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 .
Claims 1-17 are currently pending.
The IDS statements filed 09/24/2024, 02/18/2025, and 10/08/2025 have been considered. Initialed copies accompany this action.
For all of the foreign patent references in foreign language(s) cited on the IDS filed 02/18/2025, Applicant has merely provided translations of the abstracts of the foreign patent references. While the references have been considered to the best of the Examiner’s ability, the contents of the references/pages in foreign languages have not been considered. Accordingly, only the abstracts of FOR Cite No. 1 to 5 cited on the IDS filed 02/18/2025 has been considered.
Claim Interpretation
The independent claims generally recite "A method of inhibiting corrosion of a metal surface in contact with a medium, comprising: adding an effective amount of a composition to the medium...". While the phrases "of a metal surface in contact with a medium," are recited in the preambles, the step of "adding an effective amount of a composition to the medium" recited in the bodies of the independent claims breathe life into the preambles and means that the respective composition is added to a medium that is in contact with a metal surface. Accordingly, the preamble recitations are extended some patentable weight.
"[A] claim preamble has the import that the claim as a whole suggests for it." Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). "If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1, 8, and 14 each recite “an effective amount of a composition” and it is unclear what constitutes “an effective amount” of each composition. Claims 3-7, 9-13, 15, and 16 are also indefinite for the “effective amount” issue due to their dependency on one of the independent claims with the issue and do not further clarify the issue. However, note that claims 2 and 17 clarify/quantify what an effective amount is in the methods of claims 1 and 14, respectively, and are not indefinite for the “effective amount” issue.
Independent claims 1 and 8 also each recite formulae of compounds present in the composition. The formulae clearly depict divalent R groups (R1 and R2) in a backbone/main chain of the compounds. However, the claims then define the R groups as “selected from the group consisting of a C1-C40 alkyl, a C1-C40 alkenyl, and a C1-C40 alkynyl group” which define monovalent groups. It is unclear how each and every R1 and R2 (when the R2 is present) are selected from alkyl, alkenyl, or alkynyl monovalent groups when the formulae clearly depict and require divalent groups. Claims 2-6 and 9-12 are also indefinite for their dependency on claims 1 or 8 without correcting/clarifying the issue. While drawn to product-by-process claims/limitations describing how the independent claim compounds/formulae are formed, specifically precursor compounds of the independent claim compounds, claims 5, 6, 10, and 12 are also indefinite for substantially the same issue as in the independent claims of depicting divalent R groups in the formulae but instead reciting monovalent R groups in the limitations.
For purposes of further examination, the formulae are construed as meaning as if the R groups are “selected from the group consisting of a C1-C40 alkylene, a C1-C40 alkenylene, and a C1-C40 alkynylene group”, i.e., clearly selected from divalent groups.
Throughout the claims, specifically claims 1, 7, 8, 10, 11, and 13, it is seriously unclear what is meant by the “isomers thereof” embodiments of the formulae. Notwithstanding the monovalent/divalent R group issues explained above, the recited formulae (if the R groups are interpreted as meaning divalent versions of the recited groups, e.g., alkylene, alkenylene, and alkynylene groups) already encompass a plethora of structural isomers via those divalent groups potentially being linear or branched. For example, C1-C40 alkylene encompasses straight and branched alkylene groups, etc. However, isomers, as is known in the art and/or to persons of ordinary skill in organic chemistry, also encompass other position isomers where the placement of the functional group differs from the stated compound/formula (for example, where the hydroxyl and/or carbonyl group in the recited Formula I is/are somewhere else in the compound) and other structural isomers that have the same molecular formula but have the atoms connected in entirely distinct ways (for example, regarding the first particular reaction product recited in claim 7 having a molecular formula C4H8O3S, any compound with any functional group(s) so long as it ultimately has the molecular formula C4H8O3S). While the above discussion only exemplifies Formula I and the first compound of claim 7, this same rationale similarly applies to each and every “isomer” recitation albeit with some minor differences as every compound recited before its “isomer thereof” has its own unique functional groups. The isomers encompass formulae entirely distinct from the formulae recited, rendering the scope of the claims seriously unclear. Claims 2-7 and 9-13 are also indefinite for their dependency on the independent claims reciting the unclear “isomer” structures.
