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 interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“dosing system” in claim 14 (generic placeholder: “system,” functional language: “dosing”), associated with reference 201, which is also clearly associated with dosing reservoirs 208 (also dosing apparatus, see below) (Fig. 2; [0023-0024]).
“dosing apparatus” in Claims 14,15,17 (generic placeholder: “apparatus,” functional language: “dosing”), associated with reference number 208 and mapped to dosing reservoirs (Fig. 2; [0024-0025]).
NOTE: although Applicant’s specification describes other process structures/components, it does not clearly associate other structures to the recited “dosing system” or “dosing apparatus.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not describe carbon dioxide in terms of a corrosion inhibitor or the inclusion or exclusion of it at all in a method for inhibiting corrosion; it only describes it as a byproduct of decarboxylation in Fig. 3. Therefore, the subject matter of Claim 21 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 24 is 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.
Claim 24 depends from a cancelled claim (Claim 16). The claim is indefinite, because it is not clear what its features are. The Examiner cannot import into the claim unknown features. Therefore, it is not clear how to interpret the requirements of the claim.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 24 depends from a cancelled claim 16. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim(s) 1, 5, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeldner (US 4,547,294).
Regarding Claims 1 and 21, US’294 teaches a method comprising: inhibiting corrosion in a circulating water system by: adding a chemical -- which can be considered a “corrosion inhibitor,” since in combination with carbon dioxide, it inhibits corrosion while minimizing scale better than prior art methods -- consisting essentially of (i.e. “comprising”) any of a group of compounds consisting of both phosphate polymers (e.g. polyphosphate) and phosphate-free polymers, including polymaleic acid copolymer (i.e. copolymers of maleic acid) in addition to other phosphate-free compounds (e.g. polyphosphonate, phosphonic acid derivatives, aminophosphonic acid derivatives, polymethacrylic and polyacrylic acid derivatives, polyolesters) to a circulating water stream in the circulating water system (Claims 1-2,9; col. 2, lines 43-48). US’294 fails to single out specifically a copolymer of maleic acid among a list of eight corrosion inhibitors. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’294 by choosing polymaleic acid copolymer among one of eight additives, claimed in US’294 (e.g. Claim 9) to inhibit corrosion in combination with carbon dioxide in the process of US’294, because US’294 suggests (poly)maleic acid copolymer as a choice among a small number of compounds to reduce corrosion in combination with carbon dioxide in circulating water. Carbon dioxide is not itself a corrosion inhibitor, but a pH control additive (p. 2, lines 23-29 and col. 2, lines 62-66; col. 4, lines 53-65) and Claims 24-25 seem to permit the control of pH to within a recited range.
Regarding Claim 5, polymaleic acid copolymer does not comprise a metal.
Claim(s) 2-4,6, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeldner (US 4,547,294) as applied to Claim 1 above, and further in view of Kalakodimi et al. (US 2017/0130340).
