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 .
This action is responsive to Applicant’s response to election/restriction filed 04/21/2026.
Claims 1-20 are currently pending.
The IDS statements filed 05/17/2026 have been considered. Initialed copies accompany this action.
Applicant’s election without traverse of Group II, claims 12-17, in the reply filed on 04/21/2026 is acknowledged. Claims 1-11 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 12, 13, and 16 are objected to because of the following informalities:
In claim 12, Applicant is suggested to amend “an phenyl” to read as “a phenyl” in order to improve grammar and clarity in the claim.
In claim 13, Applicant is suggested to amend “an phenyl” to read as a “a phenyl” in order to improve grammar and clarity in the claim and amend “naphthyl” to read as “naphthalene” in order to match the exact antecedent basis set forth in the parent claim.
Claim 16 recites “wherein the composition further comprises an asphaltene inhibitors, paraffin inhibitors, scale inhibitors, demulsifiers, water clarifiers, dispersants, emulsion breakers, antifoams, a salt, or a mixture thereof” and is objected to for its grammar of the plural terminology following the singular “an”.
Applicant is requested to check whether one (e.g., an asphaltene inhibitor) or a plurality (e.g., asphaltene inhibitors) of the alternative components is intended. If only one of each alternative component is intended (i.e., one asphaltene inhibitor is required when the composition further comprises the asphaltene inhibitor embodiment), Applicant is suggested to amend the claim to recite the plural terms in their singular form with the appropriate article preceding each species (e.g., amend “paraffin inhibitors” to “a paraffin inhibitor”, etc.). If more than one of each alternative component is intended (i.e., at least two asphaltene inhibitors are required when the composition further comprises the asphaltene inhibitor embodiment), Applicant is suggested to remove “an” from “an asphaltene inhibitors”.
Appropriate correction is required.
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 12-14, 16, and 17 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 for an oxyalkylated surfactant where A is a phenyl ring or naphthyl ring and X is -O-, does not reasonably provide enablement for an oxyalkylated surfactant where A is any of a indole, purine, pyridine, quinoline, isoquinoline, pyrimidine, pyrrole, furan, thiophene, imidazole, or thiazole ring and/or X is -N(R10)-, -OC(O)-, -C(O)O-, -N(R10)C(O)-, -C(O)N(R10)-, - OC(O)O-, -OC(O)N(R10)-, -N(R10)C(O)O-, or -N(R10)C(O)N(R10)-. 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 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 claim 12 recites a corrosion inhibitor compound with a broad A ring-based group and a Z moiety bound and extending therefrom containing various linking groups and repeating units therein. Thirteen (13) different genera of A are recited. Ten (10) different linking group X are recited, which may optionally be preceded by an alkylene linking group to the A. At least two polymeric units may be present comprising ethylene glycol (unsubstituted) repeating units, propylene or higher glycol (alkyl-substituted) repeating units, or aryl-substituted ethylene glycol repeating units. The first ethylene group between the linking group X and the glycol polymeric units also has an alkyl, aryl, or ether side group. Before even accounting for the amount of different polymer genera, there are approximately two hundred sixty (260 = 13 A’s ∙ 10 X’s ∙ 2 with or without an alkylene linking group) genera of compounds encompassed by Formula I. Note this cursory calculation is for genera (general groups of compounds), not species. As there are dozens to hundreds of species encompassed within each genera (different side chains and polymeric repeating units/lengths), there are tens of thousands of compounds encompassed by the formula.
Dependent claim 13 limits the A to five particular A’s down from the parent claim’s thirteen, but there are still thousands of compounds encompassed once factoring in the X’s, optional linking alkylene, and various side chains and polymer units of the Z moiety.
Dependent claim 14 limits the A to an optionally substituted phenyl structure, but, like claim 13, there are still thousands of compounds encompassed once factoring in the X’s, optional linking alkylene, and various side chains and polymer units of the Z moiety.
The remaining rejected claims (claims 16 and 17) do not further limit the corrosion inhibitor compound’s structure.
