DETAILED ACTION
Response to Amendment
The Amendment filed 30 December 2025 has been entered. Claims 1-5, 16-28, and 30 remain pending in the application. Claims 4 and 6-15 were previously withdrawn as being drawn to non-elected Inventions. Applicant’s Amendments to the Specification and Claims in line with the Office’s suggestions have overcome the Objections and 112 Rejections previously set forth in the Non-Final Office Action mailed 9 October 2025.
Allowable Subject Matter
Claims 16-20, 26-28, and 30 are allowed.
Claim Rejections - 35 USC § 112
Claims 1-3, 5, and 21-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [“the numerous factors, including physical form, salt form, and the conditions under which solubility is measured,” which are required to provide “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor”].
Independent claim 1 has been Amended to recite “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor.”
However, in Applicant’s remarks filed 30 December 2025, Applicant states “As explained in the present Application, SPSI solubility depends on numerous factors, including physical form, salt form, and the conditions under which solubility is measured. See e.g., Instant Application, ¶ [0023]” (p.14).
In other words, Applicant appears to now state on the record that, in addition to the claimed ligand component and multivalent cation, the physical form, salt form, and other conditions would be critical to control whether the solid, particulate scale inhibitor is “sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor” or is not “sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor.”
These non-claimed aspects (the physical form, salt form, and other conditions) that are critical to control this claimed solubility property amount to a gap between the elements, thereby rendering the claims incomplete for omitting essential elements. For example, it is unclear what physical form(s), salt form(s), and other conditions are required to provide wherein the solid, particulate scale inhibitor is “sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor” vs. wherein the solid, particulate scale inhibitor is not “sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor,” and thus the claim scope would be indefinite.
For examination purposes, claims will be read as though providing the remaining claimed elements (i.e. “a solid, particulate scale inhibitor comprising:
a ligand component comprising a phosphonate, a carboxylate, or a combination thereof; and
a multivalent cation comprising a divalent cation, a trivalent cation, or a combination thereof,
wherein the solid, particulate scale inhibitor is:
substantially free of an inert material”) also necessarily provides:
“wherein the solid, particulate scale inhibitor is…
sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor.”
Nevertheless, in response, Applicant should Amend the claim to include whichever elements (the physical form, salt form, and other conditions) are critical in addition to the claimed composition to provide “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor,” as supported by the original disclosure. If the claimed “ligand” and “multivalent” cation components are already sufficient to provide the “sparingly soluble” limitation, Applicant may clarify this on the record and instead incorporate additional structure to distinguish from the Prior Art.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, and 22-25 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dawson (2023/0322977) (cited previously).
Regarding independent claim 1, Dawson discloses An extended-release composition for inhibiting scale in an industrial water system (abstract “An aqueous formulation for use in slick water fracturing, water treatment, enhanced oil recovery, drilling, erosion control, dust abatement or mining flotation operations includes (i) one or more than one polymer (AA) which is a water-soluble polymer; (ii) water; (iii) one or more than one quaternary ammonium compound; and (iv) one or more than one scale inhibitor”), comprising:
a solid, particulate scale inhibitor ([0187] “preparation of a slurry comprising solid scale inhibitor (suitably the calcium or magnesium, especially the magnesium, salt of said scale inhibitor precursor)”) comprising:
a ligand component comprising a phosphonate, a carboxylate, or a combination thereof ([0119] “Said scale inhibitor may be a salt (eg a calcium or, especially, a magnesium salt) of amino phosphonic acids selected from: aminomethyl phosphonic acid, 1-aminoethyl phosphonic acid, iminodi(methylphosphonic acid), nitrilotri(methyl phosphonic acid)glyphosate, 1-aminopropylphosphonic acid, ethylenediamine tetra(methylene phosphonic acid) [EDTMP], N-(Phosphonomethyl)iminodiacetic acid, (nicotinamidomethyl)phosphonic acid, amino(phenyl)methylphosphonic acid, 1-hydroxyethylidene-1,1-diphosphonic acid (editronic acid or HEDP), Diethylenetriamine penta(methylene phosphonic acid) (DTPMP), bis(hexamethylene triamine penta(methylenephosphonic acid)) (BHMP), AEEA phosphonate [Aminoethylethanolamine tri(methylene phosphonate)], 2-(bis(phosphonomethyl)amino)alkane-1-sulfonic acid, N,N-bis(phosphonomethyl)glycine, N,N-bis(phosphonomethyl) metanilic acid, (1-Amino-2-methylpropyl)phosphonic acid”); and
