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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 17 July 2026. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 20 November 2024, 06 March 2025, and 24 February 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-12 and 19-20) in the reply filed on 29 July 2026 is acknowledged. Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “The present disclosure relates generally to…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Claim Objections
Claims 4-6 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 4, the phrase “about at least about 5 wt-%.” is awkwardly worded and should be changed to simply “above about 5 wt. %.”
Regarding claims 5 and 6, the word “salts” should be singular to coincide with the fatty acid, thus the claims should each read …”a fatty acid (or salt) amine condensate…”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 7 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 7, in chemical formula (IV), the claim does not define the values of n, x or y used in the structural formula. Thus the structure is indefinite. Although p. 14-15, [0069] of the original disclosure defines suitable values of n, x and y, limitations from the specification are not read into the claims. For clarity, the Examiner suggests amending the claim to define the values of n, x and y based on the values provided in the specification.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-12, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett (U.S. Pub. 2018/148632).
Regarding claim 1, Bennett discloses a composition for inhibiting corrosion comprising an organic solvent and a corrosion inhibitor, see abstract.
The corrosion inhibitor component is present in the amount of 5-95 wt. % or most preferably 20-30 wt. % of the composition, see p. 3, [0053].
The corrosion inhibitor may be one of several components including a quaternary ammonium salt, see p. 5, [0072]. Preferably the quaternary ammonium salt constitutes 50-60 wt. % of the corrosion inhibitor component. The other component may be a bis-quaternized compound having the following structural formula shown at p. 4, [0057], see also p. 5, [0080] describing using a blend of quaternary ammonium salt and this formula III as the corrosion inhibitors:
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The solvent is described at p. 5, [0081] to comprise from 5-95 wt. % of the composition, most preferably 40-60 wt. % of the composition. A variety of suitable solvents are disclosed at p. 5, [0082] including non-polar solvents of hexane, heptane, decane, dodecane, and others. These components are paraffin oils. Solvents may be used in combination, for example a polar solvent such as methanol or ethylene glycol may be added in the amount of 5-15 wt. % to have an anti-freeze effect, see p. 6, [0083]. Water may also be an additional solvent, see p. 2, [0014]. See also the examples in Table 1 on p. 10-11 which include a blend of solvents, e.g. Example 4 uses a mixed solvent of 15 wt. % of methanol and 15 wt. % of ethylene glycol.
While there is no particular example which uses a solvent comprising paraffinic oil where the paraffinic oil has between about 5-40 wt. % paraffinic content, Bennett clearly teaches using a blend of solvents and notes that paraffinic solvents are suitable solvent components. Thus it would have been obvious to have used paraffin oil in the claimed amount as one of the solvent components for the corrosion inhibitor to arrive at the claimed invention.
Regarding claims 2 and 3, suitable paraffinic solvents include hexane (linear C6 paraffin), heptane (linear C7 paraffin), decane (linear C10 paraffin), and dodecane (linear C12 paraffin), see p. 5, [0082]. All four of these are n-paraffins meeting the limitation of claim 2 and decane and dodecane also meet the carbon number limitation of claim 3.
Regarding claim 4, Bennett teaches a combined solvent which uses a blend of solvent components. For example, a polar solvent such as methanol or ethylene glycol may be added in the amount of 5-15 wt. % to have an anti-freeze effect, see p. 6, [0083]. Water may also be an additional solvent, see p. 2, [0014]. See also the examples in Table 1 on p. 10-11 which include a blend of solvents, e.g. Example 4 uses a mixed solvent of 15 wt. % of methanol and 15 wt. % of ethylene glycol.
It would have been obvious to have used a blend of solvents including paraffin oil while maintaining at least 5 wt. % of paraffin content based on the disclosure of Bennett.
Regarding claim 5, a suitable corrosion inhibitor is a quaternary ammonium salt, see p. 5, [0072].
Regarding claims 6 and 7, another suitable corrosion inhibitor is the bis-quaternized compound of formula (III) shown below, see p. 4, [0057].
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In the formula, R1 and R2 are each independently unsubstituted, branched, chain or ring alkyl or alkenyl having from 1 to about 29 carbon atoms or partially fully oxygenzized, sulfurized, and/or phosphorilized branched, chain or ring alkyl or alkenyl having from 1 to about 29 carbon atoms or a combination thereof (see p. 4, [0058]);
L1 and L2 are each independently absent or -H, -COOH, -SO3H, -PO3H2, -COOR5, -CONH2, -CONHR5, or -CON(R5)2 where R5 is each independently a branched or unbranched alkyl, aryl, alkylaryl, alkylheteroaryl, cycloalkyl, or heteroalkyl group having from about 1 to 10 carbon atoms; (see p. 4, [0060]);
n is 0 or 1, and when n is 0, L2 is absent or -H;
x is from 1 to about 10; and
y is from 1 to about 5.
This reads on Chemical Formula (IV) in claim 7.
Regarding claim 8, Bennett also teaches using a phosphate ester comprising mono-, di-, tri-alkyl or alkylaryl phosphate esters, see p. 5, [0076].
Regarding claim 9, Bennett also teaches using a quaternary ammonium compound (IV) as shown in p. 4, [0069] and reproduced below which is nearly identical to the claimed formula (V):
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Regarding claim 10, Bennett also teaches that the corrosion inihibitor may be a pyridinium salt, reading on an aromatic amine comprising a pyridine. See p. 5, [0073].
Regarding claim 11, Bennett also teaches the use of additional corrosion inhibitors such as phosphate esters, see p. 5, [0075]. Other additives such as emulsifiers, dispersants, emulsion breakers, or pH modifiers can be included, see p. 6, [0086].
Regarding claim 12, a scale inhibitor is not required by Bennett, as it is listed as an optional additive at p. 6, [0086]. Although page 6, [0089] lists particular scale modifiers which are suitable, it is not required to include these in the composition.
Regarding claim 19, Bennett teaches treating an apparatus with a fluid or gas comprising the corrosion inhibitor, see p. 8, [0115]. The apparatus can be a cargo vessel, storage vessel, holding tank, pipeline, scrubber, spray tower, or others, see id. The surface to be protected can be a metal surface, see p. 8, [0116].
Regarding claim 20, Bennett teaches that a suitable effective amount of the corrosion inhibiting composition can be up to 1,000,000 ppm such as up to 10,000 ppm, see p. 8, [0127]. Dosage rates for batch treatments may be from 10 to 20,000 ppm, such as when applied as a pill to a pipeline to provide a high dose of the composition, see p. 9, [0128]. The apparatus to be protected can be a cargo vessel, storage vessel, holding tank, pipeline, scrubber, spray tower, or others, see p. 8, [0127], reading on a surface used for containing in the production, transportation, storage, and/or separation of crude oil, natural gas, or biofuel. See also p. 8, [0107-0109].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Moloney (U.S. Pub. 2019/0040301) is similar to Bennett and also teaches the claimed corrosion inhibitors combined with a solvent or solvent blend which may include paraffin oil components. The reference is cumulative.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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