Nature of the Invention
While it is improper to read limitations contained in the specification into the claims, interpreting the claims read in light of the specification can reasonably apprise those skilled in the art to the nature and scope of the claimed invention. The independent claim recites the composition is comprises a corrosion inhibitor and inhibits corrosion. The specification describes the composition is intended to be added to a fluid and the fluid contacts a metal surface to inhibit corrosion of the metal surface ([0054]+). This indicates of the invention prefers if not requires the composition be capable of inhibiting corrosion of a metal surface when added to a broad fluid and that fluid be contacted 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
While some species of compounds within the extremely broad scope of the general formulae are known in the art as suitable for provision in corrosion inhibiting compositions (either directly known as a corrosion inhibitors or provided with alongside corrosion inhibitors so that the compositions are nevertheless corrosion inhibiting), it is well known and understood in the art that not all compounds within the scope of the formulae are suitable for corrosion inhibiting purposes.
As general support thereof, please see the prior art references relied upon cited in the grounds of rejection below: McDonald et al. (US 4,828,713 A) and Zhang et al. (US 2017/0198233 A1). The rationale to those references is not repeated here for purposes of brevity but is incorporated herein by reference in their entirety. See, especially, col. 6 lines 45-60 of McDonald et al. and para. 0032 of Zhang et al.
In contrast to the prior-cited references in (or related to) the field of corrosion inhibiting compositions:
Lepper et al. (DE 2348576 A1) teaches a nonionic surfactant having soil-suspending ability preventing re-deposition of soil on natural and synthetic fibers (abstract). The nonionic surfactant is an ethoxylation product of the formula:
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(abstract and p.2). While Lepper et al. falls short of the claimed formulae (it does not teach/meeting the limitation wherein at least one of R8 and R9 are other than hydrogen), it is still close to the scope of the claimed formulae and relevant to this analysis.
Scott (US 4,436,642 A) teaches nonionic surfactants for automatic dishwater detergents to provide enhanced low-foaming and wetting and compatibility with active chlorine compounds (abstract). The nonionic surfactants are specific block oxypropylene/oxyethylene adducts of alkylphenols of the formula:
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(abstract and col. 2), which fall within the scope of the claimed formulae.
Daugs et al. (US 2018/0355107 A1) teaches a compound useful as an open time additive in waterborne coating compositions, particularly waterborne paint compositions (abstract). An open time is the period of time during which a freshly applied paint film can be reworked without leaving brush marks (para. 0002). The compounds are of the formula:
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(para. 0005), which overlap the scope of the claimed formulae.
Scott, Lepper et al. and Daugs et al. each demonstrate the properties of compounds within the scope of the formulae or similar to the scope of the formulae are unpredictable and changing the chemical structure of the compound(s) can vastly change its properties and utility.
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 is low.
Amount of direction provided by the inventors & working examples
The specification provides 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 is a set of working examples (CI-1 to CI-10), they all contain the same base formula, which are oxyalkylated [propoxylated and ethoxylated] 1-((2-ethylhexy)oxy)-3-phenoxypropan-2-ol compounds, merely with varying amounts of propoxy and ethoxy repeating units m and n). A reaction scheme for the exemplary compounds (that all have the same general structure) is/are given:
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However, this scheme merely accounts for forming one specific type of compound (A is phenyl, X is -O-; the Office notes that naphthalene groups would be expected to be similarly formed via the scheme if naphthalene was present in place of the phenyl) in contrast to the vast amounts of types of other compounds encompassed by the claims (the other unrelated A’s and other unrelated X’s described above) that would very likely affect and prevent the disclosed reaction scheme from taking place if they were present. Distinct reaction schemes would be needed for the other types of compounds, and it is unclear what other starting compounds would be (or even could be) to obtain the other types of compounds encompassed by the claims.
The amount of direction provided in the specification beyond formulating the exemplary compounds made of an aryl/phenyl A with an O X linking group to make and use the compounds possessing features commensurate with the nature of the present invention is quite low and, at best, speculative.
