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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 17, 2026 has been entered.
Response to Amendment
The Amendment filed February 17, 2026 has been entered. Examiner acknowledges the addition of new claims 17-25. Claims 4, and 7-25 remain pending in the application.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive. Applicant traverses the rejection of claims 4 and 7-16 over Yamaguchi (US5135677) in view of Austin (US-20030173303-A1) and argues that the Office has not established motivation or reasonable expectation of success. The rejection has been reconsidered, and Austin is no longer relied upon for claims 4, 7-10 and 12-16. The claims are rejected over Yamaguchi because Yamaguchi itself teaches a maleic acid polymer/copolymer useful as a water-treatment and antiscale agents, teaches decarbonization/decarboxylation during polymerization, and teaches that the amount of decarbonization and resulting carboxyl-group content may be controlled by controlling hydrogen peroxide addition. Applicant’s own declaration quotes Yamaguchi’s teaching that carbon dioxide evolves during polymerization as a result of decarbonization from maleic acid and/or the acid-type maleic acid polymer, and that controlling hydrogen peroxide controls the amount of decarbonization and the amount of carboxyl groups in the acid-type maleic acid polymer. Applicant argues that Yamaguchi provides no motivation to increase decarboxylation and instead treats decarboxylation as a side reaction to be constrained. This argument is not persuasive because the Office’s position is not that one of ordinary skill would have sought to maximize decarboxylation without limit. Rather, Yamaguchi expressly identifies decarbonization/carboxyl-group content as a controllable polymer property. Where Yamaguchi teaches that decarbonization occurs during polymerization and that its degree can be controlled by adjusting hydrogen peroxide, selecting a desired amount of decarboxylation would have been no more that routine optimization of a known result-effective variable, absent persuasive evidence that the claimed threshold is critical or produces unexpected results. Applicant has not established that a polymer having at least 5 molar% decarboxylated maleic acid repeating units exhibits an unexpected property relative to polymers having decarboxylation values immediately below that level.
Applicant’s teaching-away argument is also not persuasive. Applicant relies on Yamaguchi’s statement that more than 100g hydrogen peroxide produces no additional effect and leaves excess hydrogen peroxide in the polymerization system. However, that statement does not teach away from controlling decarboxylation within Yamaguchi’s disclosed operating window. It merely provides an upper process boundary. Yamaguchi still affirmatively teaches that hydrogen peroxide amount controls decarbonization/carboxyl content. A reference does not teach away merely by identifying preferred or bounded operating conditions, particularly where the claimed result is achieve by routine adjustment within or near the disclosed process teachings.
Applicant further argues that the claimed method requires “modifying a crystal habit”, and that the Office has not established motivation to modify Yamaguchi to obtain that result. This argument is not persuasive because Yamaguchi teaches using maleic acid polymer/copolymer as a water-treating agent and antiscale agent. The inhibition of calcium carbonate or other mineral scale formation by a polymeric antiscalant would have been understood to involve modification of precipitation, crystal growth, morphology, adhesion, deposition, or dispersion behavior. Therefore, the recited “modifying a crystal habit” is an expected mechanism or result of using Yamaguchi’s maleic acid polymer/copolymer in an aqueous antiscale treatment. Austin is not necessary to establish a water-treatment antiscalant polymer that suppresses mineral scale formation would modify crystal growth or crystal habit.
Applicant also argues that the Third Farrar Declaration shows no reasonable expectation of success. The Declaration has been carefully considered, but it is not persuasive. First, the experiments identified as reproductions of Yamaguchi Examples 8 and 9 do not appear to reproduce those examples as actually taught. The Declaration states that, for testing both Yamaguchi Example 8 and Example 9, “ferrous ammonium sulphate (FAS)” was added to the reaction vessel. However, Yamaguchi Examples 8 and 9 were Fe3+ examples, not Fe2+ examples. Ferrous ammonium sulfate contains Fe2+. Thus, the Declaration’s reported results are not shown to be representative of Yamaguchi’s actual Examples 8 and 9 and do not establish that Yamaguchi’s disclosed Fe3+ process would fail to achieve, or render obvious, the claimed decarboxylation level. Second, even accepting the Declaration’s modified testing at Face value, the data do not establish a meaningful technical boundary at 5 molar%. In the third round of testing, the Declaration reports decarboxylation values of 4.94% and 4.74%. These values are immediately adjacent to the claimed “at least 5 molar%” threshold. Applicant has not provided evidence that a polymer having 5.00 molar% decarboxylated maleic acid repeating units produces any unexpected result or patentable distinction relative to polymers having 4.94% or 4.74% decarboxylation. Accordingly, the Declaration does not rebut the conclusion that the claimed value would have been an obvious optimization of Yamaguchi’s controllable decarbonization process.
