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 June 24, 2026.
Claims 1-42 are pending. Claims 35-42 are currently withdrawn.
The rejection of claims 1-4, 8-17, 21-29 under 35 U.S.C. 102(a)(1) as anticipated by Evich et al is withdrawn in view of Applicant’s amendment.
The rejection of claims 1, 4, 8-14, 17, 21-23, 25, 27-29 under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al is withdrawn in view of Applicant’s amendment.
The rejection of claims 1-24, 27-30, 33-34 under 35 U.S.C. 103 as being unpatentable over Darden et al in view of Gershun et al is withdrawn in view of Applicant’s amendment.
The rejection of claims 25-26, 31 under 35 U.S.C. 103 as being unpatentable over Gershun et al in view of Evich et al is withdrawn in view of Applicant’s amendment.
The rejection of claim 32 under 35 U.S.C. 103 as being unpatentable over Darden et al in view of Gershun et al in view of Miyake et al is withdrawn in view of Applicant’s amendment.
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 28-29 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 28-29 recite additional C6-20 mono or dibasic aliphatic or aromatic carboxylic acid and lists of carboxylic acids that are branched carboxylic acids or dicarboxylic acids, which claim 1 requires a composition free of those listed in claims 28-29.
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, 5, 8-10, 12-13, 15-17, 21, 24-25, 32-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maes et al (US Patent Application 2007/0158612).
Regarding claims 1, 5, 8-10, 12-13, 15-17, 21, 24-25, 32-34, Maes et al discloses the invention substantially as claimed. Maes et al teaches an aqueous heat transfer fluid comprising carboxylate freezing point depressants and corrosion inhibitors (Abstract). Maes et al further teaches in Example 24A: 0.75 octanoic acid, 1.5 heptanoic acid, 0.90 p-tertbutyl benzoic acid and 0.10 tolyltriazole (which satisfies 1:2 ratio of first to second monocarboxylic acid and 1:2.5 benzoic acid to combined monocarboxylic acid as 1:2.5 satisfies the word “about”) (Table 1). Maes et al further teaches in Example 23A: 1.5 octanoic acid, 0.5 heptanoic acid, 0.90 p-tertbutyl benzoic acid and 0.10 tolyltriazole (which satisfies 1:0.33 ratio of first to second monocarboxylic acid as 1:0.33 satisfies the word “about” and 1:2.22 benzoic acid to combined monocarboxylic acid) (Table 1). Maes et al further teaches the composition can be improved by the addition of alkali metal molybdates, nitrates, phosphates and silicates (Paragraph 24). Maes et al further teaches antifoams and defoamers (Paragraph 25). Maes et al further teaches the pH of the composition is from about 6-10 (Paragraph 15).
Maes et al teaches the limitations of the instant claims; hence, Maes et al anticipates the claims.
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 1-17, 21-25, 27-29, 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Maes et al (US Patent Application 2007/0158612) in view of Van Neste et al (US Patent 4,851,145 (already of record)).
Regarding claims 1-17, 21-25, 27-29, 32-34, Maes et al discloses the invention substantially as claimed. Maes et al teaches an aqueous heat transfer fluid comprising carboxylate freezing point depressants and corrosion inhibitors (Abstract). Maes et al further teaches in Example 24A: 0.75 octanoic acid, 1.5 heptanoic acid, 0.90 p-tertbutyl benzoic acid and 0.10 tolyltriazole (which satisfies 1:2 ratio of first to second monocarboxylic acid and 1:2.5 benzoic acid to combined monocarboxylic acid as 1:2.5 satisfies the word “about”) (Table 1). Maes et al further teaches in Example 23A: 1.5 octanoic acid, 0.5 heptanoic acid, 0.90 p-tertbutyl benzoic acid and 0.10 tolyltriazole (which satisfies 1:0.33 ratio of first to second monocarboxylic acid as 1:0.33 satisfies the word “about” and 1:2.22 benzoic acid to combined monocarboxylic acid) (Table 1). Maes et al further teaches in Example 61: 1.50 heptanoic acid, 1.50 octanoic acid, 0.10 tolyltriazole (which satisfies a 1:1 ratio of first and second monocarboxylic acid) (Table 1). Maes et al further teaches the composition can be improved by the addition of alkali metal molybdates, nitrates, phosphates and silicates (which includes magnesium or calcium nitrates) (Paragraph 24). Maes et al further teaches antifoams and defoamers (Paragraph 25). Maes et al further teaches the pH of the composition is from about 6-10 (Paragraph 15). However, Maes et al fails to specifically disclose alkylbenzoic acid sodium or potassium salt, the weight ratio of the two monocarboxylic acids to the alkylbenzoic acid sodium or potassium salt, nonanoic acid or decanoic acid and the weight ratio of benzoic or salt thereof with first and second monocarboxylic acid and the additional carboxylic acid.
In the same field of endeavor, Van Neste et al corrosion inhibitor composition comprising an alkylbenzoic acid or alkali metal salt thereof and C8-12 aliphatic monobasic acid or salt thereof and a triazole (Abstract). Van Neste et al further teaches the most preferred alkali metals are sodium and potassium (Col. 4, Lines 1-2). Van Neste et al further teaches 0.1-5wt% of an alkylbenzoic acid or salt thereof (Col. 4, Lines 57-59). Van Neste et al teaches C8-12 aliphatic monobasic acids or salt thereof includes octanoic, nonanoic, decanoic acid (Col. 4, Lines 6-7).
