DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5 January 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
Applicant’s amendment does not distinguish from Bennett in view of Tiwari or Meyer.
Applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that Bennet discloses gluconate as a hydrate inhibitor not an iron dissolver. However, Bennet teaches the presence of gluconate, which is the same compound as the claimed iron sulfide dissolver thus inherently capable of dissolving iron sulfide. Indeed, Bennet expressly discloses that the composition is particular useful for removal of deposit formed by hydrocarbon residual and iron sulfide ([0003] and [0020] and [0029]).
Applicant further argues Bennet discloses benzyl cocoalkyl(C12-C18) dimethyl ammonium chloride as a surfactant not a corrosion inhibitor. However, Bennet teaches the presence of benzyl cocoalkyl(C12-C18) dimethyl ammonium chloride, which is the same compound as the claimed compound of Formula IV thus inherently capable of inhibiting corrosion. Indeed, Bennet expressly discloses that the composition provides corrosion inhibition ([0006]).
Applicant maintains that there would have been no reason to select the specific type of agents from many possible combinations of agents disclosed by Bennett. The examiner notes that it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992).
Applicant argues that Bennett discloses the presence of a reaction product of a polyamine and a sulfonic acid, and it would not have reasonable basis to expect the claimed combination of gluconate, a solvent, a bis-imidazoline compound and a quaternary ammonium compound would be effective or compatible. The examiner disagrees. Bennet discloses the cleaner composition can comprise, in addition to the reaction product of a polyamine and a sulfonic acid , an imidazolinium based corrosion inhibitor ([0002], [0013] and [0056]), quaternary ammonium compound benzyl cocoalkyl(C12-C18) dimethylammonium chloride ([0120], an organic solvent s (0104]), and a gluconate ([0115]), thus Bennet teaches that the imidazolinium based corrosion inhibitor, quaternary ammonium compound benzyl cocoalkyl(C12-C18) dimethylammonium chloride and gluconate are compatible, and Bennet further expressly discloses that the combination can provide both corrosion protection and a cleaning effect in an oil and gas application ([0056]).
Applicant argues that there would be not motivation to combiner Bennet and Tiwari or Meyer. The examiner disagrees. As set forth in previous Office action, Bennet discloses a clean composition for removing deposit in oil gas applications comprises one or more corrosion inhibitors including an imidazolinium based corrosion inhibitor ([0013], [0056] and [0086]), Tiwari teaches a bis-quaternized compound of Formula (III) for inhibiting corrosion and/or removing deposits in oil and gas applications and the compound can be mixed with other quaternary ammonium such as imidazolinium quaternary ammonium compound to provide superior corrosion inhibiting performance with low environment impact ([0010], [0055] and [0057]), thus it would be obvious to combine the bis-quaternized corrosion inhibiting compound of Tiwari with the imidazolium based corrosion inhibitor as taught by Tiwari.
Similarly, Meyer teaches a bis-quaternized compound of formula (III) for inhibiting corrosion in oil and gas applications including refinery operations, wherein the compound can be mixed with other quaternary ammonium compound to provide superior corrosion inhibiting performance (col. 11, line 58-65, col.13,line 10-20 and col. 16, line 30-35), it would have been obvious for a person of ordinary skill in the art to include the quaternized corrosion inhibitor of Meyer in the cleaning composition of Bennet as taught by Meyer, and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a corrosion inhibitor for oil gas applications and refinery operations. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Applicant argues that there would not have been reasonable expectation that the combination of Bennett with Tiwari or Meyer would be effective. The examiner disagrees. As set forth above, both Tiwari and Meyer teach the bis-quaternized corrosion inhibitor can be mixed with other quaternary ammonium compound for corrosion inhibiting, and Bennett discloses the composition can comprise one or more corrosion inhibitors including imidazoline derivatives([0086] and [0087])). Thus one of ordinary skill in the art would have reasonable basis to expect the combination of Bennett with either Tiwari or Meyer would be effective for corrosion inhibiting and/or removing deposits.
As such the rejections over Bennett in view of Tiwari and over Bennett in view of Meyer stand and reiterated below.
Claim Rejections - 35 USC § 112
Claims 53-55 and 58 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.
Claim 53 recites “ claim 52”. However, claim 52 is cancelled. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
Claims 40-51 and 56-57 stand rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Tiwari.
Regarding claims 40-46, 50-51 and 56-57, Bennet teaches a composition for removing oilfield hydrocarbon and iron sulfide based deposits and protection against corrosive fluids and gases comprises an imidazolinium based corrosion inhibitor ([0002], [0013] and [0056]), benzyl cocoalkyl(C12-C18)dimethylammonium chloride ([0120], which meets the claimed quaternary ammonium compound of formula(IV), an organic solvent such as ethanol, methanol, ethylene glycol etc. (0104]), a scale inhibitor ([0106]), and a synergistic agent such as 2-mercaptoethanol ([0102], which meets the claimed sulfur-containing compound.