Applicant also argues that certain modified experiments produced discoloration and therefore would render Yamaguchi unsuitable for its intended purpose. This argument is not persuasive because the discoloration evidence is not commensurate with the full scope of Yamaguchi’s disclosure or the pending claims. As noted above, the experiments used ferrous ammonium sulphate rather than reproducing Yamaguchi’s Fe3+ Examples 8 and 9. The Declaration therefore does not establish that Yamaguchi’s actual examples, or Yamaguchi’s broader disclosed metal-ion systems, would necessarily produce unacceptable discoloration when adjusted to obtain the claimed decarboxylation level. Moreover, the claims do not recite color, absence of discoloration, or any limitation requiring a particular commercial appearance of the polymer.
Finally, Applicant’s assertion that “every one of the Examiner’s guesses was experimentally wrong” is not supported by the Declaration’s own data. The reported 4.94% value is immediately adjacent to the claims 5 molar% threshold, and the Declaration does not show that the difference between 4.94% and 5.00% is technically meaningful. The evidence therefore does not show lack of predictability sufficient to overcome the prima facie case. Rather, the data confirm that Yamaguchi’s disclosed process can produce decarboxylation levels very close to the claimed amount, and the record lacks evidence of criticality or unexpected results at the claimed threshold.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17, 18, 22, 23 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 17 recites “wherein the treatment composition is added to the cooling tower at a dosage selected such that, under operating conditions in which bulk precipitation of the inorganic compound occurs, the precipitated inorganic compound exhibits a modified crystal habit that results in reduced adhesion to heat transfer surfaces.” The Specification filed does not appear to describe “heat transfer surfaces” as such, nor does it reasonably convey that the inventor was in possession of the specific limitation requiring a dosage selected so that a modified precipitated inorganic compound exhibits reduced adhesion specifically to heat transfer surfaces.
Claim 18 recites “wherein the copolymer has a number-average molecular weight of less than about 3,000 Daltons.” The specification filed does not appear to disclose “number-average molecular weight”, “Mn”, or any equivalent statement identifying the recited molecular-weight value as a number-average molecular weight. While the specification may disclose molecular weight generally, or a molecular-weight range, the amended claim specifically requires number-average molecular weight, which is a particular molecular-weight measurement distinct from other molecular-weight measures such as weight-average molecular weight.
Claim 22 recites “wherein the method is carried out under cooling water conditions in which untreated water would otherwise produce adherent mineral scale, wherein the cooling water conditions comprise a calcium hardness of about 600 mg/L to about 1200 mg/Land a pH of about 9.0 to about 10.2.” The specification filed does not appear to disclose cooling-water conditions having a “calcium hardness of about 600 mg/L to about 1200 mg/L”. The disclosure describes experimental solutions containing calcium ions and carbonate ions, but a disclosure of separate solutions containing Ca2+ and CO32- does not necessarily provide written-description support for the claimed calcium hardness range. Calcium ion concentration and calcium hardness are not identical claim concepts, and the specification does not clearly express the claimed range in terms of calcium hardness. Further, the claimed combination of cooling water conditions – including untreated water producing adherent mineral scale, calcium hardness of about 600 mg/L to about 1200 mg/L, and pH of about 9.0 to about 10.2- appears to be a newly formulated condition set not expressly described in the disclosure.
Claim 23 recites “wherein the copolymer further comprises terminal hydroxyl groups formed during polymerization, the terminal hydroxyl groups contributing to adsorption of the copolymer on crystal surfaces.” The specification filed supports that terminal hydroxyl groups may be formed during polymerization. However, the specification does not appear to reasonably convey the specific functional relationship now claimed: that the terminal hydroxyl groups contribute to adsorption of the copolymer on crystal surfaces. The disclosure more generally discusses adsorption of the polymer on crystal or crystalloid surfaces and discusses non-ionic/non-functionalized groups as aiding adsorption. However, the disclosure does not appear to identify terminal hydroxyl groups as the groups that contribute to adsorption on crystal surfaces.