Regarding Claim 2, US’294 fails to teach the recited concentration specifically of polymaleic acid copolymer. Kalakodimi et al. (US’340) is analogous art in the field of corrosion inhibition (Abstract), including adding a hydroxycarboxylic acid, an example of which is maleic acid polymer or copolymer [0023,0028,0037] and suggests a concentration of hydroxycarboxylic acid polymer in a concentration of between 0.1 ppm-40 ppm, more preferably 7.5 ppm to 20 ppm [0024]. Additionally, US’340 also teaches a concentration of Tin (II) (metal) (in a range of 0.01-3 ppm [0024]. Also, US’340 provides evidence that concentration of corrosion inhibitor is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition and that the concentration of hydroxycarboxylic acid (e.g. polymaleic acid polymer or copolymer) is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition [0024,0033]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of US’294 by providing polymaleic acid copolymer within the recited concentration, a) because US’294 teaches that polymaleic acid copolymer can be effective to inhibit corrosion with no required metal (instead in combination with carbon dioxide); b) because US’340 suggests a concentration of hydroxycarboxylic acid, including polymaleic acid copolymer, in a range within the recited concentration range; and c) because US’340 suggests a total amount of Tin(II) and hydroxycarboxylic acid in a range of total concentration within the recited range, which would have suggested concentrations of total corrosion inhibitor within the recited range of concentration. Also, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 3, US’294 suggests adding an additive (e.g. polymaleic acid copolymer), which can be considered to be the “phosphate-free corrosion inhibitor,” since it contributes to the abatement of corrosion in combination with the introduction of carbon dioxide in comparison to other prior art methods (Abstract; Claims 1, 9; col. 2, lines 43-48), and US’340 also teaches a step of adding polymaleic acid (e.g. co-polymaleic acid), which can be considered to be “a corrosion inhibitor consisting essentially of a phosphate-free corrosion inhibitor comprising a polymaleic acid polymer.” See, also, the rejection of Claim 2 above for further discussion about US’340 as analogous art. US’340 additionally teaches a step of adding Tin (II) as a corrosion inhibitor (Abstract), which in combination with a maleic acid (co)polymer can form a protective film on the surface of corrosive metal to inhibit corrosion [0006-0007]. US’340 teaches a concentration of Tin (II) (metal) (in a range of 0.01-3 ppm [0024]. The metal can alternatively be considered a second component of the recited “a corrosion inhibitor consisting essentially of (i.e. comprising) a phosphate -free corrosion inhibitor. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify US’294 by adding Tin(II) in a concentration within the recited range, since US’340 would have suggested the combination of Tin(II) and maleic acid (co)polymer to inhibit corrosion in circulating water by forming a protective film on the surface of a corrosive metal.
Regarding Claims 4 and 6, US’294 fails to teach a concentration of (poly)maleic acid copolymer. US’340 suggests a concentration of hydroxycarboxylic acid polymer (e.g. polymer or copolymer of maleic acid, [0023,0028,0037-0038]) in a concentration of between 0.1 ppm-40 ppm, more preferably 7.5 ppm to 20 ppm [0024,0037]. Additionally, US’340 also teaches a concentration of Tin (II) (metal) corrosion inhibitor in a range of 0.01-3 ppm [0024]. Also, US’340 provides evidence that concentration of corrosion inhibitor is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition and that the concentration of hydroxycarboxylic acid (e.g. polymaleic acid polymer or copolymer) is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition [0024,0033]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of US’294 by providing polymaleic acid copolymer within the recited concentration, a) because US’294 suggests that polymaleic acid copolymer can be effective to inhibit corrosion with no required metal; b) because US’340 suggests a concentration of hydroxycarboxylic acid, including polymaleic acid copolymer, in a range which substantially overlaps the recited concentration range; and c) because US’340 suggests a total amount of Tin(II) and hydroxycarboxylic acid in a range of total concentration which substantially overlaps the recited range, which would have suggested concentrations of total corrosion inhibitor within the recited range of concentration. Also, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 9, US’294 teaches a method comprising: inhibiting corrosion in a circulating water system by: adding a chemical scale control additive -- which can also be considered a “corrosion inhibitor,” since in combination with carbon dioxide it also inhibits corrosion -- consisting essentially of (i.e. “comprising”) any of a group of compounds consisting of both phosphate polymers (e.g. polyphosphate) and phosphate-free polymers, including polymaleic acid copolymer (i.e. copolymers of maleic acid) in addition to other phosphate-free compounds (e.g. polyphosphonate, phosphonic acid derivatives, aminophosphonic acid derivatives, polymethacrylic and polyacrylic acid derivatives, polyolesters) to a circulating water stream in the circulating water system (Claims 1-2,9; col. 2, lines 43-48). US’294 fails to single out specifically a copolymer of maleic acid among a list of eight corrosion inhibitors. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’294 by choosing polymaleic acid copolymer among one of eight claimed corrosion inhibitors (e.g. Claim 9) to inhibit corrosion in combination with carbon dioxide in the process of US’294, because US’294 suggests polymaleic acid copolymer as a choice among a small number of compounds to treat circulating water in combination with carbon dioxide to reduce both corrosion and scale in ways not previously permitted by earlier prior art.