The quantity of experimentation needed
Other than the one specific type of compound sufficiently disclosed (Id.), the specification is essentially an outline for other compounds of Formula I, 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 of compounds within the scope of the formulae for their utility in a corrosion inhibiting composition. However, the state of the prior art (Id.) shows and explains not all compounds having the claimed formulae are suitably used in corrosion inhibiting compositions and the characteristics and properties of the compounds unexpectedly and unpredictably change depending on the substituents therein without any general trend.
An unreasonably immense quantity of experimentation appears to be needed to physically make the vast scope of compounds claimed besides compounds that are disclosed or already known. Once a method of synthesizing each compound is determined, an unreasonable immense quantity of experimentation appears to be further needed to determine how to use the recited compounds 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.
Note claim is 15 are not rejected under this heading because the claim appears to (or intended to) limit the compound to an enabled compound, i.e., where A is a phenyl ring and X is -O-. See the preferred embodiments/examples in the specification.
Claims 12-17 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.
Claim 12 recites the limitations “R8 and R9 are independently hydrogen, alkyl, or aryl; R9 is hydrogen or alkyl;” which conflict with one another to render the claim indefinite. The claim recites two distinct limitations for the identity of the R9 group (“hydrogen, alkyl or aryl” and “hydrogen or alkyl”). While hydrogen and alkyl are common between the two limitations for R9, it is unclear whether the R9 may contain aryl as recited in the first limitation. What is the scope of the R9 group? It is noted the claim later recites “wherein at least one of R8 and R9 are other than hydrogen” which is construed as clearly meaning at least one (or both) of R8 and R9 are not hydrogen, i.e., one of the remaining species previously recited alternate to hydrogen (alkyl or aryl).
Also in claim 12, Applicant is also requested to clarify the meanings of “m is independently an integer in the range of 2 to 20; n is independently an integer in the range of 3 to 20;”. The term “independently” has the implication there is or can be more than one m and/or more than one n. However, the m and n variables each occur once in Formula I and it is unclear how are the m and n variables are (or can be) “independently” integers of the recited ranges. Is the term “independently” redundant or can there be multiple m and/or n variables?
For purposes of further examination, the indefinite limitations will be broadly construed.
Claims 13, 14, 16, and 17 are also indefinite for their dependency on claim 12. Note claim 15 is not indefinite for these issues because they are corrected in claim 15 due to its narrower claim scope.
Claim 14 recites “wherein the compound of Formula 1 corresponds to a structure of Formula II:”. However, while the parent claim contains a “Formula I” (emphasis on the number being a Roman numeral), the instant claim and parent claim do not contain a Formula 1 (emphasis on the numbers being Arabic numerals) and therefore lack sufficient antecedent basis which renders the claim indefinite. It is unclear what the compounds/Formulae the claim is referring to.
For further examination, the claim is construed as referring to Formula I of claim 12.
Claim 15 similarly recites wherein the compound of Formula 1 or 2 has a structure corresponding to Formula III.” However, like claim 14, while the parent claim contains a “Formula I” (emphasis on the number being a Roman numeral), the instant claim and parent claim do not contain either of a Formula 1 or Formula 2 (emphasis on the numbers being Arabic numerals) and therefore lack sufficient antecedent basis which renders the claim indefinite. It is unclear what the compounds/Formulae the claim is referring to. Even if Applicant intended for the instant Formula 1 to limit the parent claim’s Formula I note that neither the instant claim nor the parent claim contain a “Formula II”.
For further examination, the claim is construed as referring to Formula I of claim 12. However, it is unclear what the Formula 2 of claim 12 is.
In claim 17, the limitation “wherein the oxyalkylated surfactant is added to the fluid source from 1 ppm to 3,000 ppm” lacks sufficient antecedent basis in the claims which render the claim indefinite.
It is noted the term “the oxyalkylated surfactant” does not have literal basis in the claims, however in the context of the application as a whole (e.g., the title) it is believed “oxyalkylated surfactant” refers to the corrosion inhibitor of Formula I of parent claim 12. Clarity could be improved in the claims if Applicant amended “the oxyalkylated surfactant” to “the compound of Formula I”.
