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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 is indefinite in regards to the metes and bounds of what is meant by: “b) derivatives of the naphthalene-1-thiocarboxamide” Emphasis added]. It is noted that Applicant’s specification does not seem to set forth any information to help clarify this issue.
Dependent claims 4 and 5 are both indefinite in regards to their preamble claim language of: “The environment of claim 3” because dependent claim 3, from which claims 4 and 5 directly depend, is drawn to: “corrosion inhibitor composition” as is also independent claim 1. As such, the preamble claim language of both of these claims needs to be changed to: “The corrosion inhibitor composition of claim 3 . . .”.
Dependent claim 6 is indefinite in regards to their preamble claim language of: “The organic solvent of claim 1” because independent claim 1, from which it directly depend, is drawn to: “corrosion inhibitor composition”. As such, the claim’s preamble language needs to be changed to: “The corrosion inhibitor composition of claim 1 . . .”.
All other claims are also being rejected here because they are either directly or indirectly dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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.
EXAMINATION NOTE:
Applicant’s independent claim 1 is drawn to: “A corrosion inhibitor composition for inhibiting corrosion of iron and iron alloys, . . .”[Emphasis added]. Thus independent claim 1 is drawn to a composition and NOT to: a method of inhibiting corrosion of iron and iron alloys. This fact is important, because dependent claim 2-5 and 7 all contain method of use limitations for the claimed corrosion inhibitor composition. As such, said method of use limitations will be considered moot in regards to the following prior-art rejections.
Claim(s) 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murphy et al. U.S. Patent Application Publication No.: 2009/0163481 A1.
Murphy et al. discloses compounds, compositions, and methods for modulating PPAR-DELTA receptor. In one embodiment, the compounds of the disclosure comprise a tri-substituted thiazole group. The substituent at the 2-position of the thiazole group provides steric bulk to the compounds. The compounds, compositions, and methods may be useful, for example, in the treatment of cancer, see abstract.
Applicant’s claims 1-7 are deemed to be anticipated over Preparation of 7, as set forth in paragraphs [0169]-[0170], wherein naphthalene-1-thiocarboxamide (Formula 7a) is synthesized from a reaction solution comprising: 1-cyanonapthalene, thioacetamide and a DMF (dimethyl formamide) solvent. Once said reaction has taken place, and prior to the removal of the DMF solvent, the composition would comprise naphthalene-1-thiocarboxamide (Formula 7a) dissolved in the DMF (dimethyl formamide) solvent, thus anticipating all of applicant’s claims 1-7. Please note that the DMF (dimethyl formamide) solvent species falls directly within applicant’s solvent species of dependent claim 6.
Attention is also drawn to Murphy et al.’s paragraph [0174] wherein naphthalene-1-thiocarboxamide (Formula 7a) is combined with ethyl 2-chloroacetoacetate and an EtOH (ethanol) solvent. Applicant’s claims 1-7 are also deemed to be anticipated over said combination prior to the start of the reaction between naphthalene-1-thiocarboxamide and ethyl 2-chloroacetoacetate, and also prior to the end of the reaction of all of naphthalene-1-thiocarboxamide and ethyl 2-chloroacetoacetate. Please note that the EtOH (ethanol) solvent species falls directly within applicant’s solvent species of dependent claim 6. It should also be noted that reactant species ethyl 2-chloroacetoacetate, also falls within applicant’s solvent species of dependent claim 6 because it is an ester.
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