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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/20/2026 has been entered.
Response to Arguments
Applicant’s arguments, filed on 07/20/2026, with respect to the rejection(s) of Claims 8-11, 15-16, 18, and 21under 35 U.S.C. 103 as being unpatentable over by Bartels et al. (US 2019/0055484 A1) and further in view of Brezinski (US 5,916,484) and Claims 8-13, 15-16, 18, and 21 rejected under 35 U.S.C. 103 as being unpatentable over Garcia et al. (US 2024/0084459 A1) and further in view of Brezinski 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 Therefore, the rejection has been withdrawn.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 Babic-Sarmadzija et al. (US 2010/00301275 A1) (“Babic” 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, 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.
Babic teaches the above limitation (See paragraphs 0035, 0039-0040 → Babic teaches this limitation in that When the synergistic compound is a sulfur compound it may be selected from several groups of compounds. The first of these groups is compounds adhering to the general formula:
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134
278
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wherein x is carbon, oxygen, nitrogen, or sulfur; R1, R2, R3, and R4 are independently hydrogen or methyl; m and n are independently integers from 1 to 5; and p and q are independently integers from 1 to 4. Specific but non-limiting examples of this group include bis-2(-mercapto-1-methylpropyl) sulfide, 2-mercaptoethyl sulfide, 2-mercaptoethyl ether, 1,5-pentane dithiol, and the like. In one non-limiting embodiment, the mercaptoalcohol is a water soluble mercaptoalcohol having the formula:
PNG
media_image2.png
116
110
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where R' and R'' are independently selected from the group consisting of H, straight, branched, cyclic or heterocyclic, alkyl, aryl, alkyl aryl and arylalkyl where the heteroatom in the heterocyclic moiety is selected from the group consisting of N, O, S and P, and where the total number of carbon atoms in the mercaptoalcohol is from 1 to 8. In one non-limiting embodiment, the mercapto alcohol is 2-mercaptoethanol (2ME), 2-mercaptopropanol (2 MP) and 1mercapto-2-propanol (MP), and/or 2-mercaptobutanol (2 MB) or mixtures thereof. The above groups of compounds may be prepared by any means and methods known to those skilled in the mercaptan preparation art, including but not limiting to selection of sulfur-containing starting materials and sulfonation of non-sulfur-containing starting materials.) for the purpose of enhancing the protective properties of the corrosion inhibiting compositions. [0041]
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 the composition of Bartels, with the above limitation, as taught by Babic, in order to enhance the protective properties of the corrosion inhibiting compositions.
Since Bartels teaches a corrosion inhibitor and a modifier such as 2-mercaptopropanol,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, 7F 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 Imonothioglycolate, 2- mercaptophenol, 4- mercaptophenol, 1 ethane-1,2-dithiol, 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.
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.
Babic teaches the above limitation (See paragraphs 0035, 0039-0040→ Babic teaches this limitation in that When the synergistic compound is a sulfur compound it may be selected from several groups of compounds. The first of these groups is compounds adhering to the general formula:
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134
278
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Greyscale
wherein x is carbon, oxygen, nitrogen, or sulfur; R1, R2, R3, and R4 are independently hydrogen or methyl; m and n are independently integers from 1 to 5; and p and q are independently integers from 1 to 4. Specific but non-limiting examples of this group include bis-2(-mercapto-1-methylpropyl) sulfide, 2-mercaptoethyl sulfide, 2-mercaptoethyl ether, 1,5-pentane dithiol, and the like. In one non-limiting embodiment, the mercaptoalcohol is a water soluble mercaptoalcohol having the formula:
PNG
media_image2.png
116
110
media_image2.png
Greyscale
where R' and R'' are independently selected from the group consisting of H, straight, branched, cyclic or heterocyclic, alkyl, aryl, alkyl aryl and arylalkyl where the heteroatom in the heterocyclic moiety is selected from the group consisting of N, O, S and P, and where the total number of carbon atoms in the mercaptoalcohol is from 1 to 8. In one non-limiting embodiment, the mercapto alcohol is 2-mercaptoethanol (2ME), 2-mercaptopropanol (2 MP) and 1mercapto-2-propanol (MP), and/or 2-mercaptobutanol (2 MB) or mixtures thereof. The above groups of compounds may be prepared by any means and methods known to those skilled in the mercaptan preparation art, including but not limiting to selection of sulfur-containing starting materials and sulfonation of non-sulfur-containing starting materials.) for the purpose of enhancing the protective properties of the corrosion inhibiting compositions. [0041]
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 the composition of Bartels, with the above limitation, as taught by Babic, in order to enhance the protective properties of the corrosion inhibiting compositions.
