5 which is highlighted).
CN (‘498) teaches that the composition further comprises an acidic pH regulator (see CN (‘498): Page 2, last paragraph), but does not specifically teach an anhydrous pH regulator, and does not specifically teach that the composition is/defines a solid composition (Paragraphs [0127, 0128]).
Moloney teaches a solid composition (Paragraphs [0127, 0128]), which comprises a pH modifier having an anhydrous form (Paragraph [0112]: see calcium oxide, magnesium oxide, sodium carbonate “alkali metal salt”).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the composition of CN (‘498) to be in the form of a solid composition as taught by Moloney because both references disclose corrosion control compositions comprising similar components including dispersants, polycarboxylates, corrosion control agents, and fluorescent tracers (see Moloney: Paragraphs [0054, 0064, 0096], and see Page 2, Paragraph 5 of CN (‘498)), and because Moloney teaches that the solid composition provides solid state stability and can be used within a dispenser (Paragraph [0128, 0272]), additionally the ordinary artisan would enjoy ease of transporting solid compositions to the application site, as compared to liquid formulations. Regarding the pH modifier, it would have been obvious to the ordinary artisan to add the anhydrous pH modifier of Moloney to the composition of CN (‘498) in order to optimize pH according to the application site of the corrosion composition, which is disclosed to include cooling towers in both references (see Molony: Paragraphs [0240, 0244]).
With respect to the weight percentages for each component, the dispersant content of 10-20 parts as taught by CN (‘498) overlaps with “15 weight percent to 30 weight percent”, and the total concentration of corrosion inhibitor components ranges from 9 to 18 weight percent (adding 5 parts zinc salt, 3 parts molybdate, and 1 part copper corrosion inhibitor to get 9 weight percent, and 10 parts zinc salt, 5 parts molybdate, and 3 parts copper corrosion inhibitor to get 18 weight percent), which falls within the range “2 weight percent to 25 weight percent”.
CN (‘498) in view of Moloney and the claims differ in that Moloney does not teach the exact same proportions for the dispersant component as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in dispersant content taught by CN (‘498) overlaps the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in CN (‘498), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Although 10 to 20 parts for the polyaspartic acid polycarboxylate falls outside the range “30 to 60 weight percent”, it is submitted that removing the water from the composition of CN (‘498) as a result of modifying CN (‘498) with Moloney would increase the weight percentage of the polycarboxylate component in a predictable manner depending on how much of the water was removed. Furthermore, there is no evidence indicating such weight percentages for the polycarboxylate are critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to the limitations “has a pH effective such that, when the composition is dissolved in water at a concentration of 2 weight percent to form a solution, the solution has a pH within a range from 1 to 5”, this is considered to be an inherent property of the composition disclosed by CN (‘498) in view of Moloney, especially considering that the specific corrosion inhibitors and polycarboxylate of CN (‘498) meet the limitations of dependent claims 8 and 11. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
With respect to claim 2, the limitations “the composition exhibits about 100% solubility in water and is dimensionally stable at a temperature of 50 degrees Celsius and 70% relative humidity for a period of at least one month”, this is considered to be an inherent property of the composition disclosed by CN (‘498) in view of Moloney, especially considering that the specific corrosion inhibitors and polycarboxylate of CN (‘498) meet the limitations of dependent claims 8 and 11. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
With respect to claim 3, CN (‘498) in view of Moloney teaches that the components of the composition are uniformly mixed (see CN (‘498): see Page 3, highlighted portion, paragraphs 5-8). It would have been obvious to the ordinary artisan that removing the water (the modification of Moloney) would produce a solid having the polycarboxylic acid, dispersant, corrosion inhibitor, and fluorescent tracer substantially uniformly dispersed across an entire cross-section of the solid.
With respect to claim 5, CN (‘498) in view of Moloney teaches a range of about 0.1 to about 20 wt% the anhydrous pH regulator (see Molony: Paragraph [0112]), which overlaps the range “5 weight percent to 30 weight percent”.
CN (‘498) in view of Molony and the claims differ in that Molony does not teach the exact same proportions for the anhydrous pH regulator as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in anhydrous pH modifier taught by Molony overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Molony, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 6, CN (‘498) in view of Moloney teaches sodium or potassium (i.e., “alkali metal”) salts as acid generators (see Paragraph [0060] of Moloney), which would have been obvious to add to the corrosion control composition of CN (‘498) in order to obtain the acidic pH desired by CN (‘498) upon application of the corrosion control composition to water (see Page 2 of CN (‘498), last paragraph).