Appropriate correction/clarification is required.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling methods of inhibiting corrosion comprising addition of compositions comprising the specific reaction product structures recited in claims 7 and 13 and closely similar compounds thereof (i.e., where R1 is derived from 2-mercaptoethanol and R2 is derived from a saturated short chain dialdehyde), does not reasonably provide enablement for methods of inhibiting corrosion comprising addition of compositions comprising any and all reaction products of the broad recited Formulae I or IV and any and all isomers of the recited formulae and compounds encompassed by the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
To be enabling, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir., 1993). Explaining what is meant by "undue experimentation," the Federal Circuit has stated that:
The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which experimentation should proceed to enable the determination of how to practice a desired embodiment of the claimed invention. PPG v. Guardian, 75 F.3d 1558,1564 (Fed. Cir. 1996).
The factors that may be considered in determining whether a disclosure would require undue experimentation are set forth by In re Wands, 8 USPQ2d 1400 (CAFC 1988) at 1404 wherein, citing Ex parte Forman, 230 USPQ 546 (Bd. Apls. 1986) at 547, the court recited eight factors to consider when assessing whether or not a disclosure would require undue experimentation. These factors include, but are not limited to: 1) the breadth of the claims, 2) the nature of the invention, 3) the state of the prior art, 4) the level of one of ordinary skill, 5) the level of predictability in the art, 6) the amount of direction provided by the inventor, 7) the existence of working examples, and 8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Following a Wands factors analysis, there is sufficient evidence to support the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims for the following reasons:
Breadth of the claims
Independent claims 1 and 8 recite methods of inhibiting corrosion of a metal surface comprising adding an effective amount of compositions to a medium in contact with the metal surface.
Claim 1’s composition comprises a reaction product comprising a structure of Formula I and isomers thereof:
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Claim 1’s Formula I has one hundred and twenty (120) distinct R1 groups and one hundred and twenty one (121) distinct R2 groups. Before even accounting for the possibility that the recited R groups may be linear or branched, there are approximately fourteen thousand (120 x 121 = 14,520) genera of compounds encompassed by Formula I. Because “isomers” encompass other positional isomers where the placement of the functional group differs from the stated compound/formula and/or compounds of the same molecular formula but have the atoms connected in entirely distinct ways, the Office cannot ascertain an approximate number isomers of the fourteen thousand genera of compounds encompassed by Formula I but it is likely in the tens of thousands if not hundreds of thousands.
Claim 8’s composition comprises a reaction product comprising a structure of Formula IV and isomers thereof:
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Claim 8’s Formula IV similarly has one hundred and twenty (120) distinct R1 and R2 groups, independently selected from one another. Before even accounting for the possibility that the recited R groups may be linear or branched, there are nearly two million (120 x 120 x 120 = 1,728,000) genera of compounds encompassed by Formula IV. Because “isomers” encompass other positional isomers where the placement of the functional group differs from the stated compound/formula and/or compounds of the same molecular formula but have the atoms connected in entirely distinct ways, the Office cannot ascertain an approximate number isomers of the 1.7 million genera of compounds encompassed by Formula IV but it is likely in the hundreds of thousands if not millions.
While some dependent claims (e.g., claims 7 and 13) do recite specific compounds that are enabled they nevertheless recite “an isomer thereof” for each of the enabled compounds meaning the claims include any compound having the molecular formulae C4H8O3S, C7H14O3S, C7H16O4S2, C9H20O4S2 with any functional group(s) and arrangement(s) of the recited atoms (not necessarily those hydroxyl-, thio- and/or carbonyl- groups recited in the actual initial formulae) so long as it ultimately has the molecular formula.
