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 .
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.
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.
Claim(s) 1, 6, 8, 12--17 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011/053585 in view of Ghosh (US 2003/0065116).
Regarding claim 1, WO ‘585 teaches an acid corrosion inhibitor used in an aqueous acid system, which comprises iodide ions and metal ions including copper ions, which acts as an intensifier (abstract, 002-003, 0012, 0013). WO ‘585 fails to teach the use of a corrosion inhibiting polymer having nitrogen repeat units with a plurality of fused aromatic rings. WO ‘585 teaches that the copper and iodide intensifier can be used with various corrosion inhibitors, including commercially available inhibitors (0014). WO ‘585 further teaches that the composition is suitable for use in drilling fluids (0004). In the same field of endeavor, Ghosh teaches the use of a polymeric corrosion inhibitor which can contain a plurality of nitrogen containing fused rings (see Structures Ia and Ib wherein the heterocycle may preferably indazole (0037). Ghosh further teaches that these polymers are useful in acid containing drilling fluids or oil production fluids (0027). Given the teaching of WO ‘585 that the Copper and iodide composition may be used as an intensifier for corrosion inhibition, it would be obvious to one of ordinary skill in the art to utilize this corrosion inhibiting intensifier composition of WO ‘585 in conjunction with the corrosion inhibiting polymer of Ghosh, since one of ordinary skill in the art would have a reasonable expectation of success in intensifying the corrosion inhibiting properties of the polymer of Ghosh. The copper ions would inherently or obviously form complexes with the nitrogen containing polymers of Ghosh.
Regarding claim 6, the polymer of Ghosh has repeating units and indazole has 2 fused aromatic rings (0037).
Regarding claim 8, the polymer of Ghosh has repeating units and indazole has 2 fused aromatic rings including a benzyl group (0037).
Regarding claim 12, the polymer of Ghosh has aromatic groups (0037).
Regarding claim 13, Ghosh teaches a molecular weight of 400-20,000 which is within the range of the less than 100,000 claimed (0046).
Regarding claim 14, Ghosh teaches that the polymer can be added to aqueous systems at a level of 0.00001 to 5% encompassing the claimed range (0053, see also WO’585 0015).
Regarding claims 15 and 16, WO ‘585 teaches that an iodide salt such as potassium Iodide may be used in the intensifier composition (0014).
Regarding claim 17, WO ‘585 discloses that copper chloride or copper acetate may be used for the metal ion (0017).
Regarding claim 21, since WO ‘585 in view of Ghosh renders obvious the same invention as claimed herein, it would obviously have the same or similar OCP properties.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2011/053585 in view of Ghosh (US 2003/0065116) as applied to claim 1, and further in view of Krasnow (US 2016/0046796).
WO ‘585 in view of Ghosh is taught above with respect to claim 1. WO ‘585 differs from claim 18, in not teaching a molar ratio of metal ions to iodide ions 1:X wherein X is greater than or equal to two, instead teaching that the ratio should be about stoichiometric. Krasnow teaches that using ratios of up to 1:4.33 still afforded corrosion protection for a cupric iodide system, even though lower performance is seen at higher iodide ratios (see examples in tables 18, 23 and 24). Given that Krasnow teaches that corrosion can still be inhibited when using ratios of copper to iodine of up to 1:4.33, it would be obvious to one of ordinary skill in the art to utilize such ratios in the invention of WO ‘585, since such would be expected to give the expected result of providing corrosion protection. It is noted that prior art is relevant for all the teaching it contains, not just preferred embodiments (MPEP 2123). In this case disclosure of lower concentrations providing better results, does not negate the teaching of higher iodide ratios.
Claims 2-5, 7, 9-11, 19 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 2-5,, 7, 9-11, Ghosh fails to teach or suggest the specified structure of the polymeric corrosion inhibitor.
Regarding claim 19, the combination of WO ‘585, Ghosh and Krasnow fail to teach or suggest the claimed ratio of between 1:5 and 1:100.
Regarding claim 20, the references of record fail to teach the use of silver oxide and a reducing agent as claimed.
Pertinent Prior Art
US 3,488,294 teaches polymeric corrosion inhibitors with nitrogen containing repeat units which can contain fused aromatic pendant rings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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