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 .
This action is responsive to Applicant’s response to election/restriction and amendment/remarks filed 05/26/2026.
Claims 1-6, 8-15, 32, 40, 48, and 54 are currently pending.
The IDS statements filed 10/31/2023, 04/07/2026, and 05/13/2026 have been considered. Initialed copies accompany this action.
It is noted that, for some of the foreign patent references and non-patent literature references in foreign language(s), notably those on the IDS dated 05/13/2026, Applicant has merely provided translations of the abstracts of the references or no translations of the references whatsoever. While the references have been considered to the best of the Examiner’s ability, the contents of the references/pages in foreign languages have not been considered. Applicant is reminded 37 CFR 1.98(a)(3) requires a concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each publication that is not in the English language. Only the English portions of the submitted references have been considered.
Claim Interpretation
It is noted the claims recite several limitations describing how particular components are formed (e.g., “a first glycerol-restricted reaction product derived from a first set of reactants comprising (a) a first fatty acid mixture ... and (b) a polyamine”) even with further product-by-process limitations nested therein (e.g., that the first fatty acid mixture is “derived from a hydrolyzed vegetable oil”). Product-by-process limitations are not limited to the recited steps except to the extent they suggest structure of the product/composition. Patentability of product/composition claims is determined on the structure of the final product/composition, not the precursors.
Claim 1's recitation “wherein the first glycerol-restricted reaction product comprises 0 percent by weight to 0.1 percent by weight of glycerol” does impart some structure to the claim as a whole that the finally obtained reaction product comprises 0-0.1 wt.% of glycerol. However, the terms “derived from” are very broad and open-ended, synonymous to “capable of being obtained from” or “obtained from”, and do not necessarily require any sort of specific derivation, synthesis, or process steps from certain precursors and/or intermediates. The claim merely requires amides and/or ammonium salts thereof, with a limited amount (e.g., 0-0.1 wt.%, inclusive) of glycerol, that are capable of being obtained a fatty acid mixture and a polyamine, and that fatty acid mixture is capable of being obtained from a hydrolyzed vegetable oil. This is very broad. A hydrolyzed vegetable oil comprises a mixture of fatty acids and glycerol, and a glycerol-restricted (i.e., glycerol-removed) reaction product of a hydrolyzed vegetable oil and polyamine comprises a mixture of amides and essentially no (zero or a very small amount) glycerol. Accordingly, a mixture of fatty acids and essentially no (zero or a very small amount) glycerol is the structure suggested by the recited process steps rendering the Office's position that the product suggested by the recited process steps includes and encompasses a pure mixture of fatty acids a very fair and reasonable interpretation of the product-by-process limitations. Prior art teaching a mixture of fatty acids purified to include a low amount of glycerol, purified to include no glycerol, and/or simply provided or disclosed without any express glycerol present fairly reads on the component.
The similar is true for any additional components presented with similar "derived from" limitations or limitations further limiting the precursor and intermediate products.
Election/Restrictions
Applicant's timely election with traverse of Group I, claims 1-6, 8-14, and 54, in the reply filed on 05/26/2026 is acknowledged.
The traversal is on the ground(s) that Groups I, III, and IV possess unity and provide a specifical technical feature not taught by the prior art because the present invention addresses a technical problem of how to effectively use vegetable oil fatty acids as reactants to make corrosion inhibiting compounds. Applicant argues using vegetable oil fatty acids pose technical problems that are not faced when using pure compounds as reactants, that typical vegetable oils tend to incorporate fatty acids into glyceride molecules where the fatty acids are linked to a glycerol backbone and the desired corrosion inhibiting compounds of the claims require fatty acids integrated into the glycerides need to be released so that the fatty acids can form the desired amide linkages. Applicant elaborates hydrolyzing the vegetable oil frees the fatty acid and glycerol, leaving a glycerol content as a problematic artifact requiring treatment to reduce glycerol. Despite Applicant's explanation that the composition involves a multistep treatment process of cleaving fatty acids from a vegetable oil and then treating the cleaved fatty acid product prior to reaction with a polyamine, Applicant argues treating the glycerol-restricted features as product-by-process language is incorrect because the claim further requires that the first glycerol-restriction reaction product comprises 0-0.1 wt.% of glycerol which is a compositional limitation of the claimed reaction product not merely a statement of how the reaction product is made. Applicant elaborates this is a non-trivial compositional characteristic because hydrolysis of vegetable oil glycerides inherently produces glycerol as a reaction product.
