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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to an anticorrosive composition, classified in C23F 11/141.
II. Claim 9, drawn to a method of making an anticorrosive composition, classified in C23F 11/10.
III. Claims 10-22, drawn to a method of reducing the corrosion rate of a metallic surface, classified in C02F 5/12.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process of first forming a mixture of the solvent and supramolecular host chemical and then adding the corrosion inhibitor to said mixture.
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process of using that product of applying the composition to wood to act as a preservative, due in part, to the anti-microbial properties of many corrosion inhibitors (e.g. alkyl quaternary ammonium chlorides as set forth in applicant’s claim 2).
Inventions II and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design, mode of operation, function, or effect because Group II is drawn to a method of making an anticorrosive composition, whereas Group III is drawn to a method of reducing the corrosion rate of a metallic surface. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because applicant has no statement on the record that for patentability purposes the inventions stand and fall together.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve 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 restriction 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 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.
During a telephone conversation with Jeffrey A. Wolfson on 01/28/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-22 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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, 5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kirigakubo et al. U.S. Patent Application Publication No.: 2009/0193593 A1.
Kirigakubo et al. discloses a method for refreshing fabric articles without the need for additional cleaning treatment. The method comprises the steps of loading fabric articles to be treated into a drum of a home appliance, contacting said fabric articles with an aqueous fabric refreshing composition containing both antimicrobial active agent and deodorizing active agent under a temperature of from about 30.degree. C. to about 120.degree. C. for about 1 minute to about 120 minutes, see abstract.
Applicant’s claims are deemed to be directly anticipated over the aqueous fabric refreshing composition as set forth in TABLE 2. Said composition comprises in part the following: 0.27 wt.% of dodecyl dimethyl ammonium chloride (a corrosion inhibitor species that falls within Applicant’s dependent claim 2), 2.50 wt.% of 2-hydroxypropyl-beta-cyclodextrin (a supramolecular chemical that falls within Applicant’s supramolecular chemicals as set forth in paragraph [0021] of Applicant’s specification and whose concentration falls directly within Applicant’s dependent claim 5), 0.17 wt.% of glycerol-polyethylene glycol oxystearate (a surfactant and adjuvant/rheology modifier that falls directly with Applicant’s dependent claim 3), very minor amounts of adjuvants, and the balance water (a solvent species that falls with Applicant’s dependent claim 7).
Claim(s) 1-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maruyama et al. WO 03/014460 A1.
Maruyama et al. discloses a composition contains a phase transition material that provides a reversible temperature control benefit. The composition of the present invention is directly applied to a consumer-treatable surface. In addition, there is no messiness feeling when a phase transition change of the phase transition material occurs. Also, if the composition is in a liquid/gel form, it is dried before the phase transition occurs, see abstract.
Applicant’s claims are deemed to be directly anticipated over Example 1 (Formulations 1-4) and Example 5 (Formulations 1-4). As way of illustration only, in Example 1, Formulation 1 teaches a spray composition that comprises in part the following: 30 wt.% of didecyl dimethyl ammonium chloride (a corrosion inhibitor species that falls within Applicant’s dependent claim 2 and whose concentration falls within Applicant’s dependent claim 4), 7 wt.% of tetradecyl alcohol (an adjuvant that falls directly with Applicant’s dependent claim 3), 0.5 wt.% of cyclodextrin (i.e. hydroxypropyl-b-cyclodextrin and/or methylated cyclodextrin which are supramolecular chemicals), very minor amounts of other adjuvants and water being the balance.
Claim(s) 1, 3-5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107059015 B (i.e. CN ‘015).
CN 107059015 B discloses a gas-liquid double-effect supramolecular corrosion inhibitor used for protecting condensate water pipe line steel and a preparation method thereof. The preparation method comprises the following steps: 30-70 parts by mass of cyclodextrin and derivatives form a network-like body under the effect of 10-20 parts by mass of an inductive bridging agent, and the network-like body is then subjected to noncovalent interaction with 20-40 parts by mass of oily corrosion inhibition components to form a supramolecular system with a subject and object structure. According to the gas-liquid double-effect supramolecular corrosion inhibitor used for protecting condensate water pipe line steel and the preparation method thereof, the preparation method of the supramolecular corrosion inhibitor is simple and convenient, the reaction condition is mild, the parts, being exposed to gas phase and immersed in liquid phase, of the condensate water pipe line steel are effectively protected, see abstract.
Preferred oily corrosion inhibition components are one or more of cinnamic acid, dicyclohexylamine, methyl butynol and ethanol amine. Preferred induction bridging agent is one or more of ethyl alcohol, glutaraldehyde and ethylene glycol, see independent claim 1.
Applicant’s claims are deemed to be anticipated over Examples 1-12. As way of illustration only, Example 2 teaches completely dissolving B-cyclodextrin (a supramolecular chemical) in deionized water (a solvent) and then adding ethylene glycol (an induction bridging adjuvant/rheology modifier) dropwise, with stirring, to said solution, followed by adding dropwise a dicyclohexylamine (a corrosion inhibitor) to said admixture to form a supramolecular corrosion inhibiting system (i.e. a supramolecular guest molecule engaged in a host-guest chemistry with a corrosion inhibitor). The concentration amounts of the supramolecular component, the corrosion inhibitor and the solvent, as set forth in CN 107059015 B Examples 1-12, are deemed to fall within Applicant’s broad concentration ranges for the corrosion inhibitor component (dependent claim 4), the supramolecular component (dependent claim 5) and the solvent component (dependent claim 8).
Claim(s) 1 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 106337187 B (i.e. CN ‘187).
