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 response to Applicant's amendment filed on May 15, 2026.
Status of Claims
Claims 1, 5, 7 and 11-13 have been amended. Claims 2-4, 8 and 10 have been cancelled. No new claim has been added. Claims 1, 5-7, 9 and 11-14 are pending. Claims 1, 5-7, 9 and 11-14 are examined herein.
Response to Amendments
The Amendments to the Claims filed 05/15/2026 have been entered. The minor informalities have been addressed by amendments and objections to claims 1, 3, 5, 7 and 11 thereto are withdrawn accordingly. The previous 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections of claims 8, 10 and 11 are withdrawn in view of the Applicant's amendments and arguments.
Response to Arguments
Applicant's Remarks/Arguments and Amendments to Claims both filed 05/15/2026 have been fully considered.
It is noted that claim 1, an independent claim from which dependent claims ultimately depend, has been amended to recite “5 to 15 parts by weight of a dealkalizer selected from an acid component, wherein the acid component consists of sulphamic acid and hydrochloric acid;” in the context of a descaling formulation to dissolve a scale deposit formed on a surface of an industrial water system as claimed.
Applicant argues that: the claim 1 and its dependent claims are not anticipated nor prima facie obvious over cited prior art(s), Wylde et al. (WO 2016/134873 A1), this is because the cited prior art does not teach or suggest the amended features of “5 to 15 parts by weight of a dealkalizer selected from an acid component, wherein the acid component consists of sulphamic acid and hydrochloric acid;” in the context of a descaling formulation to dissolve a scale deposit formed on a surface of an industrial water system as claimed. See Remarks, page 5.
In response, the applicants’ arguments direct a newly amended claim limitation which is a new issue. Therefore, the arguments are considered moot. Applicant's amendment necessitated a modified/new ground(s) of rejection presented in this Office action.
For recordation purposes, it is noted herein that the recitation “a dealkalizer selected from an acid component, wherein the acid component consists of sulphamic acid and hydrochloric acid;” is reasonably interpreted as:
(i) a dealkalizer is sulphamic acid; or
(ii) a dealkalizer is hydrochloric acid; or
(iii) a dealkalizer is sulphamic acid and hydrochloric acid.
The acid component consists of sulphamic acid and hydrochloric acid. However, the dealkalizer selected is from an acid component consists of sulphamic acid and hydrochloric acid, which directs option (i), or (ii), or (iii) set forth above.
Upon further consideration and search, a modified/new ground of rejections to claims 1, 5-7, 9 and 11-14 are presented in the instant Office action.
MODIFIED REJECTIONS
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, 5-7, 9 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wylde et al. (WO 2016/134873 A1, hereinafter “Wylde”).
In regard to claim 1, 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 is at least one H+ ion releasing monomeric acid having a molecular weight of less than 500 g/mol (page 9, lines 16-32) wherein the acids are selected from the group consisting of, but not limited to, sulfuric acid, sulfurous acid……hydrochloric acid…… (page 13, lines 9-33). The hydrochloric acid is explicitly disclosed as one of acid options in the Wylde reference. It is noted that claim 1 recites the transitional term "comprising” in line 2 as “the descaling formulation comprising”. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03. Therefore, the presence of additional component(s) is not excluded in claimed invention. 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 78 to 85 parts by weight 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).
Claim Objections
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, such as incorporating dependent claim 11 into an independent claim 1 as exemplified below.
Allowable Subject Matters
Claim 11 in the instant application are allowed if previously presented objection to claim 11 is resolved.
The following is an examiner’s statement of reasons for allowance: A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claim 11. The concept of a descaling formulation to dissolve a scale deposit formed on a surface of an industrial water system, wherein, the descaling formulation comprising:
(i) 5 to 15 parts by weight of a dealkalizer selected from an acid component, wherein the acid component consists of sulphamic acid and hydrochloric acid;
(ii) 0.05 to 5 parts by weight of a surfactant selected from a polymer surfactant, a zwitter ionic surfactant, a non-ionic surfactant or a combination thereof;
(iii) 0.05 to 0.5 parts by weight of a corrosion inhibitor selected from a quaternary ammonium salt, or a polyethylene glycol alkyl ether; and
78 to 85 parts by weight of water,
wherein the descaling formulation comprising 10 parts by weight of sulphamic acid, 5 parts by weight of hydrochloric acid, the surfactant is 0.5 parts by weight of MA-AA copolymer, the corrosion inhibitor is 0.05-0.5 parts by weight of polyethylene glycol alkyl ether, and 78 to 85 parts by weight of water, is considered novel.
The cited prior art Wylde et al. (WO 2016/134873 A1) does not provide any guidance which would lead one to select a descaling formulation to dissolve a scale deposit formed on a surface of an industrial water system as recited in claim 11 of claimed invention.
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 YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached on 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772
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