This is not found persuasive because the aforementioned limitation(s) are still product-by-process limitations. The limitation "the first glycerol-restricted reaction product comprises 0 percent by weight to 0.1 percent by weight of glycerol" includes zero. Said differently, the claim includes zero weight percent glycerol meaning the glycerol component is optional. This, coupled with the other broad "derived from" recitations of the claim fairly mean amides that are a reaction product derived from a fatty acid mixture (that are capable of being derived from a hydrolyzed vegetable oil but not necessarily requiring step(s) involving deriving a fatty acid mixture from a hydrolyzed vegetable oil) entirely free of glycerol and a polyamine reads on the claimed limitations.
As previously discussed, product-by-process limitations are not limited to the recited process steps except to the extent they suggest structure of the product/composition. A hydrolyzed vegetable oil comprises a mixture of fatty acids and glycerol, and a glycerol-restricted (i.e., glycerol-removed) product of a hydrolyzed vegetable oil comprises a mixture of fatty acids and essentially no (zero or a very small amount) glycerol. Accordingly, a mixture of fatty acids and essentially no (zero or a very small amount) glycerol is the structure suggested by the recited process steps rendering the Office's position that the product suggested by the recited process steps includes and encompasses a pure mixture of fatty acids a very fair and reasonable interpretation of the product-by-process limitations. Prior art teaching a mixture of fatty acids purified to include a low amount of glycerol, purified to include no glycerol, and/or simply provided or disclosed without any express glycerol present fairly reads on the component.
Applicant's additional traversal to the Fairweather reference is noted but is moot at this time as Fairweather is not utilized in the present grounds of rejection. The Office's search of the elected invention revealed what is believed to be closer prior art at this time, and the presently relied upon prior art of record establishes the identified groups indeed lack unity of invention. However, the Office reserves the right to revisit the Fairweather reference at a later date if/when Applicant's future amendments and/or arguments overcome the present grounds of rejection.
Applicant's additional traversal to the Chen et al. reference that it fails to appreciate that glycerol is a source of stability problems such that one would not obtain the claimed glycerol-restricted reaction product is noted but is not persuasive because Chen et al. meets the claimed exclusion of glycerol by being wholly silent to its provision/synthesis and, as described above, a prior art reference does not need to teach an entire hydrolysis+glycerol treatment process to meet the claimed product-by-process limitations as patentability ultimately lies with product rather than the process.
In addition to all disclosed above, Groups I, III, and IV further lack unity of invention in view of the new Obeyesekere et al. (US 2017/0342311 A1) reference uncovered during search of the elected Group. See the 103 rejections over Obeyesekere et al., below.
Note that Applicant's traversal only sets forth arguments to the lack of unity of Groups I, III, and IV and do not address/traverse the reasons regarding lack of unity of Group II from the remaining groups.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15, 32, 40, and 48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102 & 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
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.
Claims 1-3, 8, and 54 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen et al. (CN 103993321 A). An English language machine translation of Chen et al. is attached to the Office’s supplied copy of the reference, and citations to Chen et al. are with respect to the English language machine translation unless specified otherwise.
As to claim 1, Chen et al. teach a corrosion inhibitor made from a flax/linseed seed oil amide (abstract). While the disclosure of a flax seed oil would ordinarily mean a fatty acid glyceride comprising a reaction product of fatty acids with glycerol (meaning glycerol might be present), Chen et al. specifically teaches a meaning/definition where the flax seed oil is actually present as raw materials made of a fatty acid mixture, i.e., a hydrolyzed vegetable oil, without glycerol, namely carboxylic acids of the formula R- C(=O)OH where R is R1 is a saturated C17 group (amounting to the formula being stearic acid), R2 is a monounsaturated C17 group (amounting to the formula being oleic acid), R3 is a diunsaturated C17 group (amounting to the formula being linoleic acid), and R4 is a triunsaturated C17 group (amounting to the formula being linolenic acid) (para. 0035-0039). Chen et al. then teach the fatty acid mixture is reacted with a polyamine (NH2CH2CH2NHCH2CH2NHCH2CH2NH2) to obtain the compound R-C(=O)- NHCH2CH2NHCH2CH2NHCH2CH2NH (para. 0040). This reads on a fatty acid amide comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a polyamine with no glycerol present, as claimed.
