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 .
Claims 1-16, 18-20 are pending.
The rejection of claims 1-20 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendment.
The rejection of claims 1-7, 9-14 under 35 U.S.C. 103 as being unpatentable over Chen et al in view of Ikuro et al is withdrawn in view of Applicant’s amendment.
Claims 8, 15-16, 18-20 stands rejected under 35 U.S.C. 103 as being unpatentable over Chen et al in view of Ikuro et al in view of Walker et al.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US Patent Application 2021/0040622 (already of record)) in view of Ikuro et al (JP2002-120322 (already of record)) view of Walker et al (US Patent 3,860,430 (already of record)).
Regarding claims 1-16, 18-20, Chen et al discloses the invention substantially as claimed. Chen et al teaches a method of inhibiting corrosion of a metal surface in contact with an aqueous medium (Abstract). Chen et al further teaches the method includes adding the corrosion inhibitor composition to the aqueous medium (Paragraph 56). Chen et al further teaches inhibitor compositions may be used in any aqueous system comprising surfaces susceptible to corrosion, including boilers and boiling water systems (Paragraph 72). Chen et al further teaches the corrosion inhibitor composition comprises water (Claim 9). Chen et al further teaches the temperature of the water was about 80C (Paragraph 97). Chen et al fails to specifically disclose a corrosion inhibitor comprising ethylene bis-stearamide particles, the corrosion inhibitor composition is fed into the feedwater, water and vapor phase and the metal surface of the low and high pressure boiler and condensate system and the amount of ethylene bis-stearate in the water system, the film or coating is a monomolecular layer having hydrophobicity, the weight ratio of the surfactant to the ethylene bis-stearamide and the treating step includes adding the aqueous dispersion to the water and cause the solid particles to melt in the water.
In the same field of endeavor, Ikuro et al teaches a rust preventative composition/coating comprising aqueous resin and 0.5-20wt% of solid lubricant particles having a size from 0.012-0.6µm (which overlaps the instantly claimed range) to prevent rust from forming on the metal surface (Paragraphs 1, 15-16). Ikuro et al further teaches ethylene bis-stearamide particles (Examples, Paragraph 27). Ikuro et al further teaches the solid lubricant particles contain hydrophobic groups (Paragraph 23). Ikuro et al further teaches adding a surfactant to increase the dispersability of the lubricant particles and prevent aggregation and provide good adhesion in the formation of the film (Paragraph 23).
In the same field of endeavor, Walker et al teaches a method for inhibiting the corrosion of metal surfaces (Col. 2, Lines 55-56). Walker et al further teaches the corrosion inhibiting compositions may be added to a water storage tank, fed into water being added to the storage tank, boiler feed lines, directly to the boiler itself, condensate receivers. The treatment may be confined to water alone, steam alone or both. The composition is added in the amount of 0.1-100ppm (which satisfies ethylene bis-stearate in the water vapor) (Col. 8, Lines 42-67). Walker et al further teaches the boiler system can be elevated or reduced pressure (Col. 9, Lines 15-20).
With regard to ethylene bis-stearamide, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided ethylene bis-stearamide particles in the corrosion inhibiting composition in Chen et al in view of Ikuro et al in order to prevent corrosion on the metal surface. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
With regard to being fed into the feedwater, water and vapor phase and the metal surface of the low and high pressure boiler and condensate system, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the corrosion inhibitor composition is fed into the feedwater, water and vapor phase and the metal surface of the low and high pressure boiler in Chen et al and Ikuro et al in view of Walker et al in order for the corrosion inhibiting coating composition/film to form on all of the metal surfaces that are in touch with the aqueous systems, vapor and condensates and prevent corrosion thereon.
With regard to the amount of ethylene bis-stearate in the water system, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have expected 0.0-20ppm of the ethylene bis-stearate in Chen et al and Ikuro et al in view of Walker et al as Walker et al teaches 1-100ppm of the corrosion inhibiting composition in the aqueous solution, where the composition comprises 0.5-20wt% of ethylene bis-stearate.
With regard to the film or coating is a monomolecular layer having hydrophobicity, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the film/coating to be a monomolecular layer having hydrophobicity in Chen et al in view of Ikuro et al as Ikuro et al teaches the corrosion inhibitor composition/lubricant particles have hydrophobic properties that forms a layer on metal surfaces.
With respect to the weight ratio of the ethylene bis-stearamide to surfactant, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the weight ratio of the ethylene bis-stearamide to surfactant in Chen et al in view of Ikuro et al as Ikuro et al teaches adding a surfactant to increase the dispersability of the lubricant particles and prevent aggregation and provide good adhesion in the formation of the film; hence, it would only be obvious to the ordinary artisan to optimize the amount of surfactant and ratio of ethylene bis-stearamide to the surfactant. Where 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, 105 USPQ 233 (CCPA 1955). A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range, but teaches that the claimed parameters are known to affect results or properties. In re Boesch 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Furthermore, an example comprises ethylene bis-stearamide particles in water and surfactant with 28wt% solids, wherein Ikuro et al further teaches 0.5-20wt% of ethylene bis-stearamide in the aqueous composition; hence, it is expected that the weight ratio of surfactant to ethylene bis-stearamide to overlap the instantly claimed range.
With regard to the treating step includes adding the aqueous dispersion to the water and cause the solid particles to melt in the water, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a treating step of adding the aqueous dispersion to the water and cause the solid particles to melt in the water in Chen et al in view of Ikuro et al as Chen et al teaches boiler and heater systems; hence, it is expected to utilize hot water in these systems that would melt the ethylene bis-stearamide. Furthermore, Ikuro et al teaches heating the composition in order to form the film on the metal surface; hence, heating the composition with the aqueous system in Chen et al would only be obvious to the ordinary artisan.
Response to Arguments
Applicant's arguments filed July 9, 2026 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Chen et al in view of Ikuro et al in view of Walker et al, Applicant argues that Chen et al and Ikuro et al teach completely different compositions. Applicant further argues that Ikuro’s composition is applied to the metal surface and dried. The Examiner respectfully disagrees with the above argument because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Likewise, is it well known in the art to combine ingredients that are useful for the same purpose (i.e. anticorrosion properties to metal surfaces). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Furthermore, Ikuro et al teaches adding a rust preventative metal product that is environmentally friendly into an aqueous organic resin to form a coating application (Paragraphs 8-9). Ikuro et al teaches forming a rust preventative film formation is not limited to the method taught therein and other methods of application and film formation are possible; the surface treatment/rust preventative may contain various additives that have corrosion inhibiting properties in order to further improve corrosion resistance (Paragraphs 25-26). Ikuro et al further teaches it is possible to form highly corrosion resistant metal products a wide amount of fields (Paragraph 31). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided ethylene bis-stearamide particles in the corrosion inhibiting composition in Chen et al in view of Ikuro et al in order to prevent corrosion on the metal surface. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
With respect to Applicant’s arguments of unexpected results, the examples in the specification are of no probative value in determining patentability of claims since they do not involve a comparison of applicant’s invention with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (Fed. Cir. 1984) and In re Fenn, 208 USPQ 470) CCPA 1981). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02(b) III and 716.02(e). Applicant examples compare alkyl bis amide with a commercial non-amine composition, whereas the close prior art of record, Chen et al teaches an amine corrosion inhibiting compound. Likewise, It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 9, 2026
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