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, and species of Group I:
claim 1: 1) c., "an aliphatic alcohol" for the type of aliphatic component,
claim 12:, "branched" for the type of high-molecular weight component,
claim 13: "primary" for terminal side groups of, and of for
claim 14:, "dendrimers".
claims 1-4, 11-15, and 18 are readable on the elected species.
in the reply filed on 08/18/2026 is acknowledged.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 2-4,11-15 and 18 are objected to because of the following informalities: The claims should be amended as follow “The . Appropriate correction is required.
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.
Regarding claim 12 recites, the phrase "within parenthesis" 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).
All the claims dependent of claim 12 are also rejected.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 12 recites the broad recitation weight between 500 and 10⁶ and the claim also recites preferably between 500 and 10000 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
All the claims dependent of claim 12 are also rejected.
Regarding claim 13 recites, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations 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.
Claims 1-4, 11-12, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Reyes et al. (US 2018/0127882 A1) (“Reyes” herein)
(Claims contain only selected species)
Claim 1.
Reyes discloses a corrosion inhibiting composition comprising:[0009-0010]
A reaction product of 3-hydroxypropion aldehyde [0024-0026] and at least one aliphatic component. [0028-0030, 0032]
Reyes however does not explicitly disclose a precursor.
Reyes discloses on ¶ [0009-0010] that combining an organic solvent and nitrogen containing compound with an aqueous acid solution to form a corrosion inhibitor , wherein the corrosion inhibitor compositions of the present invention comprise nitrogen containing compounds. The nitrogen containing compound may include at least one of: the product of a reaction between at least one aldehyde and at least one amide that is not formamide or a formamide derivative; a quaternary nitrogen containing compound; and combinations thereof.) for the purpose of providing a directed to corrosion inhibitor formulations for use in oilfield operations that may be in environmentally sensitive locations. [0009]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to have the aldehyde of Reyes as a corrosion formulation inhibitor / precursor.
Claim 2.
Reyes discloses a corrosion inhibiting composition according to claim 1, wherein:
the at least one aliphatic component is selected from the group consisting of: an aliphatic alcohol.(i.e. where Z is O or S, R.sub.3 is alkyl, trihaloalkyl, alkenyl, alkynyl, aryl, aralkyl, cycloalkyl, heterocyclyl, heteroaryl or heteroaralkyl and R.sub.4 and R.sub.5 are independently hydrogen, alkyl, alkenyl, alkynyl, aryl, aralkyl, provided that at least one of R.sub.4 or R.sub.5 is H. These groups may be straight chain or branched and may also contain heteroatom functionality in the main chain or as a side chain appendage. Heteroatoms include, for example, O). [0029-0030]
Claim 3.
Reyes discloses a corrosion inhibiting composition according to claim 1, wherein:
the at least one aliphatic component includes an aliphatic alcohol having 1-12 carbon atoms. (i.e. where Z is O or S, R.sub.3 is alkyl, trihaloalkyl, alkenyl, alkynyl, aryl, aralkyl, cycloalkyl, heterocyclyl, heteroaryl or heteroaralkyl and R.sub.4 and R.sub.5 are independently hydrogen, alkyl, alkenyl, alkynyl, aryl, aralkyl, provided that at least one of R.sub.4 or R.sub.5 is H. These groups may be straight chain or branched and may also contain heteroatom functionality in the main chain or as a side chain appendage. Heteroatoms include, for example, O). [0029-0030]
Claim 4.
Reyes discloses a corrosion inhibiting composition according to claim 3, wherein:
the aliphatic alcohol having 1 to 12 carbon atoms comprises at least one of methanol, ethanol, or combinations thereof. (i.e. where Z is O or S, R.sub.3 is alkyl, trihaloalkyl, alkenyl, alkynyl, aryl, aralkyl, cycloalkyl, heterocyclyl, heteroaryl or heteroaralkyl and R.sub.4 and R.sub.5 are independently hydrogen, alkyl, alkenyl, alkynyl, aryl, aralkyl, provided that at least one of R.sub.4 or R.sub.5 is H. These groups may be straight chain or branched and may also contain heteroatom functionality in the main chain or as a side chain appendage. Heteroatoms include, for example, O). [0029-0030]
Claim 11.
Reyes discloses a corrosion inhibiting composition according to claim 1, wherein:
the at least one aliphatic component includes one or more high-molecular weight components. [0033]
Claim 12.
Reyes discloses a corrosion inhibiting composition according to claim 11, wherein
the one or more high-molecular weight components have a molecular weight between 500 and 10⁶ (preferably between 500 and 10000) and comprise backbones that can be branched. [0033]
Claim 13
Reyes discloses a corrosion inhibiting composition according to claim 12, wherein:
the one or more high-molecular weight components comprise water-soluble polymers and oligomers containing terminal side groups such as primary amine groups. [0032]
Claim 14.
A Reyes discloses a corrosion inhibiting composition according to claim 12, wherein:
the one or more high-molecular weight components comprise dendrimers containing functional side groups such as primary amine groups.[0032]
Claim 18.
Reyes discloses a method of inhibiting corrosion on a surface, comprising:
contacting the surface with a corrosion inhibiting composition according to claim 1.(Same as claim 1 & [0052-0063])
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Reyes as applied to claims 1, 11, 12, and 14 above, and further in view of Lafitte et al. (US 2013/0312970 A1) (“Lafitte” herein).
Claim 15.
Reyes discloses a corrosion inhibiting composition according to claim 14. Reyes however does not explicitly disclose, wherein:
the dendrimers include at least one of poly(amido amine) (PAMAM), poly(propylene imine) (PPI), or combinations thereof.
Lafitte teaches the above limitation (See paragraphs 0008, 0041 → Lafitte teaches this limitation in that another possibility for sub-micron supporting structures is a dendrimer or other highly branched polymer, with the required functional groups attached to the ends of the branching chains of this polymer. Some literature articles consider highly branched macromolecules such as dendrimers to be species of nanoparticles, but others do not. Dendrimers may be formed by a so-called divergent process in which successive polymerization steps add to an existing core and also introduce further chain branching. The result is a macromolecule which adopts a spherical shape when it is free to do so, for instance when in solution. The diameter of a dendrimer molecule may well exceed 4 nm. For example, polyaminoanine (PAMAM) dendrimers are quoted as having a molecular weight of approximately 29,000 and a diameter of 5.4 nm after five polymerization steps and a molecular weight of about 900,000 and a diameter of 13.5 nm after ten polymerization steps. Conversely, dendrimers may be made by a convergent process in which branched molecules are linked by other branched molecules until a central point is reached.) for the purpose of be incorporate or be attached to corrosion inhibitors for scale-forming ions. [0024]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Reyes, with the above limitation, as taught by Lafitte, in order to be incorporate or be attached to corrosion inhibitors for scale-forming ions. [0024]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Crawford et al. (US 2018/0135187 A1) , Barmatov et al. (US 2017/0335467 A1) , and Hughes et al. (US 2020/0332175 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 10/02/2026
Prosecution Insights