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 .
Priority
This application is a 371 of PCT/JP2022/005372 (filed 02/10/22), which application claims priority to JP 2021-021151 (filed 02/12/21).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Amendment(s)
The Preliminary Amendment filed 08/04/23 is entered.
Claims 1-12 are pending.
Drawings
No Drawings have been filed in this application.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-7 and 10-12) in the reply filed on 11/18/25 is acknowledged. The traversal is on the ground(s) that there is no burden on the examiner to examine the Groups in one application This is not found persuasive because, as stated in the requirement, the searches required for the distinct groups are not coextensive.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The IDS statements filed 08/04/23 (2) and 11/01/24 have been considered. Initialed copies accompany this action.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Construction
The preamble terminology “…for iron oxide and/or hydroxide” is construed as a statement of intended utility. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
Claim(s) 1-7, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over either JP 2018-127661A or US 2004/0102344A1.
JP 2018-127661A discloses a liquid capable of removing iron oxide and suppressing generation of rust (para 0057 translation). The liquid comprises thiourea/H2O (instant component A), a chelator such as aminocarboxylic acid (instant component B), and a nonionic surfactant, which may be trimethylamine or monomethylamine (instant component C) (see para 006; 0010; 0016; 0019; 0022). The reference teaches a pH range of 8.5-12 (para 0018), and overlapping amounts of each of instant components A-C (para 0015; examples).
US 2004/0102344A1 discloses an alkaline (pH 7-9) for removal of rust. The aqueous solution comprises a thiourea dioxide (instant component A), a chelator such as aminocarboxylic acid (instant component B), and a basic compound which may be an amine (instant component C) (see para 0012; 0017; 0018; 0021-0024; ). The reference teaches a pH range of 7-9 (para 0039), and overlapping amounts of each of instant components A-C (para 0024; examples).
Although the references do not disclose the claimed combination of reducing agent, water-soluble chelating agent, and amine compound with sufficient specificity to anticipate the above listed claims, the examiner submits that the claimed selection of materials would have been obvious to the skilled artisan because such compositions fall within the scope of those taught by the above prior art. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a rust removal composition containing the claimed components is expressly suggested by the above disclosures and therefore is an obvious formulation. All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007)).
Additionally, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s), i.e. redox potential. However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (para 0027; 0051-0052 of instant PGPUB). Therefore, the claimed effects and physical properties, i.e. redox potential would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
February 27, 2026
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