Claim 25 recites “wherein crystal habit modification of the inorganic compound occurs prior to exhaustion of threshold inhibition, thereby producing, after bulk precipitation, precipitated inorganic compound that exhibits reduced adhesion to surfaces within the cooling tower.” The specification filed discusses threshold inhibition, crystal habit modification, bulk precipitation, and reduced adhesion/deposition. However, the disclosure does not appear to describe the specific temporal/mechanistic relationship now claimed, namely, that crystal habit modification occurs “prior to exhaustion of threshold inhibition.” The amended claims requires more than the general coexistence of threshold inhibition and crystal habit modification mechanisms. It requires a particular sequence or timing relationship between the mechanisms. The originally filed specification does not reasonably convey that the inventor was in possession of this specific timing limitation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 4, 7-10, 12-21 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US5135677).
Regarding claim 4, Yamaguchi discloses the method of claim 8, wherein the copolymer comprises at least one terminal hydroxyl group (Yamaguchi col. 5 lines 19-21).
Regarding claim 7, Yamaguchi discloses the method of claim 8, wherein the inorganic compound is selected from the group consisting of calcium carbonate (Yamaguchi col. 14 line 2), calcium sulfate, barium sulfate, strontium sulfate, calcium fluoride, calcium oxalate, calcium phosphate, iron oxides, iron hydroxides, silica, and silicates.
Regarding claim 8, Yamaguchi discloses a method of treating cooling towers, the method comprising adding a treatment composition (Yamaguchi col. 8 discloses that the polymer has outstanding properties “when used as a water-treating agent”) to a cooling tower (Yamaguchi abstract “industrial field of water treatment”) wherein the treatment composition comprises a copolymer (Yamaguchi abstract).
Yamaguchi does not disclose the treatment composition is used to modify a crystal habit of an inorganic compound in the cooling tower or that the copolymer has at least 5 molar % decarboxylated maleic acid repeating units.
However, Yamaguchi does disclose that the molar% of the non-carboxylated monomeric repeating units in said polymer molecules may be increased proportionally with the amount of hydrogen peroxide added in the reaction adding that “hydrogen peroxide should be used in an amount of 8-100 g, preferably 10-80 g, and more preferably 15-50 g; per mol of the monomer component. (Col 7. Lines 38-57) It would have been obvious to one of ordinary skill in the art at the time of filing to adjust the mass of hydrogen peroxide added to increase the molar% to at least 5 as a matter of optimization and according to Yamaguchi, “This is a great advantage of the ·present invention because the acid-type maleic acid polymer can be made suitable for a broad range of applications by controlling the amount of carboxylic acid which greatly affects the physical properties and performance of the acid-type maleic acid polymer.”
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use Yamaguchi’s water-treating /antiscale maleic acid polymer composition in a cooling tower to modify the crystal habit of an inorganic compound because Yamaguchi expressly teaches that the acid-type maleic acid polymer/copolymer is useful as a water-treating agent and antiscale agent, and further evaluates the polymer for suppression of calcium carbonate scale in an aqueous system. Cooling towers are conventional aqueous water-treatment systems in which calcium carbonate and other inorganic mineral scale formation is a known problem, and applying Yamaguchi’s disclosed antiscale polymer to such a system would have been an ordinary and predictable use of the polymer for its disclosed purpose. Further, because Yamaguchi’s polymer suppresses calcium carbonate scale formation in aqueous solution, it would have been obvious that the polymer modifies the precipitation, growth, morphology, adhesion, deposition, or dispersion behavior of the inorganic scale; thus, the recited “modify a crystal habit” is an expected mechanism or result of applying Yamaguchi’s antiscale polymer treatment composition to a cooling-tower aqueous system. Additionally it would have been obvious to adjust Yamaguchi’s aqueous maleic acid polymerization process to obtain at least 5 molar% decarboxylated maleic acid repeating units because Yamaguchi expressly teaches that carbon dioxide evolved during polymerization as a result of decarbonization from maleic acid and/or the acid-type maleic acid polymer, and that the amount of decarbonization from maleic acid and/or the acid-type maleic acid polymer, and that the amount of decarbonization/carboxyl-group content may be controlled by controlling the amount of hydrogen peroxide added.
