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 .
The preliminary amendment filed 03/18/2024 is entered.
Claims 45-65 are currently pending.
The Drawings filed 03/18/2024 are approved by the examiner.
The IDS statement filed 03/18/2024 has been considered. An initialed copy accompanies this action.
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 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 45, 47-51, 55, 60, and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Link et al. (US 7,414,162 B2).
As to claim 45, Link et al. teach phenylene-diamine compositions (abstract). The phenylene-diamine compound functions as an antioxidant and has any of the following broad(er) or narrow(er) structures:
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(generally see col. 2 & 7). Note the identity of the R5 group being, among others, H, alkyl, aryl, and -O-R6 where R6 is an alkyl as well (col. 2 lines 46-56). See also the reference’s definitions of the terms “alkyl” and “aryl” among cols. 5 & 6 which quantify carbon counts and give structural examples of what structures are encompassed by the terms, e.g., alkyl includes n-butyl groups and aryl includes phenyl groups.
The disclosed phenylene diamine compounds overlap the structure of the claimed compound of Formula 2. For example, the above cited formulae of col. 7 in view of the substituent definitions in col. 2 overlap the claimed Formula 2 where X is -NR8R9 (where R8 and R9 are independently hydrogen or substituted alkyl) or Z (where Z is Z1 or Z2 where n is zero, R10 is hydrogen, and R11 is alkyl or aryl), the required Z is Z1 or Z2 (where, again, n is zero, R10 is hydrogen, and R11 is alkyl or aryl), and R1/R2/R4/R5 are independently hydrogen.
Link et al. further teach the compositions may be added to a hydrocarbon stream and/or are premixed with an organic solvent such as methanol, ethanol, acetone, pyridine, nitrobenzene, n-hexadecane, n-hexane, methylene chloride, dimethyl sulphoxide, chloroform, carbon tetrachloride, benzene, glycols, esters and ethers (col. 8 line 61 to col. 9 line 3), which read on the presence of an organic solvent. The compositions may also comprise additional inhibitors or antifoulants such as hydroxylamines or nitroxides (col. 9 lines 4-8), which read on the presence of an additional corrosion inhibitor and/or scale inhibitor; hydroxylamines and nitroxides are known in the art to function as corrosion inhibitors, and an antifoulant is synonymous with a scale inhibitor.
While Link et al. fail to teach the claimed composition (compound and additive) under the meaning of anticipation, the cited teachings of Link et al. nevertheless overlap and encompass the claimed composition under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide and/or formulate a phenylene-diamine compound (with a structure/scope overlapping that instantly claimed) with an organic solvent in order to obtain a inhibiting composition per the teachings of the reference with a reasonable expectation of success. While Link et al. does not specify the composition reduces, inhibits, or prevents corrosion of a surface, the ingredients of the composition are nevertheless the same and overlap in scope such that the same properties would flow naturally from Link et al.’s inhibiting compositions absent a showing to the contrary. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claims 47 and 48, Link et al. teach the organic solvent comprises at least an alcohol, hydrocarbon, ketone, ether, alkylene glycol, sulfoxide, and/or an ester (Id.). Disclosed species thereof include methanol, ethanol, acetone, pyridine, nitrobenzene, n-hexadecane, n-hexane, methylene chloride, dimethyl sulphoxide, chloroform, carbon tetrachloride, and benzene (Id.).
As to claim 49, Link et al. teach the X is -NR8R9 where the R8 may be hydrogen (Id.). Alternatively regarding claim 49, Link et al.’s broad formula in col. 2 also overlaps/meets the claimed limitations where X can alternatively be hydroxyl. Note Link et al.’s -Z and -NHR3 groups have a variable positioning on the phenylene ring relative to the -NR1R2 group, which means the Z can be substituted para relative to the -NR1R2 group. As described above, Link et al.’s Z can be a hydroxyl which, combined with the disclosure that Z can be para relative to the -NR1R2 group, meets the instantly claimed X being hydroxyl.
As to claim 50, Link et al. teach/meet the X is/encompasses hydroxyl (Id.).
As to claim 51, Link et al. teach/meet the X is -NHR9 where the R9 is phenyl (Id.; see col. 2 where, in cases where R1 or R2 is the hydroxyl-substituted CH2-CH-R5 group meeting the instant Z limitations, the -NHR3 group’s R3 may be phenyl per it being an aryl group where phenyl is a preferred/exemplary/encompassed R3 structure, Id., and, in cases where R3 is the is the hydroxyl-substituted CH2-CH-R5 group alternatively meeting the instant Z limitations, R1 and R2 are independently H and phenyl per it being an aryl group where phenyl is a preferred/exemplary/encompassed R1/R2 structure).