In US’294, an additive including copolymers of maleic acid in combination with carbon dioxide inhibits corrosion. The process of US’294 does not require a metal, and teaches neither a metal nor concentrations of metal or maleic acid copolymer. US’340 is analogous art in the field of corrosion inhibition (Abstract), including adding a hydroxycarboxylic acid, an example of which is maleic acid polymer or copolymer [0023,0028,0037] and additionally teaches a step of adding Tin (II) as a corrosion inhibitor (Abstract), which in combination with a maleic acid (co)polymer can form a protective film on the surface of corrosive metal to inhibit corrosion [0006-0007]. The metal can alternatively be considered a second component of the recited “corrosion inhibitor consisting essentially of (i.e. comprising) a phosphate -free corrosion inhibitor” or as a component added in addition to a maleic acid (co)polymer. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify US’294 either by adding Tin(II) or by substituting Tin(II) for carbon dioxide, since US’340 would have suggested the combination of Tin(II) and maleic acid (co)polymer to inhibit corrosion in circulating water by forming a protective film on the surface of a corrosive metal.
US’294 fails to teach a concentration of (poly)maleic acid copolymer or a concentration of a multi-component, comprising (poly)maleic acid copolymer. US’340 suggests a concentration of hydroxycarboxylic acid polymer (e.g. polymer or copolymer of maleic acid, [0023,0028,0037-0038]) in a concentration of between 0.1 ppm-40 ppm, more preferably 7.5 ppm to 20 ppm [0024,0037]. Additionally, US’340 also teaches a concentration of Tin (II) corrosion inhibitor in a range of 0.01-3 ppm [0024]. Also, US’340 provides evidence that concentration of corrosion inhibitor is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition and that the concentration of hydroxycarboxylic acid (e.g. polymaleic acid polymer or copolymer) is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition [0024,0033]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of US’294 by providing (poly)maleic acid copolymer or multiple additives, including (poly)maleic acid copolymer, in a concentration within the recited concentration, a) because US’294 suggests that (poly)maleic acid copolymer can be effective to inhibit corrosion with no required metal; b) because US’340 suggests a concentration of hydroxycarboxylic acid, including polymaleic acid copolymer, in a range which substantially overlaps the recited concentration range; and c) because US’340 suggests a total amount of Tin(II) and hydroxycarboxylic acid in a range of total concentration which substantially overlaps the recited range, which would have suggested concentrations of total corrosion inhibitor within the recited range of concentration. Also, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 10, US’294 teaches that it was known in the prior art to add zinc ions to inhibit corrosion (col. 1, lines 59-66), as does US’340, and additionally molybdates [0003,0013,0037] (The present specification describes a source of metal as including metal salts) [0039].
Regarding Claim 11, US’294 fails to teach a specific corrosion rate. US’340 suggests that treatment with a hydrocarboxylic acid in combination with a metal can result in corrosion rates of less than 2, even less than 1 (Tables 1-2; [0045-0047]. Although US’340 fails to teach specific corrosion rates when maleic acid (co)polymer is used instead of glucaric acid, the corrosion rate for glucaric and the suggestion to use maleic acid and/ or its (co)polymers [0023,0028,0037] would have created a reasonable expectation of success in achieving similarly low corrosion rates for (poly)maleic acid copolymer. Moreover, it would have created a reasonable expectation of achieving similarly low corrosion rates for the combination of (poly)maleic acid copolymer in combination with glucaric acid.
Claim(s) 7-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeldner (US 4,547,294) as applied to Claims 1 and 9 above, and further in view of in view of Standish (US 2016/0115051).
