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 .
Response to Arguments
Applicant’s arguments, filed Claims 8-13, 15-16, 18, and 21 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Bartels et al. (US 2019/0055484 A1) and Claims 8-13, 15-16, 18, and 21 rejected under 35 U.S.C. 102(a)(2) as being
anticipated by Garcia et al. (US 2024/0084459 A1)have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 8-11, 15-16, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over by Bartels et al. (US 2019/0055484 A1) (“Bartels’ herein – cited previously) and further in view of Brezinski (US 5,916,484) (“Brezinski” herein)
Claim 8
Bartels discloses an environmental cracking inhibitor, wherein the environmental cracking inhibitor comprises:
a base corrosion inhibitor; [0046, 0065-0067]
a sulfur compound modifier [0070], and
from 60 wt. % to 95 wt. % solvent. [0036-0041]
Bartels however does not explicitly disclose the sulfur compound modifier selected from the group consisting of bis (2- mercaptoethyl) sulfide, 2-mercaptoethyl disulfide, 1,8-dimercapto-3,6- dioxaoctane, glyceryl monothioglycolate, 2-mercaptophenol, 4- mercaptophenol, 1 ethane-1,2-dithiol, thiolactic acid, 1.3,5-triazine-2,4,6- trithiol, 3-mercaptopropanol, 2-mercaptopropanol, 1-mercapto-2-propanol, 5-amino-2-mercaptobenzimidazole. and a salt of any of the foregoing sulfur compounds.
Brezinski teaches the above limitation (See Col.4 l. 1-5 → Brezinski teaches this limitation in that the preferred corrosion inhibitor intensifiers for use in accordance with the present invention are thioglycolic acid, and/or one or more of its derivatives such as thiolactic acid and thiomalic acid. Of the various intensifiers that can be used, thioglycolic acid is the most preferred.) for the purpose of providing a low toxicity corrosion inhibitor intensifiers. (Col. 3 l. 61-62)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention modify Bartels, with the above limitation, as taught by Brezinski, in order to provide a low toxicity corrosion inhibitor intensifiers.
Since Bartels teaches a corrosion inhibitor and a modifier such as thiolactic acid, and a solvent, it would be a base corrosion inhibitor, a sulfur compound modifier, and be an environmental cracking inhibitor.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 9
Bartels discloses the environmental cracking inhibitor of claim 8, wherein the base corrosion inhibitor is selected from the group consisting of imidazolines, amines, quaternary amines, phosphate esters, fatty acid derivatives, and combinations thereof. [0046, 0065-0067]
Claim 10
Bartels discloses the environmental cracking inhibitor of claim 8 comprising:
from 1 wt. % to 20 wt. % sulfur compound modifier; [0070] and from 2 wt. % to 10 wt. % base corrosion inhibitor. [0046, 0065-0067]
Claim 11
Bartels discloses the environmental cracking inhibitor of claim 10 comprising:
2.5 wt. % sulfur compound modifier; [0070] and
4 wt.% base corrosion inhibitor. [0046, 0065-0067]
Claim 15
Bartels discloses the environmental cracking inhibitor of claim 8 further comprising a solvent selected from the group consisting of alkylene carbonates, glycols, glycol ethers, aromatic solvents, alcohols, mineral oil, water, and combinations thereof. [0036- 0041]
Claim 16
Bartels discloses the environmental cracking inhibitor of claim 15, wherein the solvent comprises methanol. [0036-0041]
Claim 18
Bartels discloses the environmental cracking inhibitor of claim 11 further comprising a surfactant and a demulsifier. [0071, 0084]
Claim 21 .
Bartels discloses the environmental cracking inhibitor, wherein the environmental cracking inhibitor comprises:
a base corrosion inhibitor, wherein the base corrosion inhibitor is a phosphate ester; [0046, 0065-0067] and
a sulfur compound modifier. [0070]
Bartels however does not explicitly disclose the sulfur compound modifier selected from the group consisting of bis (2- mercaptoethyl) sulfide, 2-mercaptoethyl disulfide, 1,8-dimercapto-3,6- dioxaoctane, glyceryl monothioglycolate, 2-mercaptophenol, 4- mercaptophenol, 1 ethane-1,2-dithiol, thiolactic acid, 1.3,5-triazine-2,4,6- trithiol, 3-mercaptopropanol, 2-mercaptopropanol, 1-mercapto-2-propanol, 5-amino-2-mercaptobenzimidazole. and a salt of any of the foregoing sulfur compounds.
Brezinski teaches the above limitation (See Col.4 l. 1-5 → Brezinski teaches this limitation in that the preferred corrosion inhibitor intensifiers for use in accordance with the present invention are thioglycolic acid, and/or one or more of its derivatives such as thiolactic acid and thiomalic acid. Of the various intensifiers that can be used, thioglycolic acid is the most preferred.) for the purpose of providing a low toxicity corrosion inhibitor intensifiers. (Col. 3 l. 61-62)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention modify Bartels, with the above limitation, as taught by Brezinski, in order to provide a low toxicity corrosion inhibitor intensifiers.
