NON-FINAL REJECTION AFTER FILING AN RCE
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 .
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.
(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.
EXAMINATION NOTE:
Please note that Applicant’s independent claim 1 reads in part as followed: “A volatile corrosion inhibitor composition, comprising a first volatile corrosion inhibitor comprising polyacrylamide in an amount ranging from about 40 wt.% to about 100 wt.%, . . .” [Emphasis added].
It needs to be pointed out that said wording DOES NOT REQUIRE that the concentration of polyacrylamide component itself must fall within about 40 wt.% to about 100 wt.% of the overall volatile corrosion inhibitor composition. This is because the claim has no concentration range/amount for the first volatile corrosion inhibitor itself within the overall claimed volatile corrosion inhibitor composition. As such, a prior-art composition that comprises anywhere within say: 1, 5, 10, 15, 20, 25, 30 and 35 wt.% polyacrylamide would fall within applicant’s claimed polyacrylamide concentration range.
Claim(s) 1, 3-5, 8 and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 110482664 A (i.e. CN ‘664) (English language Abstract).
CN ‘664 discloses a composite sedimentation agent comprising 15-35 wt.% polyacrylamide, 5-30 wt.% inorganic salt, 0-26 wt.% polyamine, 0-18 wt.% polyquaternium salts, 0-35 wt.% cationic starch, and 5-15 wt.% polycarboxylate. Preferred Components: The inorganic salt is water-soluble salt whose cations is sodium, magnesium, aluminum, zinc, and copper; the cationic starch is starch tertiary amino alkyl ether and quaternary ammonium starch ether. A more specific composite sedimentation agent comprises 25-26 wt.% polyacrylamide, 19-21 wt.% magnesium nitrate, 15-16 wt.% polyamine, 5-7 wt.% polyquaternary amine salt, 20-21 wt.% cationic starch, 15-16 wt.% polycarboxylate and adding aluminum chloride (see method of making).
The preparation of the composite sedimentation agent comprises (I) crushing the polyacrylamide and magnesium nitrate into fine particles with pulverizer, passing through greater than or equal to 25 mesh sieves, adding 15.4 wt.% aluminum chloride to 100 ml distilled water, stirring and dissolving, adding 33.5 wt.% polyacrylamide to the aluminum chloride solution, stirring for 30 minutes, adding 23.8 wt.% polyamine and 5.7 wt.% polyquaternary ammonium salt to the reaction system, stirring and slowly heating to 55 degrees C, stirring for 1.5 hour to fully dissolve, and cooling to room temperature; and (II) weighing 15.2 wt.% starch tertiary amino alkyl ether, adding to the reaction system of step (i), stirring for 15-20 minutes, adding 6.4 wt.% polycarboxylate to adjust pH to 6.5, performing ultrasonic dispersion, adopting constant speed mechanical stirring for 20 minutes while ultrasonic dispersion, and stopping ultrasonic dispersion; sealing reaction system with plastic film, shaking in incubator for 3 hours (speed is 60 revolutions/minute), adding it in the oven at 60 degrees C, curing for 40 hours, repeatedly washing the product with distilled water, washing to neutrality, washing with anhydrous ethanol, and drying to constant weight to obtain composite sedimentation agent.
Applicant’s claims are deemed to be anticipated over said disclosure.
Please note that it is most common to use cross-linked polyacrylamides in sedimentation treatment systems because their three-dimensional network structure improves their effectiveness for flocculating and coagulating suspended particles, and as such, their use would be at once envisaged in CN ‘664 discloses a composite sedimentation agent. Please note that magnesium nitrate, polyamine, polyquaternary amine salt and the amino/ammonium cationic starch, all read on Applicant’s “one or more second volatile corrosion inhibitors” of dependent claim 8. Also note that magnesium nitrate and aluminum chloride can function as desiccants and also individually read on Applicant’s deliquescing material of dependent claims 12-13.
Claim(s) 1, 3-5, 8, 12-14 and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by KR 2395436 B1.
