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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 in parent Application No. 18/282,030, of which the present application is a continuation; however, the foreign application, EP 21164922.3, filed on March 25, 2021, does not disclose all claim limitations included in the present application. Claims 1 and 18 of the present application recite the limitation “one or more alkali metal silicate components of the formula Me2O·xSiO2, wherein x has a value from 0.5 to 4.0”. The foreign application only discloses that the value of x is 0.5 to 3.0, and does not disclose a value of x up to 4.0. For the present application to receive the earlier effective filing date of the submitted foreign application, the disclosure of the foreign application must include support for all claim limitations of the present application. As a limitation recited in claims 1 and 18 is absent in the foreign application, and claims 2-17 and 19-29 are all dependent on claims 1 or 18, claims 1-29 will not be granted the earlier effective filing date, and the effective filing date of these claims will be the international filing date of the PCT application PCT/EP2022/057838, March 24, 2022.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because its length is shorter than 50 words. Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 18-28 and 30-32 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 Engelhardt et al. (G.B. Patent No. 2138837-A) (hereinafter, “ENGELHARDT”) with evidence from Hardy, et al. (U.S. Pub. No. 20190344537-A1) (hereinafter, “HARDY”) as to the rejection of claims 18-21 and 30-32.
Regarding claims 18 and 30, ENGELHARDT teaches an anticorrosive composition (see ENGELHARDT at claim 9 and pg. 2, lines 14-23), wherein the anticorrosive composition comprises:
(a) one or more alkali metal silicate components of the formula Me2O-xSiO2, wherein Me is sodium and x has a value of from 0.5 to 3.0 (see ENGELHARDT at claim 9 and pg. 2, lines 29-30; the non-corrosive antifreeze liquid composition of ENGELHARDT comprises 1 to 50 parts by weight of a mixture comprising sodium silicate; sodium metasilicate, also called sodium silicate, is of formula Na2SiO3; Me is sodium, and x is 1),
(b) one or more alkali metal phosphate components of the formula Me2O:nP2O5, wherein n has a value of from 0.33 to 1, and/or hydrates thereof (see ENGELHARDT at claim 9 and pg. 2, lines 1-7; the composition of ENGELHARDT comprises 5 to 75 parts by weight of sodium phosphate; sodium phosphate is of formula Na3PO4; Me is sodium, and n is 0.33),
(c) one or more carboxylic acids having 6-22 carbon atoms, and/or salts thereof (see ENGELHARDT at claim 12 and pg. 1, lines 55-56; the composition of ENGELHARDT comprises sebacic acid, which is of formula HO2C(CH2)8CO2H, which is a carboxylic acid having 10 carbon atoms).
While ENGELHARDT does not explicitly mention a mineral wool or aerogel product, the limitation of the composition being present on and/or in a mineral wool or aerogel product is directed toward an intended use of the composition rather than being directed toward the composition itself, and is therefore not interpreted as limiting the anticorrosive composition. ENGELHARDT discloses a composition as claimed by the present claims, therefore the composition of ENGELHARDT would be expected to be able to perform the intended use of being present on and/or in a mineral wool product or an aerogel product. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot 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.
Further, it is known that an anticorrosive composition is capable of being used on and present on and/or in a mineral wool product, as evidenced by HARDY (see HARDY at Abstract, claims 1, 5 and 19-20, and paragraph [0017], disclosing the use of an anticorrosive composition on a rock wool (i.e., mineral wool) insulation mat to impart anticorrosive properties).
Regarding claims 19-21 and 31-32, as applied to claims 18 and 30 above, ENGELHARDT teaches a composition according to claims 18 and 30, wherein the product is selected from a pipe section, a roof product, a façade product, a mat, and a wired mat, as recited by claims 19 and 31; wherein the product is a pipe section or a mat, as recited by claim 20; and wherein the composition is present at least in a surface layer of the pipe section or mat, as recited by claims 21 and 32.
While ENGELHARDT does not explicitly mention a pipe section or mat, the limitations regarding the composition being present on and/or in a product selected from a pipe section or mat are directed toward an intended use of the composition rather than being directed toward the composition itself, and are therefore not interpreted as limiting the anticorrosive composition. ENGELHARDT discloses a composition as claimed by the present claim, therefore the composition of ENGELHARDT would be expected to be able to perform the intended use of being present on and/or in a product selected from a pipe section or mat. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot 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.