Regarding claim 9, Yamaguchi discloses the method of claim 8, wherein in addition to crystal habit modification properties (Yamaguchi claim 11 and Examples disclose use of the polymer/copolymer as an antiscalant which modifies a crystal habit), the treatment composition further comprises one or more properties selected from the group consisting of threshold inhibition, sequestration, chelation, stabilization (Yamaguchi col. 1 and 9 as well as Examples disclose use of the polymer/copolymer as a chelating agent), and particulate dispersion.
Regarding claim 10, Yamaguchi discloses the method of claim 8, wherein the copolymer comprises at least one selected from the group consisting of monocarboxylic acids (col. 5 lines 14-17 and 64-67), non-ionic functional groups (Yamaguchi col 5. Formula 1 and 2 indicates methyl groups), terminal hydroxyl groups (Yamaguchi col. 5 lines 19-21), and combinations thereof.
Regarding claim 12, Yamaguchi discloses the method of claim 8, wherein the copolymer is a polymaleic acid copolymer (Yamaguchi abstract).
Regarding claim 13, Yamaguchi discloses the method of claim 12, wherein the copolymer comprises at least one monomeric repeat unit other than maleic acid (Yamaguchi col. 5 line 13 through col. 6 line 3).
Regarding claim 14, Yamaguchi discloses the method of claim 8, wherein the copolymer comprises carboxylate groups derived from at least one selected from the group consisting of acrylic acid (Yamaguchi col. 5 lines 60-61), maleic acid, and combinations thereof.
Regarding claim 15, Yamaguchi discloses the method of claim 8, wherein the copolymer comprises sulfonate functional groups (Yamaguchi col. 22 embodiment of example 50).
Regarding claim 16, Yamaguchi discloses the method of claim 8, wherein the copolymer comprises non-ionic functional groups (Yamaguchi col 5. Formula 1 and 2 indicates methyl groups).
Regarding claim 17, Yamaguchi discloses the method according to claim 8, wherein the treatment composition is added to the cooling tower at a dosage selected such that, under operating conditions in which bulk precipitation of the inorganic compound occurs, the precipitated inorganic compound exhibits a modified crystal habit that results in reduced adhesion to heat transfer surfaces (Yamaguchi col. 8, abstract and examples demonstrating antiscale effectiveness disclose using the polymer/copolymer for water-treatment in an industrial application, it would have been obvious to use a proper dosage in a cooling tower under operating conditions in which bulk precipitation of the inorganic compound occurs because the polymer is used to suppress mineral scale formation and as such it would have been obvious to modify precipitation, growth, morphology, adhesion, deposition, or dispersion behavior of the precipitated inorganic compound making it less likely to adhere to surfaces in the cooling tower).
Regarding claim 18, Yamaguchi discloses the method according to claim 8, wherein the copolymer has a number-average molecular weight of less than about 3,000 Daltons (Yamaguchi col. 4 teaches a number-average molecular weight of 300-5000, preferably 400-3000 which includes less than about 3000 Daltons).
Regarding claim 19, Yamaguchi discloses the method according to claim 8, wherein the copolymer is formed by aqueous polymerization of maleic acid monomer components under conditions that are selected to increase decarboxylation during polymerization (Yamaguchi col. 7 teaches decarboxylation “decarbonization” can be controlled by controlling hydrogen peroxide addition).
Regarding claim 20, Yamaguchi discloses the method according to claim 8, wherein at least a portion of the decarboxylated maleic acid repeating units form non-ionic repeating units that contribute to adsorption of the copolymer onto a forming crystal lattice of the inorganic compound (Yamaguchi col. 7 teaches that decarbonization occurs during polymerization of maleic acid and/or acid-type maleic acid polymer, and that NMR analysis shows a CH2 peak indicating an acrylic acid-type structure originating from decarbonization during polymerization (col. 16). Because the resulting decarbonization-derived structure reduces carboxyl functionality relative to maleic acid repeating units, the resulting non-carboxylated/non-ionic repeating units would have been expected to contribute to interaction and adsorption of the antiscale polymer on forming mineral-crystal surfaces when the polymer is used for calcium carbonate scale suppression in an aqueous system.)