In the event Chen et al.'s product does not sufficiently anticipate the claimed plurality of amides product, the product-by-process limitations (and thus the claim) are still nevertheless obvious over the reference. Even if Chen et al. teach their amides are made by a different process (e.g., one without expressly deriving a fatty acid mixture from hydrolyzing vegetable oil or a particular precursor/species of oil thereof and treating the hydrolyzed oil to entirely remove cleaved glycerol if present, etc.), Chen et al.'s obtained product is either identical with or only slightly different than the claimed product to the reference's disclosed formation of an amide from a fatty acid mixture, without glycerol, reacted with a polyamine (para. 0040) that the skilled artisan would reasonably expect obtains substantially the same final product as claimed.
As to claim 2, Chen et al.'s polyamine (Id.) reads on the claimed formula where x is 2.
As to claim 3, Chen et al.'s mixture of fatty acids (i.e., stearic, oleic, linoleic, and linolenic acids, Id.) reads on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) comprises hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as stearic, oleic, linoleic, and linolenic acids are capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed.
As to claim 8, Chen et al. is silent to the presence of any glycerol which reads on the claimed limitations.
As to claim 54, see the rationale of claim 1 (Id.). Chen et al.'s amides are indeed the reaction product of the fatty acid mixture and the polyamine.
Claims 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 103993321 A).
The disclosure of Chen et al. is relied upon as set forth above.
As to claim 11, Chen et al. is wholly silent to the synthesis or provision of any of imidazoline, rosin acid, or rosin acid derivatives, which meets the claimed limitations that those components are optional and concentrations may be zero. However, Chen et al. teach the corrosion inhibitor composition comprises 20-40 wt.% isopropyl alcohol (abstract), which is above the claimed permissible concentration of 0 to 5 wt.% total C1-C10 monohydric alcohols (isopropyl alcohol is a C3 monohydric alcohol).
While Chen et al. fails to meet the claimed limitation of 0-5 wt.% total C1-C10 monohydric alcohols under the meaning of anticipation, Chen et al. still meets the claimed limitation under an obviousness rationale. First, Chen et al. is wholly silent to the synthesis or provision of any other C1-C10 monohydric alcohol other than isopropyl alcohol, meaning isopropyl alcohol is the only present monohydric alcohol. Chen et al. further teach the corrosion inhibitor composition is dosed to a corrosion medium, e.g., water/seawater, in a concentration of 0.01 to 0.1 g corrosion inhibitor composition to 100 g corrosion medium (para. 0008 and claim 2). Dosing the composition (comprising 20-40 wt.% isopropyl alcohol) in a concentration of 0.01 to 0.1 g in 100 g of a corrosion medium/water, as directly taught and motivated by the reference, arrives at an isopropyl alcohol concentration under the claimed maximum of 5 wt.% and within the claimed range of 0 to 5 wt.% total C1-C10 monohydric alcohols.
As to claims 13 and 14, Chen et al. teach the amides may be present as ammonium salts (abstract, para. 0048, and claim 1). Per the reasons described above regarding claim 11 (the composition is dosed to an aqueous medium, Id.), Chen et al. teach a composition comprising the ammonium salts is also obviously aqueous. Applicant's further limitation(s) that the ammonium salts of the amides are a reaction produced derived from the amides and an acid, alkyl halide, and/or an aryl halides is a product-by-process limitation describing how the ammonium salts are formed. Here, the claim merely requires an ammonium salt of the amide compounds regardless of how the ammonium salt is particularly formed.
Claims 4-6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 103993321 A) as applied to claims 1-6, 8, 11, 13, 14, and 54 above, and further in view of Warrender et al. (WO 98/33953 A1), Breuer et al. (US 6,261,346 B1), or Johnson et al. (US 2009/0065736 A1).
The disclosure of Chen et al. is relied upon as set forth above.
Chen et al. teach the presence of an amide-based corrosion inhibitor (Id.) but fail to specifically teach the additional presence of an ester derived from a fatty acid mixture and hydroxyl-substituted tertiary amines substantially free of glycerol.
However, Warrender et al. is similarly drawn to corrosion inhibitor formulations (abstract) and teach employing a surfactant therein (p.12+). A nonionic surfactant that are composed of esters of tall oil fatty acids with triethanolamine is one particular species of surfactant (bottom of Table 3 on p.15). Note that Warrender et al. specifically teach providing the fatty acids (i.e., a fatty acid mixture) from an oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a tertiary alkanolamine, the teachings of Warrender et al. read on and encompass an ester comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a hydroxyl-substituted tertiary amine with no glycerol present, as claimed.