Regarding Claims 7-8 and 12, US’294 fails to teach a (poly)maleic acid copolymer with the recited decarboxylated repeating units. Standish (US’051) is analogous art in the field of water treatment to reduce corrosion and/ or scaling [0002], including for cooling towers and heat exchangers (e.g. boilers) [0035] and like US’294 suggests adding a maleic acid copolymer to water to reduce scaling (Abstract), which, according to US’294, also contributes to inhibiting corrosion (US’294, Abstract; col. 2, lines 50-66). US’051 further details the composition of a maleic acid copolymer to include 10% (Mw) decarboxylated maleic acid [0053]; mono-carboxylic acids (Abstract); terminal hydroxyl groups (Abstract), and non-ionic functional groups, wherein the terminal hydroxyl groups are formed during an aqueous polymerization process, so that the maleic acid copolymer comprises at least about 50 mole % maleic acid and up to 50 mole % free radical polymerized co-monomers (Abstract; Claim 6; [0052]) and suggests that the recited composition is particularly good at controlling scale by sequestering ions [0004], which in combination with carbon dioxide also inhibits corrosion; US’294 also recognizes the significance of sequestering ions, including calcium ions (col. 5, lines 4-11). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’294 with a (poly)maleic acid copolymer with the recited composition, because US’294 suggests a combination of maleic acid copolymer and carbon dioxide to inhibit corrosion, and US’051 suggests that a (poly)maleic acid copolymer of the recited composition is particularly good at controlling scale and sequestering ions which cause scaling, a function which, in combination with carbon dioxide, inhibits corrosion according to US’294.
Further regarding Claim 12, US’294 fails to teach a (poly)maleic acid copolymer with the recited decarboxylated repeating units. Standish (US’051) is analogous art in the field of water treatment to reduce corrosion and/ or scaling [0002], including for cooling towers and heat exchangers (e.g. boilers) [0035] and like US’294 suggests adding a maleic acid copolymer to water to reduce scaling (Abstract), which according to US’294 also contributes to inhibiting corrosion (US’294, Abstract; col. 2, lines 50-66). US’051 further details the composition of a maleic acid copolymer to include 10% (Mw) decarboxylated maleic acid [0053]; mono-carboxylic acids (Abstract); terminal hydroxyl groups (Abstract), and non-ionic functional groups, wherein the terminal hydroxyl groups are formed during an aqueous polymerization process, so that the maleic acid copolymer comprises at least about 50 mole % maleic acid and up to 50 mole % free radical polymerized co-monomers (Abstract; Claim 6; [0052]) and suggests that the recited composition is particularly good at controlling scale by sequestering ions [0004], which in combination with carbon dioxide also inhibits corrosion; US’294 also recognizes the significance of sequestering ions, including calcium ions (col. 5, lines 4-11). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the system of the combination of US’294 with a (poly)maleic acid copolymer with the recited composition, because US’294 suggests a combination of maleic acid copolymer and carbon dioxide to inhibit corrosion, and US’051 suggests that a (poly)maleic acid copolymer of the recited composition is particularly good at controlling scale and sequestering ions which cause scaling, a function which, in combination with carbon dioxide, inhibits corrosion according to US’294.
Claim(s) 14, 17, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeldner (US 4,547,294) in view of in view of Erhardt et al. (US 6,585,933).
Regarding Claim 14, US’294 teaches a system comprising: a circulating water system comprising: a heat exchanger and a cooling tower (Abstract; col. 1, lines 38-41; col. 3, lines 43-50 and 65-68) and teaches that a chemical additive, which in combination with carbon dioxide inhibits corrosion, is added at a given dosing rate (col. 5, lines 41-47). Additionally, as explained in the rejection of Claim 1 above, US’294 teaches a phosphate-free corrosion inhibitor, including an obvious choice of a (poly)maleic acid copolymer. See, also, the rejection of Claim 1 above. US’294 fails to teach the recited “dosing system,” which Applicant’s specification associates with a “dosing apparatus” 208, which is further associated with reservoirs (e.g. tank or container), also designated 208. See Applicant’s Specification [0024-0025] and Fig. 2. However, supply tanks and fluid lines for introducing chemicals into fluids, including for introducing water treatment chemicals into lines and units with circulating water, were conventional at the time of invention. Despite their clear conventionality, Erhardt et al. (US’933), filed in 1999 and published 2003, is cited as analogous art in the field of treating water systems, including cooling towers and heat exchangers, with chemicals (col. 1, lines 18-39; col. 24, lines 24-25), and a chemical treatment taught by US’933 includes analogous polymaleic acid (Table 10). Additionally, US’933 teaches such conventional feed system devices like metering pumps, “feed sources”, and other conventional equipment conventionally used for circulating fluids to, from, and through process units (col. 14, lines 15-19; col. 17, lines 14-65). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus (system) of US’294 with conventional water lines capable of circulating a water stream and comprising a first circulating water line capable of circulating a portion of a circulating water stream comprising relatively cooler water from the cooler tower to the heat exchanger and a second circulating water line configured to circulate another portion of the circulating water stream comprising relatively hotter water from the heat exchanger to the cooling tower, because it was clearly conventional at the time of invention to provide lines (lines, pipes, conduits, etc.) from and to heating/ cooling units for moving fluids between heating and cooling units (e.g. cooling tower and heat exchanger) in a thermodynamic cycle requiring the transfer of heat from a hot object to a fluid and then the transfer of heat from the heated fluid via a cooling tower, which can flow back to the hot object to remove more heat from the hot object. Additionally, it would have been obvious to modify the apparatus of US’294 with the recited “dosing system,” associated with a reservoir, because reservoirs (e.g. tanks, “feed sources”) were conventional at the time of invention to add chemicals into fluids and because US’933 both suggests conventional feed sources (reservoirs) and other conventional units (e.g. metering pump) to add treatment chemicals to water supplies.
