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 claims 1–4 in the reply filed on 06 July 2026 is acknowledged.
Claims 5–10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06 July 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 07 March 2024 are accepted.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains phrases that can be implied, e.g., “This invention pertains to…”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1–4 are objected to because of the following informalities:
Claims 1–4: all claim limitations are recited as standalone phrases, while they should instead be recited as limitations of the claim itself using an appropriate term such as “wherein”; some examples include:
Claim 1: “the corrosion inhibitor of Platanus acerifolia leaf extract is in powder form” should read “wherein the corrosion inhibitor…”;
Claim 2: “the drying step…” should read “wherein the drying step…;
Claim 3: “the mass fraction of the ethanol aqueous solution used is…” should read “wherein the mass fraction…”;
Claim 4: “the temperature of heating…” should read “wherein the temperature of heating”;
Claims 1 and 3: “ethanol aqueous solution” is semantically odd, and the Examiner recommends replacing it with “aqueous ethanol solution”;
Claims 2–4: all ranges recited with a tilde (~, e.g., 328~338K) are believed to be translation artifacts. While the tilde is commonly used to convey a range in certain languages, in English it conveys “approximately” (i.e., “328~338K” means “approximately 328 to 338K”), which creates indefiniteness issues if the degree of approximation is not specified. If Applicants intended for their ranges to have fixed end points, an en dash (–) should be used in place of the tilde, i.e., “328–338K”; if Applicants intended for their ranges to have approximate end points, their clarification is respectfully requested.
Appropriate correction is required.
Claim Interpretation
Claims 1–4 are drawn to a product (“A corrosion inhibitor of the Platanus acerifolia leaf extract”), but all limitations are drawn to the preparation method for obtaining said product. Pursuant to MPEP 2113, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show a non-obvious difference. The only positively recited product claim in claim 1 is that the leaf extract is in a powder form. Therefore, any prior art teaching a corrosion inhibitor of Platanus acerifolia extract in powder form will be considered to read on the product claims, and will further read on all of the process limitations unless applicants can show a non-obvious difference between the product obtained by the prior art’s process and the product obtained by their own process.
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.
Claim 3 is 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 3 recites the limitation, “the solid-liquid ratio of the powder […] and the ethanol aqueous solution is (30-50):1000, unit g/mL”. This leads to indefiniteness because it is unclear what the “unit g/mL” is meant to convey. A ratio typically assumes equivalent units, e.g., “1:1 by mass”, or “a stoichiometric ratio of 2:1”, and so the solid-liquid ratio of powder to solution, as claimed, would be interpreted as 30–50 g of powder per 1000 g of solution. The inclusion of “unit g/mL” creates ambiguity because while 1000 g of water ≈ 1000 mL of water (density ≈ 1 g/mL), the solution in this case is not pure water; the claimed solution is a 30–40 wt.% ethanol solution (density ≈ 0.94 g/mL), so if Applicants are claiming a ratio of 30–50 g powder per 1000 g of solution, that is not equivalent to 30–50 g of powder per 1000 mL of solution. The scope of the claim is therefore unclear based on the conflicting terms “ratio” and “unit g/mL”.
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.
Claims 1–4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (“A novel green reinforcement corrosion inhibitor extracted from waste Platanus acerifolia leaves”, Construction and Building Materials, 206, 119695, 2020, hereinafter “Liu”).
Regarding claims 1–4, Liu teaches a corrosion inhibitor of Platanus acerifolia leaf extract (see abstract), wherein the leaf extract is in powder form (see section 2.1 teaching the leaves as being pulverized and passed through a sieve to obtain dry leaf powder).
The remaining limitations of claims 1–4 are product-by-process limitations. As discussed in the above Claim Interpretation section, product-by-process limitations are limited by the product, not the process used to obtain the product. Liu teaches a product that appears to be substantially identical to the claimed product, which is sufficient to anticipate claims 1–4. Liu further attributes the anti-corrosive capabilities of P. acerifolia leaves to the flavonoid compounds (pg. 2, col. 1, paragraph 3), which applicants also cite as a feature of P. acerifolia leaves that confers anti-corrosive properties (see specification, paragraph 0021). Therefore, the product of Liu appears to be substantially similar to the claimed product, even if the process steps used to arrive at the products differ between the present application and Liu. The product of claims 1–4 is therefore anticipated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, Tu, W, F after 5:30 PM and Th from 8 AM to 6 PM.
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, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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