Alternatively, Breuer et al. is similarly drawn to corrosion inhibitor of formula (I), a central nitrogen atom, substituted with groups of formula (II), alkylene ester groups, (abstract and summary of invention in col. 2) made by esterifying tertiary trialkanolamines with fatty acid mixtures such as palm oil, rapeseed oil, or coconut oil fatty acids (col. 3 lines 42-50 and col. 4 lines 54-57). Breuer et al. alternatively teach providing mixtures of any of caprylic, capric, lauric, myristic, palmitic, stearic, oleic, erucic, linoleic, and linolenic acids as the fatty acids for the esterification (col. 2 lines 57-61). Note that Breuer et al. specifically teach providing the fatty acid mixtures of these oil-based sources, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a tertiary alkanolamine, the teachings of Breuer et al. read on and encompass an ester comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a hydroxyl-substituted tertiary amine with no glycerol present, as claimed.
Alternatively, Johnson et al. is similarly drawn to corrosion inhibitor formulations (abstract) and teach providing an amide and/or an ester as a corrosion inhibitor compound therein (para. 0090+ and para. 0103+, respectively). The ester is made by reacting, i.e., esterifying, fatty acids with an alkanolamine (para. 0104+). Vegetable oil, e.g., soybean oil and related plant-derived oils, is a suitable source of the fatty acids (para. 0032, 0042, and 0043). Triethanolamine is a suitable alkanolamine (para. 0143). Note that Johnson et al. specifically teach providing the fatty acids (i.e., a fatty acid mixture) from an oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a tertiary alkanolamine, the teachings of Johnson et al. read on and encompass an ester comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a hydroxyl-substituted tertiary amine with no glycerol present, as claimed.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the ester nonionic surfactant taught by Warrender et al. as a further additive in the composition of Chen et al. in order to obtain a corrosion inhibitor composition with a reasonable expectation of success. At the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the ester corrosion inhibitor taught by Breuer et al. as a further additive in the composition of Chen et al. in order to obtain a corrosion inhibitor composition with a reasonable expectation of success. At the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the ester corrosion inhibitor taught by Johnson et al. as a further additive in the composition of Chen et al. in order to obtain a corrosion inhibitor composition with a reasonable expectation of success.
As to claim 5, the combination(s) of references teach the tertiary amine(s) comprise triethanolamine (Id.).
As to claim 6, the combination(s) of references meet the claimed product-by-process limitations the hydrolyzed vegetable oil used to derive the ester reaction product is glycerol-restriction and said hydrolyzed vegetable oil is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol.
Warrender et al.'s mixture of fatty acids (e.g., the particular fatty acid mixture derived from a particular plant source, Id.) read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) is glycerol restricted and is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as the disclosed fatty acid mixture is capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Also, as stated above, Warrender et al. specifically teach providing the fatty acid mixture of these oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol, which further meets the limitation(s).
Breuer et al.'s mixtures of fatty acids (e.g., the particular fatty acid mixtures derived from particular plant sources as well as the mixtures of various species of plant-derivable fatty acids separately disclosed and motivated thereafter, Id.) all read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) is glycerol restricted and is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as the disclosed fatty acid mixtures and mixtures of fatty acid species are all capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Also, as stated above, Breuer et al. specifically teach providing the fatty acid mixtures of these oil-based sources, i.e., hydrolyzed vegetable oils, without any mention of glycerol, which further meets the limitation(s).
Johnson et al.'s mixture of fatty acids (e.g., the particular fatty acid mixture derived from a particular plant source, Id.) read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) is glycerol restricted and is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as the disclosed fatty acid mixture is capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Also, as stated above, Johnson et al. specifically teach providing the fatty acid mixture of these oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol, which further meets the limitation(s).
As to claim 12, the combination(s) of references meet the claimed limitations that the composition further comprises a heavy aromatic naphtha. Warrender et al. teach providing hydrocarbon solvents such heavy aromatic naphtha as in order to enhance the corrosion inhibition effect of their corrosion inhibitor (p.10 & Table 2 on p.11). Breuer et al. teach providing their corrosion inhibitor compound (the ester, Id.) with an aromatic hydrocarbon liquid such as toluene, xylene, or diethyl benzene (col. 5 lines 37-47), which read on the presence of a heavy aromatic naphtha. Johnson et al. teach providing their compositions/components (the ester, Id.) with a carrier solvent such as heavy aromatic naphtha (para. 0146).
