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 Group I, claims 1-8, in the reply filed on 07/20/26 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/20/26.
Drawings
Figure 1 is objected to because it is labeled as “Figure 1” and there is only a single figure within the application; applications including only 1 figure are required to refer to the single figure as “Figure.” See CFR 1.84(u)(1). Applicant is required to rename Figure 1 as “Figure” and refer to the figure as such throughout the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it begins with the phrase “The present disclosure relates generally to,” i.e., a phrase that is implied. 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).
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.
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 5, along with claims 6-8, dependent therefrom, 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 5 recites the limitation "the solvent" in each of lines 4 and 8. There is insufficient antecedent basis for this limitation in the claim. Applicant previously recites, within claim 1, upon which claim 5 depends, “water and at least one additional solvent.” As such, there is insufficient basis for the limitation “the solvent” as claimed in claim 5; it is unclear if Applicant intends the weight percent of “the solvent” to pertain to the combination of “water and at least one additional solvent,” or if Applicant intends “the solvent” to refer to the “at least one additional solvent” of claim 1. Clarification is required.
Claim 5 recites in the last line thereof wherein “the solvent comprises from about 0 wt% to about 80 wt% of the composition.” Independent claim 1, however, requires “water and at least one additional solvent.” Should “the solvent” of claim 5 indeed intend to refer back to such, it is unclear as to how 0% of “the solvent” can be present when the components of water and at least one additional solvent are required within independent claim 1.
Claim 6 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. The term “short” in claim 6 is a relative term which renders the claim indefinite. The term “short” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “short” renders the scope of the claim indefinite as it is unclear as to how long the chain of the alcohol must be in order to be considered “short.” For example, would a C2 alcohol be considered short? C10? Clarification is required.
Claim 7 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. Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US 2008/0302998).
With respect to independent claim 1, Hong et al. discloses a corrosion-inhibiting composition comprising:
an aluminum-based nanoparticle ([0044]-[0045]; [0091]) with an average particle size from about 1 nm to about 1000 nm ([0029]; [0091]), wherein the aluminum-based nanoparticle is non-functionalized and silica and silicate free;
at least one corrosion inhibitor selected from the group as claimed ([0069]);
at least one surfactant ([0047]-[0065]); and
water and at least one additional solvent ([0046]; [0085]-[0086]).
Hong et al. discloses the composition as set forth above, wherein the aluminum-based nanoparticle is present therein, wherein various crystalline forms thereof are suggested ([0044]-[0045]). The reference further provides an example of the use of such wherein the nanoparticle is indeed defined as aluminum oxide ([0091]). Although silent to explicitly disclosing such as “non-functionalized and silica and silicate free” as instantly claimed, Hong et al. does not disclose functionalization of the metal oxide nanoparticles, or a presence of silica or silicate therewith. As such, it is the position of the Office that the inclusion of the aluminum-based nanoparticle in the composition of Hong et al. as non-functionalized and silica and silicate free would indeed be obvious to one having ordinary skill in the art as such is not disclosed as required and/or desired for the composition of Hong et al., and, it has been held the omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
With respect to dependent claim 2, Hong et al. discloses wherein the aluminum-based nanoparticle is an Al2O3 nanoparticle ([0044]-[0045]; [0091]).
With respect to dependent claim 3, Hong et al. discloses wherein the aluminum-based nanoparticle has an average particle size from about 1-100 nm ([0029]; [0091]).