KR discloses a functional desiccant comprising magnesium chloride (MgCl2) 50 to 90 parts by weight, 5 to 20 parts by weight of a water-soluble polymer, 1 to 10 parts by weight of an acid scavenger, a modified cellulose having a diameter of 10 μm and a length of 150 to 200 μm, a starfish having an average particle size of 30 to 50 μm Containing the derived porous ceramic powder and 3 to 20 parts by weight of a rust inhibitor, the water-soluble polymer is a polyacrylamide-sodium acrylate copolymer, and the rust inhibitor includes sodium benzoate, ammonium benzoate, benzotriazole and hexamethylenetetramine. It is a mixture, and the modified cellulose fiber is immersed in 5 to 20 parts by weight of cellulose fiber in 50 to 500 parts by weight of 10 to 50% sodium hydroxide aqueous solution and then reacted for 1 to 24 hours, and 1 to 10 parts by weight of calcium salt, 1 phosphate A functional desiccant prepared by reacting for 3 to 24 hours with a mixed solution containing 20 to 20 parts by weight and 80 to 100 parts by weight of deionized water. Applicant’s claims are deemed to be anticipated over said disclosure.
Claim(s) 1, 3-5, 8-9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/055240 A1.
WO discloses a particulate polymer composition comprising an acrylamide polymer, at least one substituted and/or unsubstituted benzotriazole as a stabilizer and optional adjuvants such as a free radical scavenger (preferably ammonium thiocyanate), see page 4, lines 19-24 and claims 1-20. The acrylamide polymer may be cross-linked, see page 7, line 28 to page 8, line 10. The acrylamide polymer is preferably a linear polymer, see page 8, line 12. The acrylamide polymer can be a homopolymer or a copolymer, see claim 11.
Please note to use either cross-linked or non-cross-linked polyacrylamides would be at once envisaged in light of WO’s said disclosure. Also note that the “at least one substituted and/or unsubstituted benzotriazole” stabilizer reads on Applicant’s “one or more second volatile corrosion inhibitors” of dependent claim 8. Also note that the sodium thiocyanate is a free radical scavenger, used in combination with methyl-1-H-benzotriazole (see Table 2), reads on Applicant’s deliquescing material of dependent claims 12-13.
WO has been described above and differs from Applicant’s claim in the following ways: 1) there is no direct disclosure (i.e. by way of a specific example) to where ammonium thiocyanate is used in lieu of sodium thiocyanate in the particulate acrylamide polymer composition set forth in Example 1., and 2) there is no direct disclosure (i.e. by way of a specific example) to where a particulate polymer composition is taught that falls within Applicant’s concentration ranges of dependent claim 9.
It would have been obvious to one having ordinary skill in the art to use WO’s disclosure that ammonium thiocyanate is the functional equivalent of sodium thiocyanate, as motivation to actually substitute ammonium thiocyanate for sodium thiocyanate in the polyacrylamide composition of Example 1, wherein said composition additionally comprises methyl-1H-bentriazole (another known volatile corrosion inhibitor).
It also would have been obvious to one having ordinary skill in the art to use WO’s disclosure of page 4, lines 10-17, wherein it is disclosed that: “according to one embodiment the amount of benzotriazole in the polymer composition may be in the range of 0.01-10 weight %”, as strong motivation to actually formulate a particulate polymer composition comprising 90 wt.% of an acrylamide polymer and 10 wt.% of a benzotriazole stabilizer. It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Claim(s) 1, 3-5, 8, 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2005/047402 A1.
WO discloses a water-based chemical gel composition containing at least one volatile corrosion inhibitor. Said composition is taught to inhibit both corrosion and microbial growth and activity. The thickener/gelling agent can be selected to be a polyacrylamide, wherein the concentration range of the thickener/gelling agent in water is about 1 to about 40 weight percent, see claims 5-6. A specifically disclosed volatile corrosion inhibitor is ammonium benzoate, wherein the concentration range of the volatile corrosion inhibitor is about 50 parts by million to about 40 weight percent, see claim 4 and claim 1.
