DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 1-20 are pending, claims 16 and 17 having been withdrawn. Applicant's response filed August 25, 2026 is acknowledged.
Claims 1-15 and 18-20 will be examined on the merits.
Claim Listing
Applicant’s claim listing filed August 25, 206 indicates claims 16 and 17 as “(Original).” It is noted that said claims should be listed as “(Withdrawn).” Applicant is respectfully requested to indicate the proper claim listing for claims 16 and 17 in future claim listings.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-10, 12-14 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. 2013/0072418 to Ishihara et al. (as evidenced by U.S. Patent App. Pub. No. 2001/0046979 to Roselle et al. and U.S. Patent App. Pub. No. 2010/0076082 to Gamet et al.) in view of JP2000-263088A to Tsuji et al. (see machine translation) and CN111733423A to Chen et al. (see machine translation).
As to claims 1, 2, 12 and 13, Ishihara discloses a method for treating scale on a metal member of nuclear power plant facilities (see Ishihara paragraph [0001]), the method comprising: bringing a treatment solution comprising 0.5-3.5% by weight of an organic acid, such as acetic acid, into contact the scale with the acetic acid, having a pH of 2 to 3.5 and the temperature of the solution can be in a range of 20-40 degrees C (see Ishihara paragraphs [0023]-[0025] where it is understood that the acetic acid is in an aqueous solution). Furthermore, Ishihara does not disclose the inclusion of a strong acid in the mixture and thus is considered as disclosing that the mixture comprises less than 1% of a strong acid. Regarding the recitation that the descaling composition comprises at least 60 wt.% acetic acid and that the mixture is made from water and the descaling composition of at least 60 wt.% acetic acid, it is noted that Ishihara discloses the final mixture being 0.5-3.5% of an acetic acid and the concept of forming a dilute acid mixture from a concentrated acid mixture is not significantly patentable because it is well known in the art to obtain the desired concentration of a dilute acid mixture by diluting a concentrated acid with water (as evidenced by Roselle paragraphs [0016]-[0017], [0041]-[0042]; Gamet paragraphs [0026]-[0036] disclosing that it is known in the art to use water to dilute a concentrated acid composition).
While Ishihara discloses that the method can be used for treating scale on a metal member in a nuclear power plant facility (see Ishihara paragraph [0001]), Ishihara does not explicitly disclose that the metal surface is a surface of an offline condenser and that the scale includes calcium carbonate. Tsuji discloses that it is known in the art that the cooling water systems of nuclear power plants need to be descaled and that the scale includes iron oxide and calcium carbonate (see Tsuji paragraphs [0001]-[0002], [0015]-[0016]). Applying a known technique to a known device ready for improvement to yield predictable results is prima facie obvious (see MPEP 2143(I)(D)). It would have been obvious to apply the treatment solution disclosed by Ishihara to the scale on the offline condenser as known in the art in order to remove the scale, which includes both iron oxide and calcium carbonate, as disclosed by Tsuji, and the results would have been predictable (treatment of the scale on the metal surface of a nuclear power plant facility). Furthermore, it is known in the art that acetic acid treatment solutions are known to remove both rust (iron oxide) and calcium carbonate scale (see Chen paragraphs [0014]-[0016]).
As to claims 3 and 4, while Ishihara discloses that the treatment solution comprises 0.5-3.5% by weight of acetic acid, Chen discloses a similar treatment solution with 10-50% by weight of acetic acid (see Chen paragraphs [0014] and [0016]). It would have been obvious to one of ordinary skill in the art at the time of filing to modify the acetic acid concentration to up to 50% by weight of acetic acid as disclosed by Chen and the results would have been predictable (treatment of scale comprising iron oxide and calcium carbonate) (see also MPEP 2144.05(II)(A) where differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concertation is critical).
As to claims 5-7, the combination of Ishihara, Tsuji and Chen does not require a strong acid, a chloride or a dibasic acid (see Ishihara paragraph [0025] and claim 1).
