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 .
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tiwari (US Pub. No. 2008/0308770).
Regarding Claim 1: Tiwari teaches a corrosion inhibiting composition comprising a compound having the following structure:
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wherein R3-R6 are H, alkyl, aryl, alkenyl, amino, R2 is H or -C(O)R1, and R1 is C8-20 alkyl or alkenyl (abstract, [0001], [0006], and [0030]). Such a compound reads on the compound of Formula (I) wherein R2-R6 are H, Y comprises oxygen, X comprises oxygen, and R1 is C8-20 alkyl. Tiwari teaches the compound in solution with an organic solvent ([0032]).
Regarding Claim 3: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. that the compound is substantially soluble in water would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 4: The compounds of Tiwari have a molecular weight within the claimed range. For example, when R2-R6 are H and R1 is C8 alkyl, the MW is 294.46 g/mol.
Regarding Claims 5-6: Tiwari teaches the organic solvent as ethylene glycol (monoethylene glycol) ([0032]).
Regarding Claims 7 and 8: Tiwari teaches the compound in combination with a synergist such as 2-mercaptoethanol ([0037]). Tiwari teaches the pyridine compound present in 5-20 wt% ([0036]). Regarding the water, imidazoline, it is noted that while claim 8 further limits the amount of water and imidazoline, such components are still listed in the alternative in claim 7 from which claim 8 depends and are thus deemed optional.
Regarding Claims 9-10: Tiwari teaches contacting steel with the composition to inhibit corrosion ([0037]-[0039]).
Regarding Claim 11: Tiwari teaches the oil (crude) conditions to which the composition is added may sour and wet (containing brine and H2S) ([0037]).
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.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tiwari (US Pub. No. 2008/0308770).
Tiwari teaches the composition of claim 1 as set forth above.
Tiwari does not teach a specific embodiment wherein each of R2-R6 is H and R1 is C5-15 alkyl. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to select each of R2-R6 is H and R1 is C5-15 alkyl with a reasonable expectation of success and would have been motivated to do so because Tiwari teaches that each of said substituents are suitable for the invention.
Claim(s) 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tiwari (US Pub. No. 2008/0308770) in view of Nieh (US Pat. No. 4,469,873).
Regarding Claims 12 and 14: Tiwari teaches a compound having the following structure:
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wherein R3-R6 are H, alkyl, aryl, alkenyl, amino, R2 is H or -C(O)R1, and R1 is C8-20 alkyl or alkenyl (abstract, [0001], [0006], and [0030]). Such a compound reads on a pyridinium salt based compound made by the claimed reaction between compound of Formula (II) and (III) wherein R2-R6 are H, Y comprises oxygen, X comprises oxygen, and R1 is C8-20 alkyl. Tiwari teaches the compound in solution with an organic solvent ([0032]).
Tiwari does not teach the process of making the compound wherein a pyridine is reacted with an epoxide in the presence of an acid in a non-aqueous solvent. However, Nieh teaches forming pyridine salt compounds comprising reaction of pyridine with an epoxide in the presence of an acid in an alcohol solvent (1:65-2:50). Tiwari and Nieh are analogous art because they are concerned with the same field of endeavor, namely formation of substituted pyridine salts. At the time of the invention a person of ordinary skill in the art would have found it obvious to utilize the method of Nieh to make the compounds of Tiwari and would have been motivated to do so with a reasonable expectation of success because it is disclosed by Nieh as being a suitable way to synthesize the compounds.
Regarding Claim 13: Tiwari does not teach a specific embodiment wherein each of R2-R6 is H and R1 is C5-15 alkyl. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to select each of R2-R6 is H and R1 is C5-15 alkyl with a reasonable expectation of success and would have been motivated to do so because Tiwari teaches that each of said substituents are suitable for the invention.
Regarding Claim 15: Nieh teaches that the reaction can take place in various lower alcohols (2:20-50). Furthermore, Tiwari teaches that the compounds should be present in an organic solvent such as ethylene glycol (monoethylene glycol) ([0032]). At the time of the invention a person of ordinary skill in the art would have found it obvious to utilize ethylene glycol (monoethylene glycol) as a solvent in the synthesis as it would efficiently satisfy the limitation of synthesis solvent and solvent for the end product.
Regarding Claim 16: Nieh teaches the acid as acetic acid (2:20-30).
Regarding Claim 17: As the pyridinium salt made by the reaction of Nieh would be present in an alcohol solvent it is necessarily a formulation.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 August 27, 2026
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