DETAILED ACTION
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
Claims 11-19 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2026/06/15. Claims 1-10 are subject of examination.
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 1-10 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.
I)- Claim 1 has stated monomers such as “acid-based” monomers (on lines 3-5) and anionic monomer (on line 6). It is not known within what type, or types, of polymer(s) these monomers are participating. It is not clear if the claim requires a sulfonic acid group in the monomer, or allows for derivatives thereof. It is also unknown whether these monomers are all in one polymer, or present in different polymers in any combination(s), or if a polymer is required at all. Even though the claims are examined in view of specification, however no further limitations are imported into claims from specification. This has rendered the claims vague and indefinite. For the purpose of examination the claim is examined in its broadest interpretation.
II)- It is not clear whether the “an unsaturated carboxylic acid present in the composition in about 50 weight % or less”, is in form of a free component of the claimed composition, or it is located within a presumable polymer (as a backbone ??) with other monomers attached to it. This claim is very ambiguous and thus indefinite.
Claim 3, dependent on claim 2, recites the limitation "unsaturated sulfonic compounds" in lines 2-4. There is insufficient antecedent basis for this limitation in claim 2.
Claim 5, dependent on claim 4, recites the limitation "unsaturated quaternary ammonium compound comprises an allyldimethylammonium chloride, allyl diethylammonium chloride, associated salts" in lines 2-3. There is insufficient antecedent basis for this limitations in claim 4. The instant claim has not further limited the scope of claim 4
Applicant is required to clarify the above issues.
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 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 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 1-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Matz. (US 4,536,292).
Regarding claims 1-6 and 10, Matz teaches a corrosion and scale inhibition process and composition (abstract, claim 1) comprising an unsaturated carboxylic acid(s) such as acrylic acid, methacrylic acid or maleic acid in the amounts of 50-90 wt.%; [C.2: L.47-50], with sulfonic acid base monomers such as 2-methylacrylamido-2-methylpropyl sulfonic acid; [C.2: L.68-64], and unsaturated quaternary ammonium compound (instant claim 5) such as dimethyl diallyl ammonium chloride (DADMAC; as identically disclosed in applicant’s disclosure: Pg.Pub. 0029); [C.3: L.4-7], and (instant claim 5) vinyl sulfonic acid (which is construed as identical to vinyl phosphonic acid as scale and deposit inhibitor agent); [C.2: L.2: 61, 68]. At the time before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to replace the vinyl sulfonic acid with its complete functional-equivalent (please consult any general chemistry textbook), with vinyl phosphonic acid. With respect to claim 6, Matz teaches the composition comprises nonionic monomers such as acrylamide; [C.1: L.66, C.3: L.5-7].
Regarding claims 1 and 10, Matz does not, expressly, teach an overlapping amount of unsaturated carboxylic acid. However, it teaches the amount of 50 wt.% and higher which has overlap on this amount. I)- It should be noted that the selection of percent amounts of monomers in any polymeric compound is construed as an obvious laboratory practice, in order to achieve or obtain any polymer with intended characteristics. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir), [MPEP 2144.05]. At the time before the effective filing date of invention, it would have been obvious to adjust the amount of unsaturated carboxylic acid to a lower amounts as instantly claimed.
Furthermore, “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). [MPEP 2131.03, R6].
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matz. (US 4,536,292), as applied to claim 1 and further in view of Paladini et al. (US 2005/0171376 A1).
Regarding claims 7-8, Matz does not teach a polyphosphonate component. However the analogous art of Paladini teaches a composition for water treatments and detergent composition with scale inhibition and sequestering properties such as polyaminomethylenephosphonate; [claims 5-6]. At the time before the effective filing date of invention, it would have been obvious to add the instantly claimed scale inhibitor agent of Paladini to Matz’s composition with the motivation of further enhancing its deposit inhibiting efficacy as taught by Paladini above.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Matz. (US 4,536,292), as applied to claim 1 and further in view of Hill et al. (US 2016/ 0017204 A1).
Regarding claim9, Matz does not teach the instantly claimed stabilizing compound. However, the analogous rat of Hill teaches a composition for improving the process of extracting oil or gas from subterranean reservoirs comprising a stabilizing scale inhibitor compound such as choline chloride; [10, 59, 73, claim 16]. At the time before the effective filing date of invention, it would have been obvious to add the instantly claimed scale inhibitor agent of Hill to Matz’s composition with the motivation of further enhancing its deposit inhibiting efficacy as taught by Hill above.
Relevant art cited
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the prior art of Davis et al, 6,071,434 for teaching a polymer composition of (X2O3 P CHYCZ2 PO2 XR) with stated structural limitations which anticipates the instantly claimed deposit inhibitor composition. See PTO form 892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 9 AM- 6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./
Examiner, Art Unit 1767
2026/08/06
/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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