Claims 1-3, 8, 9, 11, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Obeyesekere et al. (US 2017/0342311 A1).
As to claim 1, Obeyesekere et al. teach a composition useful as a corrosion inhibitor comprising an amidoamine (abstract). The amidoamine is the reaction product of an ethylenediamine compound (I) with an acid compound (II) (para. 0067+; e.g., para. 0067 has the reaction scheme and general formulae, para. 0068 & 0072-0074 define the ethylenediamine compound (I) and para. 0069-0071 define the acid compound (II)). The ethylenediamine compound (I) in all embodiments per para. 0068, 0073, and 0074 is a polyamine.
However, Obeyesekere et al.'s compound (II) is an acid compound or an ester compound that does not sufficiently meet the claimed reaction product (or structure implied by the recited product-by-process limitations) under the meaning of anticipation.
Nevertheless, Obeyesekere et al. teach the compound (II) (R1-C(=O)-OR2) may indeed be an acid via R1 being an aliphatic hydrocarbon group (para. 0068) and R2 may be H (alternative to alcoholic/ester residue embodiments) (para. 0070). While it is noted that the list of potential R2s include methanol, ethanol, isopropanol, glycol, or glycerol forming an ester they are nevertheless listed in the alternative from the hydrogen atom species, indicating to a person of ordinary skill in the art the ester residue embodiments are included as well as excluded from the reference's invention/disclosure; this means that all of the compound (II) provided may be free of any glycerol in the R2 in place of all the R2 being H encompassing an acid. Obeyesekere et al. further teach the R1 of formula (II) may be of certain chain lengths, a natural occurring hydrocarbon distribution or mixtures of the above mentioned hydrocarbon chain lengths and the acid compound (II) is preferably selected from tall oil fatty acids, tallow fatty acids, soya fatty acids, and oleic acids (para. 0071). Note that Obeyesekere et al. specifically teach providing the fatty acids (i.e., a fatty acid mixture) of these oil-based sources, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a polyamine, the teachings of Obeyesekere et al. read on and encompass a fatty acid amide comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a polyamine with no glycerol present, as claimed.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select, in Obeyesekere et al.'s formula (II), an R1 of certain chain lengths, a natural occurring hydrocarbon distribution and/or mixtures of the above mentioned hydrocarbon chain length and R2 of H to obtain the acid embodiments of the formula (II) and/or provide the preferably fatty acid genera, e.g., soya fatty acids (surely reading on a vegetable-source), as taught by Obeyesekere et al. in order to obtain a corrosion inhibiting amidoamine via reaction with a polyamine of formula (I) with a very reasonable expectation of success.
Obeyesekere et al. meets the claimed product-by-process limitations. Even if Obeyesekere et al. teach their amides are made by a different process (e.g., one without expressly deriving a fatty acid mixture from hydrolyzing vegetable oil or a particular precursor/species of oil thereof and treating the the hydrolyzed oil to entirely remove cleaved glycerol if present, etc.), Obeyesekere et al.'s obtained product is either identical with or only slightly different than the claimed product to the reference's disclosed formation of an amide from a fatty acid mixture, without glycerol, reacted with a polyamine (para. 0067-0074) that the skilled artisan would reasonably expect obtains substantially the same final product as claimed.
As to claim 2, Obeyesekere et al.'s ethylenediamine compound (I) meets and/or overlaps the claimed formula. See, e.g., para. 0072 & 0074 disclosing diethylenetriamine (DETA), triethylenetetraamine (TETA), and tetraethylenepentamine (TEPA), which meet the claimed formula where x is 1, 2, or 3, respectively. See also the polyethylenediamine formula at the end of para. 0074 which overlaps the claimed formula (the disclosed n = 0 to 200 overlaps the claimed x = 0 to 10).
As to claim 3, Obeyesekere et al.'s compound (II) being soya fatty acids (Id.) read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) comprises hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as soya fatty acids are capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Soya is synonymous with soybean.
As to claim 8, in addition to all described above, Chen et al. is silent to the presence of any glycerol which reads on the claimed limitations.
