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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: an explicit reference to “wherein the anti-emulsifier is selected from the group consisting of 2- propenoic acid, polymer with 4-(1,1-dimethylethyl)phenol, formaldehyde, 2,5-furandione, methyloxirane, 4-nonylphenol and oxirane; oxirane, methyl-, polymer with oxirane, ether with (chloromethyl)oxirane polymer with 4,4'-(1-methylethylidene)bisrphenol]; 2- propenoic acid, polymer with 4-(1,1-dimethylethyl)phenol, formaldehyde, 2,5-furandione, methyloxirane, and oxirane; 2-propenoic acid, polymer with 2,5-furandione, methyloxirane and oxirane; 2-propenoic acid, polymer with formaldehyde, 2,5-furandione, 2- methyloxirane, 4-nonylphenol and oxirane; and any combination thereof.”
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.
Claims 14-18 and 20 are 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.
In regard to claim 14, the specification as originally filed does not contain support for wherein the weight ratio of the anti-emulsifier to the corrosion inhibitor is of about 20:1 to “about 1.1:1.” At best, the specification discloses in paragraph [0063] wherein the ratio can be of about 20:1 to “about 1:1.”
In regard to claim 17, the specification as originally filed does not contain support for wherein the weight ratio of the anti-emulsifier to the corrosion inhibitor is of about 2.5:1 to “about 1.1:1.” At best, the specification discloses in paragraph [0065] wherein the ratio can be of about 2.5:1 to “about 0.5:1.”
Claims 15-16, 18 and 20 are rejected based upon their dependence on claim 14.
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 14-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dhawan et al. (US 2021/0380883; hereinafter “Dhawan”) in view of Keasler et al. (WO 2015/017705; hereinafter “Keasler”).
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 1.1:1 or wherein the weight ratio is from about 2.5:1 to about 1.1:1. 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 4.5 wt.% and the corrosion inhibitor at an amount of 4 wt.% would be just inside 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.). It is noted that the instant specification does not disclose the criticality of the ratio ranges with any specificity.
Dhawan does not disclose wherein the anti-emulsifier has the recited composition. Dhawan does disclose wherein suitable anti-emulsifiers (“emulsion breaker”) include, but are not limited to, dodecylbenzylsulfonic acid (DDBSA), the sodium 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].
Keasler discloses emulsion breakers for a biocide composition. Keasler teaches that suitable emulsion breakers include, but are not limited to, dodecylbenzylsulfonic acid (DDBSA), the sodium salt of xylenesulfonic acid (NAXSA), an epoxylated compound, a propoxylated compound, an anionic surfactant, a cationic surfactant, a nonionic surfactant, and a resin. Keasler also discloses wherein the emulsion breaker can be the compound of CAS Registry number 178603-70-8, which is “2- propenoic acid, polymer with 4-(1,1-dimethylethyl)phenol, formaldehyde, 2,5-furandione, methyloxirane, and oxirane” as recited in claim 14. See [00197].
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 used the specific emulsion breaker composition disclosed by Keasler in the composition and method of Dhawan as one of ordinary skill in the art would look to the prior art to determine suitable emulsion breaker compositions to use.
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 20, Dhawan discloses wherein the anti-emulsifier (“demulsifier”) comprises an oxyalkylate polymer. See [0105].
Response to Arguments
Applicant's arguments filed 23 April 2026 have been fully considered but they are not persuasive.
Applicant argues that the specified anti-emulsifiers are associated with unexpected results as can be seen in Example 1. The Examiner has fully considered the argument but has not found it to be persuasive. The Examiner notes that Example 1 compares the composition of the present disclosure to “a prior art corrosion inhibitor.” It is noted that the prior art corrosion inhibitor is not the corrosion inhibitor disclosed in the cited prior art. Therefore, the argument is not persuasive as the argument does not show how the cited prior art fails to disclose the recited composition.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
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