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 .
Election/Restrictions
This application contains claims directed to a plurality of patentably distinct species that fall within the non-triazole compounds selected from Formula (I), Formula (II) and Formula (III). The species are independent or distinct because they have a unique chemical strictures and unique chemical and physical properties. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species that fall within the non-triazole compounds selected from Formula (I), Formula (II) and Formula (III), for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1, 11-12 and 15 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because applicant has no statement on the record that for patentability purposes the species stand and fall together.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Aaron L. Webb on 02/18/26 a provisional election was made to the non-triazole compound as set forth in paragraph [0018] of applicant’s specification. Said species has the name 2,3,4,5,6-pentahydroxyl-1-morpholin-4-ylhexan-1-one, and falls directly within Applicant’s non-triazole compounds of Formula (I). Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-10 and 15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102
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 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.
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.
Claim(s) 1-3, 7 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aslam, R., et al. “Effectiveness of some non-ionic surfactants as biodegradable corrosion inhibitor for low carbon steel in nacl solution.”, Online Conference Paper, pages 1-11 (2016).
Aslam et al. discloses two novel non-ionic surfactants N-alkyl-N-methylgluconamide, Glu (n) of the general formula CnH2n+1NH(CH2)2NHCO(CHOH)4CH2OH (n=10,12) which function as very effective corrosion inhibitors of low carbon steel. Said disclosed two novel non-ionic surfactants are glucamides that fall directly within Applicant’s non-triazole compounds of Formula (I) as set forth in Applicant’s independent claim 1 and dependent claims 2-3 and 7. Furthermore, Aslam et al.’s Tables 1 and 3 directly teach using concentrations of said two novel non-ionic surfactants at concentration ranges of 1 x 10-5 wt.% which is 0.1 ppm and 1.25 x 10-5 wt.% which is 0.125 ppm to inhibit corrosion of low carbon steel. Said concentration amounts fall directly within applicant’s concentration range as set forth in applicant’s dependent claim 11. Applicant’s claims 1-3, 7 and 11 are thus deemed to be clearly anticipated over said disclosure.
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klug et al. U.S. Patent Application Publication No.: 2017/0218293 A1.
Klug et al. discloses corrosion inhibiting composition for metal surfaces, such as iron, copper and its alloys comprising a) at least one N-methyl-N-acylglucamine of formula (I), b) one or more organic acids of formula (II) and/or the salts thereof, and c) one or more alkanolamines of formula (III), see abstract, paragraph [0002], examples and claims.
Klug et al.’s compounds of at least one N-methyl-N-acylglucamine of formula (I), fall directly within Applicant’s non-triazole compounds of Formula (II). Applicant’s claim 1 is deemed to be directly anticipated over said disclosure.
Also note that Klug et al. discloses the optional further addition of 0.001% to 5% of one or more biocides (e.g. 3-iodo-2-propynyl butyl carbamate (IPBC)) into the corrosion inhibiting composition, see paragraph [0214] and dependent claim 12.
Claim(s) 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Klug et al. U.S. Patent Application Publication No.: 2017/0218293 A1.
Klug et al. has been described above and differ from applicant’s claimed invention in the following ways: 1) there does not seem to be a direct teaching (i.e. by way of a specific example) to where the non-triazole corrosion inhibitor is introduced into the water stream in an amount of from 0.01 ppm to 500 ppm (0.000001 to 0.05 wt.%), as set forth in applicant’s dependent claim 11, and 2) there does not seem to be a direct teaching (i.e. by way of a specific example) to where a halogen-containing biocide in an amount of at least 0.1 ppm is further added to the water stream, as set forth in applicant’s dependent claim 12.
It would have been obvious to one having ordinary skill in the art to use Klug et al.’s disclosure of dependent claim 9 that the corrosion inhibiting composition can comprises from 1% to 50% by weight at least one N-methyl-N-acylglucamine of formula (I), in conjunction with Klug et al.’s disclosure that the composition is added to water (e.g. water streams) at 1 part composition to 10 to 50 parts water, as strong motivation to add the N-methyl-N-acylglucamine of formula (I) to the water stream in an amount that falls within applicant’s claimed concentration range of 0.01 ppm to 500 ppm (0.000001 to 0.05 wt.%), as set forth in applicant’s dependent claim 11. As way of illustration only if the corrosion inhibiting composition contained 1 wt.% of the N-methyl-N-acylglucamine of formula (I) and the composition was added as 1 part to 50 parts water the concentration of the N-methyl-N-acylglucamine of formula (I) in the water stream would be approximately 196 ppm. It is not inventive to merely follow the direct disclosure of a prior-art reference.