While some dependent claims (e.g., 5, 6, and 10-12) further specify the precursor compounds that form the independent claim compounds via product-by-process limitations, they are drawn to hundreds of compounds each that form/support the above rationale of why there are thousands/millions of compounds encompassed by the independent claim formulae (e.g., before accounting for the possibility that the recited R1 groups may be linear or branched, Formula II in claim 6 has one hundred and twenty (120) distinct R1 groups, etc.) and suffer from the same issue as the independent claims.
The remaining rejected claims do not further limit the compound structures.
Nature of the Invention
The independent claims recite methods of inhibiting corrosion of a metal surface in contact with a medium comprising adding an effective amount of the respective compositions to the medium. This indicates the invention requires the composition be capable of inhibiting corrosion of a metal surface when added to a broad medium and that medium be in contact with the metal surface.
Level of one of ordinary skill
The level or relative skill of those in the art is high, with at least a graduate school level of education (e.g., Master’s degree or Ph.D.), and a background in multiple areas of chemistry and engineering (e.g., organic chemistry, and one of materials science, chemical engineering, or process engineering with a specialty in corrosion engineering, etc.). Multidisciplinary skills are required such that one single person of ordinary skill in the art would likely be insufficient to attain the level or relative skill needed. More than one person, e.g., a collaborative team of multiple persons, of ordinary skill in a variety of arts would likely be needed.
State of the prior art & level of predictability in the art
Thorough search of the prior art revealed no prior art references for the recited Formulae I and IV of the independent claims. Search of the prior revealed that thioalcohol compounds (e.g., 2-mercaptoethanol, 2-mercaptopropanol, 1-mercapto-2-propanol, 2-mercaptobutanol, etc.) and dicarbonyl compounds (e.g., glyoxal, glutaraldehyde, etc.) are individually known for their utility in corrosion inhibiting and hydrogen sulfide-scavenging (hydrogen sulfide is a known corrodent meaning scavenging hydrogen sulfide effectively inhibits corrosion) applications but the prior art does not teach forming reaction products thereof that seems uniquely necessary to arrive at the claimed compounds. See, for example, the following references:
Porz et al. (US 5,085,842 A) teach a process for scavenging hydrogen sulfide from gases comprising introduced a hydrogen sulfide-containing gas into an aqueous glyoxal solution, optionally comprising anticorrosion agents such as quaternary ammonium salts (abstract, the sentence bridging col. 2 & 3, and claim 10). However, Porz et al. fail to teach or suggest provision of a thio-functional reaction product of the recited formulae into a medium in contact with a metal surface as claimed.
Laurent et al. (US 2018/0155609 A1) teach compositions and methods for inhibiting corrosion at a surface comprising addition/contact of a thio-formyl hemiacetal compound outside the scope of the instant claims (abstract and para. 0012). Laurent et al. further teach the anticorrosion composition can further comprise an further comprise an organic sulfur compound, such as a mercaptoalkyl alcohol, preferably 2-mercaptoethanol, (para. 0132) and/or an additional hydrogen sulfide scavenger such as aldehydes (e.g., of 1-10 carbons such as formaldehyde, glyoxal, glutaraldehyde, acrolein, or methacrolein), condensation products of secondary or tertiary amines and aldehydes, and condensation products of alkyl alcohols and aldehydes (para. 0145). However, Laurent et al. fail to teach or suggest reacting the mercaptoalkyl alcohol and an aldehyde hydrogen sulfide scavenger necessary to arrive/approach the claimed compound(s).
Sautou et al. (US 2020/0017781 A1) teach and summarize known prior art methods for removing hydrogen sulfide contained in a hydrocarbon include a method of adding a dialdehyde, such as, glyoxal, glutaraldehyde, 3-methylglutaraldehyde, 1,9-nonanedial, and 2-methyl-1,8-octanedial, to the hydrocarbon (para. 0003).