Regarding claim 21, Yamaguchi discloses the method according to claim 8, wherein the inorganic compound comprises calcium carbonate and the modified crystal habit comprises rounded or non-planar precipitated structures (Yamaguchi col. 8, abstract and examples demonstrating antiscale effectiveness teaches that the polymer is used as an antiscalant and it would have been understood to involve modification of precipitation, crystal growth, morphology, adhesion, deposition, or dispersion behavior. Such modification would predictably cause departure from a planar or cubic structure for the crystal habit and a rounded or otherwise non-planar shape would be the expected result).
Regarding claim 23, Yamaguchi discloses the method according to claim 8, wherein the copolymer further comprises terminal hydroxyl groups formed during polymerization (Yamaguchi col. 5 teaches incorporation of isoprenol, prenol, isoprene alcohol which contain terminal hydroxyl groups), the terminal hydroxyl groups contributing to adsorption of the copolymer on crystal surfaces.
Regarding claim 24, Yamaguchi discloses a method of treating cooling towers, the method comprising adding a treatment composition (Yamaguchi col. 8 discloses that the polymer has outstanding properties “when used as a water-treating agent”) to a cooling tower (Yamaguchi abstract “industrial field of water treatment”) to modify a crystal habit of an inorganic compound in the cooling tower, wherein the treatment composition comprises a copolymer having at least 5 molar % decarboxylated maleic acid repeating units, wherein the copolymer exhibits polymer rigidity and solution stability in cooling-tower aqueous systems characterized by dissolved salt content and hardness-causing divalent ions (As discussed in the rejection of claim 8, Yamaguchi teaches or renders obvious the polymer/copolymer of claim 8. The claimed rigidity/stability are expected properties of the same maleic-acid/dicarboxylic acid polymer structure to be used in aqueous systems containing hardness-causing divalent ions, because the carboxylic acid/carboxylate groups along the polymer backbone provide electrostatic repulsion and water solubility in such aqueous treatment environments).
Regarding claim 25, Yamaguchi discloses a method of treating cooling towers (Yamaguchi col. 8 discloses that the polymer has outstanding properties “when used as a water-treating agent” and Yamaguchi abstract suggests that such agents would be useful in the “industrial field of water treatment”), the method comprising adding a treatment composition to a cooling tower to modify a crystal habit of an inorganic compound in the cooling tower (Yamaguchi col. 8, abstract and examples demonstrating antiscale effectiveness teaches using maleic acid polymer/copolymer as a water-treating agent and antiscale agent. The inhibition of calcium carbonate or other mineral scale formation by a polymeric antiscalant would have been understood to involve modification of precipitation, crystal growth, morphology, adhesion, deposition, or dispersion behavior. Therefore, the recited “modifying a crystal habit” is an expected mechanism or result of using Yamaguchi’s maleic acid polymer/copolymer in an aqueous antiscale treatment), wherein the treatment composition comprises a copolymer having at least 5 molar % decarboxylated maleic acid repeating units (Yamaguchi renders obvious adjusting hydrogen peroxide to control decarboxylation and improve utility of the polymer as discussed in the rejection of claim 8), wherein crystal habit modification of the inorganic compound occurs prior to exhaustion of threshold inhibition, thereby producing, after bulk precipitation, precipitated inorganic compound that exhibits reduced adhesion to surfaces within the cooling tower (By Yamaguchi’s previously mentioned teaching, it would have been obvious to a person of ordinary skill in the art that the polymer acts during precipitation and crystal-growth processes to modify the precipitation, crystal growth, morphology, adhesion, deposition, or dispersion behavior of the inorganic scale. Accordingly, crystal habit modification occurring before complete exhaustion of scale-inhibition activity, and the resulting reduced adhesion of precipitated mineral scale to cooling-tower surfaces, would have been an expected mechanism and result of using Yamaguchi’s polymeric antiscale treatment composition.)
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US5135677) as applied to claim 8 above, and further in view of Austin (US20030173303A1).