As to claim 55, as described above, Link et al.’s teachings meet the Z being Z2.
As to claim 60, as described above, Link et al.’s teachings meet the R1, R2, R4, and R5 being hydrogen.
As to claim 61, Link et al. teach/meet the X is -NHR9 where the R9 is substituted alkyl (Id.).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 45, 47-50, 52-60, 63, and 65 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24-26 of copending Application No. 18/885,360 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims recite compound and composition thereof claims that overlap and encompass the same subject matter as that instantly claimed. The identified copending claims recite an additive composition comprising, inter alia, an oxygenated aminophenol compound of a Formula 1 and an organic solvent. Copending Formula 1 reads on and overlaps the claimed Formula 2 and the copending organic solvent clearly reads on and meets the claimed organic solvent, which meets the claimed anticorrosion composition (only two ingredients are required per the additional components being listed in the alternative). While not recited in the copending claims, the copending application’s specification indicates and defines the organic solvent as being selected from various glycol-based solvents and hydrocarbon solvents including the same genera and species thereof as instant claims 47 and 48. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1. Regarding the overlap of the recited Formulae, see the limitations of copending Formula 1 in claim 24 that generally read on the claimed Formula 2 where R3 reads on X where X is hydroxyl, and R1, R2, R4, and R5 are roughly equivalent. While the -NR7R8 group in the claims seems fairly broad, the copending application’s specification discloses and defines the -NR7R8 group in a way such that it meets overlaps the instantly claimed the Z/Z1/Z2 groups. The copending application’s disclosure of the -NR7R8 group also meets and overlaps the instantly recited particular the aminophenol-based compounds of claim 65. While the copending application does not indicate the composition reduces, inhibits, or prevents corrosion of a surface, the ingredients of the composition are nevertheless the same such that the same properties would flow naturally from the antioxidant composition of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 45 and 47-65 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-20, and 28-39 of copending Application No. 19/184,573 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims recite compound and composition thereof claims that overlap and encompass the same subject matter as that instantly claimed. Note claim 20 of the copending claims recites an antioxidant composition comprising a compound of Formula 1 optionally with a solvent. Copending Formula 1 reads on and overlaps the claimed Formula 2 and the copending solvent reads on and meets the claimed organic solvent, which meets the claimed anticorrosion composition (only two ingredients are required per the additional components being listed in the alternative). While not recited in the copending claims, the copending application’s specification indicates and defines the solvent as being an organic solvent and is selected from various glycol-based solvents and hydrocarbon solvents including the same genera and species thereof as instant claims 47 and 48. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1. Regarding the overlap of the recited Formulae, see the limitations of copending Formula 1 in claim 18 that generally read on the claimed Formula 2 where R3 reads on X; R1, R2, R4, and R5 are roughly if not exactly equivalent; and the -NR7R8 group meets/overlaps the Z/Z1/Z2 groups per the limitations in the independent claim and clarified the dependent claims. The copending compound limitations also meet and overlap at least several of the instantly recited particular compounds of claim 65. While the copending application does not indicate the composition reduces, inhibits, or prevents corrosion of a surface, the ingredients of the composition are nevertheless the same such that the same properties would flow naturally from the antioxidant composition of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 46 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.
Claims 52-54, 56-59, and 62-65 are also allowable over the prior art of record but are rejected under at least one double patenting rejection that requires Applicant’s action for these claims to be fully allowable.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record fail to teach or suggest an anticorrosion composition comprising a compound of Formula 2 to certain N- or N,N- hydroxyalkyl/hydroxyalkylene ether substituted para-aminophenols and N- or N,N- hydroxyalkyl(aryl)/hydroxyalkylene ether substituted, optionally N’-substituted, para-diaminophenylenes and/or one or more of thioglycolic acid, 3,3’-dithiodipropionic acid, thiosulfate, thiourea, 2-mercaptoethanol, L-cysteine, and tert-butyl mercaptan.