With respect to dependent claim 4, Hong et al. discloses wherein the aluminum-based nanoparticle is within a hydrophilic liquid ([0046]), and, thus, such is considered to be hydrophilic. Hong et al. further discloses the aluminum-based nanoparticle, wherein various crystalline forms thereof are suggested ([0044]-[0045]); and an example of the use of such is further provided ([0091]). Although silent to explicitly disclosing such as “not an aerogel, not derived from a gel and/or have a liquid component replaced with a gas,” as instantly claimed, Hong et al. does not disclose and/or require the metal oxide particles as an aerogel, derived from a gel, or having a liquid component replaced with a gas. As such, it is the position of the Office that the inclusion of the aluminum-based nanoparticle in the composition of Hong et al. as instantly claimed would indeed be obvious to one having ordinary skill in the art as such is not disclosed as required and/or desired for the composition of Hong et al., and, it has been held the omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
With respect to dependent claim 5, Hong et al. discloses wherein the composition comprises from no greater than about 30% by weight of carbon or non-carbon nanoparticles ([0078]), i.e., the aluminum-based nanoparticle, no greater than 10% by weight of the surfactant ([0079]); and further, as a major component of the fluid ([0046]), the solvent in an amount from about 0.1-99.9% by volume ([0085]-[0086]). Hong et al. further discloses wherein suitable additives including corrosion inhibitors may be present therein ([0067]), and, further, wherein such additives are provided for the purpose of improving chemical and/or physical properties, typically in an amount no greater than 10% by weight, but nevertheless, the total amount of all ingredients together should equal 100% ([0080]). It is further suggested wherein the amounts of component will vary in accordance with such factors as the viscosity characteristics of the base fluid employed, the viscosity characteristics desired in the finished fluid, the service conditions for which the finished fluid is intended, and the performance characteristics desired in the finished fluid ([0066]). Given the overlap of the weight percent ranges claimed for the composition of Hong et al. with the extensive weight percent ranges claimed, at least for the first option of percents, wherein the corrosion inhibitor presence is slightly less than such, along with Hong et al.’s teaching of wherein the corrosion inhibitor is added to the nanofluid and amounts thereof can be routinely optimized for selective applications ([0072]), it is the position of the Office that one having ordinary skill in the art would recognize the optimal amount thereof to include in the composition of Hong et al. in order to effectively inhibit corrosion therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." 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%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed extensive weight percent range for the corrosion inhibitor as critical and it is unclear if any unexpected results are achieved by providing for such in all amounts encompassing such a range. Since the composition of Hong et al. is routinely optimized for selective applications and the corrosion inhibitor is provided therein in an amount effective to inhibit corrosion therewith, it does not appear that such would be considered an unexpected result of providing for such in an amount within the weight percent range instantly claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 6, Hong et al. discloses wherein the additional solvent is a short chain alcohol, ether and/or aromatic hydrocarbon ([0046]; [0085]-[0086]).
With respect to dependent claim 7, Hong et al. discloses wherein the surfactant comprises one as claimed ([0047]-[0065]).
With respect to dependent claim 8, Hong et al. discloses the composition further comprising at least one additional component selected from the group as claimed ([0064]-[0065], wherein additional surfactants are disclosed; [0066]-[0072]). Hong et al. discloses wherein the additional components can be included in an amount of no greater than 10% to improve the chemical and/or physical properties of the fluid ([0080]), and, further, suggests wherein the basic composition of the nanofluids can be routinely optimized for selective applications ([0072]). As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to provide for at least one additional component as claimed in an amount within the extensive range of 0.1-40 wt% as claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." 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%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of the additional component as critical and it is unclear if any unexpected results are achieved by providing for such in all amounts encompassing such a range. Since the composition of Hong et al. is routinely optimized for selective applications and the additional additives are suggested as provided in an amount effective to achieve the intended purpose thereof and thus improved the chemical and/or physical properties of the fluid, it does not appear that such would be considered an unexpected result of providing for the additional additives disclosed by Hong et al. in an amount within the weight percent range instantly claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2014/0116695 discloses hydrophobic nanoparticles, including aluminum-based nanoparticles, in a composition that further includes a corrosion inhibitor.
US 2012/0273197 discloses aluminum-based nanoparticles derived from a gel used with a corrosion inhibitor in a composition.
US 2012/0015852 discloses aluminum-based nanoparticles in a composition that includes a corrosion inhibitor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
08/20/26
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