Additionally, the term “the fluid source” lacks sufficient antecedent basis in the claims. The present and parent claim do not recite any fluid source. Additionally note the context of this term ([a compound] “… is added to the fluid source from 1 ppm to 3,000 ppm”) is a method limitation. However, claim 17 and its parent claim are to a composition. While product-by-process limitations are permissible and are not necessarily indefinite, it is nevertheless unclear in this instance what this recited process step requires.
For purposes of further examination (or else the claim could not be fairly compared against prior art) claim 17 is construed as an intended use limitation (that the compound of Formula I/composition thereof is added to another fluid so that the compound of Formula I is present in the recited concentration). Note that this intended use limitation does not impart any additional structure to the claimed composition than what is already recited in the parent claim.
Appropriate correction/clarification 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over McDonald et al. (US 4,828,713 A).
As to claim 12, McDonald et al. teach a boiler water treatment composition comprising a nonionic surfactant with a chelant and/or a phosphate generating species (abstract). The phosphate acts as a corrosion inhibitor (col. 1 lines 50-52), meaning the composition inhibits corrosion as claimed. The composition may also contain additional corrosion inhibitors (col. 8 lines 12-17), further meaning the composition inhibits corrosion as claimed. The nonionic surfactant preferably has the following structure
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(col. 6 lines 45-60), which meets the claimed general structure/Formula I where A is a substituted phenyl.
McDonald et al. fail to explicitly teach a precise formula for the final structure of the oxyalkylated phenolic corrosion inhibitor that meets the remaining Z portion of the recited Formula I under the meaning of anticipation.
However, McDonald teach, in elaborating on the substituents of the above preferred surfactant formula, R2 and R3 are independently hydrogen or methyl, R4 is hydrogen, alkyl, aryl, or aralkyl, and a is about 0 to about 50 (col. 6 lines 53 to 60) but more preferably contain up to about 50 moles of ethylene oxide and/or propylene oxide including 5 to 20 moles of ethylene oxide and propylene oxide (col. 6 line 66 to col. 7 line 7). The selection of propylene oxide as the repeating unit (either as the selection of R2 is hydrogen and R3 is methyl in the first preferred embodiment or the selection of propylene oxide of the ethylene oxide and/or propylene oxide in the more preferred embodiment) and hydrogen as the R4 meets the claimed Z where X is O, p is 0, R6 is hydrogen, R7 is alkyl, R8 is alkyl, R9 is alkyl and the sum of all repeating propylene oxide units (i.e., up to 50 repeating units or 5-20 repeating units corresponding to reference’s “a” range/mole embodiments) read on, overlap, and/or encompass the claimed m and n integers; any remaining R group/variable is optional. Alternatively, the selection of both ethylene oxide and propylene oxide at once as in the more preferred embodiment of the “ethylene and/or propylene oxide” (col. 7, Id.) meet the claimed Z where X is O, p is 0, R6 is hydrogen, R7 is alkyl, R8 is hydrogen or alkyl, R9 is hydrogen or alkyl, at least one of R8 and R9 are other than hydrogen, and the sum of all repeating units (i.e., 5-20 repeating units corresponding to reference’s preferred molar amount of ethylene and/or propylene oxide repeating unit embodiment) read on, overlap, and/or encompass the claimed m and n integers; any remaining R group/variable is optional.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select ethylene oxide and/or propylene oxide as taught by McDonald and arrive at the claimed compound of Formula I with a reasonable expectation of success since McDonald teach ethylene and/or propylene oxides are preferred repeating units for provision in the nonionic surfactant.
As to claims 13 and 14, the above rationale reads on the claimed limitations where A is a phenyl and the compound of Formula I corresponds to a structure of Formula II where Z is as previously disclosed, and the remaining R1 to R5 are either hydrogen or an alkyl (the R1 disclosed in the reference’s surfactant).
As to claim 16, McDonald et al. teach the composition further comprises any of a dispersant (abstract & col. 2 lines 52-54), antifoam (col. 8 lines 12-17), or a salt (the phosphate, Id., and other additives at col. 8 lines 12-17).
