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 .
Claim Objections
Claim 21 is objected to because of the following informalities: In claim 2, Applicant is advised to change “silica” to “silicon” as silica is silicon dioxide. Appropriate correction is required.
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).
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.
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).
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.
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 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 disclose corrosion inhibiting composition as presently claimed, it is clear that the corrosion inhibiting composition of Matsuno in view of Takaya 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) 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 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) 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).
Claim(s) 21 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) as applied to claim 1, further in view of Weiske (DE 4323062).
Regarding claim 21, Matsuno fails to disclose that the calcium-based nanoparticle is calcium silica nanoparticle.
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 calcium silica of Weiske in the dispersion of Matsuno motivated by the desire to have anticorrosion properties.
Response to Arguments
Applicant’s arguments filed on 02/24/2026 have been fully considered, but they are moot in view of new grounds of rejections as stated above.
Applicant argues that Matsuno is the only reference that teaches calcium-based nanoparticles, namely calcium hydroxide (Ca(OH)2) particles. This is differentiated from new claim 21 which further specifies that the calcium-based nanoparticle is a calcium silica dioxide (SiO₂-Ca) nanoparticle. Support for new claim 21 is found in paragraph [0056] which states: "In an embodiment, the calcium- based nanoparticle is a calcium silica dioxide (SiO₂-Ca) nanoparticle." None of the cited references-Matsuno, Takaya, Hedouin, or Zhong-discloses or suggests calcium silica dioxide (SiO₂-Ca) nanoparticles. Matsuno discloses calcium hydroxide (Ca(OH)₂) particles only, which are chemically distinct from calcium silica dioxide. Takaya discloses ITO (indium tin oxide) particles, not calcium-based nanoparticles.
However, Weiske is used as a teaching reference to teach the new limitation as stated above.
Applicant argues that Matsuno does not disclose or suggest any of the specific corrosion inhibitors recited in claim 1. While the Examiner has alleged that Takaya discloses a phosphate ester-based dispersant, Takaya does not teach or suggest combining such a dispersant with the calcium-based nanoparticles of Matsuno to create a corrosion-inhibiting composition. Furthermore, the phosphate ester in Takaya is used as a dispersant for heat-ray shielding particles (in a non-analogous application or art - as discussed further below), not as a corrosion inhibitor in combination with calcium-based nanoparticles. There is no credible rationale as for why one of ordinary skill in the art of corrosion inhibition in oil-and-gas applications would have any motivation to combine the teachings of Matsuno and Takaya to arrive at the claimed compositions.
However, it should be noted that both Matsuno and Takaya are directed towards 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.
Applicant argues that even if the preamble were considered non-limiting, the body of claim 1 itself recites structural limitations that distinguish over the prior art. Specifically, claim 1 requires "a non-functionalized calcium-based nanoparticle"-this is a structural limitation in the body of the claim, not merely in the preamble. The specification defines "functionalized" nanoparticles as those that have been modified by attaching another species onto the surface of the nanoparticle. See [0034], [0059]. Neither Matsuno nor Takaya discloses or suggests "non- functionalized" calcium-based nanoparticles. Matsuno discloses calcium hydroxide particles but does not teach whether these particles are functionalized or non-functionalized. While Matsuno does disclose using a polymer dispersant having a sulfonic acid group, this does not teach non- functionalized calcium-based nanoparticles. This structural difference-non-functionalized versus functionalized or unspecified calcium-based nanoparticles-is material because functionalization affects the surface properties of the nanoparticles, which in turn affects how they interact with corrosion inhibitors and metal surfaces in corrosion inhibition applications.
However, it should be noted that Matsuno does not disclose the calcium based nanoparticles to be functionalized, so therefore the calcium based nanoparticle of Matsuno would intrinsically be non-functionalized.
Applicant argues that Matsuno is non-analogous art because it is directed to dispersions for building materials and reinforcing materials, specifically for use in cement compositions and concrete applications, not corrosion inhibition in oil-and-gas systems. Matsuno discloses "a dispersion, and a reinforcing material which is for building material and contains the dispersion." See Matsuno, abstract. Matsuno's dispersion is specifically designed for use in building materials such as cement compositions to address the problem of concrete deterioration due to neutralization and salt damage. See Matsuno, background section. Matsuno does not teach or suggest the use of such dispersions for corrosion inhibition in oil-and-gas systems or any analogous application. The field of endeavor of Matsuno is construction materials and concrete reinforcement, which is entirely distinct from the field of corrosion inhibition in oil-and-gas systems. Furthermore, Matsuno is not reasonably pertinent to the particular problem with which the inventor is involved, namely corrosion inhibition in oil-and-gas operations. The cited references-Matsuno, Takaya, Hedouin, and Zhong-are non- analogous art, they cannot be used as prior art for obviousness purposes under 35 U.S.C. § 103. As stated in MPEP § 2141.01(a), "[o]nly analogous prior art can be used to support a rejection under 35 U.S.C. 103." The cited references are from different fields of endeavor (building materials and concrete reinforcement, heat-ray shielding for transparent automotive and building surfaces, construction adhesion, and outdoor architectural steel structures) and are not reasonably pertinent to the particular problem of corrosion inhibition in oil-and-gas systems.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
“obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788