CN 106337187 B discloses an acid/base double stimulation responsive nanometer container and a preparation method thereof. According to the nanometer container, mesoporous nanometer silicon dioxide is adopted as a framework; a host-guest compound is formed based on host pillar[5]arene and a guest molecular chain 1,6-(1-(1-methyl)imida zolehexyl)hexamethylene diamine, which is a modified nanometer silicon dioxide supramolecular having an electrical charge, (reads on Applicant’s dependent claim 6); a supramolecular valve is formed on the surface of a microsphere through modification; a metal corrosion inhibitor is loaded in the microsphere; under the action of pH stimulation, macrocyclic pillar[5]arene in the nanometer container can move, thereby achieving controllable release of the metal corrosion inhibitor; and after the metal corrosion inhibitor enters a coating, metal corrosion can be effectively inhibited. The nanometer container disclosed by the invention has the advantages that the function of response to various external stimuluses can be achieved; double response to acid/base stimulation can be achieved; and the prospect of application to the fields of drug delivery, intelligent anti-corrosive coating and the like is broad, see abstract.
The metal corrosion inhibitor is preferably selected from benzotriazole, tolytriazole or mercaptobenzotriazole, see independent claim 1.
Applicant’s claims are deemed to be anticipated over Examples 1-3 which teach the preparation of supramolecular guest molecule engaged in a host-guest chemistry with a corrosion inhibitor. Said preparation method involves an aqueous solution comprising water and other optional organic solvents, such as tetrahydrofuran (reads on Applicant’s adjuvant of dependent claim 3). The concentration amounts of the supramolecular component, the corrosion inhibitor and the solvent, as set forth in CN 106337187 B Examples 1-12, are deemed to fall within Applicant’s broad concentration ranges for the corrosion inhibitor component (dependent claim 4), the supramolecular component (dependent claim 5) and the solvent component (dependent claim 8).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over CN 107059015 B (i.e. CN ‘015) in view of either Martin et al. U.S. Patent Number 6,866,797 or Daun et al. U.S. Patent Number 6,395,698.
CN 107059015 B (i.e. CN ‘015) has been described above and differs from applicant’s claimed invention in that there is not a direct teaching (i.e. by way of an example) to where the corrosion inhibitor is selected from one of applicant’s corrosion inhibitors of dependent claim 2.
Martin et al. discloses corrosion inhibitors and methos of use for preventing metal corrosion (e.g. ferrous metal corrosion). Example 1 and claim 24 both teach/claim didecyl dimethyl quaternary ammonium chloride (falls directly within applicant’s dependent claim 2) as a most preferred metal corrosion inhibitor.
Daun et al. discloses corrosion inhibiting sanitizing/disinfecting compositions which have various uses such as hard surfaces (e.g. metal surfaces) corrosion inhibiting and sanitizing/disinfecting, see abstract and column 2, lines 22-42. Examples 1-9 teach didecyl dimethyl ammonium chloride (falls directly within applicant’s dependent claim 2) as a most preferred corrosion/disinfecting agent.
It would have been obvious to one having ordinary skill in the art to use the disclosure of either one of the secondary references to Martin et al. or Daun et al., as strong motivation to either substitute a didecyl dimethyl ammonium chloride corrosion inhibitor for CN 107059015 B’s actually used corrosion inhibitor(s), because it is disclosed to be a highly effective metal corrosion inhibitor. In the alternative, a combination of CN 107059015 B’s actually used corrosion inhibitor(s) with a didecyl dimethyl ammonium chloride corrosion inhibitor would also be obvious since to use two or more compounds together for the same purpose they are individually known to be useful (e.g. corrosion inhibiting) is obvious choice which has been confirmed by the courts, outside a showing of unexpected and superior results. Please note that the primary reference to CN 107059015 B also discloses that imidazoline quaternary ammonium salts are effective corrosion inhibitors.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable CN 106337187 B (i.e. CN ‘187) in view of either Martin et al. U.S. Patent Number 6,866,797 or Daun et al. U.S. Patent Number 6,395,698.
CN 106337187 B (i.e. CN ‘187) in has been described above and differs from applicant’s claimed invention in that there is not a direct teaching (i.e. by way of an example) to where the corrosion inhibitor is selected from one of applicant’s corrosion inhibitors of dependent claim 2.
Martin et al. discloses corrosion inhibitors and methos of use for preventing metal corrosion (e.g. ferrous metal corrosion). Example 1 and claim 24 both teach/claim didecyl dimethyl quaternary ammonium chloride (falls directly within applicant’s dependent claim 2) as a most preferred metal corrosion inhibitor.
Daun et al. discloses corrosion inhibiting sanitizing/disinfecting compositions which have various uses such as hard surfaces (e.g. metal surfaces) corrosion inhibiting and sanitizing/disinfecting, see abstract and column 2, lines 22-42. Examples 1-9 teach didecyl dimethyl ammonium chloride (falls directly within applicant’s dependent claim 2) as a most preferred corrosion/disinfecting agent.
It would have been obvious to one having ordinary skill in the art to use the disclosure of either one of the secondary references to Martin et al. or Daun et al., as strong motivation to either substitute a didecyl dimethyl ammonium chloride corrosion inhibitor for CN 106337187 B’s in actually used corrosion inhibitor(s), because it is disclosed to be a highly effective metal corrosion inhibitor. In the alternative, a combination of CN 106337187 B’s actually used corrosion inhibitor(s) with a didecyl dimethyl ammonium chloride corrosion inhibitor would also be obvious since to use two or more compounds together for the same purpose they are individually known to be useful (e.g. corrosion inhibiting) is obvious choice which has been confirmed by the courts, outside a showing of unexpected and superior results.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764