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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/2026 has been entered.
Claims 1, 9-12, 16-20, 22, and 24-31 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/26/2026 has been considered by the examiner. Initialed copies accompany this action.
Response to Amendment
The previous rejection of claims 1, 3, 4, 7-12, and 15-24 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of applicant’s amendment.
The previous rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendment.
The previous rejection of claim 20 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is withdrawn in view of applicant’s amendment.
The previous rejection of claims 9-10 under 35 U.S.C. 103 as being unpatentable over Wakao et al. (US2013/0261257) in view of S.C. de Morais et al. (Desalination 491 (2020) 114548) and Li et al. (Journal of Colloid and Interface Science 618 (2022) 507–517) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 16-19 under 35 U.S.C. 103 as being unpatentable over Alfano et al. (US 5,368,830) in view of Wakao et al. (US2013/0261257) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1-5, 7-19 on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/769,557 is maintained in view of applicant’s amendment.
Election/Restrictions
Newly submitted claims 26-31 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 26-31 are directed to a scale inhibitor composition, which comprises an acrylic acid polymer having the formula recited. These claims are distinct and independent from the previously presented claims 1, 9-12, 16-20, 22, and 24-25 because the previously claims do not require the formula recited in claim 26, or the formula cited in claim 26 does not necessary require to be of an aqueous polymerization reaction product of claim 1. There would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited in show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown io have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art maybe shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions) (e.g. searching different classes/subclasses of electronic resources, or employing different search queries), a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 26-31 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Claim Rejections - 35 USC § 103
Claims 1, 11, 12, 20, 22, 24, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Gutierrez et al. (Macromol. React. Eng. 2019, 13, 1900007).
Regarding claims 1 and 20, 22, 24, 25, Gutierrez discloses a composition for inhibiting the deposition of calcium carbonate, the composition comprising: an aqueous polymerization reaction product of an acrylic acid (AA) and a chain transfer agent comprises a bisulfite (sodium metabisulfite NaMBS), the reaction product comprising an acrylic acid polymer having a weight averaged molecular weight (Mw) of about 3,400 Da (example ES4, Table 2). The aqueous polymerization reaction is carried out in the absence of a phosphorus compound and a mercapto chain transfer agent. See Experimental section and Results and Discussions. The weight averaged molecular weight (Mw) of Gutierrez’s polymer is close to the claimed range. Gutierrez also discloses that further increment of NaMBS concentrations ([NaMBS]) in ES3 and ES4 produced extra reduction of Mn and Mw (Results and Discussions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to adjust amount of NaMBS, such that it falls in the claimed range, in order to produce the polymer having the claimed Mw, and in the absence of new or unexpected results that are fully commensurate in scope with the claimed subject matter and for which objective evidence is offered across the entire ranges, a prima facie case of obviousness exists. The law also held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
Regarding claim 11, Gutierrez discloses a method of preparing the polymer of claim 1, said method comprising: reacting the acrylic acid and the chain transfer agent via aqueous solution polymerization to give the reaction product comprising the acrylic acid polymer, thereby preparing the water treatment agent (Experimental section).
Regarding claim 12, Gutierrez discloses the acrylic acid and the chain transfer agent are reacted in the presence of a free radical initiator (sodium persulfate KPS) and wherein the polymerization is a batch process (Results and Discussions).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Gutierrez et al. (Macromol. React. Eng. 2019, 13, 1900007) as applied above, in view of S.C. de Morais et al. (Desalination 491 (2020) 114548) and Li et al. (Journal of Colloid and Interface Science 618 (2022) 507-517).
Regarding claims 9 and 10, Gutierrez discloses a composition for inhibiting the deposition of calcium carbonate as described above. Gutierrez does not disclose the composition further comprises other inhibitors including inorganic phosphate and/or organic phosphonate as claimed. S.C. de Morais discloses sodium hexametaphosphate as calcium carbonate scale inhibitor (abstract). Li discloses sodium hexametaphosphate, 2-phosphonobutane-1,2,4-tricarboxylic acid, and diethylenetriamine penta(methylene phosphonic acid) are calcium carbonate scale inhibitor, used to interfere with the precipitation and scaling of calcite (calcium carbonate, CaCO3) is achieved through its chelating interaction with calcium ions (abstract). Sodium hexametaphosphate reads on the claimed chelant recited in claim 9. It would have been obvious to one of ordinary skill in the art before the filling date of the invention to add sodium hexametaphosphate, 2-phosphonobutane-1,2,4-tricarboxylic acid, and/or diethylenetriamine penta(methylene phosphonic acid) to the scale inhibitor composition of Gutierrez, in order to not only inhibit the formation of CaCO₃ precipitates but also remove existing scales efficiently in water treatment systems, as suggested by S.C. de Morais and Li (see the conclusions). “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Also see MPEP 2144.06.
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Alfano et al. (US 5,368,830) in view of Gutierrez et al. (Macromol. React. Eng. 2019, 13, 1900007).
Regarding claim 16, Alfano discloses a method for inhibiting the formation, deposition and adherence of calcium carbonate (CaCO3) scale deposits, on various metallic, activated carbon and other surfaces of aqueous systems in a mining operation (abstract, col 1, ln 9-25), the method comprising adding a deposit control agent to the aqueous systems being treated, wherein the aqueous systems have a pH of at least 10 (claim 1). Alfano does not disclose the deposit control agent (the claimed scale inhibitor composition). Gutierrez discloses a composition for inhibiting the deposition of calcium carbonate, which comprise an acrylic acid polymer as described above and is incorporated herein by reference. These polymers show good activity over a wide range of pH, water hardness, and temperature conditions. It would have been obvious to one of ordinary skill in the art before the filling date of the invention to replace or add in addition to the deposit control agent in the method of Alfano with the scale inhibitor composition of Gutierrez, because one of ordinary skill in the art would have been able to carry out such a substitution/addition, and the results of preventing deposition of a scale component were reasonably predictable. Simple substitution/addition of one known reducing agent for another reducing agent would achieve the predictable result of reducing the metal compound. Moreover, case law holds that the mere substitution of an equivalent (something equal in value or meaning) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Also see MPEP 2144.06.
Regarding claim 17, Gutierrez disclose the scale composition is added in an amount of 1 and 5 mg/ L (page 7). Alfano also discloses that many factors will determine the actual amount of the deposit control agent, which will be added to any particular aqueous system in order to achieve the maximum amount of inhibition of alkaline earth metal, especially calcium carbonate scale formation, deposition and adherence in that aqueous system. The calculation of those amounts is well within the skill of the artisan in this field (col 10, ln 21-33). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to determine an amount of the deposit control agent, such that it falls within the claimed range of 2 to 12 ppm in order to achieve the maximum amount of inhibition of alkaline earth metal, especially calcium carbonate scale formation, deposition and adherence in that aqueous system, and in the absence of new or unexpected results that are fully commensurate in scope with the claimed subject matter and for which objective evidence is offered across the entire ranges, a prima facie case of obviousness exists.
Regarding claims 18 and 19, Alfano discloses a method occurring in gold and silver mining involving the cyanidation process which utilizes heap and vat leaching (abstract).
Response to Arguments
Applicant’s arguments filed 7/16/2025 have been considered but are moot because the new of ground of rejection does not apply to matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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/HAIDUNG D NGUYEN/ Primary Examiner, Art Unit 1761
5/14/2026
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