Regarding Claim 17, US’294 does not teach a metal used in combination with maleic acid copolymer to inhibit corrosion, and the at least one of the one or more dosing apparatus (reservoir) containing the corrosion inhibitor is configured to add (i.e. capable of adding) the corrosion inhibitor to the circulating water stream such that the circulating water stream has a corrosion inhibitor concentration in a range of from about 20 to about 100 ppm. It would have been obvious to omit a metal, not required in the combination of references.
Regarding Claim 25, the claim recites an intended use, not given patentable weight for the claimed apparatus. However, US’294 teaches the circulating water stream has a pH of about 7.5 (col. 4, lines 59-65).
Claim(s) 15 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeldner (US 4,547,294) in view of Erhardt et al. (US 6,585,933) as applied to Claim 14 above, and further in view of Kalakodimi et al. (US 2017/0130340).
Regarding Claims 15, the combination of US’294 in view of US’933 does not teach a metal component of a corrosion inhibitor. US’340 teaches Tin (II) as a corrosion inhibitor (Abstract), which in combination with a maleic acid (co)polymer can form a protective film on the surface of corrosive metal to inhibit corrosion [0006-0007]. The metal can alternatively be considered a second component of the recited “a corrosion inhibitor consisting essentially of (i.e. comprising) a phosphate -free corrosion inhibitor. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the system of the combination of US’294 in view of US’933 with a component of Tin(II), since US’340 would have suggested the combination of Tin(II) and maleic acid (co)polymer to inhibit corrosion in circulating water by forming a protective film on the surface of a corrosive metal.
US’340 also suggests a concentration of hydroxycarboxylic acid polymer in a concentration of between 0.1 ppm-40 ppm, more preferably 7.5 ppm to 20 ppm [0024]. Additionally, US’340 also teaches a concentration of Tin (II) (metal) in a range of 0.01-3 ppm [0024]. Also, US’340 provides evidence that concentration of corrosion inhibitor is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition and that the concentration of hydroxycarboxylic acid (e.g. (poly)maleic acid polymer or copolymer) is a result-effective variable, known in the prior art to affect the effectiveness of corrosion inhibition [0024,0033]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the system of US’294 in view of US’933 by providing (poly)maleic acid copolymer within the recited concentration, a) because US’294 teaches that (poly)maleic acid copolymer can be effective to inhibit corrosion with no required metal (instead in combination with carbon dioxide); b) because US’340 suggests a concentration of hydroxycarboxylic acid, including polymaleic acid copolymer, in a range within the recited concentration range; and c) because US’340 suggests a total amount of Tin(II) and hydroxycarboxylic acid in a range of total concentration within the recited range, which would have suggested concentrations of total corrosion inhibitor within the recited range of concentration. Also, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Furthermore, a conventional reservoir (e.g. feed source of US’933) would have been capable of adding components in an amount which results in the claimed concentration.