a multivalent cation comprising a divalent cation, a trivalent cation, or a combination thereof ([0119] “a salt” i.e. [0116] “Said scale inhibitor is preferably a salt and, more preferably, includes a calcium or magnesium salt. Said scale inhibitor may include a mixture of calcium and magnesium salts, optionally with sodium or ammonium ions”),
wherein the solid, particulate scale inhibitor is:
substantially free of an inert material (e.g., [0184]-[0186] “making a formulation according to the first aspect, the method comprising: (i) selecting a scale inhibitor precursor which includes a moiety (XX) but is not in the form of a calcium or magnesium salt; and (ii) contacting the scale inhibitor precursor with a calcium and/or magnesium salt to produce a calcium and/or magnesium salt of the scale inhibitor precursor respectively” and [0125] “Scale inhibitors which include a moiety XX may be prepared by adding a source of Mg2+, for example MgO or MgCl2, into a solution of a scale inhibitor which includes a moiety XX until the magnesium salt precipitates”; note that this does not provide any inert material in the solid scale inhibitor)…
Regarding “An extended-release composition for inhibiting scale in an industrial water system” in the preamble, the Office observes that this appears to be merely a statement of intended use. As in MPEP 2111.02, during examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. However, if the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Applicant has disclosed that e.g. magnesium AEEA phosphonate is capable of performing the intended use of being “An extended-release composition for inhibiting scale in an industrial water system.” Accordingly, Dawson’s solid scale inhibitor made from e.g. precipitated magnesium AEEA phosphonate meets the claim.
Regarding “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor,” Applicant should observe that "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." See MPEP 2112; I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY.
Also, "The fact that [Applicant] has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." See MPEP 2145 Consideration of Applicant’s Rebuttal Arguments; II. ARGUING ADDITIONAL ADVANTAGES OR LATENT PROPERTIES: Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional Advantages or Latent Properties Present But Not Recognized in the Prior Art.
As in claim 1, Dawson either discloses a slurry of solid scale inhibitors that comprises e.g. magnesium AEEA phosphonate
Accordingly, by providing magnesium AEEA phosphonate, Dawson must also provide the properties of it as well, i.e. “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor.” 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. For example, this appears to merely be a previously unappreciated property of Dawson’s composition or would merely be another advantage that would flow naturally from following the suggestion of Dawson.
Alternatively, if there is any difference between the composition and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held "Products of identical chemical composition cannot have mutually exclusive properties." See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC § 102 and § 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112 (III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Regarding claim 2, Dawson discloses “preparation of a slurry comprising solid scale inhibitor (suitably the calcium or magnesium, especially the magnesium, salt of said scale inhibitor precursor)” ([0187]) of e.g. “Said scale inhibitor may be a salt (eg a calcium or, especially, a magnesium salt) of … AEEA phosphonate [Aminoethylethanolamine tri(methylene phosphonate)]” ([0119]). Accordingly, Dawson discloses providing magnesium AEEA phosphonate, and thus wherein the multivalent cation comprises at least 1 wt% of the divalent cation, the trivalent cation, or the combination thereof (i.e., 100 wt% of the divalent magnesium).
Regarding claim 3, Dawson discloses wherein the multivalent cation comprises the divalent cation and the divalent cation solid comprises at least one of divalent magnesium, divalent calcium, or a combination thereof ([0187] “preparation of a slurry comprising solid scale inhibitor (suitably the calcium or magnesium, especially the magnesium, salt of said scale inhibitor precursor)”).