Since Bartels teaches a corrosion inhibitor and a modifier such as 2-mercaptopropanol,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, 7F 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 Babic.
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, 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.
Babic teaches the above limitation (See paragraphs 0035, 0039-0040→ Babic teaches this limitation in that When the synergistic compound is a sulfur compound it may be selected from several groups of compounds. The first of these groups is compounds adhering to the general formula:
PNG
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134
278
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Greyscale
wherein x is carbon, oxygen, nitrogen, or sulfur; R1, R2, R3, and R4 are independently hydrogen or methyl; m and n are independently integers from 1 to 5; and p and q are independently integers from 1 to 4. Specific but non-limiting examples of this group include bis-2(-mercapto-1-methylpropyl) sulfide, 2-mercaptoethyl sulfide, 2-mercaptoethyl ether, 1,5-pentane dithiol, and the like. In one non-limiting embodiment, the mercaptoalcohol is a water soluble mercaptoalcohol having the formula:
PNG
media_image2.png
116
110
media_image2.png
Greyscale
where R' and R'' are independently selected from the group consisting of H, straight, branched, cyclic or heterocyclic, alkyl, aryl, alkyl aryl and arylalkyl where the heteroatom in the heterocyclic moiety is selected from the group consisting of N, O, S and P, and where the total number of carbon atoms in the mercaptoalcohol is from 1 to 8. In one non-limiting embodiment, the mercapto alcohol is 2-mercaptoethanol (2ME), 2-mercaptopropanol (2 MP) and 1mercapto-2-propanol (MP), and/or 2-mercaptobutanol (2 MB) or mixtures thereof. The above groups of compounds may be prepared by any means and methods known to those skilled in the mercaptan preparation art, including but not limiting to selection of sulfur-containing starting materials and sulfonation of non-sulfur-containing starting materials.) for the purpose of enhancing the protective properties of the corrosion inhibiting compositions. [0041]
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 the composition of Garcia, with the above limitation, as taught by Babic, in order to enhance the protective properties of the corrosion inhibiting compositions.
Since Garcia teaches a corrosion inhibitor such as a phosphate ester, and a modifier such as 2-mercaptopropanol, 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, 7F 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, 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.
Babic teaches the above limitation (See paragraphs 0035, 0039-0040 → Babic teaches this limitation in that When the synergistic compound is a sulfur compound it may be selected from several groups of compounds. The first of these groups is compounds adhering to the general formula:
PNG
media_image1.png
134
278
media_image1.png
Greyscale
wherein x is carbon, oxygen, nitrogen, or sulfur; R1, R2, R3, and R4 are independently hydrogen or methyl; m and n are independently integers from 1 to 5; and p and q are independently integers from 1 to 4. Specific but non-limiting examples of this group include bis-2(-mercapto-1-methylpropyl) sulfide, 2-mercaptoethyl sulfide, 2-mercaptoethyl ether, 1,5-pentane dithiol, and the like. In one non-limiting embodiment, the mercaptoalcohol is a water soluble mercaptoalcohol having the formula:
PNG
media_image2.png
116
110
media_image2.png
Greyscale
where R' and R'' are independently selected from the group consisting of H, straight, branched, cyclic or heterocyclic, alkyl, aryl, alkyl aryl and arylalkyl where the heteroatom in the heterocyclic moiety is selected from the group consisting of N, O, S and P, and where the total number of carbon atoms in the mercaptoalcohol is from 1 to 8. In one non-limiting embodiment, the mercapto alcohol is 2-mercaptoethanol (2ME), 2-mercaptopropanol (2 MP) and 1mercapto-2-propanol (MP), and/or 2-mercaptobutanol (2 MB) or mixtures thereof. The above groups of compounds may be prepared by any means and methods known to those skilled in the mercaptan preparation art, including but not limiting to selection of sulfur-containing starting materials and sulfonation of non-sulfur-containing starting materials.) for the purpose of enhancing the protective properties of the corrosion inhibiting compositions. [0041]
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 the composition of Garcia, with the above limitation, as taught by Babic, in order to enhance the protective properties of the corrosion inhibiting compositions.
Since Garcia teaches a corrosion inhibitor such as a phosphate ester and a modifier such as 2-mercaptopropanol, 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, 7F Supp 773, 22 USPQ 313 (EDNY1934).
Conclusion
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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/SILVANA C RUNYAN/ Primary Examiner, Art Unit 1616 09/04/2026
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