With regard to the alkylbenzoic acid sodium or potassium salt, 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 alkylbenzoic acid sodium or potassium salt and the weight ratio of the two monocarboxylic acids to the alkylbenzoic acid sodium or potassium salt in Maes et al in view of Van Neste et al as it is well settled that it is prima facie obvious to combine 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). Likewise, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
With regard to the weight ratio of the two monocarboxylic acids to the alkylbenzoic acid sodium or potassium salt, 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 a weight ratio within the claimed range in Maes et al in view of Van Neste et al as Maes et al teaches compositions comprising 0.1 of an azole and Van Neste et al teaches 0.1-5wt% of an alkylbenzoic acid or salt thereof, which overlaps the claimed range. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to nonanoic acid or decanoic acid, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted nonanoic acid or decanoic acid for heptanoic or octanoic in Maes et al in view of Van Neste et al as simple substitution of one known aliphatic carboxylic acid for another would provide the predictable result of corrosion inhibition.
With regard to the weight ratio of benzoic or salt thereof with first and second monocarboxylic acid and the additional carboxylic acid, 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 weight ratio as claimed in Maes et al in view of Van Neste et al as Maes et al teaches in Example 24A: 0.75 octanoic acid, 1.5 heptanoic acid, 0.90 p-tertbutyl benzoic acid and 0.10 tolyltriazole and Van Neste et al teaches 0.1-5wt% of an alkylbenzoic acid or salt thereof; which overlaps the claimed range. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Claims 26 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Maes et al (US Patent Application 2007/0158612) in view of Van Neste et al (US Patent 4,851,145 (already of record)) as applied to claims 1-17, 21-25, 27-30, 32-34 above, and in further view of Menke et al (US Patent 4,134,959 (already of record)).
Regarding claims 26 and 31, Maes et al and Van Neste et al discloses the invention substantially as claimed. Maes et al and Van Neste et al teach the features above. However, Maes et al and Van Neste et al fail to specifically disclose 1,2,3-propanetriol phosphate and an acrylate polymer and a salt that will produce magnesium ions wherein the acrylate polymer to magnesium ions is greater than 5 and less than 25.
In the same field of endeavor, Menke et al teaches a composition for inhibiting corrosion comprising an azole and water-soluble phosphate (Abstract). Menke et al further teaches dispersing agents such as sodium polyacrylate (Col. 4, Lines 8-9). Menke et al further teaches glycerol phosphate (1,2,3-propanetriol) (Cols. 5-6, Table).
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 1,2,3-propanetriol phosphate in Maes et al and Van Neste et al in view of Menke et al in order to provide additional corrosion inhibiting properties to the composition and the broad teachings of Maes et al encompass a phosphate therein.
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 a sodium polyacrylate in in Maes et al and Van Neste et al in view of Menke et al in order to provide a dispersing agent to the composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. With respect to the salt that will produce magnesium ions wherein the acrylate polymer to the magnesium ions is greater than 5 and less than 25, it would have been obvious that the salt encompasses in Maes et al, for example, magnesium nitrate, will produce magnesium and the addition of the acrylate polymer is for dispersing properties and would prevent precipitation; hence, adjusting the amount of the of the acrylate polymer based on the amount of magnesium ions would only be obvious to the ordinary artisan.
Claims 18-20, 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Maes et al (US Patent Application 2007/0158612) in view of Van Neste et al (US Patent 4,851,145 (already of record)) as applied to claims 1-17, 21-25, 27-30, 32-34 above, and in further view of Yang et al (US Patent Application 2017/0009120 (already of record)).
Regarding claims 18-20, 30-31, Maes et al and Van Neste et al discloses the invention substantially as claimed. Maes et al and Van Neste et al teach the features above. However, Maes et al and Van Neste et al fail to specifically disclose magnesium or lithium hydroxide and a salt that will produce magnesium ions wherein the acrylate polymer to magnesium ions is greater than 5 and less than 25.
In the same field of endeavor, Yang et al teaches heat transfer fluids comprising freezing point depressants for preventing corrosion (Abstract). Yang et al further teaches a metal ions including oxides or hydroxides including lithium hydroxide or oxide, magnesium hydroxide or oxide for improved corrosion protection (Paragraphs 16, 34-35). Yang et al further teaches a synergistic effect between metal ions and water-soluble acrylate polymer (Paragraphs 17-18). Yang et al further teaches magnesium ions and water-soluble polymer including an acrylate polymer and the ratio of active acrylate based polymer stabilizer and magnesium ion concentration is between 5-25 (Paragraph 40).
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 magnesium or lithium hydroxide and a salt that will produce magnesium ions wherein the acrylate polymer to magnesium ions is greater than 5 and less than 25 in Maes et al and Van Neste et al in order to provide improve corrosion protection. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Response to Arguments
Applicant’s arguments with respect to claims 1-34 have been considered but are moot in view of the new grounds of rejection.
With respect to Applicants arguments of unexpected results, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Likewise, evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) MPEP 2131.04.
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.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 18, 2026
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