Since Bartels teaches a corrosion inhibitor such as phosphate ester and a modifier such as thiolactic acid, and a solvent, it would be a base corrosion inhibitor, a sulfur compound modifier, and be an environmental cracking inhibitor.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claims 8-13, 15-16, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia et al. (US 2024/0084459 A1) ("Garcia" herein- cited previously), and further in view of Brezinski.
Claim 8
Garcia discloses an environmental cracking inhibitor, wherein the environmental cracking inhibitor comprises:
a base corrosion inhibitor; [0093-0094, 0096]
a sulfur compound modifier; [0102-0103] and
from 60 wt. % to 95 wt. % solvent. [0097-0100]
Garcia however does not explicitly disclose the sulfur compound modifier selected from the group consisting of bis (2- mercaptoethyl) sulfide, 2-mercaptoethyl disulfide, 1,8-dimercapto-3,6- dioxaoctane, glyceryl monothioglycolate, 2-mercaptophenol, 4- mercaptophenol, 1 ethane-1,2-dithiol, thiolactic acid, 1.3,5-triazine-2,4,6- trithiol, 3-mercaptopropanol, 2-mercaptopropanol, 1-mercapto-2-propanol, 5-amino-2-mercaptobenzimidazole. and a salt of any of the foregoing sulfur compounds.
Brezinski teaches the above limitation (See Col.4 l. 1-5 → Brezinski teaches this limitation in that the preferred corrosion inhibitor intensifiers for use in accordance with the present invention are thioglycolic acid, and/or one or more of its derivatives such as thiolactic acid and thiomalic acid. Of the various intensifiers that can be used, thioglycolic acid is the most preferred.) for the purpose of providing a low toxicity corrosion inhibitor intensifiers. (Col. 3 l. 61-62)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention modify Garcia, with the above limitation, as taught by Brezinski, in order to provide a low toxicity corrosion inhibitor intensifiers.
Since Garcia teaches a corrosion inhibitor such as a phosphate ester, and a modifier such as thiolactic acid, and a solvent, it would be a base corrosion inhibitor, a sulfur compound modifier, and be an environmental cracking inhibitor.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 9
Garcia discloses the environmental cracking inhibitor of claim 8, wherein the base corrosion inhibitor is selected from the group consisting of imidazolines, amines, .
quaternary amines, phosphate esters, fatty acid derivatives, and combinations thereof.
[0093-0094, 0096]
Claim 10
Garcia discloses the environmental cracking inhibitor of claim 8 comprising:
from 1 wt. % to 20 wt. % sulfur compound modifier; and
from 2 wt. % to 10 wt. % base corrosion inhibitor. [0093-0094, 0096]
Claim 11
Garcia discloses the environmental cracking inhibitor of claim 10 comprising:
2.5 wt. % sulfur compound modifier; and
4 wt.% base corrosion inhibitor. [0093-0094, 0096]
Claim15
Garcia discloses the environmental cracking inhibitor of claim 8 further comprising a solvent selected from the group consisting of alkylene carbonates, glycols, glycol ethers, aromatic solvents, alcohols, mineral oil, water, and combinations thereof. [0097- 0100]
Claim 16
Garcia discloses the environmental cracking inhibitor of claim 15, wherein the solvent comprises methanol. [0097-0100]
Claim 18
Garcia discloses the environmental cracking inhibitor of claim 11 further comprising a surfactant and a demulsifier. [0041]
Claim 21
Garcia discloses an environmental cracking inhibitor, wherein the environmental cracking inhibitor comprises:
a base corrosion inhibitor, wherein the base corrosion inhibitor is a phosphate ester; [0093-0094, 0096] and
a sulfur compound modifier [0102-0103]
Garcia however does not explicitly disclose the sulfur compound modifier selected from the group consisting of bis (2- mercaptoethyl) sulfide, 2-mercaptoethyl disulfide, 1,8-dimercapto-3,6- dioxaoctane, glyceryl monothioglycolate, 2-mercaptophenol, 4- mercaptophenol, 1 ethane-1,2-dithiol, thiolactic acid, 1.3,5-triazine-2,4,6- trithiol, 3-mercaptopropanol, 2-mercaptopropanol, 1-mercapto-2-propanol, 5-amino-2-mercaptobenzimidazole. and a salt of any of the foregoing sulfur compounds.
Brezinski teaches the above limitation (See Col.4 l. 1-5 → Brezinski teaches this limitation in that the preferred corrosion inhibitor intensifiers for use in accordance with the present invention are thioglycolic acid, and/or one or more of its derivatives such as thiolactic acid and thiomalic acid. Of the various intensifiers that can be used, thioglycolic acid is the most preferred.) for the purpose of providing a low toxicity corrosion inhibitor intensifiers. (Col. 3 l. 61-62)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention modify Garcia, with the above limitation, as taught by Brezinski, in order to provide a low toxicity corrosion inhibitor intensifiers.
Since Garcia teaches a corrosion inhibitor such as a phosphate ester and a modifier such as thiolactic acid, and a solvent, it would be a base corrosion inhibitor, a sulfur compound modifier, and be an environmental cracking inhibitor.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
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.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 03/26/2026
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