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 .
Response to Applicant’s Amendments
This Office Action is responsive to the amendment filed on 5/4/26. Claims 1-10 are pending. Claims 1-7 have been amended. Claims 8-10 have been added.
Response to Arguments
The claim rejections under 35 U.S.C. 112 have been withdrawn in response to Applicants’ amendments.
Applicants’ arguments are considered moot in light of the withdrawal of claim rejections as stated above. However, new rejections have been made in view of the amendments.
Claim Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
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.
Re Claim 1, the claim is directed toward a method for removing scale. The claimed steps do not appear to actually claim any cleaning/removing scale steps. The closest limitation appears to be “the selected penetrant, the selected inducer, and the selected remover are appliable (emphasis added) to the scale”. It appears that at minimum essential steps have been omitted and it appears that 35 USC § 101 rejection may be appropriate as the claimed method amounts to taking a parameter and selecting chemicals, which can both be done by hand, and has no transformation or applied steps.
Claims 2-10 are rejected as they depend from Claim 1 without curing the deficiency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over SHEPTUNOV et al. (US 2021/0222969).
Claim 1 is directed toward a method of using the Hansen solubility parameter (HSP)for selecting solvents to remove scale. The HSP is a well-established empirical model that characterizes the interactions of materials using three components: the dispersion force parameter, (δD), the polar interaction parameter (δP), and the hydrogen-bonding parameter (δH). These are used to calculate the whether a surface can be cleaned using a (the appropriate) solvent. Accordingly, the claimed invention merely represents an application of the well-known HSP for solvent selection for cleaning. Such is well established and known in the prior art (for example, SHEPTUNOV et al. [0118] is cited for teaching using HSP for cleaning. Therefore, the claims are rejected as unpatentable over SHEPTUNOV et al. as it would have been obvious to one having ordinary skill in the art at the time of effective filing to use the HSP in determining a solvent for cleaning. As stated above in the 112 rejections, the claimed method does not even actually claim a cleaning or application step. Instead, it relies on vague HSP coordinates and selecting a penetrant, remover, and an inducer.
Claims 2-10 are rejected as unpatentable as they further add no method steps, but are directed to either more descriptions of the empirical formula or are intended use of the parts, which have little patentable weight given the lack of actual method steps being claimed beyond choose the solvent using HSP.
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 JASON Y KO whose telephone number is (571)270-7451. The examiner can normally be reached M-F: 9:00-6:00.
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, Michael Barr can be reached at 571-270-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JASON Y. KO
Primary Examiner
Art Unit 1711
/JASON Y KO/Primary Examiner, Art Unit 1711
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