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
It is noted that Applicant did not file any arguments with the election of Group II with traverse. Therefore, claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 31 December 2025.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dhawan et al. (US 2021/0380883; hereinafter “Dhawan”).
In regard to claims 14 and 17-18, Dhawan discloses a method of inhibiting corrosion of a metal surface (see [0003]), comprising: adding a composition to an aqueous system (see [0033], for example) comprising the metal surface (see [0042], for example), wherein the composition comprises a corrosion inhibitor comprising a quaternary amine compound (see [0080] or [0094]-[0096] which describe quaternary ammonium compounds for use as a corrosion inhibitor) and/or an imidazoline compound (see [0080]-[0083]) as recited in claim 18, and an anti-emulsifier (a demulsifier is described in [0105] and an emulsion breaker is described in [0112] which are both viewed to be equivalent).
Dhawan does not explicitly disclose wherein the composition comprises a weight ratio of the anti-emulsifier to the corrosion inhibitor of about 20:1 to about 0.2:1 or wherein the weight ratio is from about 2.5:1 to about 0.5:1. However, Dhawan does disclose wherein the anti-emulsifier in the form of a demulsifier can constitute from about 0.1 to 10 wt.%, from about 0.5 to 5 wt.%, or from about 0.5 to 4 wt. % of the composition, based on total weight of the composition or 0.5, 1, 1.5, 2, 2.5, 3, 3.5, 4, 4.5 or 5 wt. % of the composition (see [0105]); wherein the anti-emulsifier in the form of an emulsion breaker can constitute from about 0.1 to 10 wt.%, from about 0.5 to 5 wt.%, or from about 0.5 to 4 wt.%, based on total weight of the composition (see [0112]); and wherein the corrosion inhibitor can constitute from about 0.1 to 20 wt.%, 0.1 to 10 wt.%, 0.1 to 5 wt.%, 1.0 wt.%, 1.5 wt.%, 2.0 wt.%, 2.5 wt.%, 3.0 wt.%, 3.5 wt.%, 4.0 wt.%, 4.5 wt.%, 5.0 wt.%, 5.5 wt.%, 6.0 wt.%, 6.5 wt.%, 7.0 wt.%, 7.5 wt.%, 8.0 wt.%, 8.5 wt.%, 9.0 wt.%, 9.5 wt.%, 10.0 wt.%, 10.5 wt.%, 11.0 wt.%, 11.5 wt.%, 12.0 wt.%, 12.5 wt.%, 13.0 wt.%, 13.5 wt.%, 14.0 wt.%, 14.5 wt.%, or 15.0 wt.%, based on total weight of the composition (see [0079]). It is noted, for example, that providing the demulsifier in an amount of 2.5 wt.% and the corrosion inhibitor at an amount of 1 wt.% would meet the high end of the ratio range of claim 17, and providing the demulsifier in an amount of 5 wt.% and the corrosion inhibitor at an amount of 10 wt.% would meet the low end of the ratio range of claim 17. There are further many more wt.% combinations of the two components which would meet the weight ratio ranges of claims 14 and 17. Therefore, it would have been within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum or workable ranges of the weight ratio of the anti-emulsifier to the corrosion inhibitor through routine experimentation without creating any new or unexpected results for the purpose of maximizing the effect of the corrosion inhibiting composition. “[W]here the 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In regard to claims 15-16, Dhawan does not explicitly disclose wherein from about 25 ppm to about 10,000 ppm of the composition and wherein from about 10 ppm to about 2,000 ppm of the corrosion inhibitor is added to the aqueous system. Dhawan does disclose that the anticorrosion compound of Formula 1 can be present in an amount from about 1 ppm to about 5000 ppm, from about 10 ppm to about 2500 ppm, from about 50 ppm to about 1500 ppm, about 0.11 ppm to about 10000 ppm, from about 0.1 ppm to about 5000 ppm, from about 0.1 ppm to about 3000 ppm, from about 0.1 ppm to about 2000 ppm, from about 0.1 ppm to about 1500 ppm, from about 0.1 ppm to about 1000 ppm, from about 0.1 ppm to about 500 ppm, from about 0.5 ppm to about 5000 ppm, from about 0.5 ppm to about 4000 ppm, from about 0.5 ppm to about 3000 ppm, from about 0.5 ppm to about 2500 ppm, from about 0.5 ppm to about 2000 ppm, from about 0.5 ppm to about 1500 ppm, from about 0.5 ppm to about 1000 ppm, from about 0.5 ppm to about 500 ppm, from about 1 ppm to about 5000 ppm, from about 1 ppm to about 4000 ppm, from about 1 ppm to about 3000 ppm, from about 1 ppm to about 2500 ppm, from about 1 ppm to about 2000 ppm, from about 1 ppm to about 1500 ppm, from about 1 ppm to about 1000 ppm, from about 1 ppm to about 500 ppm, from about 1 ppm to about 100 ppm, or from about 1 ppm to about 10 ppm, based on the total weight of the fluid in contact with the surface. See [0029] and [0065].
Therefore, it would have been within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum or workable ranges of the total concentration of the composition or the corrosion inhibitor, which can be present in a weight percentage of up to 15 wt.% as discussed above, through routine experimentation without creating any new or unexpected results for the purpose of maximizing the effect of the corrosion inhibiting composition or delivering the composition in a cost-effect manner. “[W]here the 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In regard to claim 19, Dhawan discloses wherein the anti-emulsifier (“emulsion breaker”) is selected from the group consisting of dodecylbenzylsulfonic acid (DDBSA), a salt of xylenesulfonic acid (NAXSA), an epoxylated compound, a propoxylated compound, an anionic surfactant, a cationic surfactant, a nonionic surfactant, and a resin. See [0112].
In regard to claim 20, Dhawan discloses wherein the anti-emulsifier (“demulsifier”) comprises an oxyalkylate polymer. See [0105].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774