Link et al. (US 7,414,162 B2) teach phenylene-diamine compositions (abstract). The phenylene-diamine compound functions as an antioxidant and has any of the following broad(er) or narrow(er) structures:
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(generally see col. 2 & 7). Note the identity of the R5 group being, among others, H, alkyl, aryl, and -O-R6 where R6 is an alkyl as well (col. 2 lines 46-56). See also the reference’s definitions of the terms “alkyl” and “aryl” among cols. 5 & 6 which quantify carbon counts and give structural examples of what structures are encompassed by the terms, e.g., alkyl includes n-butyl groups and aryl includes phenyl groups. Link et al. further teach the compositions may be added to a hydrocarbon stream, are premixed with an organic solvent, and may also comprise additional inhibitors or antifoulants (col. 8 line 61 to col. 9 line 8). While Link et al. reads on many of the instant claims, Link et al. falls short of several of the instant claims.
Regarding claim 46, Link et al. fails to teach or suggest one or more of thioglycolic acid, 3,3’-dithiodipropionic acid, thiosulfate, thiourea, 2-mercaptoethanol, L-cysteine, and tert-butyl mercaptan as claimed.
Regarding claims 52-54, 56-59, and 62-65, Link et al. fail to teach or suggest any structure that meets or overlaps the claimed R11 being a –(CH2)z–O–R12 where z is an integer of 1 to 10 as claimed (including the specific compounds of claim 65 that amount to narrower embodiments of this R11 structure). While Link et al. teach and motivate provision of an ether group (-O-R6 where R6 is an alkyl) as their R5 group bound to the carbon atom bearing a hydroxyl group of the nitrogen atom substituents (col. 2 lines 46-56), Link et al.’s ether group falls ever so short of the claimed structure where there is at least one CH2 group bound to the carbon atom bearing a hydroxyl group of the nitrogen atom substituent prior to the ether structure (the –(CH2)z– portion of the instant R11 structure where z is 1 to 10). Link et al. teach/suggest a R11 structure, in terms of the claimed invention, where z is zero; however, the instant claims require z be 1 to 10 and Link et al. fail to teach or suggest anything to provide additional -CH2- immediately preceding the ether structure as claimed.
Separately regarding independent claim 45, Rana et al. (US 10,308,886 B2) teach a composition for removing, lowering the amount, or controlling hydrogen sulfide and mercaptans that cause corrosion comprising one or more scavenging compound (abstract, col. 1 lines 21-45, col. 13 lines 35-61, and col. 16). Exemplary scavenger compounds include, among others,
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where the amino groups are disubstituted (col. 3 and col. 8). While the composition may further comprise organic solvents and other additional components commensurate with those claimed, e.g., asphaltene inhibitors, paraffin inhibitors, corrosion inhibitors, scale inhibitors, emulsifiers, etc. (col. 8 line 16+), Rana et al.’s compound falls short of Formula 2 because the reference fail to teach or suggest the compound has a Z1 or Z2 structure/group (2-hydroxyl substituted alkylene group(s) bound to the nitrogen atoms) as required by the independent claim.
Marks et al. (US 3,728,281 A) teach an aqueous corrosion inhibiting composition comprising hydrazine and an aminophenol activating compound, e.g., p-aminophenol, and water (abstract and col. 2 lines 19-21 and 43-48). See also the aminophenol formula II in cols. 1 & 2 and claim 1. The composition may also comprise a pH adjuster (col. 3 lines 16-22).
Muccitelli (US 4,728,497 A) teaches an aqueous oxygen scavenger composition comprising an aminophenol compound, e.g., 2,4-diaminophenol, p-aminophenol, 3-methyl-p-aminophenol and 4,6-diamino-2-methyl phenol, and water (abstract, col. 1 lines 7-22, and col. 3 lines 4-15). See also the aminophenol formula at col. 2.
Liu et al. (“Aryl aminoalcohols as corrosion inhibitors for carbon steel in chloride-contaminated simulated concrete pour solution,” Int. J. Electrochem. Sci., 11, 2016, 1135-1151) teach corrosion inhibitor compositions comprising an aryl aminoalcohol, e.g., N-(2-hydroxyethyl)-N-methyl-aniline, N,N-bis(2-hydroxyethyl)aniline, and N-(2-hydroxyethyl)aniline (abstract and Fig. 1).
However, each of Rana et al., Marks et al., Muccitelli, and Liu et al. alone and/or in combination fail to teach or suggest the stabilizing agents are N- or N,N- 2-hydroxyalkyl and/or 2-hydroxyalkylene ether substituted, i.e., contain Z1 or Z2 groups, as required by the independent claim.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
February 9, 2026