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
Applicant’s election without traverse of Group I in the reply filed on June 29, 2026 is acknowledged.
Claims 1-22 are pending. Claims 12-22 are withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 8, 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8-9, 10-12 of copending Application No. 18/575,110 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. 18/575,110 claims a corrosion inhibitor composition comprising about 0.1-15wt% of a biochelant, about 0.001-5wt% of a corrosion inhibitor selected from tolytriazole, benzotriazole and mercaptobenzothiazole and a solvent; biochelant comprising sodium gluconate or oxidations products or derivatives thereof, aldonic acid, aldaric acid or salts and derivatives thereof, glucaric acid, gluconic acid or glucuronic acid, glucose oxidation products or gluconic acid oxidation products; solvents including ethylene glycol, diethylene glycol, triethylene glycol, tetraethylene glycol, tripropylene glycol1,2-propanediol, 1,3-propanediol, 1,2-butanediol, 1,3-butanediol, 1,4-butanediol, 1,5-pentanediol, neopentyl glycol, 1,2-hexanediol, 1,6-hexanediol, 1,2-octanediol, 1,8- octanediol, 1,2-decanediol, 1,10-decanediol, glycerol, 2,2-dimethylolpropane, trimethylolethane, trimethylolpropane, pentaerythritol, dipentaerythritol, sorbitol, 1,2,4- butanetriol, 2,2,4-trimethyl-1,3-pentanediol; rare earth metals (Claims 1-4, 8-9, 10-12). It is clear that all of the elements of the instant claims are to be found in Application No. 18/575,110. The difference between the instant claims and US Application No. 18/575,110 lies in the fact that the US Application No. 18/575,110 is more specific. The instant claims are anticipated by the claims of US Application No. 18/575,110.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
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.
Claims 1-11 are 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 1 recite a “typical corrosion inhibitor”; this renders the claim indefinite because it is unclear what constitutes “typical”. Claims 2-11 are subsumed under the rejection. Claim 8 recites “(2-pyrrole carbonyl) benzotriazole, (2-thienyl carbonyl)-benzotriazole,” this renders the claim indefinite because it is unclear if the terms in the parentheses are required in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bennett et al (US Patent Application 2018/0148632).
Regarding claims 1-4, 11, Bennett et al teaches compositions for inhibiting corrosion (Abstract). Bennett et al further teaches 5-40wt% of sodium gluconate, water (solvent) and benzyl dimethyl alkyl quaternary ammonium, bis-quaternized compound and 2-mercaptoethanol (Table 1). Bennett et al further teaches the composition is for inhibiting or preventing corrosion on the metal surface such as steel (Paragraphs 104, 116).
Bennett et al teaches the instant claims. Hence, Bennett et al anticipates the claims.
Claims 1-4, 9, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al (CN 1880505).
Regarding claims 1-4, 9, 11, Liu et al teaches 15-35wt% benzimidazole, 1-2wt% zinc sulfate, 35-60wt% sodium molybdate, 7-15wt% sodium silicate, 7-14wt% sodium gluconate, 2-4wt% sodium hexametaphosphate and 2-4wt% sodium metasilicate, the components are mixed and dissolved in water (solvent) (Paragraph 8).
Liu et al teaches the instant claims. Hence, Liu et al anticipates the claims.
Claim Rejections - 35 USC § 103
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.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al (US Patent Application 2018/0148632) as applied to claims 1-4, 11 above.
Regarding claims 7 and 10, Bennett et al discloses the invention substantially as claimed. Bennett et al teaches the features above. However, Bennett et al fails to specifically disclose a preferred embodiment comprising isocitric acid, hydroxyethyl diphosphonic acid, diethylenetriamine penta methylene phosphonate or AMPS/AA. Bennett further teaches iron sulfide dissolvers including isocitric acid and combinations of the acid iron sulfide dissolver compounds (Paragraph 48). Bennett et at further teaches hydroxyethyl diphosphonic acid, diethylenetriamine penta methylene phosphonate as dispersants (Paragraph 92). Bennett further teaches AMPS/AA as a scale inhibitor (Paragraph 89). Bennett et al further teaches polyaspartates as hydrate inhibitors (Paragraph 96).