With respect to claim 7, the limitations “wherein the composition has a pH effective such that, when the composition is dissolved in water at a concentration of 2 weight percent to form the solution, the solution has a pH within the range from 2.5 to 4”, this is considered to be an inherent property of the composition disclosed by CN (‘498) in view of Moloney, especially considering that the specific corrosion inhibitors and polycarboxylate of CN (‘498) meet the limitations of dependent claims 8 and 11. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
With respect to claim 9, CN (‘498) teaches corrosion inhibitors comprising 5-10 parts zinc salt, 3-5 parts molybdate (see Page 2, Paragraph 5), while Moloney teaches additional corrosion inhibitors comprising triazoles can also be used in corrosion control compositions (Paragraph [0076]).
With respect to claim 10, CN (‘498) in view of Moloney teaches that the solid composition can be formulated as a pressed solid in detergent compositions (see Moloney: Paragraphs [0127, 0128, 0272]); therefore, it would have been obvious that the same components formulated as a solid for the corrosion inhibitor application could also be provided a pressed solid. The Examiner further notes that “pressed” solid implies a method step which would not be given patentable weight in the recited composition claims.
With respect to claims 12 and 16, CN (‘498) teaches a phosphorus-free (“devoid of phosphorus”) water treatment composition for cooling water treatment (Abstract; Page 3, Paragraph 4), the composition comprising: (a) 10-20 parts polyaspartic acid (“a polycarboxylic acid”) (Page 2, Paragraph 5 which is highlighted), (b) 10-20 parts acrylic acid/2-acrylamido-2-methylpropanesulfonic acid copolymer (“a polymeric dispersant”) (Page 2, Paragraph 5 which is highlighted), (c) 5-10 parts zinc salt, 3-5 parts molybdate, 1-3 parts copper corrosion inhibitor (“a soluble corrosion inhibitor”) (Page 2, Paragraph 5 which is highlighted), and (d) a fluorescent tracer (Page 2, Paragraph 5 which is highlighted).
CN (‘498) teaches that the composition further comprises an acidic pH regulator (see CN (‘498): Page 2, last paragraph), but does not specifically teach an anhydrous pH regulator, and does not specifically teach that the composition is/defines a solid composition (Paragraphs [0127, 0128]).
Moloney teaches a solid composition (Paragraphs [0127, 0128]), which comprises a pH modifier having an anhydrous form (Paragraph [0112]: see calcium oxide, magnesium oxide, sodium carbonate “alkali metal salt”).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the composition of CN (‘498) to be in the form of a solid composition as taught by Moloney because both references disclose corrosion control compositions comprising similar components including dispersants, polycarboxylates, corrosion control agents, and fluorescent tracers (see Moloney: Paragraphs [0054, 0064, 0096], and see Page 2, Paragraph 5 of CN (‘498)), and because Moloney teaches that the solid composition provides solid state stability and can be used within a dispenser (Paragraph [0128]), additionally the ordinary artisan would enjoy ease of transporting solid compositions to the application site, as compared to liquid formulations. Regarding the pH modifier, it would have been obvious to the ordinary artisan to add the anhydrous pH modifier of Moloney to the composition of CN (‘498) in order to optimize pH according to the application site of the corrosion composition, which is disclosed to include cooling towers in both references (see Molony: Paragraphs [0240, 0244]).
With respect to the weight percentages for each component, the dispersant content of 10-20 parts as taught by CN (‘498) overlaps with “15 weight percent to 30 weight percent”, and the total concentration of corrosion inhibitor components ranges from 9 to 18 weight percent (adding 5 parts zinc salt, 3 parts molybdate, and 1 part copper corrosion inhibitor to get 9 weight percent, and 10 parts zinc salt, 5 parts molybdate, and 3 parts copper corrosion inhibitor to get 18 weight percent), which falls within the range “2 weight percent to 25 weight percent”.