As compounds of the recited Formulae I and IV are regarded by the Office as novel and nonobvious, a person of ordinary skill in the art would regard manufacturing and using any generic compound within the extremely broad scope of the formulae with sufficient utility in a corrosion inhibiting composition as unpredictable, and a person of ordinary skill in the art would not expect provision of any possible structure of a compound within the scope of the formulae to have a reasonable expectation of success unless there was some direct teaching or suggestion to do so. In other words, the level of predictability in the present art(s) to providing any compound within the scope of the formulae in a corrosion inhibiting composition/method is low. The level of predictability to providing any isomer of the recited formulae in a corrosion inhibiting composition/method is even lower.
Amount of direction provided by the inventors & working examples
The specification provides very limited guidance and direction for making and using the claimed compounds in view of the immense scope of the compound formulae encompassed by the claims. While there are working examples in the specification, they are narrowly limited to provision of one thioalcohol (2-mercaptoethanol) with one of two dicarbonyl compounds (glutaraldehyde or glyoxal) as blends in varying ratios, the amount of direction provided in the specification beyond formulating the exemplary blends of 2-mercaptoethanol and glutaraldehyde or 2-mercaptoethanol and glyoxal to make and use the compounds possessing features commensurate with the nature of the present invention is quite low and, at best, speculative. In fact, the working examples only appear to be blends of the individual compounds and do not appear to encompass or obtain reaction products as claimed. Additionally, no direction or explanation of scope is provided for any isomer(s).
The quantity of experimentation needed
Other than the specific blends and compounds sufficiently disclosed (Id.), the specification is essentially an outline for other compounds of Formulae I and IV, but has no disclosure how to actually make and/or use them. A mere outline or roadmap for discovering additional functional species amounting to little more than a trial-and-error process of discovery does not enable any person skilled in the art to make or use the invention. Amgen Inc. v. Sanofi, 598 U.S. 594, 143 S. Ct. 1243 (2023). “[R]andom trial-and-error discovery, without more, constitutes unreasonable experimentation that falls outside the bounds required by § 112(a).” Baxalta Inc. v. Genentech, Inc., 81 F.4th 1362, 2023 USPQ2d 1103 (Fed. Cir. 2023) (citing Amgen Inc. v. Sanofi, Id.).
In re Howarth, 210 USPQ 689, (claimed derivatives of clavulanic acid not enabled by specification lacking information of how prepare the clavulanic acid or directions to reference materials containing such information); Ex parte Schwarze 151 USPQ 426 (where starting material is not known to art as of date of filing application, there must be included a description of preparation thereof to enable one skilled in this art to carry out applicant's invention); Ex parte Moersch 104 USPQ 122 (claims to process for the production of (1)‐yl‐p‐nitrophenyl‐2‐dichloracetamindo‐propane‐1,3‐diol not enabled because of failure to describe source or method of obtaining starting compound; although starting compound is identified by means of appropriate name and by structural formula).
Chemistry is an inherently experimental science. The limitations of the chemistry used to prepare novel compounds is readily apparent as stated in Dorwald (“Side Reactions in Organic Synthesis”, 2005, Front Matter & pages 1-16). See, for example, the Preface on p. IX and p. 2, 3, 8 & 9. As is shown by the cited prior art of record, e.g., Dorwald, the art(s) of chemical synthesis is not a simple matter of visualizing a desired compound, mixing starting materials together, and obtaining the desired compound.
The factors outlined in In Re Wands mentioned above apply here, and in particular as per the MPEP 2164.01(a): “A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).” It is clear that persons, even persons highly skilled in the art, could not make this very broad invention that has no working examples in this unpredictable art without undue experimentation. Genetech Inc vs Nova Nordisk, 42 USPQ 2d 1001 “A patent is not a hunting license. It is not a reward for search but compensation for its successful conclusion and patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.”