Bennet further teaches that the composition may further comprise a gluconate ([0115]), which meets the claimed iron sulfide dissolver, and alkali hydroxides such as sodium hydroxide ([0106], [0115] and [0118]), thus the presence of sodium gluconate.
Bennet does not teach the instantly claimed bis-quaternized imidazoline compound of formula (III).
Tiwari teaches a bis-quaternized compound for inhibiting corrosion and/or removing hydrocarbonaceous deposits in oil and gas applications including refinery has the following general formula ( ([0001], [0011]-[0014], [0046],[0059] and formula (I)):
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148
332
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and exemplified as ([0037]):
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322
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Wherein RT is C17 alkyl ([0037]), which meets the claimed formula (III).
Tiwari further teaches that the compound can be mixed with other quaternary ammonium such as imidazolinium quaternary ammonium compound to provide superior corrosion inhibiting performance with low environment impact ([0010], [0055] and [0057]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the bis-quaternized corrosion inhibitor of Tiwari in the composition of Bennet. The rationale to do so would have been the motivation provided by the teachings of Tiwari that to do so would predictably provide superior corrosion inhibiting performance with low environment impact ([0010]).
As to the limitation of “effective amount” of claim 40, Bennet in view of Tiwari teaches that the composition can provide corrosion inhibition and removal of deposit formed by hydrocarbon residual and iron sulfide ([0003], [0006], [0020], [0029] and [0056]), thus meets the “effective amount”.
Regarding claims 47-49, Bennet teaches the corrosion inhibiting component is present in an amount of preferably 15 wt.% ([0086]), which meets the claimed range, the organic solvent is present in an amount of 40 wt.% ([0103]), which meets claimed amount , thus the amount of the gluconate would be less than 45 wt.%, estimated by the examiner, which overlaps with the claimed range of claims 47 and 48 and encompasses the claimed range of claim 49.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the gluconate at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 40-51 and 53-58 stand, and new claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Meyer.
Regarding claims 40-46, 50-51 and 53-59, Bennet teaches a composition for removing oilfield hydrocarbon and iron sulfide based deposits and protection against corrosive fluids and gases including in refinery systems comprises an imidazolinium based corrosion inhibitor ([0002], [0013], [0029] and [0056]), benzyl cocoalkyl(C12-C18)dimethylammonium chloride ([0120], which meets the claimed quaternary ammonium compound of formula(IV), an organic solvent such as ethanol, methanol, ethylene glycol etc. (0104]), a scale inhibitor ([0106]), and a synergistic agent such as 2-mercaptoethanol ([0102], which meets the claimed sulfur-containing compound.
Bennet further teaches that the composition may further comprise a gluconate ([0115]), which meets the claimed iron sulfide dissolver, and alkali hydroxides such as sodium hydroxide ([0106], [0115] and [0118]), thus the presence of sodium gluconate.
Bennet does not teach the instantly claimed bis-quaternized imidazoline compound of formula (III), wherein n is 0 and L2 is H.
Meyer teaches a quaternized compound for inhibiting corrosion in oil and gas applications including refinery operations has the following general formula (col.11, line 60-65 and col.14,line 20-25):
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Meyer further teaches that the compound can be mixed with other quaternary ammonium compound to provide superior corrosion inhibiting performance (col. 11, line 58-65, col.13,line 10-20 and col. 16, line 30-35).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the quaternized corrosion inhibitor of Meyer in the composition of Bennet. The rationale to do so would have been the motivation provided by the teachings of Meyer that to do so would predictably provide superior corrosion inhibiting performance (col.11, line 58-65), and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a corrosion inhibitor for oil gas applications and refinery operations. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Bennet further teaches that the composition can contain sulfonic acid ([0061] and [0080]), which renders the claimed bis-quaternized compound of formula(III) obvious wherein n is 0, L2 is H and R4 is C2 alkylene, as the acid of the composition protonates the tertiary imidazoline nitrogen.
As to the limitation of “effective amount” of claims 40 and 59, Bennet in view of Myer teaches that the composition can provide corrosion inhibition and removal of deposit formed by hydrocarbon residual and iron sulfide ([0003], [0006], [0020], [0029] and [0056]), thus meets the “effective amount”.
Regarding claims 47-49, Bennet teaches the corrosion inhibiting component is present in an amount of preferably 15 wt.% ([0086]), which meets the claimed range, the organic solvent is present in an amount of 40 wt.% ([0103]), which meets claimed amount , thus the amount of the gluconate would be less than 45 wt.%, estimated by the examiner, which overlaps with the claimed range of claims 47 and 48 and encompasses the claimed range of claim 49.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the gluconate at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766