As to claim 17, the concentration at which the compounded to added to a fluid source describes an intended use limitation of the claimed composition/compound, which is extended little patentable weight. The cited teachings of the reference meet the claimed intended use does not impart any additional structure to the claimed composition than what is already recited in the parent claim.
Any remaining claim limitations are optional.
Claims 12-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2017/0198233 A1).
As to claim 12, Zhang et al. teach a lubricating composition capable of controlling corrosion, i.e., a corrosion inhibiting composition, comprising an oxyalkylated hydrocarbyl phenol (abstract). The oxyalkylated hydrocarbyl phenol is represented by the formula:
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(para. 0032), which meets the claimed general structure/Formula I where A is a substituted phenyl.
Zhang et al. fail to explicitly teach a precise formula for the final structure of the oxyalkylated phenolic corrosion inhibitor that meets the remaining Z portion of the recited Formula I under the meaning of anticipation.
However, as cited above, Zhang et al.’s R2 are independently hydrogen or a hydrocarbyl group having 1 to 6 carbon atoms and R3 is hydrogen, a hydrocarbyl group or an acyl group (Id.). The oxyalkylated group of the compound -(R1O)n- (i.e., the repeating unit with the R2’s) may be ethylene, propylene, or mixtures thereof where n is 1 to 50 and subsets thereof, e.g., 1 to 20 or 1 to 10 (para. 0039).
The selection of propylene oxide as the oxyalkylated group in amounts of up to 50 total repeating units and subsets thereof and hydrogen as the R3 meets the claimed Z where X is O, p is 0, R6 is hydrogen, R7 is alkyl, R8 is alkyl, R9 is alkyl and the sum of all repeating propylene oxide units (i.e., up to 50 repeating units subsets thereof corresponding to reference’s “n” range embodiments) read on, overlap, and/or encompass the claimed m and n integers; any remaining R group/variable is optional.
Alternatively, the selection of a mixture of ethylene oxide and propylene oxide as the oxyalkylated group in amounts of up to 50 total repeating units and subsets thereof meet the claimed Z where X is O, p is 0, R6 is hydrogen, R7 is alkyl, R8 is hydrogen or alkyl, R9 is hydrogen or alkyl, at least one of R8 and R9 are other than hydrogen, and the sum of all repeating units (i.e., up to 50 repeating units subsets thereof corresponding to reference’s “n” range embodiments) read on, overlap, and/or encompass the claimed m and n integers; any remaining R group/variable is optional.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select ethylene oxide and/or propylene oxide oxyalkylated repeating units as taught by Zhang et al. and arrive at the claimed compound of Formula I with a reasonable expectation of success since Zhang et al. teach ethylene and/or propylene oxides are preferred repeating units for provision in the oxyalkylated hydrocarbyl phenol and composition thereof.
As to claims 13 and 14, the above rationale reads on the claimed limitations where A is a phenyl and the compound of Formula I corresponds to a structure of Formula II where Z is as previously disclosed, and the remaining R1 to R5 are either hydrogen or an alkyl (the R4 disclosed in the reference’s oxyalkylated hydrocarbyl phenol).
As to claim 16, Zhang et al. teach the composition further comprises any of a dispersant, antifoam (foam inhibitor), and demulsifier (para. 0052) as well as a salt (para. 0053+, 0068, etc.).
As to claim 17, the concentration at which the compounded to added to a fluid source describes an intended use limitation of the claimed composition/compound, which is extended little patentable weight. The cited teachings of the reference meet the claimed intended use does not impart any additional structure to the claimed composition than what is already recited in the parent claim.
Any remaining claim limitations are optional.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 13 of U.S. Patent No. 12,195,371. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims recite compositions with compounds with substantially the same and/or strongly overlapping scopes. Please see especially the compound/structure of claim 6 of the patent which is the same exact compound as the narrowest compound of instant claims recited in claim 15. The broad formulae of the patent overlaps those instantly claimed among instant claims 12-14 and the specific compound of claim 6 falls within all those claimed among instant claims 12-15. The patented claims also recite additional components such as an asphaltene inhibitor, a paraffin inhibitor, etc. (claim 13) meeting instant claim 16.
