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 . This is a first action on the merits of the application. Claims 1-14 are pending.
Claim Objections
Claims 1, 3, 5, 7 and 11 are objected to because of the following informalities:
Claim 1 recites “Polyethylene glycol alkyl ether” in line 7. It is respectfully suggested to amend the recitation to “polyethylene glycol alkyl ether” for conventional notation of chemicals.
Claim 3 recites “Sulphamic acid, Hydrochloric acid, Sulfuric Acid, Nitric acid, Phosphoric acid, Sulfonic acid” in lines 2-3. It is respectfully suggested to amend the recitation to “sulphamic acid, Hsulfuric acid, nitric acid, phosphoric acid, sulfonic acid” for conventional notation of chemicals.
Claim 5 recites “a maleic anhydride- acrylic acid copolymer (MA- A A copolymer)” in line 2. It is respectfully suggested to amend the recitation to “a maleic anhydride- acrylic acid copolymer (MA-AA
Claim 7 recites “Cocamidopropylbetaine (CAPB)” in line 2. It is respectfully suggested to amend the recitation to “cocamidopropylbetaine (CAPB)” for conventional notation of chemicals.
Claim 11 recites “Hydrochloric acid” in line 2. It is respectfully suggested to amend the recitation to “hydrochloric acid” for conventional notation of chemicals.
Appropriate corrections are required.
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 8, 10 and 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 regard(s) as the invention.
Claim 8 recites “Tergitol” in line 2. This is considered indefinite for the following reason: “Tergitol” is a trademark of surfactants, produced by Dow Inc., a family of nonionic surfactants, including biodegradable linear alcohol ethoxylates (15-S series) and nonylphenol ethoxylates (NP series). Per MPEP 2173.05(u), if the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Trademark generally represent a specific brand source rather than a stable, precise technical limitation. Using a trademark as a limitation to describe a component causes the limitation indefinite because the product’s composition could change over time, rendering the claim invalid.
Claims 10 and 11 recite “Triton-X 100”. This is considered indefinite for the following reason: “Triton-X 100” is a trademark of surfactants, produced by Dow Inc., that is a common non-ionic detergent used in labs for solubilizing proteins and cell lysis, and in industrial applications as a surfactant. Per MPEP 2173.05(u), if the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Trademark generally represent a specific brand source rather than a stable, precise technical limitation. Using a trademark as a limitation to describe a component causes the limitation indefinite because the product’s composition could change over time, rendering the claim invalid.
The Examiner notes that no prior art rejection is provided for dependent claims 8, 10 and 11 due to the various rejections under 35 U.S.C. 112(b), set forth above, until applicants specify the chemical composition and/or physical structure of the limitations “Tergitol” and “Triton-X 100”
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 1-7, 9, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wylde et al. (WO 2016/134873 A1, hereinafter “Wylde”).
In regard to claims 1-4, Wylde discloses a descaling formulation to dissolve a scale deposit (a dissolver composition for sulfide scale minerals, especially sulfides of iron, lead and zinc) formed on a surface of an industrial water system (oilfield exploration, drilling, production and process systems where sulfide scales have a tendency to form, mining, refinery and general industry) (page 1, lines 5-13), wherein, the descaling formulation comprising (:
(i) 2-28 wt% of a dealkalizer selected from an acid component (page 9, lines 16-32) wherein the acid component comprises mineral acids such as hydrochloric acid, sulfuric acid, and phosphoric acid (claims 2-3) and organic acids such as citric acid and oxalic acid (claim 4) (page 13, lines 9-33). Since the claimed mass composition range of 5-15 wt% overlaps the mass composition range of 2-28 wt% taught by Wylde, the mass composition range of the dealkalizer recited in claim 1 is considered prima facie obvious. See MPEP 2144.05.
(ii) 2-30 wt% of a surfactant (page 9, lines 16-32), wherein the surfactant comprises non-ionic surfactants (page 16, lines 11-26). Since the claimed mass composition range of 0.05-5 wt% overlaps the mass composition range of 2-30 wt% taught by Wylde, the mass composition range of the surfactant recited in claim 1 is considered prima facie obvious. See MPEP 2144.05
(iii) at least one corrosion inhibitor (page 9, lines 16-32), wherein the corrosion inhibitor comprises a quaternary ammonium salt (page 27, lines 1-7).
