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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/09/2026 has been entered.
Withdrawn Rejection
The 35 U.S.C. §103 rejection of claims 1-4, 6-8 as over Matsuno (WO 2020/235362) in view of Takaya et al. (US 2020/0140698), made of record in the office action mailed on 03/18/2026, page 2 have been withdrawn due to Applicant’s argument in the response filed on 04/28/2026.
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.
Claim(s) 1-4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuno (WO 2020/235362) in view of Takaya et al. (US 2020/0140698) and Weiske (DE 4323062).
Regarding claim 1-4, 6-7 Matsuno discloses dispersion, and a reinforcing material which is for building material and contains the dispersion, the dispersion containing: calcium hydroxide particles in which the volume average particle diameter in a dispersion, as measured by an X-ray small angle scattering method, is 1-50 nm (abstract). The dispersion according to the present disclosure preferably contains a dispersant from the viewpoints of dispersibility. Examples of the dispersant include a surfactant (page 6, para 6-8). The dispersion according to the present disclosure has a total content of at least one compound selected from the group consisting of water and ethylene glycol of 50 mass by mass with respect to 100 parts by mass of the total content of the dispersion medium (page 6, para 002). Matsuno discloses the dispersion further containing a polymer having a sulfonic acid group and the content of the polymer is 0.05-10 percent by mass with respect to the total mass of the dispersion (claims 4-8).
However, Matsuno fails to disclose that the dispersion contains at least one corrosion inhibitor selected from phosphate esters and also fails to disclose that the calcium-based nanoparticle is calcium silica nanoparticle.
Whereas, Takaya discloses heat-ray shielding particle dispersion which contains: ITO particles having a heat-ray shielding capability; a solvent containing 60% by mass or more of water; and a dispersant. The solvent is a component obtained by removing the heating residue from the heat-ray shielding particle dispersion, and is contained in an amount of 6.1-99.0% by mass with respect to 100% by mass of the dispersion. The dispersant is at least one kind among a phosphate ester-based dispersant (abstract). The heat-ray shielding particle dispersion used for a coating material for heat-ray shielding to be coated onto a transparent portion of automobiles, building materials, etc., and a method for producing the same (para 0001). Such a dispersant can be commercially available and, for example, as the phosphate ester-based dispersant, there may be exemplified by PLYSURF A212C, PLYSURF A208N, PLYSURF A219B, PLYSURF M208F (all manufactured by DSK Co., Ltd.), DISPARLON AQ-330, DISPARLON AQ-320, (all manufactured by Kusumoto Chemicals, Ltd.), SOLSPERSE 41000 (manufactured by The Lubrisol Corporation), DISPERBYK.110, DISPERBYK111 (all manufactured by BYK-Chemie (BYK) GmbH) (para 0024).
Whereas Weiske discloses water-dilutable zinc dust (water-thinnable zinc-rich) coating material based on epoxy resin. Zinc-pigmented coating materials of this kind are preferably employed for protecting iron and steel materials against corrosion. The coating material according to the invention consists of an anhydrous water-dilutable zinc-pigmented curing component (A) and of a water-containing and/or water-dilutable epoxy resin component (B), which are mixed prior to processing. Component B consists of water-dilutable epoxy resin dispersion to which may be added conventional auxiliaries such as defoamers, thickeners, pH regulators, preservatives and corrosion inhibitors (abstract). The component A comprises calcium silica pigment (page 5).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include phosphate ester dispersant as taught by Takaya in the dispersion of Matsuno motivated by the desire to have improved water resistance and corrosion inhibition properties and It would have been obvious to one of ordinary skill in the art at the time the application was filed to include calcium silica of Weiske in the dispersion of Matsuno motivated by the desire to have anticorrosion properties.
While there is no disclosure that the dispersion composition is a corrosion inhibiting composition as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. corrosion inhibiting composition, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Matsuno in view of Takaya and Weiske and further that the prior art structure which is a dispersion composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 8, with respect to limitation of use of corrosion composition to inhibit corrosion on a surface in an oil and gas system.