As to claims 8 and 9, Chen discloses that the treatment solution can include 0.5-2% by weight of a corrosion inhibitor (see Chen paragraph [0014]). It would have been obvious to one of ordinary skill in the art at the time of filing to include a corrosion inhibitor as disclosed by Chen in order to slow down the corrosion of equipment and pipeline metal materials by the acid (see Chen paragraph [0015]).
As to claim 10, Ishihara discloses that oxalic acid can also be used (see Ishihara paragraph [0025] disclosing also the use of mixtures of acids in the treatment solution).
As to claim 14, Ishihara discloses that the treatment solution contacts the scale for 2 to 30 days (see Ishihara paragraph [0023]). It is noted that the use of pumps to deliver treatment solution is well known in the art and does not provide patentable significance.
As to claim 20, Ishihara discloses a method for treating scale on a metal member of nuclear power plant facilities (see Ishihara paragraph [0001]), the method comprising: bringing a treatment solution comprising 0.5-3.5% by weight of an organic acid, such as acetic acid, into contact the scale with the acetic acid, having a pH of 2 to 3.5 and the temperature of the solution can be in a range of 20-40 degrees C (see Ishihara paragraphs [0023]-[0025] where it is understood that the acetic acid is in an aqueous solution). Furthermore, Ishihara does not disclose the inclusion of a strong acid in the mixture and thus is considered as disclosing that the mixture comprises less than 1% of a strong acid. Regarding the recitation that the descaling composition comprises at least 60 wt.% acetic acid and that the mixture is made from water and the descaling composition of at least 60 wt.% acetic acid, it is noted that Ishihara discloses the final mixture being 0.5-3.5% of an acetic acid and the concept of forming a dilute acid mixture from a concentrated acid mixture is not significantly patentable because it is well known in the art to obtain the desired concentration of a dilute acid mixture by diluting a concentrated acid with water (as evidenced by Roselle paragraphs [0016]-[0017], [0041]-[0042]; Gamet paragraphs [0026]-[0036] disclosing that it is known in the art to use water to dilute a concentrated acid composition).
While Ishihara discloses that the method can be used for treating scale on a metal member in a nuclear power plant facility (see Ishihara paragraph [0001]), Ishihara does not explicitly disclose that the metal surface is a surface of an offline condenser and that the scale includes calcium carbonate. Tsuji discloses that it is known in the art that the cooling water systems of nuclear power plants need to be descaled and that the scale includes iron oxide and calcium carbonate (see Tsuji paragraphs [0001]-[0002], [0015]-[0016]). Applying a known technique to a known device ready for improvement to yield predictable results is prima facie obvious (see MPEP 2143(I)(D)). It would have been obvious to apply the treatment solution disclosed by Ishihara to the scale on the offline condenser as known in the art in order to remove the scale, which includes both iron oxide and calcium carbonate, as disclosed by Tsuji, and the results would have been predictable (treatment of the scale on the metal surface of a nuclear power plant facility). Furthermore, it is known in the art that acetic acid treatment solutions are known to remove both rust (iron oxide) and calcium carbonate scale (see Chen paragraphs [0014]-[0016]).
While Ishihara discloses that the treatment solution comprises 0.5-3.5% by weight of acetic acid, Chen discloses a similar treatment solution with 10-50% by weight of acetic acid (see Chen paragraphs [0014] and [0016]). It would have been obvious to one of ordinary skill in the art at the time of filing to modify the acetic acid concentration to up to 50% by weight of acetic acid as disclosed by Chen and the results would have been predictable (treatment of scale comprising iron oxide and calcium carbonate) (see also MPEP 2144.05(II)(A) where differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concertation is critical). It is noted that the use of pumps to deliver treatment solution is well known in the art and does not provide patentable significance.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. 2013/0072418 to Ishihara et al. (as evidenced by U.S. Patent App. Pub. No. 2001/0046979 to Roselle et al. and U.S. Patent App. Pub. No. 2010/0076082 to Gamet et al.) in view of JP2000-263088A to Tsuji et al. (see machine translation) and CN111733423A to Chen et al. (see machine translation) as applied to claim 1 above, and further in view of U.S. Patent App. Pub. No. 2011/0315168 to Laffitte et al.