(iv) the remainder of the composition is preferably balanced with water (page 27, line 27).
But Wylde does not explicitly disclose the mass composition range of the corrosion inhibitor 0.05-0.5 wt% as recited.
However, in other embodiment, Wylde discloses a mass composition range of the corrosion inhibitor 1-20 wt% (page 27, lines 16-25). Per MPEP 2144.05 I, it has been held a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%).
Consequently, per MPEP 2144.05 I, the lower bound of the mass composition range of the corrosion inhibitor 1-20 wt% (page 27, lines 16-25) taught by Wylde is considered to be merely close to the upper bound of the recited mass composition range of the corrosion inhibitor 0.05-0.5 wt%. The range is considered prima facie obvious.
Since based on the mass composition ranges of the dealkalizer, surfactant, corrosion inhibitor, set forth above, the remaining water mass composition taught by Wylde is estimated to be 41-95 wt%. Since the claimed mass composition range of 78-85 wt% is encompassed by the mass composition range of 41-95 wt% taught by Wylde, the mass composition range of water recited in claim 1 is considered prima facie obvious. See MPEP 2144.05
In regard to claims 5 and 6, Wylde discloses the use of MA-co-AA copolymer as an additional component in the descaling formulation (page 12, lines 14-16) which renders the recitation of claim 5 prima facie obvious.
Regarding the limitation of "the polymer of the MA-AA copolymer is a reaction product of an MA-AA copolymer with one of compound selected from ethyleneamines, tallow amines, alkanolamines at a reaction temperature of 50°-80°C for 1-3 hours” in claim 6, per MPEP, it is acknowledged that the polymer of the MA-AA copolymer recited in claim 6 is product-by-process claims which are not limited to the manipulations of the recited steps, but the structure (i.e., physical and chemical properties) implied by the steps. During the examination of the claimed invention, the polymer of the MA-AA copolymer recited in claim 6 is only limited (characterized) by the physical properties and the composition of polymer of the MA-AA copolymer as recited in claim 1 and is not limited by the intermediate process of producing the polymer of the MA-AA copolymer. See MPEP 2113.
In regard to claims 7 and 9, Wylde discloses various surfactants and inhibitors throughout the disclosure (pages 9-29), but does not disclose the specific surfactant or a corrosion inhibitor such as cocamidopropylbetaine (CAPB) or benzalkonium chloride.
However, it is known in the art that cocamidopropyl betaine is an effective amphoteric surfactant (AmS) for controlling electrochemical behavior of carbon steel in formation water as evidenced by Keera et al. (Effect of some organic surfactants on the electrochemical behaviour of carbon steel in formation water, Colloids and Surfaces A: Physicochem. Eng. Aspects 266 (2005) 129–140; please refer to the Abstract). It is also known in the art that benzalkonium chloride is an effective inhibitor for carbon steel corrosion in sulfuric acid as evidenced by Guo et al. (Experimental and theoretical studies of benzalkonium chloride as an inhibitor for carbon steel corrosion in sulfuric acid, Journal of Industrial and Engineering Chemistry 24 (2015) 174–180; please refer to pages 174-175). The recitations of claims 7 and 9 are considered obvious over the teachings of Wylde, and evidenced by Keera et al. or Guo et al..
In regard to claims 12, 13 and 14, Wylde discloses various an embodiment of a method to dissolve and clean a scale deposit formed on a surface of a lab-sized industrial water system, wherein, the said method comprising the step of applying the descaling formulation on the surface of the industrial water system (pages 29-37; Examples 1-3). The embodiment discloses “descaling formulation is circulated along with a fresh water contacting the surface of the industrial water system” and “the descaling formulation is circulated through the industrial water system, wherein, the descaling formulation is in direct contact with the surface of lab-sized industrial water system (pages 29-37; Examples 1-3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772