CN (‘498) in view of Moloney and the claims differ in that Moloney does not teach the exact same proportions for the dispersant component as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in dispersant content taught by CN (‘498) overlaps the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in CN (‘498), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Although 10 to 20 parts for the polyaspartic acid polycarboxylate falls outside the range “30 to 60 weight percent”, it is submitted that removing the water from the composition of CN (‘498) as a result of modifying CN (‘498) with Moloney would increase the weight percentage of the polycarboxylate component in a predictable manner depending on how much of the water was removed. Furthermore, there is no evidence indicating such weight percentages for the polycarboxylate are critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to the limitations “has a pH effective such that, when the composition is dissolved in water at a concentration of 2 weight percent to form a solution, the solution has a pH within a range from 2.5 to 4”, this is considered to be an inherent property of the composition disclosed by CN (‘498) in view of Moloney, especially considering that the specific corrosion inhibitors and polycarboxylate of CN (‘498) meet the limitations of dependent claims 8 and 11. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
CN (‘498) in view of Moloney teaches that the components of the composition are uniformly mixed (see CN (‘498): see Page 3, highlighted portion, paragraphs 5-8). It would have been obvious to the ordinary artisan that removing the water (the modification of Moloney) would produce a solid having the polycarboxylic acid, dispersant, corrosion inhibitor, and fluorescent tracer substantially uniformly dispersed across an entire cross-section of the solid.
CN (‘498) in view of Moloney teaches that the solid composition can be formulated as a pressed solid in detergent compositions (see Moloney: Paragraphs [0127, 0128]); therefore, it would have been obvious that the same components formulated as a solid for the corrosion inhibitor application could also be provided a pressed solid. The Examiner further notes that “pressed” solid implies a method step which would not be given patentable weight in the recited composition claims.
With respect to claim 14, CN (‘498) in view of Moloney teaches a range of about 0.1 to about 20 wt% the anhydrous pH regulator (see Molony: Paragraph [0112]), which overlaps the range “5 weight percent to 30 weight percent”.
CN (‘498) in view of Molony and the claims differ in that Molony does not teach the exact same proportions for the anhydrous pH regulator as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in anhydrous pH modifier taught by Molony overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Molony, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 15, the limitations “the composition exhibits about 100% solubility in water and is dimensionally stable at a temperature of 50 degrees Celsius and 70% relative humidity for a period of at least one month”, this is considered to be an inherent property of the composition disclosed by CN (‘498) in view of Moloney, especially considering that the specific corrosion inhibitors and polycarboxylate of CN (‘498) meet the limitations of dependent claims 8 and 11. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
With respect to claims 17-20 and 23, CN (‘498) in view of Moloney renders obvious a solid, phosphorous free water treatment composition comprising the recited elements (discussed in detail in the rejection of claim 1 above). Additionally with respect to the method recited in claims 17-20 and 23, CN (‘498) in view of Moloney teaches application of the disclosed water treatment composition to closed cycle, (re)circulating water in a water containing system embodied as a cooling tower water system (see Moloney: Paragraph [0241] and Page 2, highlighted text within Paragraphs 2 and 3 of CN (‘498). CN (‘498) in view of Moloney teaches that the corrosion control composition can be dispensed using a spray-type dispenser, which functions by impinging a water spray upon an exposed surface of a composition to dissolve a portion of the composition, and then immediately directing the concentrate solution including the composition out of the dispenser to a storage reservoir (“sump”) or directly to a point of use (Paragraph [0272] of Moloney).
With respect to claim 22, CN (‘498) in view of Moloney teaches a range of about 0.1 to about 20 wt% the anhydrous pH regulator (see Molony: Paragraph [0112]), which overlaps the range “5 weight percent to 30 weight percent”.
CN (‘498) in view of Molony and the claims differ in that Molony does not teach the exact same proportions for the anhydrous pH regulator as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in anhydrous pH modifier concentration taught by Molony overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Molony, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 24, CN (‘498) in view of Molony teaches that the composition comprises a biocide (see Molony: Paragraphs [0054, 0067-0071]).
With respect to claim 25, CN (‘498) in view of Molony teaches a biocide in the amount ranging from about 0.1 to about 10 wt% of the composition (see Molony: Paragraph [0071]), overlapping “0.01 wt% to 0.2 wt% of the composition”.
CN (‘498) in view of Molony and the claims differ in that Molony does not teach the exact same proportions for the biocide as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in biocide concentration taught by Molony overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Molony, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Conclusion
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 18 February 2026