With regard to isocitric acid, 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 isocitric acid in Bennett et al as Bennett et al teaches iron sulfide dissolvers in the corrosion inhibiting composition including isocitric acid and combinations of the acid iron sulfide dissolver compounds (Paragraph 48) which remove iron sulfide deposits from equipment and metal surfaces. Note that structurally similar compounds are generally expected to have similar properties. In re Gvurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
With regard to hydroxyethyl diphosphonic acid, diethylenetriamine penta methylene phosphonate or AMPS/AA, 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 hydroxyethyl diphosphonic acid, diethylenetriamine penta methylene phosphonate or AMPS/AA in Bennett et al as Bennett et al teaches the components as dispersants, scale inhibitors and hydrate inhibitors in the corrosion inhibiting composition. 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.
Claims 5-6, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al (US Patent Application 2018/0148632) as applied to claims 1-4, 7, 10- 11 above, and in further view of Obot et al (US Patent Application 2018/0334750).
Regarding claims 5-6, 8, Bennett et al discloses the invention substantially as claimed. Bennett et al teaches the features above. However, Bennett et al fails to specifically disclose a lanthanide salt and a corrosion inhibiting azole.
In the same field of endeavor, Obot et al teaches a corrosion inhibiting composition comprising at least azole and a metal halide for metal surfaces (Abstract). Obot et al further teaches lanthanide halides (which includes La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu) (Paragraph 38). Obot et al further teaches 1,2,3-triazole, 1,2,4-tirazole, tetrazole, indazole and pyrazole (Paragraph 23). Obot et al further teaches the azole and metal halides provide anticorrosive properties for metals surfaces (Paragraphs 115-116, 120).
With regard to a lanthanide salt, 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 lanthanide salt in Bennett et al in view of Obot et al in order to provide anticorrosive properties for metal surfaces. It is well settled that it is prima facie obvious to combine 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).
With regard to a corrosion inhibiting azole, 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 corrosion inhibiting azole in Bennett et al in view of Obot et al in order to provide anticorrosive properties for metal surfaces. It is well settled that it is prima facie obvious to combine 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).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al (US Patent Application 2018/0148632) as applied to claims 1-4, 7, 10-11 above, and in further view of Veldman et al (US Patent 6,299,836).
Regarding claim 9, Bennett et al discloses the invention substantially as claimed. Bennett et al teaches the features above. However, Bennett et al fails to specifically disclose sodium molybdate.
In the same field of endeavor, Veldman et al inhibiting corrosion in gas solutions (Col. 5, Lines 55-60). Veldman et al further teaches the addition of sodium molybdate to passivate the metal surfaces due to previous corrosion action such as pitting, cracking or erosion and also help to fill and smooth out any minor imperfections or rough areas on the metal surface (Col. 6, Lines 6-10, Col. 7, Lines 5-11).
With regard to sodium molybdate, 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 sodium molybdate in Bennett et al in view of Veldman et al in order to passivate the metal surfaces due to previous corrosion action such as pitting, cracking or erosion and also help to fill and smooth out any minor imperfections or rough areas on the metal surface.
In the alternative, claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al (US Patent Application 2018/0148632) in view of Obot et al (US Patent Application 2018/0334750) as applied to claims 1-8, 10-11 above, in in further view of Bhat et al (WO Patent 2008/084503).
Regarding claims 5-7, Bennett et al in view of Obot et al disclose the invention substantially as claimed. Bennett et al and Obot et al teach the features above. However, Bennett et al and Obot et al fail to specifically disclose chlorides of cerium, neodymium, praseodymium, samarium, lanthanum and tartaric or citric acid.
In the same field of endeavor, Bhat et al teaches corrosion inhibitors for oil and gas fluids (Abstract, Pg. 3k, Lines 25-32). Bhat et al further teaches corrosion inhibitors include chlorides of Cerium, Neodymium, Praseodymium, Samarium, Lanthanum (Pg. 6, Lines 18-19). Bhat et al further teaches corrosion inhibitors include tartaric and citric acid (Pg. 7, Lines 2-3).
With regard to chlorides of cerium, neodymium, praseodymium, samarium, lanthanum and tartaric or citric acid, 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 chlorides of cerium, neodymium, praseodymium, samarium, lanthanum or tartaric or citric acid in Bennett et al and Obot et al in view of Bhat et al to provide additional corrosion inhibiting properties to the composition. It is well settled that it is prima facie obvious to combine 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).
Conclusion
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.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 July 17, 2026
Prosecution Insights