However, the recitation in the claims that the corrosion inhibition composition is “for to inhibit corrosion on a surface in an oil and gas system” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Matsuno in view of Takaya and Wieske disclose corrosion inhibiting composition as presently claimed, it is clear that the corrosion inhibiting composition of Matsuno in view of Takaya and Wieske would be capable of performing the intended use, i.e. use on a surface in an oil and gas system, presently claimed as required in the above cited portion of the MPEP.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuno (WO 2020/235362) in view of Takaya et al. (US 2020/0140698) and Weiske (DE 4323062) as applied to claim 1, further in view of Hedouin et al. (US 2007/0256600).
Regarding claim 7, Matsuno discloses dispersion according to the present disclosure preferably contains a dispersant from the viewpoints of dispersibility. Examples of the dispersant include a surfactant (page 6, para 6-8). The dispersion according to the present disclosure has a total content of at least one compound selected from the group consisting of water and ethylene glycol of 50 mass by mass with respect to 100 parts by mass of the total content of the dispersion medium (page 6, para 002). The content of the calcium hydroxide particles is 0.18% by mass to 10% by mass with respect to the total mass of the dispersion (claims 9-10). The dispersion according to the present disclosure may contain a dispersant other than the abovementioned polymer as the dispersant, but the content of the dispersant other than the above-mentioned polymer is the above in terms of mass ratio from the viewpoint of dispersibility. It is preferably less than the content of the polymer, more preferably less than 1/5 of the content of the polymer, and particularly preferably not containing a dispersant other than the polymer. Matsuno discloses the dispersion further containing a polymer having a sulfonic acid group and the content of the polymer is 0.05-10 percent by mass with respect to the total mass of the dispersion (claims 4-8, page 9).
Takaya discloses heat-ray shielding particle dispersion which contains: ITO particles having a heat-ray shielding capability; a solvent containing 60% by mass or more of water; and a dispersant. The solvent is a component obtained by removing the heating residue from the heat-ray shielding particle dispersion, and is contained in an amount of 6.1-99.0% by mass with respect to 100% by mass of the dispersion. The dispersant is at least one kind among a phosphate ester-based dispersant (abstract).
However, Matsuno in view of Takaya and Weiske fails to disclose that that corrosion inhibitor comprises from about 50-99 wt% of the composition.
Whereas, Hedouin discloses agent in a water-insoluble film-forming polymer composition or in a mineral binder composition for applications in the construction field (abstract). The phosphate monoester, diester or triester may be added directly to the building composition, in an amount that may be between 0.01% and 50% by dry weight of the phosphate monoester, diester or triester relative to the total weight of the building composition (para 0107).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include phosphate ester of Matsuno in view of Takaya in an amount of 50 wt% as taught by Hedouin motivated by the desire to have improved water resistance and desired corrosion inhibitor properties.
Claim(s) 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuno (WO 2020/235362) in view of Takaya et al. (US 2020/0140698) and Weiske (DE 4323062) as applied to claim 1, further in view of Zhong et al. (CN 212153756).
Regarding claims 17 and 19-20, Matsuno fails to disclose that the corrosion inhibiting composition comprises in a treated metal containment comprising a metal surface and a barrier coating the metal surface.
Whereas, Zhong discloses anti-corrosion coating structure of long-acting outdoor steel structure, comprising an outer steel structure, sand-blasting, rust-removing, anti-corrosion coating primer layer, anti-corrosion coating middle paint layer, anti-corrosion coating paint layer and using coating method construction, simple structure, convenient construction, strong applicability and so on, the using life can reach more than 25 years, and the cost is much lower than the long-acting anti-corrosion method (abstract). The long-acting outdoor steel structure anti-corrosion coating structure is successfully applied to the outdoor steel structure of the clock park commercial centre project; the project construction is finished in 2000; the anti-corrosion coating of the steel structure is complete (page 5).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to use the corrosion inhibiting composition of Matsuno on to the steel structure in effective amount of Zhong motivated by the desire to form a structure that doesn’t form rust and lasts for long period of time.