WO can be said to differ from Applicant’s claimed invention in that there does not seem to be a direct teaching (i.e. by way of a specific example) to where polyacrylamide is used as the thickener/gelling agent, and to where ammonium benzoate is used as the volatile corrosion inhibitor in the water-based chemical gel composition.
It would have been obvious to one having ordinary skill in the art to use WO’s above said disclosure as strong motivation to actually make water-based chemical gel composition wherein polyacrylamide is used as the thickener/gelling agent, and where ammonium benzoate is used as the volatile corrosion inhibitor. It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Response to Arguments
Applicant's arguments filed with the entry of amendment filed 06/01/26 in the present RCE application filed 06/12/26, have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above.
The Examiner after reading Applicant’s traversal arguments has come to the conclusion that Applicant has a clear misunderstanding of the actual scope of applicant’s newly amended independent claim 1. The Examiner repeats here the above EXAMINATION NOTE: which clearly address this issue.
“Please note that Applicant’s independent claim 1 reads in part as followed: “A volatile corrosion inhibitor composition, comprising a first volatile corrosion inhibitor comprising polyacrylamide in an amount ranging from about 40 wt.% to about 100 wt.%, . . .” [Emphasis added].
It needs to be pointed out that said wording DOES NOT REQUIRE that the concentration of polyacrylamide component itself must fall within about 40 wt.% to about 100 wt.% of the overall volatile corrosion inhibitor composition. This is because the claim has no concentration range/amount for the first volatile corrosion inhibitor itself within the overall claimed volatile corrosion inhibitor composition. As such, a prior-art composition that comprises anywhere within say: 1, 5, 10, 15, 20, 25, 30 and 35 wt.% polyacrylamide would fall within applicant’s claimed polyacrylamide concentration range.”.
As such, Applicant’s traversal arguments in regards to the concentration amounts of the polyacrylamide component used in the applied prior-art references, is deemed to be moot.
Furthermore, Applicant traverse the examiner applied prior-art reference to WO ‘402, by asserting that Applicant’s specification shows superior and unexpected results.
Applicant argues the following: “As noted in the specification, the claimed VCI composition comprising the recited combination of polyacrylamide and one or more second volatile corrosion inhibitor comprising an ammonium salt demonstrates surprising and unexpected moisture adsorption (degree of removing water from a material surface) performance, even at a high polyacrylamide content. For instance, Example 2 in the present specification describes an experiment comparing the moisture adsorption effect of each of the following compositions:
(i) 90 wt% polyacrylamide (PAM) + 10 wt% second VCI (ammonium benzoate) - representative of the claimed composition
(ii) 100 wt% PAM- representative of the claimed composition
(iii) 90 wt% clay + 10 wt% ammonium benzoate.
(iv) 100 wt% clay
See Specification, TT[0032], [0033]. Each composition was subjected to chamber testing (Mil-D- 3464E), after which compositions (i) (PAM + ammonium benzoate) and (ii) (PAM) were observed to have demonstrated the best moisture adsorption properties measured as the weight increase due to moisture adsorption of the VCI composition. See Specification, Table 2. Such exceptional moisture absorption achieved by a composition encompassed by the pending claims could not have been reasonably predicted from the disclosures in WO '402, which does not teach or suggest the use of polyacrylamide in such high content, nor does WO '402 teach the specific combination of polyacrylamide and ammonium salt, or superior anticorrosion properties obtained therefrom.”.
Examiner response. The examiner holds that WO ‘402 taught concentration amount of the polyacrylamide component falls directly within applicant’s independent claim 1 and dependent claim 9 concentration range (see EXAMINATION NOTE:). Furthermore, experiment (ii) in Example 2, does not fall within applicant independent claim 1 because it does not contain the required ammonium salt component. Finally, neither applicant’s independent claim 1 nor any dependent claims thereof, are commensurate in scope in regards to applicant’s showing of experiment (i) of Example 2, which is limited to using a composition comprising 90 wt% polyacrylamide (PAM) + 10 wt% of ammonium benzoate as the second VCI.
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
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