Likewise, it would have been obvious to one having ordinary skill in the art to use Klug et al.’s disclosure of paragraph [0214] and dependent claim 12, as strong motivation to further incorporate a halogen-containing biocide (e.g. 3-iodo-2-propynyl butyl carbamate (IPBC)) into the corrosion inhibiting composition at a concentration amount such that when the composition is added to a water stream at 1 part composition to 50 parts water, the concentration of the a halogen-containing biocide within the water stream, would easily fall within applicant’s claimed concentration range of at least 0.1 ppm. It is not inventive to merely follow the direct disclosure of a prior-art reference.
Claim(s) 8 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Aslam, R., et al. “Effectiveness of some non-ionic surfactants as biodegradable corrosion inhibitor for low carbon steel in nacl solution.”, Online Conference Paper, pages 1-11 (2016) in view of Klug et al. U.S. Patent Application Publication No.: 2017/0218293 A1.
Aslam et al. and Klug et al. have both been described above. Aslam et al. differ from applicant’s claimed invention in the following ways: 1) there is not a direct disclosure that the disclosed two novel non-ionic surfactants N-alkyl-N-methylgluconamide, Glu (n) of the general formula CnH2n+1NH(CH2)2NHCO(CHOH)4CH2OH (n=10,12) are also effective corrosion inhibitors of yellow metals such as copper, brass and bronze as set forth in applicant’s claims 8 and 13-14, and 2) there is not a direct disclosure to where a halogen-containing biocide in an amount of at least 0.1 ppm is further added to the water stream, as set forth in applicant’s dependent claim 12.
It would have been obvious to one having ordinary skill in the art to use Klug et al.’s disclosure that N-methyl-N-acylglucamine compounds (disclosed to be effective corrosion inhibitors for both steel and copper and its alloys) and which are very similar to Aslam et al.’s non-ionic surfactants N-alkyl-N-methylgluconamide, Glu (n) of the general formula CnH2n+1NH(CH2)2NHCO(CHOH)4CH2OH (n=10,12), as strong motivation to both expect and to use, Aslam et al.’s non-ionic surfactants N-alkyl-N-methylgluconamide, Glu (n) of the general formula CnH2n+1NH(CH2)2NHCO(CHOH)4CH2OH (n=10,12) in a process of inhibiting corrosion of yellow metals (e.g. copper, brass and/or bronze).
Likewise, it would have been obvious to one having ordinary skill in the art to use Klug et al.’s disclosure of paragraph [0214] and dependent claim 12, as strong motivation to further incorporate a halogen-containing biocide (e.g. 3-iodo-2-propynyl butyl carbamate (IPBC)) into Aslam et al.’s corrosion inhibiting composition for the benefits it would provide, and to incorporate it at a concentration amount such that when the corrosion inhibiting composition is added to a water stream at 1 part composition to 50 parts water, the concentration of the a halogen-containing biocide within the water stream, falls within applicant’s claimed concentration range of at least 0.1 ppm.
Allowable Subject Matter
Claims 4-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
These claims, drawn to a method of inhibiting corrosion of a corrodible metal surface that contacts a water stream in a water system, are deemed to be both novel and unobvious over the above applied prior-art references which neither teach nor suggests where the R2 and R3 groups in Formula (I) from a ring with the nitrogen atom.
Please note the document entitled: (National Center for Biotechnology Information) “2R,3S,4R,5R)2,3,4,5,6-pentahydroxyl-1-morpholin-4-ylhexan-1-one”, PUBCHEM CID 121428311”, PubChem entry (online), pages 1-9, 06 August 2016. Said document does disclose a non-triazole compound that falls within Applicant’s Formula (1) of independent claim 1 and also within elected dependent claims 2-8 and 11-14. Nevertheless, said document has neither a disclosure nor any suggestion that said “2R,3S,4R,5R)2,3,4,5,6-pentahydroxyl-1-morpholin-4-ylhexan-1-one” has corrosion inhibiting properties. There is also no motivation to combined the disclosure of said document with any of the prior-art references of record, because the chemical structure of the compound “2R,3S,4R,5R)2,3,4,5,6-pentahydroxyl-1-morpholin-4-ylhexan-1-one” falls well outside of the broad chemical formulas of the other glucamides as disclosed by the other prior-art references of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764