While the patented claims are to an antifouling composition whereas the instant claims are drawn to a corrosion inhibiting composition, note that patented claims recite the antifouling composition further comprises a corrosion inhibitor (claim 8) such that the patented composition certainly has corrosion inhibiting properties as instantly claimed. Furthermore, the patented claims recite compounds of the same scope as the claimed corrosion inhibitor compounds/formulae and the action of that component providing corrosion inhibiting properties would flow naturally and/or be inherent from the overlapping/same structures recited in the patent.
Any remaining limitation (e.g., instant claim 17) is an intended use recitation that is extended little weight and met by the compositional structure of the patented claims.
Regarding a close issue of double patenting, it is noted the compounds/formulae recited in US 11,414,626 appear similar to that claimed. See, e.g., in claim 1 Formula 3, moiety A that may be the Z of Formula 3, and that X may be -O-:
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(3)
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(A)
However, the claimed compound recited in the patent does not rise to a level of sufficiently meeting/overlapping that of the instant claims because the patented compound(s) are notably missing the instantly claimed limitation of “wherein at least one of R8 and R9 are other than hydroge” as the moeity A recited in the patent requires hydrogen atoms at the positions of the instantly claimed R8 and R9, circled:
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Accordingly, while close, none of the instant claims are rejected on ground of nonstatutory double patenting over the claims of US 11,414,626.
Allowable Subject Matter
While claim 15 is subject to a 112 rejection and nonstatutory double patenting rejection that require Applicant’s action, claim 15 is allowable over the prior art of record.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record fail to teach or reasonably suggest a corrosion inhibiting composition comprising the particular compound of Formula III. The compound amounts to an ethoxylated and propoxylated phenolic surfactant comprising a 2-ethylhexyloxy pendant group etherified with n ethylene oxide repeating units and m propylene oxide repeating units.
McDonald (US 4,828,713 A) teach a boiler water treatment composition (abstract) with corrosion inhibiting compounds therein comprising an alkylated alkylphenol or alkoxylated alkylphenol ether surfactant of the formula:
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(col. 6 & 7).
Fillipo et al. (US 4,975,202 A) teach a surfactant stabilizer for an aqueous boiler treatment similar to McDonald et al. See the surfactant section beginning in col. 4.
Zhang et al. (US 2017/0198233) teach an oxyalkylated hydrocarbyl phenol for control of corrosion (abstract) where the oxyalkylated hydrocarbyl phenol is represented by the formula:
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(para. 0032).
However, none of McDonald et al., Fillipo et al., or Zhang et al. alone or in combination teach or suggest an ethoxylated and propoxylated phenolic surfactant comprising a 2-ethylhexyloxy pendant group etherified with, in order, 10 to 20 ethylene oxide repeating units and 2 to 12 propylene oxide repeating units as recited in Formula III.
It is noted Form PCT 210/237 cites “X” references as allegedly meeting the composition claims. Wu et al. (US 2012/0232169 A1) is one of these X references. The PCT forms cite para. 0124 and the last compound of a reaction scheme therein.
Para. 0124 teach a liquid PEG-lipid conjugate that “may be any branched PEG-lipid where the PEG chains consist of 16 subunits or less. The solid lipid conjugate may be any PEG-lipid where the PEG chains consist of 17 or more subunits” which does not sufficiently meet nor describe the instantly claimed structure/compound. Also, the last compound of a reaction scheme appears to mean the compound at the top of p.27:
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However, this compound does not meet the recited Formula III in claim 15 and there are no other teachings in the reference that would direct a person of ordinary skill in the art closer towards the claimed compound. This compound also does not meet scope of the compound of claim 12 because note that some of the propylene glycol units are reversed and have methyl groups on the first carbon atom of repeating unit(s), circled:
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whereas the Z formula of independent claim 12 requires any substituent of the repeating unit(s) be on the second carbon atom of the repeating unit(s), circled:
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The remaining references listed on Forms 892, 1449, and PCT 210/237 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described 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./
May 22, 2026
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