Regarding claim 5, Dawson discloses wherein the ligand component phosphonate or the carboxylate comprises a salt-form selected from a group consisting of 1-hydroxyethylidene-(1,1-diphosphonic acid) (HEDP); aminobis(methylenephosphonic acid) (ABMP); methyliminobis(methylenephosphonic acid) (MIBMP); aminotri-methylenephosphonic acid (ATMP); diethylenetriamine-penta(methylenephosphonic acid) (DTPMP); ethylenediaminetetra(methylene phosphonic acid) (EDTMP); bis(hexamethylenetriaminepenta(methylenephosphonic acid)) (BHMTPMP); citric acid; isocitric acid; aconitic acid; 1,3,4-propanetricarboxylic acid; dihydroxymaleic acid; 1,2- diaminocyclohexane-N,N,N',N'-tetraacetic acid (DCyTA); ethylenediaminetetraacetic acid (EDTA); diethylenetriaminepentaacetic acid (DETPA); nitrilotriacetic acid (NTA); iminodiacetic acid (IDA); hydroxyethylethylenediaminotriacetic acid (HEDTA); ethylenediamine-N,N'- disuccinic acid (EDDS); methyglycine diacetic acid (MGDA); (2-hydroxyethyl)iminodiacetic acid (HEIDA); glutamic acid-N,N-diacetic acid (GLDA); ethylenediaminedi-o-hydroxyphenylacetic acid (EDDHA); N-methyliminodiacetic acid (MIDA); iminodisuccinic acid (IDS); 1,2- diaminopropane-N,N,N',N'-tetraacetic acid (MeEDTA); N-(2-acetamido)iminodiacetic acid (ADA); N-(2-carboxyethyl)iminodiacetic acid; L-aspartic acid-N,N-di(acetic acid) (ASDA); N- (carboxymethyl)-L-aspartic acid; strombine; hydroxyiminodisuccinic acid; N- (carboxymethyl)aspartic acid; N-bis[2-(1,2-dicarboxyethoxy)ethyl]glycine; N,N'-1,3- propanediylbis(aspartic acid); 1,6-hexamethylenediamine N,N'-disuccinic acid; 2,2',2"- [nitrilotris(2,1-ethanediyloxy)]tris[butanedioic acid]; N-(carboxymethyl)-N- (hydroxymethyl)glycine; 1,3-diamino-2-hydroxypropane-N,N'-disuccinic acid; N-(2- carboxyethyl)aspartic acid; N,N-bis[2-(1,2-dicarboxyethoxy)ethyl]aspartic acid; N,N'-(iminodi- 2,1-ethanediyl)bis(aspartic acid); 2,16-bis(carboxymethyl)-3,6,9,12,15-pentaazaheptadecanedioic acid; 3,6,9,12-tetraazatetradecane-1,2,13,14-tetracarboxylic acid; N,N'-(1-methyl-1,2- ethanediyl)bis(aspartic acid); N,N-bis(carboxymethyl)-3-sulfo-L-alanine; N-(carboxymethyl)-3- sulfo-L-alanine; 2,13-bis(carboxymethyl)-6,9-dioxa-3,12-diazatetradecanedioic acid; N-(3- carboxy-3-hydroxy-1-oxopropyl)-L-aspartic acid; 2,2'-[[(1-carboxyethyl)imino]bis(2,1- ethanediyloxy)]bis[butanedioic acid]; N-[(1S)-1-carboxy-2-hydroxyethyl]-3-hydroxyaspartic acid; and N,N'-cyclohexanediylbis(aspartic acid); 2-carboxyethyl phosphonic acid (CEPA); 2- hydroxyphosphonocarboxylic acid (HPAA); N,N-bis(phosphonomethyl)glycine (BPMG); N- (phosphonomethyl)iminodiacetic acid (PMIDA); phosphonobutanetricarboxylic acid (PBTC); 2- phosphonobutane-1,2,4-tricarboxylic acid (PBTC); 2-hydroxy phosphonoacetic acid (HPAA); (2- phosphono butane-1,2,4-tricarboxylic acid (PBTCA); N-(Phosphonomethyl)glycine; N- (phosphonomethyl)iminodiacetic acid (H4PMIDA); 1,4,7-triazacyclononane-N,N',N"- trimethylene phosphonic acid (H6NOTP); 1,4,7-triazacyclononane-N-methylenephosphonic acid- N',N"-dimethylenecarboxylic acid (H4NO2AP); 1,4,7-triazacyclononane-N,N'-bis(methylene- Page |3phosphonic acid)-N"-methylene carboxylic acid (H5NOA2P); polyvinylphosphonic acid; polyacrylic acid; polymethacrylic acid; polyphosphinocarboxylic acid; aminoethylethanolamine (AEEA) phosphonic acid or its salts thereof; or a combination thereof ([0119] “Said scale inhibitor may be a salt (eg a calcium or, especially, a magnesium salt) of amino phosphonic acids selected from: aminomethyl phosphonic acid, 1-aminoethyl phosphonic acid, iminodi(methylphosphonic acid), nitrilotri(methyl phosphonic acid)glyphosate, 1-aminopropylphosphonic acid, ethylenediamine tetra(methylene phosphonic acid) [EDTMP], N-(Phosphonomethyl)iminodiacetic acid, (nicotinamidomethyl)phosphonic acid, amino(phenyl)methylphosphonic acid, 1-hydroxyethylidene-1,1-diphosphonic acid (editronic acid or HEDP), Diethylenetriamine penta(methylene phosphonic acid) (DTPMP), bis(hexamethylene triamine penta(methylenephosphonic acid)) (BHMP), AEEA phosphonate [Aminoethylethanolamine tri(methylene phosphonate)], 2-(bis(phosphonomethyl)amino)alkane-1-sulfonic acid, N,N-bis(phosphonomethyl)glycine, N,N-bis(phosphonomethyl) metanilic acid, (1-Amino-2-methylpropyl)phosphonic acid”).