In the instant case, Applicants claim thousands, if not millions, of compounds within the scope of the formulae for addition to a medium in a method of inhibiting corrosion. However, little guidance or direction is given and few, if any, working examples making or utilizing the compounds are shown. An unreasonably immense quantity of experimentation appears to be needed to physically make the vast scope of compounds claimed besides those disclosed. An unreasonably immense quantity of experimentation also appears to be needed to physically make isomers of the compounds. Once a method of synthesizing each compound and/or its isomer(s) is determined, an unreasonable immense quantity of experimentation appears to be further needed to determine how to use the recited compounds (i.e., determine an effective amount and medium) according to the nature of the invention, if even possible.
For all of the above reasons, the claims are properly rejected as lacking enablement for the full scope of compounds encompassed by the claims.
Appropriate correction/clarification is required.
Allowable Subject Matter
Claim 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art of record fails to teach a method of inhibiting corrosion of a metal surface in contact with a medium comprising adding about 1-50,000 ppm of a composition comprising either or both of the two particularly recited thioalcohol-functional compounds to the medium.
Schneider et al. (FR 2461736 A1) teach mixtures of curable epoxy resins and uses thereof, such as for providing an anti-corrosion coating of steel sheets, comprising reaction products of glyoxal with phenol as hardeners (abstract and p.4). However, Schneider et al. fail to teach or suggest provision of a thio-functional reaction product of the recited formulae into a medium in contact with a metal surface as claimed.
Sassa et al. (“Decomposition of fruit rot toxin A, a host-selective phytotoxin from Botryosphaeria beregeriana”, Agric. Biol. Chem., 51 (1), 271-272, 1987) teach a decomposition reaction of a Fruit Rot Toxin A with mercaptoethanol to obtain the following compound:
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(Fig. 1). While the compound appears somewhat similar to the carbonyl-containing formulae in claim 14 (as well as those of claims 1, 10, and 11), the disclosed compound contains additional substituents outside those claimed and is not carbonyl- and 2-propyl-terminated as claimed. The reference also fails to teach or suggest a method of inhibiting corrosion via addition of a composition comprising the compound, as claimed. In fact, the reference is in a different field of endeavor from that claimed (investigating decomposition of a specific fruit rot toxin rather than corrosion inhibition as claimed).
Vorderbruggen et al. (US 6,117,364 A) teach an acid corrosion inhibitor composition and method of use thereof comprising a combination of cinnamaldehyde and an organo-sulfur compound (abstract). The organo-sulfur compound is at least one selected from the group consisting of thioethanol, 1-thio-2-butanol, 1,2-ethanedithiol, 1,3-dibutylthiourea, 1,3-diethylthiourea, 2-aminoethanethiol, 2-imino-4-thiobiuret, 2-mercaptobenzothiazole, 2-mercaptothiazoline, ammonium thiosulfate, dithiodipropionic acid, glycol dimercaptoacetate, mercaptosuccinic acid, sodium tetrathionate, sodium thiocyanate, sodium thiosulfate, tetramethylthiuram monosulfide, thiazolidine, thioglycerol, thiolactic acid, cysteine cystine, methionine or thiourea (summary of the invention). However, Vorderbruggen et al. fail to teach or suggest the addition or presence of the either or both of the two particularly recited thioalcohol-functional compounds as claimed.
Ahn et al. (US 6,365,067 B1) teach mercaptoalcohol corrosion inhibitors and methods of inhibiting corrosion of metals in contact with fluids thereof of the formula (HS)n-R-(OH)m where R is a straight, branched, cyclic or heterocyclic alkylene, arylene, alkylarylene, arylalkylene, or hydrocarbon moiety having from 1 to 30 carbon atoms; n and m each independently averages from 1 to 3; and the heteroatom in the heterocyclic moiety substituent, if present, may be N, O, S and/or P and preferred mercaptoalcohols include 2-mercaptoethanol, 2-mercaptopropanol, 1-mercapto-2-propanol, and 2-mercaptobutanol (abstract). Other preferred mercaptoalcohols are of the formula R”-S-CH2-C(-OH)-R’ where R’ and R” are independently selected from the group consisting of H, straight, branched, cyclic or heterocyclic, alkyl, aryl, alkylaryl and arylalkyl and where the total number of carbon atoms in the mercaptoalcohol is from 1 to 8 (col. 3 lines 22-37). However, note that the preferred mercaptoalcohol formula in col. 3 has two carbon atoms between the thio group and the hydroxyl group whereas the claimed compounds/formulae require the thio group and hydroxyl group are bound to the same carbon atom. Ahn et al. fail to teach or suggest the addition or presence of the either or both of the two particularly recited thioalcohol-functional compounds as claimed.