Regarding Claim 24, the claim recites an intended use, not given patentable weight for the claimed apparatus. However, US’294 teaches the circulating water stream has a pH of about 7.5 (col. 4, lines 59-65).
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goeldner (US 4,547,294) in view of Erhardt et al. (US 6,585,933) as applied to Claim 14 above, and further in view of Kimura et al. (JPH11-12567A).
Regarding Claim 22, the combination of US’294 in view of US’933 fails to teach mild steel. It was conventional in the art to use mild steel for circulating water at the time of invention. For example, Kimura et al. (JP’567), published in 1999 teaches mild steel pipes, including for heat exchangers, and also the benefit of adding an additive to reduce or prevent the corrosion of such pipes (p. 1). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’294 in view of US’933 with any of a heat exchanger, cooling tower, water lines or dosing system comprising mild steel, because mild steel pipes were conventional at the time of invention and JP’567 suggests their use in the same or analogous apparatuses.
Regarding Claim 23, the limitation recites an intended use and consequences of using the claimed apparatus in an intended use. Mild steel in the claimed apparatus is obvious (see rejection of Claim 22) above, and the intended use is not given patentable weight. Additionally, it would have been obvious to reduce corrosion in an intended use to within the recited range, because the cited art suggests both the desirability of reducing corrosion and provides chemical treatments for such corrosion reduction and/ or elimination.
Response to Arguments
Applicant’s amendment to the claims, filed 5 March 2026, with respect to the rejections of Claims 8,13,15,17, and 20 under 35 USC 112(b) have been fully considered and overcomes the previous rejections under this paragraph. The rejections of Claims 8,13,15,17, and 20 under 35 USC 112(b) have been withdrawn.
Applicant's arguments filed 5 March 2026 with respect to the rejections of Claims 1-12, 14-15, 17, and 21-25 have been fully considered but they are not persuasive.
In response to Applicant’s argument that US’294 teaches alkaline scale abatement and not a method of inhibiting corrosion (Remarks, p. 10), the argument relies on classifying effects as either one thing or the other. US’294 is directed at treatments to minimize corrosion, even as the treatments also abate alkaline scale (see, for example, Abstract and other instances throughout US’294).
In response to Applicant’s argument that US’294 teaches carbon dioxide in combination with additives (Remarks, pp. 10-12), carbon dioxide is not considered a corrosion inhibitor, but a pH modifier (col. 4, line 66 to col. 5, line 3). US’294 also distinguishes between carbon dioxide and additives with chemical effect; the additive with a chemical effect is considered the “corrosion inhibitor.” Additionally, although the method comprises inhibiting corrosion in a circulating water system by adding a corrosion inhibitor consisting of a polymaleic acid copolymer and optionally a metal, the claim does not exclude additional steps and it does not exclude other methods. Additionally, the specification as originally filed does not describe excluding carbon dioxide as a separate treatment. In response to Applicant’s argument that US’294 requires the introduction of carbon dioxide (Remarks, p. 9), polymaleic acid copolymer was a well-known additive at the time of invention as shown also by US’051 and US’340, neither of which require carbon dioxide in addition to polymaleic acid copolymer, also to inhibit corrosion. Instead, US’294 merely recognizes that adding carbon dioxide to control pH creates conditions for corrosion inhibitors, including those classified as scale inhibitors in US’294 to work better.
In response to Applicant’s argument concerning the teaching of hydroxycarboxylic acid (US’340) (Remarks, p. 12), as with carbon dioxide, the claims do not exclude other chemicals or additives, whether carbon dioxide or hydroxycarboxylic acid. In US’340 hydroxycarboxylic acid is an acid promoter used in conjunction with a corrosion inhibitor (Abstract). Arguments which merely classify an additive as a “corrosion inhibitor” or classify a taught compound (e.g. polymaleic acid copolymer) as something other than a corrosion inhibitor merely in order to exclude them from the claims are not persuasive.
In response to Applicant’s argument concerning the metals in Claim 10 (Remarks, p. 12), both US’294 and US’340 teach zinc and US’340 teaches molybdenum.
Conclusion
No claim is allowed.
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.
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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