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
Applicant’s election without traverse of Group II (claims 9-17) and Species I (claim 11) in the reply filed on 4/19/2026 is acknowledged.
Claims 1-8, 12-15, 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/19/2026.
Claims 11-16 have been canceled.
New claims 21-25 depending on independent claim 9 have been added.
Claims 9-10, 17 and 21-25 are examined in this office action.
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.
Claims 9-10, 17 and 21-25 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention. New recitation of a composition of claim 9 comprising “a glycerol analogue core having a central carbon atom bonded to three carbon atoms, wherein each of the three carbon atoms is bonded to a respective oxygen atom of three oxygen atoms” is new matter.
Specification discloses the main carbon chain 32 (see Fig. 2, 3A-3C) serves as the backbone of the glycerol-based scale inhibitor wherein the main carbon chain 32 consists of three carbons, each of three carbon is linked to R groups 34a, 34b and 34c wherein R groups may be any oxygen, sulfur or nitrogen atom within glycerol or glycerol analogues (see paragraphs [0036]-[0038]). However, specification does not disclose a glycerol analogue core having a central carbon atom bonded to three carbon atoms which essentially claims four carbon atom chain, wherein each of the three carbon atoms is bonded to a respective oxygen atom of three oxygen atoms.
Response to Arguments
Applicant’s arguments with respect to claims 9, 17 and 21-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 JOHN KIM whose telephone number is (571)272-1142. The examiner can normally be reached Maxi Flex.
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, VICKIE KIM can be reached at 571-272-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John Kim/Primary Examiner, Art Unit 1777
JK
7/8/26
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