Regarding claim 11, Yamaguchi discloses the method of claim 8, wherein the copolymer comprises non-ionic functional groups (Yamaguchi col 5. Formula 1 and 2 indicates methyl groups), wherein the copolymer comprises carboxylate functional groups (Yamaguchi col. 13 line 10 “polymaleate”), and also provides at least one property selected from the group consisting of threshold inhibition, chelation (Yamaguchi col. 1 and 9 as well as Examples disclose use of the polymer/copolymer as a chelating agent), and sequestration, and combinations thereof in the cooling tower.
Yamaguchi does not expressly disclose that the non-ionic functional groups and the carboxylate functional groups are present in a ratio that provides adsorption of the copolymer on crystal surfaces in the cooling tower.
Austin teaches that polymeric antiscalants may function by adsorption onto precipitated crystals and by interfering with crystal growth. Specifically, Austin teaches that dispersion of precipitated salt crystals is believed to result from adsorption of the inhibitor onto precipitated crystals, and further teaches that such inhibitors may interfere with and distort the crystal structure of the scale. Thus, Austin teaches that polymeric antiscalants having scale-control functionality can adsorb onto crystal surfaces and modify crystal growth/crystal structure.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the functional-group balance of Yamaguchi’s maleic acid copolymer treatment polymer in view of Austin’s teaching that polymeric antiscalants adsorb onto crystal surfaces and interfere with crystal growth, because Yamaguchi teaches a maleic acid copolymer useful as a water-treating/antiscale agent having carboxylate-containing maleic acid units and additional comonomer-derived functionality, while Austin explains the known mechanism by which such polymeric antiscalants act on precipitating scale. One of ordinary skill would have understood that selecting a ration of carboxylate functionality and non-ionic functionality sufficient to provide both adsorption onto forming crystal surfaces and scale-control properties such as threshold inhibition, chelation, or sequestration would have been a routine optimization of the polymer’s functional groups to obtain the known and desired antiscale performance in a cooling-tower aqueous system.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US5135677) as applied to claim 8 above, and further in view of Amjad "The Use of Polymers to Improve Control of Calcium Carbonate Scaling in High Stressed Cooling Water Systems*-Part II".
Regarding claim 22, Yamaguchi discloses the method according to claim 8.
Yamaguchi does not expressly disclose wherein the method is carried out under cooling water conditions in which untreated water would otherwise produce adherent mineral scale, wherein the cooling water conditions comprise a calcium hardness of about 600 mg/L to about 1200 mg/Land a pH of about 9.0 to about 10.2.
Amjad teaches calcium carbonate scale inhibition testing under high-stress cooling-water conditions within the claimed pH and calcium-hardness ranges. Amjad teaches that preventing calcium carbonate deposition, particularly in high-stress cooling-water systems, is a concern, and evaluates phosphonates, deposit-control polymers, and polymer/phosphonate blends as calcium carbonate inhibitors in such cooling-water systems. Amjad’s Table 3 discloses water chemistry Condition B having calcium as Ca2+ at 250mg/L and pH 9.00. Because calcium hardness is conventionally expressed as CaCO3, 250 mg/L Ca2+ corresponds to approximately 624 mg/L calcium hardness as CaCO3, which falls within the claimed range of about 600 mg/L to about 1200 mg/L, and Amjad’s pH 9.00 falls within the claimed pH range of about 9.0 to 10.2.
It would have been obvious to one of ordinary skill in the art at the time of filing to carry out Yamaguchi’s calcium-carbonate antiscale treatment method under the cooling-water conditions taught by Amjad because Yamaguchi teaches a maleic acid polymer/copolymer useful as a water-treating antiscale agent, while Amjad teaches that calcium carbonate deposition under high-stress cooling-water conditions is a recognized problem and discloses representative stressed cooling-water conditions including pH 9.00 and calcium hardness within the claimed range. A person of ordinary skill in the art would have been motivated to apply Yamaguchi’s known antiscale polymer treatment under Amjad’s known high-stress cooling-water conditions to inhibit calcium carbonate scale formation in cooling water systems, with a reasonable expectation of success because both references address calcium carbonate scale control in aqueous water-treatment environments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ferguson and Ferguson, "Formulating For Cost Performance", French Creek Software, Inc..
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/W.A.G./Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
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