Ishihara (as evidenced by Roselle and Gamet), Tsuji and Chen are relied upon as discussed above with respect to the rejection of claim 1.
As to claim 11, Chen discloses the benefits of including a surfactant in the treatment solution (see Chen paragraph [0015] and [0025]). It would have been obvious to one of ordinary skill in the art at the time of filing to include a surfactant into the treatment solution in order to improve the ability of the cleaning agent to remove scale (see Chen paragraph [0015]). While the combination of Ishihara, Tsuji and Chen does not explicitly disclose that the surfactant is an ethoxylated amine, Laffitte discloses that ethoxylated amine surfactants are known in the use of acid descaling compositions (see Laffitte paragraph [0035]) and it would have been obvious to one of ordinary skill in the art at the time of filing to use an ethoxylated amine surfactant and the results would have been predictable (oil dispersion in a water based system) (see also MPEP 2143(I)(B) where simple substitution of one known equivalent element for another is prima facie obvious).
Claim(s) 15, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. 2013/0072418 to Ishihara et al. (as evidenced by U.S. Patent App. Pub. No. 2001/0046979 to Roselle et al. and U.S. Patent App. Pub. No. 2010/0076082 to Gamet et al.) in view of JP2000-263088A to Tsuji et al. (see machine translation) and CN111733423A to Chen et al. (see machine translation) as applied to claim 1 above, and further in view of WO2017/140715A1 to Sanchayan et al. (see machine translation).
Ishihara (as evidenced by Roselle and Gamet), Tsuji and Chen are relied upon as discussed above with respect to the rejection of claim 1.
As to claims 15, 18 and 19, the combination of Ishihara, Tsuji and Chen does not explicitly disclose measuring a property of the mixture as it is pumped through the offline condenser and removing the mixture from the offline condenser when the measured property satisfies a predetermined threshold change in value wherein the property is the calcium harness of the mixture as measured by ppm CaCO3 and the predetermined threshold change in value is when the calcium hardness of the mixture changes by less than 5000 ppm or 2000 ppm over the course of 5 hours. Sanchayan discloses that it is known in the art of cleaning calcium scale to monitor the calcium concentration in the cleaning solution at predetermined intervals and to stop the cleaning when the calcium concentration does not increase or has not increased by more than 3% compared to the last measured value (see Sanchayan paragraphs [0028], [0029], [0035], [0042]). It would have been obvious to one of ordinary skill in the art at the time of filing to include monitoring the calcium concentration in the cleaning solution at predetermined intervals and to stop the cleaning when the calcium concentration does not increase or has not increased by a predetermined threshold as disclosed by Sanchayan in order to automate and optimize the cleaning process as is known in the art. The specific threshold is considered an obvious matter of design choice to optimize the cleaning process.
Response to Arguments
Applicant's arguments filed August 25, 2026 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that acetic acid is only disclosed once in Ishihara in a list of 18 different potential acids and is not one of the preferred embodiments, said argument is not persuasive because Ishihara explicitly discloses acetic acid as one of the organic acids that can be used (see Ishihara paragraph [0025]). It is noted that Applicant’s arguments directed to the newly added claims limitations have been addressed in the rejections above.
Regarding Applicant’s arguments that the cited prior art does not disclose that the acid treatment can be used to treat calcium carbonate scale, as discussed in the rejection above, Chen explicitly discloses that it is known in the art that cooling systems need to both have the rust removed and descaled (see Chen paragraphs [0005]-[0006]) and that acidic agents that include acetic acid as known to do both (see Chen paragraphs [0015]-[0016] listing acetic acid as one of the more preferable acids to remove rust and scale). Thus, Applicant’s arguments that Chen does not disclose acetic acid as being useful in removing both rust and scale are not persuasive.
It is also noted that it is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art (see Leinoff v. Louis Milona & Sons, Inc., 220 USPQ 845 (CAFC 1984)). Since the cited prior art discloses contacting the surface of a condenser in a cooling system with the recited acetic acid mixture as discussed above, said disclosure would also produce all of its advantages, including the removal of calcium carbonate scale on the surface of the condenser in the cooling system.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DOUGLAS LEE/Primary Examiner, Art Unit 1714
