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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 08 January 2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restrictions
Applicant’s election of Invention I (claims 1-12) in the reply filed on 20 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election with traverse (MPEP § 818.03(a)).
Applicant’s election of calcium dinonylnaphthalenesulfonate/carboxylate as species 16 is acknowledged.
Claims 13-23 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-12 are under examination and the requirement for restriction is made final.
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.
Claim 1-11 is rejected under 35 U.S.C. 103 as being unpatentable over Haas (US 6464899 B1) in view of McBride (US 20220145206 A1) and further in view of “Na-Sul 450” Kings Industries et al.
With regard to claim 1, Haas teaches a corrosion-inhibiting composition comprising corrosion-inhibiting compounds and a base material (Abstract); wherein the corrosion inhibitor is present in a range of 2 to 30 wt.% of the composition, which overlaps the claimed range (col 10, lines 16-18). Haas teaches that the corrosion inhibitors require evaporation or sublimation to provide a protective layer through deposition or condensation at the anodic or cathodic areas of a corrodible surface (col 1, lines 35-38). Haas further teaches the base material includes the releasable vapor phase corrosion inhibitor to provide corrosion protection to metallic surfaces that is in direct or indirect contact with the compositions (col 3, lines 9-14); wherein the corrosion inhibitor may be calcium dinonylnaphthalenesulfonate (col 7, lines 35-36).
However, Haas does not explicitly teach the corrosion inhibitor blend has a polar bond with a metal.
In the same field of endeavor, McBride teaches a lubricant composition comprising corrosion inhibitors (Abstract); wherein the corrosion inhibitors are a polar compound that can wet the metal surface, absorb water by incorporating it into a water-in-oil emulsion such that only oil contacts the metal surface, or chemically adhere to the metal to produce a non-reactive surface (para 0072), thereby satisfying the corrosion inhibitor having a polar bond with a metal. McBride further teaches calcium dinonylnaphthalenesulfonate as a corrosion inhibitor (claim 11).
With regard to the polar bond, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention that calcium dinonylnaphthalenesulfonate inherently possess polar characteristics capable of interacting with a metal surface, as it is the same compound disclosed by Haas. The person having ordinary skill in the art would expect the base product of Haas to exhibit such polar bonding characteristics.
With regard to claim 2, Haas teaches a corrosion inhibitor comprising calcium dinonylnaphthalene sulfonate (col 7, lines 35-36). However, Haas fails to further teach the calcium dinonylnaphthalenesulfonate/carboxylate blend.
McBride does not teach the aforementioned blend.
In the same field of endeavor, King Industries et al teaches a calcium dinonylnaphthalenesulfonate/carboxylate blend (NA-SUL 450) as a liquid, emulsifiable rust preventative and corrosion inhibitor for metal parts, wherein the emulsions deposit thin, hydrophobic protective films that provide effective rust protection. King Industries et al further teaches that the protective film remains effective even under conditions of 100% condensing humidity, while still being easily removable.
With regard to the blend, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate calcium dinonylnaphthalenesulfonate/carboxylate blend into the composition of Haas. The person having ordinary skill in the art would expect such modification to impart enhanced protective film formation and improved rust protection to the base product of Haas.
With regard to claim 3, Haas teaches calcium dinonylnaphthalene sulfonate (col 7, lines 35-36). Haas further teaches that the corrosion inhibitor may be used independently or in combination and may be present in amounts ranging from approximately 0.1 to 90 wt.%, more preferably 2 to 30 wt.% of the composition, thereby overlapping with the corrosion inhibitor range (col 10, lines 10-18).
As stated above, Haas in combination of King Industries teaches the corrosion inhibitor.
With regard to claims 4-5, Haas teaches that preferred elastomers include ethylene propylene diene monomer rubber (EPDM), styrene butadiene rubber, nitrile-butadiene rubber, polyisoprene, polychloroprene, silicone, polyurethane, and polybutene (col 3, lines 14-26).
With regard to claim 6, Haas teaches the corrosion inhibitor is present in an amount ranging from 2 to 30 wt.% of the solid elastomer, which overlaps the claimed range (col 10, lines 16-18).
With regard to claim 7, Haas teaches that a uniform mixture of the inhibitor throughout the base material is readily achieved (col 10, lines 3-5).
With regard to claim 8, as stated above, Haas teaches the base material includes a releasable vapor phase corrosion inhibitor that sublimes or evaporates (col 3, lines 9-14) and then creates a protective layer through deposition or condensation at the anodic or cathodic areas of a corrodible surface (col 1, lines 35-38).
As stated above, Haas in combination of McBride teaches the polar bond.
With regard to claim 9, Haas teaches the corrosion inhibitor is releasable from the base material (col 3, lines 9-13). Haas further teaches the particular amount of corrosion inhibitor to be combined with the base material will depend on many factors, including but not limited to the desired release rate and release duration of the inhibitor, and the environmental conditions into which the corrosion inhibiting composition will be placed (col 10, lines 19-23). However, Haas does not teach the corrosion inhibitor bleeds out at any thickness or state of the elastomeric material.
With regard to the bleed, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to expect to incorporate a suitable amount of corrosion inhibitor to be able to escape the elastomeric material and mitigate the corrosion of metallics parts.
Please note, the intended results of the above claimed composition (i.e. corrosion inhibitor bleed) does not patentably distinguish the composition, per se, since such undisclosed result occurs after the use of composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended result does not create a structural difference, thus the intended result is not limiting (see, e.g., MPEP 2111.04).
With regard to claim 10, Haas teaches that the material may be used to seal leak paths in electronic circuits to further protect metallic objects therein, thereby satisfying the sealing system and electrical insulation limitations (col 4 lines 52-54). Haas further teaches use in enclosures such as plastic wrapping, paper wrapping, glass containers, plastic containers, wooden containers, thereby satisfying the limitation relating to wrapping films, storage, or transport (col 11, lines 49-52).
With regard to claim 11, Haas teaches the base materials are often combined with additional materials such as fillers, pigments, organic solvents, tackifiers, and similar additives to achieve desirable putty-like characteristics (col 8, lines 40-43).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable as stated as claims 1-11, and in further view of Kolgurin (RU 2368840 C2).
With regard to claim 12, Haas fails to teach layers of the elastomer material, more specifically a butyl rubber as an additional layer.
In the same field of endeavor, Kolgurin teaches a multilayer composition comprising butyl rubber and additives for corrosion protection (Abstract); wherein the butyl rubber includes a corrosion inhibitor, polyethylene, tackifiers, rubber bitumen, resins, and other additives (Table 1). Kolgurin further teaches that the objective of the creation of a multilayer insulating coating composition is to improve impact and adhesion strength and resistance to cathodic peeling, shear resistance and increased adhesion between the coating layers (para 0012).
With regard to the multilayer structure, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate a multilayer elastomeric material, more specifically including a butyl rubber layer into the composition of Haas in view of the teaching of Kolgurin. The person having ordinary skill in the art would expect such modification to improve adhesion and resistance of the base product of Haas.
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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