Laurent et al. (US 2018/0155609 A1) teach compositions and methods for inhibiting corrosion at a surface comprising addition/contact of a compound of the formula
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wherein R1 is alkyl, aryl, alkenyl, heterocyclo, or R1 and R2 together with the sulfur, carbon, and oxygen atoms form a ring; n is an integer from 1 to 10; R2 is hydrogen, alkyl, alkenyl, aryl, or R1 and R2 together with the sulfur, carbon, and X groups form a ring; R3 is hydrogen, alkyl, alkaryl, aryl, or heterocyclo; X is —O—, —S—, or —NR5; and R5 is hydrogen, alkyl, alkenyl, aryl, or R1 and R5 together with the sulfur, carbon, and nitrogen form a ring (abstract and para. 0012). Laurent et al. further teach the anticorrosion composition can further comprise an further comprise an organic sulfur compound, such as a mercaptoalkyl alcohol, preferably 2-mercaptoethanol, mercaptoacetic acid, thioglycolic acid, 3,3′-dithiodipropionic acid, thiosulfate, thiourea, L-cysteine, or tert-butyl mercaptan (para. 0132) and/or an additional hydrogen sulfide scavenger such as oxidants (e.g., inorganic peroxides), aldehydes (e.g., of 1-10 carbons such as formaldehyde, glyoxal, glutaraldehyde, acrolein, or methacrolein), triazines, condensation products of secondary or tertiary amines and aldehydes, and condensation products of alkyl alcohols and aldehydes (para. 0145). However, Laurent et al. fail to teach or suggest provision of the particular compounds (i.e., the carbonyl- and isopropoxy-terminated and hydroxyl-substituted thio compound or the hydroxyl-terminated and hydroxyl-substituted dithio compound) as claimed nor reacting the mercaptoalkyl alcohol and an aldehyde hydrogen sulfide scavenger necessary to arrive/approach the claimed compound(s).
Moloney (US 2023/0127419 A1) teach methods for inhibiting corrosion of metal surfaces comprising addition of a composition including the reaction product of a dicarbonyl compound with thioglycolic acid (abstract). The reaction product comprises a structure selected from:
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(para. 0006). It is noted Form PCT 210 indicates the reference as a Y reference for the pending claims. However, the Office disagrees with this characterization because the reference does not qualify as prior art. The reference qualifies under a 102(b)(1)(A) grace period inventor-original disclosure exception because the disclosure: 1) was made one year or less before the effective filing date of the claimed invention (published on 04/27/2023 compared to the present effective filing date of 05/12/2023), 2) names the present, sole inventor as the inventor, and 3) does not name additional persons as joint inventors. The reference also qualifies under a 102(b)(2)(A) inventor-originated disclosure exception because the disclosure is clearly to the inventor's own work (Mr. Moloney is the sole inventor of both the reference and the present application). Arguendo, even if the reference qualified as prior art, the disclosed formulae are distinct from those claimed and modification of the reference’s compounds (made by specifically reacting dicarbonyl compound with thioglycolic acid) without thioglycolic acid (e.g., providing a thioalcohol instead of thioglycolic acid) as proposed in the rationale of Form PCT 237 arguably changes the principle of operation of the reference as the proposed modification surely departs from the carboxyl-terminated reaction product/corrosion inhibitor formulae required by the reference.
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 4, 2026
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