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
This application contains claims directed to a plurality of patentably distinct species in regards to the corrosion inhibiting species set forth in lines 6-7 of the claim, namely: carboxylic acid, a salt of a fatty acid amine condensate, and an alkanolamine or salt thereof. The species are independent or distinct because they have unique physical and chemical properties. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species in regards to the corrosion inhibiting species set forth in lines 6-7 of the claim, namely: carboxylic acid, a salt of a fatty acid amine condensate, and an alkanolamine or salt thereof , for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1-8 and 14-20 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because applicant has no statement on the record that for patentability purposes said species stand and fall together.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve 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 election of species 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 on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Jill N. Link on 01/22/26 a provisional election was made with traverse to prosecute the invention of wherein the corrosion inhibitor is selected to be a carboxylic-acid-polyamine condensate wherein the polyamine is imidazoline (see dependent claim 10). Claims 1-10 and 14-20 read on said elected species of dependent claim 10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 1-10 and 14-20 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 confusing in regards to the limitation of “contacting a metal surface with a corrosion and metal wear inhibiting composition” “wherein the corrosion and metal wear inhibiting composition comprises: from about 2 wt-% to about 40 wt-% a carboxylic acid, a salt of a fatty acid amine condensate, and/or an alkanolamine or salt thereof, from about 1 wt-% to about 15 wt-% of an organic sulfur compound and/or an organic sulfonic acid amine, and from about 50 wt-% to about 90 wt-% of a solvent,”. The confusion results from the fact that said corrosion and metal wear inhibiting composition is usually NOT applied directly to a metal surface, but rather it functions as “a concentrate”; wherein said “concentrate” is first added to a hydrocarbon fluid at a continuous concentration of about 50 to about 5,000 ppm (i.e. about 0.005 to about 0.5 wt.%), see dependent claim 2. As such, it is actually the hydrocarbon fluid itself which contains a minor amount of the corrosion inhibiting “concentrate” that contacts the metal surface. Even when said corrosion inhibiting “concentrate” is used in a direct batch application to fully coat a metal surface it is usually first highly diluted according to dependent claim 2.
Dependent claims 2-10 and 14-20 are also rejected here because they are either directly or indirectly dependent on a rejected base claim.
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, 3-10 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Watson et al. U.S. Patent Number 5,853,619.
Watson et al.’s teaches in column 1, lines 11-17 the following: “In order to preserve metals, and particularly ferrous metals, in contact with corrosive liquids in gas- and oil-field applications, corrosion inhibitors are added to many systems, e.g. cooling systems, refinery units, pipelines, steam generators and oil production units, formation treating fluids (e.g. acidizing fluids).”.
Watson et al.’s abstract reads as followed: “A low toxic corrosion inhibitor comprises (A) mercaptocarboxylic acid having from 2 to 6 carbon atoms, and (B) a polyamine/fatty acid/carboxylic acid adduct. The preferred combination of (A) and (B) includes mercaptoacetic acid and ethylenetetramine/tall oil acid/acrylic acid adduct.” Watson et al.’s component: “(B) a polyamine/fatty acid/carboxylic acid adduct” can be used in their salt forms, such as alkali metal salts or alkaline earth metal salts, see column 5, lines 45-48.
Please note that Watson et al.’s component: (B) a polyamine/fatty acid/carboxylic acid adduct, reads directly on Applicant’s “a salt of a fatty acid amine condensate,” component of independent claim 1. Also note that Watson et al.’s component: (A) mercaptocarboxylic acid having from 2 to 6 carbon atoms, reads directly on Applicant’s “organic sulfur compound” of independent claim 1.
Watson et al. further teaches that the component (B) corrosion inhibitor is preferably selected to be a fatty acid carboxylic-acid-polyamine condensate wherein the polyamine is an imidazoline, see FORMULA (IIB) in column 5, line 45 to column 7, line 2, and claims 1, 10 and 12. Thus, Watson et al.’s said fatty acid carboxylic-acid-imidazoline condensates, read directly on Applicant’s fatty acid amine condensates of dependent claims 9-10.
Watson et al. further discloses in column 2, lines 27-33 the following: “The mercaptocarboxylic acid component preferably mercaptoacetic acid and beta-mercaptopropionic acid, with the former being most preferred. These acids are water soluble and available commercially in various concentrations in water. From 1 to 20 wt. % solutions of mercaptoacetic acid are preferred for use in the method of the present invention, with 2 to 10 wt. % solutions being most preferred.” [Emphasis added]. Please note that said most preferred concentration range falls directly within Applicant’s claimed organic sulfur compound concentration range of independent claim 1.