As to claim 9, see the rationale to claim 2 where Obeyesekere et al. teach the polyamine may comprise tetraethylenepentamine (Id.)
As to claim 11, Obeyesekere et al. teach a preferred composition comprises 1-20 wt.% of the amidoamine, 1-10 wt.% of a sulfur synergist, 1-30 wt.% of a phosphate ester, 1-20 wt.% of a bonding surfactant, and 20-80 wt.% of a solvent system (para. 0145-0150). Obeyesekere et al. is wholly silent to these components comprising any of imidazoline, rosin acid, or rosin acid derivatives, which meets the claimed limitations that those components are optional and concentrations may be zero. Additionally, while it is noted the solvent system may comprise monohydric alkyl alcohols having 1 to 8 carbon atoms (para. 0141), the monohydric alkyl alcohols are listed in the alternative from other solvents including water, dihydric alcohols, and alkyl ethers (Id.) such that the presence of any monohydric alcohol is certainly optional in the reference. A person of ordinary skill in the art would be motivated to include zero monohydric alcohol in Obeyesekere et al.'s composition by following the teachings of the reference that the solvent system may comprise one or more of the disclosed components. Furthermore and alternatively, Obeyesekere et al. further teach the composition is dosed into an aqueous medium at a concentration between 100 and 10,000 mg/L such that, even if monohydric alcohol was present in the solvent system component, the final compound would have an amount (within 0 to 5 wt.%) of total C1-C10 monohydric alcohol permissible by the claim.
As to claim 54, see the rationale of claim 1 (Id.). Obeyesekere et al.'s amidoamine is indeed the reaction product of the fatty acid mixture and the polyamine.
Claims 4-6, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Obeyesekere et al. (US 2017/0342311 A1) as applied to claims 1-6, 8, 11, 13, 14, and 54 above, and further in view of Warrender et al. (WO 98/33953 A1), Breuer et al. (US 6,261,346 B1), or Johnson et al. (US 2009/0065736 A1).
The disclosure of Obeyesekere et al. is relied upon as set forth above.
As to claim 4, Obeyesekere et al. teach the composition may additionally contain other ingredients (para. 0155) but fail to specifically teach the presence of an ester derived from a fatty acid mixture and hydroxyl-substituted tertiary amines substantially free of glycerol.
However, Warrender et al. is similarly drawn to corrosion inhibitor formulations (abstract) and teach employing a surfactant therein (p.12+). A nonionic surfactant that are composed of esters of tall oil fatty acids with triethanolamine is one particular species of surfactant (bottom of Table 3 on p.15). Note that Warrender et al. specifically teach providing the fatty acids (i.e., a fatty acid mixture) from an oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a tertiary alkanolamine, the teachings of Warrender et al. read on and encompass an ester comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a hydroxyl-substituted tertiary amine with no glycerol present, as claimed.
Alternatively, Breuer et al. is similarly drawn to corrosion inhibitor of formula (I), a central nitrogen atom, substituted with groups of formula (II), alkylene ester groups, (abstract and summary of invention in col. 2) made by esterifying tertiary trialkanolamines with fatty acid mixtures such as palm oil, rapeseed oil, or coconut oil fatty acids (col. 3 lines 42-50 and col. 4 lines 54-57). Breuer et al. alternatively teach providing mixtures of any of caprylic, capric, lauric, myristic, palmitic, stearic, oleic, erucic, linoleic, and linolenic acids as the fatty acids for the esterification (col. 2 lines 57-61). Note that Breuer et al. specifically teach providing the fatty acid mixtures of these oil-based sources, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a tertiary alkanolamine, the teachings of Breuer et al. read on and encompass an ester comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a hydroxyl-substituted tertiary amine with no glycerol present, as claimed.