Regarding claim 18, with respect to the amount of 1-5000 ppm of corrosive inhibitive composition, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization motivated by the desire to have desired corrosion inhibitive properties, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Response to Arguments
Applicant’s arguments filed on 04/28/2026 have been fully considered, but they are not persuasive.
Applicant argues that combination of Matsuno and Takaya fail to fully teach or motivate a person skilled in the art to arrive at the present claims requiring a non-functionalized calcium silicon dioxide nanoparticle. See Office Action, page 8. Thus, the Examiner turns to Weiske for disclosing a water-dilutable zinc dust coating material based on epoxy resin, which can be employed for protecting iron and steel materials against corrosion. Office Action, page 8 and Weiske, Abstract. The Examiner points to a specific example illustrated on page 5 of Weiske which also includes a calcium silica pigment in the zinc-pigmented curing component (A). There is no objective reason to combine references when a given advantage or benefit of combining a primary and secondary reference is unneeded by the primary reference. In this case, Matsuno discloses a building material dispersion and Takaya discloses a heat-ray shielding dispersion. Neither of these references teach or disclose any need for corrosion inhibition, as argued in Parts A-B above.
However, it should be noted that primary reference Matsuno does not disclose against having anticorrosion properties and Matsuno is directed towards reinforcing material which is for building material and anticorrosion properties would be beneficial to the invention of Matsuno.
Applicant argues that Takaya teaches a heat-ray shielding dispersion containing ITO (indium tin oxide) particles, a solvent, and a dispersant which may include a phosphate ester dispersant. Office Action, page 3 citing Takaya, Abstract, [0001], and [0024]. The Examiner concludes that it would have been obvious to a person skilled in the art to include a phosphate ester dispersant as taught by Takaya into the dispersion of Matsuno due to a "desire to have improved water resistance and corrosion inhibition properties." Office Action, pages 3-4. Applicant reiterates previous arguments that neither Matsuno, directed to building materials, nor Takaya, directed to heat-ray shielding, are analogous art.
However, it should be noted that both Matsuno and Takaya are directed towards same field of endeavor i.e. dispersion composition which are used in building construction and are analogous art, so it would be obvious to one of ordinary skill in the art to combine Takaya with Matsuno and arrive at the present invention. Further, it would have been obvious to one of ordinary skill in the art formulating a dispersion composition for building material would look at look at known dispersion composition in the same field to optimize standard functional properties such as surface protection.
Applicant argues that Takaya does not teach that this phosphate ester dispersant may assist in corrosion inhibition and the Examiner merely relies on the teaching as it is one of the listed components in the present claim. Moreover, even if the phosphate ester described in Takaya is used a corrosion inhibitor, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). Without any teaching of corrosion inhibition from either Matsuno or Takaya, the references cannot be capable of performing the intended use as recited in the preamble. Thus, in viewing the claim preamble in the context of the entire claim, the claimed composition is directed to corrosion-inhibiting compositions which comprise a nanoparticle, at least one corrosion inhibitor, at least one surfactant, water, and at least one additional solvent. However, a "preamble may provide context for claim construction, particularly, where that preamble's statement of intended use forms the basis for distinguishing the prior art in the patent's prosecution history." Metabolite Labs., Inc. V. Corp. of Am. Holdings, 370 F.3d 1354, 1358-62, 71 USPQ2d 1081, 1084-87 (Fed. Cir. 2004).
However, it should be noted that applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONAK C PATEL whose telephone number is (571)270-1142. The examiner can normally be reached on M-F 8:30AM-6:30PM (FLEX).
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, ALICIA CHEVALIER can be reached on 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RONAK C PATEL/Primary Examiner, Art Unit 1788
Prosecution Insights