Watson et al. further discloses in column 2, lines 51-58 the following: “Components (A) and (B) may be introduced separately in the liquid, but preferably are used in a formulation. The weight ratio (actives) of components (A) and (B) may range from 1:100 to 100:1, preferably from 1:5 to 5:1, and most preferably from 2:1 to 1:2. The concentration of the two component corrosion inhibitors in the liquid may range from 1 to 200 ppm, preferably from 1 to 100 ppm, and most preferably 5 to 50 ppm.” [Emphasis added]. Please note that Watson et al.’s dependent claim 3 and column 7, lines 26-28, further expands the useful ppm concentration range of the two-component corrosion inhibitor composition. In column 7, lines 26-28 it is stated: “In general it is envisaged that the corrosion inhibitor used in amounts of up to 1000 ppm, but typically within the range of 1 to 200 ppm, preferably from 5 to 50 ppm.”.
Please note that Applicant’s “about 2 wt-% to about 40 wt-%” concentration range for “a salt of a fatty acid amine condensate,” component of independent claim 1, is deemed to be fully met by Watson et al.’s above disclosure in light of the following Examiner’s calculation. Watson et al. discloses that the most preferred concentration range for component (A) is 2 to 10 wt.% of solution. Watson et al. further discloses that the most preferred weight ratio of component (A) to component (B) is 2:1 to 1:2. Thus if the weight ratio of component (A) to component (B) is set to be 1:1, the concentration of component (B) would also be 2 to 10 wt.%, which fully falls within Applicant’s claimed “about 2 wt-% to about 40 wt-%” concentration range of “a salt of a fatty acid amine condensate,” component of independent claim 1.
Applicant’s claims are deemed to be anticipated over said disclosure, and also over the corrosion inhibition test in column 8, wherein Watson et al.’s two-component corrosion inhibiting composition is shown to drastically reduce the corrosion of cylindrical mild steel (i.e. carbon containing) probes when said probes were made to be in contact with a highly corrosive aqueous/kerosene carbon dioxide containing liquid. This disclosure is deemed to fully meet the limitations of Applicant’s dependent claims 19-20.
Claim(s) 2 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. U.S. Patent Number 5,853,619.
Watson et al. has been described above and differ from applicant’s said invention in the following ways: 1) there does not seem to be a direct teaching (i.e. by way of a specific example) to where the two-component corrosion inhibiting composition is actually added to the hydrocarbon fluid (e.g. kerosene) at a concentration of about 50 to about 5,000 ppm and 2) where additional additives (e.g. scale inhibitors, surfactants biocides etc.) are actually incorporated into the two-component corrosion inhibiting composition.
It would have been obvious to one having ordinary skill in the art to use Watson et al.’s disclosure of: column 2, lines 51-58, column 7, lines 26-28 and claims 3-4, as strong motivation to actually add the two-component corrosion inhibiting composition into the hydrocarbon fluid (e.g. kerosene) at a concentration of about 50 to about 5,000 ppm. It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Likewise, it would have been obvious to one having ordinary skill in the art to use Watson et al.’s disclosure of column 7, lines 29-33 of: “The two component corrosion inhibitor may contain the materials which it is known to include in corrosion inhibiting compositions e.g. scale inhibitors and/or surfactants. In some instances, it may be desirable to include a biocide in the composition.”, as strong motivation to actually further incorporate such additional additives into the two-component corrosion inhibiting composition, thus meeting the limitations of Applicant’s dependent claims 15-17. 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) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. U.S. Patent Number 5,853,619 in view of either: Jackson et al. U.S. Patent Application Publication No.: 2020/0283913 A1 or Pou et al. U.S. Patent Application Publication No.: 2016/0230078 A1.
Watson et al. has been described above and differ from applicant’s claimed invention in that the organic sulfur corrosion inhibiting compound used was a mercaptocarboxylic acid, such as the mercaptoacetic acid = thioglycolic acid, use in the example.
Jackson et al. discloses corrosion inhibiting compositions which can be employed to inhibit carbon dioxide induced corrosion to metal parts in different industries, such as in petroleum operations in gas/oil industries. Jackson et al., in paragraph [0013], discloses the functional equivalence between 2-mercaptoethanol and thioglycolic acid as metal corrosion inhibitors in carbon dioxide containing aqueous/hydrocarbon environments.
Pou et al. discloses corrosion inhibiting compositions which strong storage stability that can be employed to inhibit corrosion to metal parts in different industries, such as petroleum operations in gas/oil industries. Pou et al., in paragraph [0056], discloses the functional equivalence between mercaptoethanol, thioglycolic acid, mercaptoacetic acid etc. as metal corrosion inhibitors in carbon dioxide containing aqueous/hydrocarbon environments.
It would have been obvious to one having ordinary skill in the art to use the disclosure of either Jackson et al. or Pou et al. to the functional equivalence between mercaptoethanol and thioglycolic acid = mercaptoacetic acid, as strong motivation to actually substitute a mercaptoethanol corrosion inhibitor for Watson et al.’s mercaptoacetic acid corrosion inhibitor component. It is well known in the art that it is not inventive to merely follow the direct disclosure of prior-art references.
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.
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, 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