Regarding claim 22, Applicant should observe that "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." See MPEP 2112.
Also, "The fact that [Applicant] has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." See MPEP 2145.
As in claim 1, Dawson discloses a slurry of solid scale inhibitors that comprises e.g. magnesium AEEA phosphonate.
Accordingly, by providing magnesium AEEA phosphonate, Dawson must also provide the properties of it as well, i.e. “wherein the solid, particulate scale inhibitor has a water solubility of less than about 10,000 ppm.” For example, this appears to merely be a previously unappreciated property of Dawson’s composition or would merely be another advantage that would flow naturally from following the suggestion of Dawson.
Regarding claim 23, Dawson discloses, e.g., “Scale inhibitors which include a moiety XX may be prepared by adding a source of Mg2+, for example MgO or MgCl2, into a solution of a scale inhibitor which includes a moiety XX until the magnesium salt precipitates” ([0125]). Accordingly, Dawson discloses wherein:
the ligand component comprises a water-soluble phosphonate;
the multi-valent cation comprises a water-soluble divalent metal salt; and
the solid, particulate scale inhibitor is formed by reacting a water-soluble phosphonate with a water-soluble divalent metal salt to precipitate the solid, particulate inhibitor.
Regarding claim 24, Dawson discloses wherein the solid, particulate scale inhibitor further comprises a monovalent cation ([0119] “a salt” i.e. [0116] “Said scale inhibitor is preferably a salt and, more preferably, includes a calcium or magnesium salt. Said scale inhibitor may include a mixture of calcium and magnesium salts, optionally with sodium or ammonium ions”).
The Office observes that, because Dawson plainly discloses these “sodium or ammonium ions” as provided “optionally,” Dawson presumably inherently or implicitly discloses providing them in only very minor amounts, which would not impact the overall solubility of Dawson’s scale inhibitor. Accordingly, even with these optional sodium or ammonium ions, Dawson’s scale inhibitor would still be “sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor,” by virtue of being essentially magnesium AEEA phosphonate with only minor amounts of sodium or ammonium ions.
Alternatively, even if it were found that Dawson does not inherently or implicitly disclose providing the optional “sodium or ammonium ions” in only very minor amounts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Dawson to include providing the optional “sodium or ammonium ions” in only very minor amounts, thereby providing a scale inhibitor which is “sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor,” with a reasonable expectation of success, in order to provide a scale inhibitor that is essentially Dawson’s desired magnesium salt of AEEA phosphonate.
Regarding claim 25, Dawson discloses wherein the extended-release composition further comprises proppants ([0150] “The formulation may include other additives, selected from … proppant particulates”).
Claim Rejections - 35 USC § 103
Claim 21 is rejected under 35 U.S.C. 103 as obvious over Dawson as in claim 1, and further in view of Welton (2011/0028358) (cited previously).
Regarding claim 21, Dawson discloses, e.g., “preparation of a slurry comprising solid scale inhibitor (suitably the calcium or magnesium, especially the magnesium, salt of said scale inhibitor precursor)” ([0187]) wherein “Scale inhibitors which include a moiety XX may be prepared by adding a source of Mg2+, for example MgO or MgCl2, into a solution of a scale inhibitor which includes a moiety XX until the magnesium salt precipitates” ([0125]).
However, Dawson fails to specify what particle size is desired for the “solid scale inhibitor” formed by precipitation.