Alternatively, Johnson et al. is similarly drawn to corrosion inhibitor formulations (abstract) and teach providing an amide and/or an ester as a corrosion inhibitor compound therein (para. 0090+ and para. 0103+, respectively). The ester is made by reacting, i.e., esterifying, fatty acids with an alkanolamine (para. 0104+). Vegetable oil, e.g., soybean oil and related plant-derived oils, is a suitable source of the fatty acids (para. 0032, 0042, and 0043). Triethanolamine is a suitable alkanolamine (para. 0143). Note that Johnson et al. specifically teach providing the fatty acids (i.e., a fatty acid mixture) from an oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol. Since the fatty acid mixture is reacted with a tertiary alkanolamine, the teachings of Johnson et al. read on and encompass an ester comprising a glycerol-restricted product derived from a fatty acid mixture derived from a hydrolyzed vegetable oil and a hydroxyl-substituted tertiary amine with no glycerol present, as claimed.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the ester nonionic surfactant taught by Warrender et al. as a further (surfactant) additive in the composition of Obeyesekere et al. in order to obtain a corrosion inhibitor compositions with a reasonable expectation of success. At the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the ester corrosion inhibitor taught by Breuer et al. as a further additive in the composition of Obeyesekere et al. in order to obtain a corrosion inhibitor compositions with a reasonable expectation of success. At the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the ester corrosion inhibitor taught by Johnson et al. as a further additive in the composition of Obeyesekere et al. in order to obtain a corrosion inhibitor compositions with a reasonable expectation of success.
As to claim 5, the combination(s) of references teach the tertiary amine(s) comprise triethanolamine (Id.).
As to claim 6, the combination(s) of references meet the claimed product-by-process limitations the hydrolyzed vegetable oil used to derive the ester reaction product is glycerol-restriction and said hydrolyzed vegetable oil is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol.
Warrender et al.'s mixture of fatty acids (e.g., the particular fatty acid mixture derived from a particular plant source, Id.) read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) is glycerol restricted and is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as the disclosed fatty acid mixture is capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Also, as stated above, Warrender et al. specifically teach providing the fatty acid mixture of these oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol, which further meets the limitation(s).
Breuer et al.'s mixtures of fatty acids (e.g., the particular fatty acid mixtures derived from particular plant sources as well as the mixtures of various species of plant-derivable fatty acids separately disclosed and motivated thereafter, Id.) all read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) is glycerol restricted and is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as the disclosed fatty acid mixtures and mixtures of fatty acid species are all capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Also, as stated above, Breuer et al. specifically teach providing the fatty acid mixtures of these oil-based sources, i.e., hydrolyzed vegetable oils, without any mention of glycerol, which further meets the limitation(s).
Johnson et al.'s mixture of fatty acids (e.g., the particular fatty acid mixture derived from a particular plant source, Id.) read on the claimed product-by-process limitations that the hydrolyzed vegetable oil (nested in other product-by-process limitations via claim 1's recitation that it is used to derive the first fatty acid mixture that is then reacted with the polyamine to derive the amide reaction product) is glycerol restricted and is derived from hydrolyzed soybean oil comprising a mixture of soybean oil fatty acids and glycerol as the disclosed fatty acid mixture is capable of being derived from soybean oil and/or hydrolyzed soybean oil as claimed. Also, as stated above, Johnson et al. specifically teach providing the fatty acid mixture of these oil-based source, i.e., hydrolyzed vegetable oils, without any mention of glycerol, which further meets the limitation(s).
As to claim 10, the combination of references meet and encompass the claimed limitations the first and second fatty acid mixtures (used to derive the claimed amide and ester components, i.e., product-by-process limitations) each comprise certain fraction weight percentages of alpha-linolenic acid, linoleic acid, oleic acid, stearic acid, and palmitic acid.
Obeyesekere et al. (meeting the claimed amide product) and Warrender et al., Breuer et al., and Johnson et al. (each meeting the claimed ester product) all teach their products are made from fatty acid mixtures comprising (or are capable of comprising) these particular fatty acid species, the cited teachings of the references serve as general conditions that there exist mixtures comprising linolenic acid, linoleic acid, oleic acid, stearic acid, and palmitic acid, and optimization or even simply varying of the relative amounts of fatty acid species within the prior arts' general conditions amount to routine experimentation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). A mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929).
As to claim 12, the combination(s) of references meet the claimed limitations that the composition further comprises a heavy aromatic naphtha. Warrender et al. teach providing hydrocarbon solvents such heavy aromatic naphtha as in order to enhance the corrosion inhibition effect of their corrosion inhibitor (p.10 & Table 2 on p.11). Breuer et al. teach providing their corrosion inhibitor compound (the ester, Id.) with an aromatic hydrocarbon liquid such as toluene, xylene, or diethyl benzene (col. 5 lines 37-47), which read on the presence of a heavy aromatic naphtha. Johnson et al. teach providing their compositions/components (the ester, Id.) with a carrier solvent such as heavy aromatic naphtha (para. 0146).
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 13, 2026
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