Nevertheless, 150-500 microns appears to be a common particle size for solid scale inhibitors. For example, Welton teaches “introducing a treatment fluid into a subterranean formation penetrated by a well bore, wherein the treatment fluid comprises: a base fluid, and a plurality of solid particulates comprising at least one selected from the group consisting of: a scale inhibitor” (abstract) wherein “suitable scale inhibitors for use in the present invention may be any scale inhibitor in particulate form that is substantially insoluble in the base fluid. Suitable scale inhibitors generally include, but are not limited to bis(hexamethylene triamine penta(methylene phosphonic acid)); diethylene triamine penta(methylene phosphonic acid); ethylene diamine tetra(methylene phosphonic acid); hexamethylenediamine tetra(methylene phosphonic acid); 1-hydroxy ethylidene-1,1-diphosphonic acid; 2-hydroxyphosphonocarboxylic acid; 2-phosphonobutane-1,2,4-tricarboxylic acid; phosphino carboxylic acid; diglycol amine phosphonate; aminotris(methanephosphonic acid); methylene phosphonates; phosphonic acids; aminoalkylene phosphonic acids; aminoalkyl phosphonic acids; polyphosphates, salts thereof (such as but not limited to: sodium, potassium, calcium, magnesium, ammonium); and combinations thereof” ([0016]) and “The size of the particulates present in the treatment fluid may vary depending upon the application in which they will be used, the type of base fluid, screen size, slot size, and the pore sizes, proppant sizes, and/or permeability of the formation. For example, in those embodiments where the base fluid is an acidic solution, the particulates may have a size in the range of from about 1000 microns to 2 microns. In some embodiments where the base fluid is an acidic solution, the particulates may have a size in the range of from about 150 microns to 15 microns. In other embodiments where the base fluid is a nonacidic fluid, the particulates may have a size in the range of from about 150 microns to 2 microns” ([0020]).
Although silent to the exact size range as instantly claimed, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dawson to include “wherein the solid, particulate scale inhibitor has a particle size between about 150 microns and about 500 microns,” with a reasonable expectation of success, in order to provide solid scale inhibitor in a typical size for solid particulates of scale inhibitor in the art. Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Furthermore, the Office observes that Applicant fails to disclose any criticality for a particular 150-500 micron particle size to the scale inhibitors, over any other particular size for solid particles in a treatment fluid.
Response to Arguments
Applicant's arguments filed 30 December 2025 with respect to claims rejected under 35 USC § 102 over Dawson have been fully considered but they are not persuasive.
In Applicant’s arguments, Applicant states “To the extent the Office Action suggests that Dawson inherently discloses the claimed solubility limitation because similar scale-inhibitor chemistries may be employed, Applicant respectfully disagrees. As explained in the present Application, SPSI solubility depends on numerous factors, including physical form, salt form, and the conditions under which solubility is measured. See e.g., Instant Application, ¶ [0023]. The present Application expressly defines solubility with respect to dissolution in water under specified conditions” (p.14) (underlining added).
However, in section I., Applicant stated “As amended, claim 1 requires that the SPSI itself be characterized by a quantified sparing solubility, such that at least 100 parts by mass of water are required to dissolve one part by mass of the SPSI. This limitation is directed to an intrinsic solubility property of the solid, particulate scale inhibitor – specifically, the amount of water required to dissolve the SPSI – and not merely to whether the overall formulation contains water or causes the SPSI to dissolve” (p.12) (underlining added).
It is unclear how, exactly, the limitation that is an “intrinsic solubility property” is also dependent on the “physical form, salt form, and the conditions under which solubility is measured.” For example, these other aspects pointed to by Applicant are not claimed, and it appears from the rest of Applicant’s disclosure that merely using the magnesium salt of AEEA phosphonate would already necessarily provide the degree of insolubility.
Accordingly, following Applicant’s argument, it appears there may be missing critical/essential elements in the claim which would be required to provide “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor.” These missing critical/essential elements would create a deficiency under 112(b) as above.
Alternatively, if the claim already has all critical/essential elements to provide “wherein the solid, particulate scale inhibitor is… sparingly soluble in water such that at least 100 parts by mass of water are required to dissolve one part by mass of the solid, particulate scale inhibitor,” then Dawson must also provide the same, because Dawson discloses all other elements, and "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer" and "The fact that [Applicant] has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." See MPEP 2112 and MPEP 2145.
Accordingly, this argument is not entirely persuasive based on the current claim language and evidence of record.
In the case of further Amendments, Applicant is advised to consider what are the critical features of the current Invention, and how do these critical features interact in the Invention in order to produce the unique phenomena of the Invention.
Nevertheless, Applicant is advised to beware the inclusion of New Matter.
As always, Applicant may consider contacting the Examiner for an Interview or the like, in the case further explanation or guidance is desired.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-24137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674