Further, it is known that an anticorrosive composition is capable of being used on and present on and/or in a mineral wool product selected from a pipe section or mat, as evidenced by HARDY (see HARDY at Abstract, claims 1, 5 and 19-20, and paragraphs [0008] and [0017], disclosing an anticorrosive composition which is applied to a surface of and dispersed in a rock wool insulation mat).
Regarding claims 22-23, as applied to claim 18 above, ENGELHARDT teaches a composition according to claim 18, wherein at least one of the one or more alkali metal phosphate components is: a sodium phosphate, as recited claim 22; and is Na3PO4, as recited by claim 23 (see ENGELHARDT at claim 9 and pg. 2, lines 1-7, teaching sodium phosphate which is of formula Na3PO4); and wherein at least one of the one or more alkali metal silicate components is Na2SiO3, as recited by claim 22 (see ENGELHARDT at claim 9 and pg. 2, lines 29-30, teaching sodium metasilicate, i.e., sodium silicate, Na2SiO3).
Regarding claims 24-25, as applied to claim 18 above, ENGELHARDT teaches a composition according to claim 18, wherein at least one of the one or more carboxylic acids: is of formula HO2C(CH2)mCO2H, wherein m in the formula is 4-20, as required by claim 24; and wherein m in the formula is 4-10, as required by claim 25 (see ENGELHARDT at claim 12 and pg. 1, lines 55-56, teaching sebacic acid, which is of formula HO2C(CH2)8CO2H).
Regarding claims 26-27, as applied to claim 18 above, ENGELHARDT teaches a composition according to claim 18, wherein the composition comprises amounts overlapping with 60-96 weight parts or 70-93 weight parts (a), 1-25 weight parts or 2-20 weight parts (b), and 1-20 weight parts or 2-15 weight parts (c), based on a total weight of (a), (b) and (c).
The anticorrosive composition of ENGELHARDT comprises sodium metasilicate (component a), sodium phosphate (component b) and a carboxylic acid (component c) which can be either adipic acid, (CH₂)₄(COOH)₂, or sebacic acid, HO2C(CH2)8CO2H. ENGELHARDT teaches an embodiment of the anticorrosive composition comprising, by weight, 0.5-10 parts adipic acid, 5-75 parts sodium phosphate, and 1-50 parts of a mixture of sodium nitrate, sodium silicate, sodium 2-mercapentobenzothiazole, and 1,2,3-tolytriazole (see ENGELHARDT at claim 9). Regarding the breakdown of the aforementioned “mixture”, ENGELHARDT describes an embodiment wherein this mixture is, by weight, 7.76 parts sodium metasilicate, 7.76 parts sodium nitrate, 6.74 parts 2- mercapentobenzothiazole, and 1.44 parts 1,2,3-tolytriazole (see ENGELHARDT at pg. 2, line 63 – pg. 3, line 4); this mixture is 33% sodium metasilicate (component a) by weight. Applying the same weight percentages of 4 components of this mixture to the composition of claim 9, the 1-50 weight parts of the mixture would comprise 0.3-16.5 weight parts of sodium metasilicate (component a). The “parts by weight” of ENGELHARDT’s compositions are not based upon a total weight of the composition and therefore have not been interpreted to mean “weight percentage”; i.e., a total composition could have from 0.3-16.5 g of component a, 5-75 g of component b, and 0.5-10 parts of component c, yielding the following weight percentage ranges based only on the weight of components a, b and c: 0.4%-75% component a, 16-99% component b, and 1-65% component c. Claims 24-25, 43-44 and 53 of the present application, by contrast, recite weight parts “based on a total weight of a, b and c” and have therefore been interpreted as meaning weight percentages, i.e., 60%-96% component a, 1%-25% component b, and 1%-20% component, or 70%-93% component a, 2%-20% component b, and 2%-15% component c.
The composition of ENGELHARDT comprises 0.4%-75% component a, 16-99% component b, and 1-65% component c; each of these ranges overlaps with the claimed ranges, thereby rendering the claimed ranges obvious. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 28, as applied to claim 18 above, ENGELHARDT teaches a composition according to claim 18, wherein the composition further comprises at least one surface-active compound selected from soaps and surfactants (see ENGELHARDT at pg. 2, lines 31-37 and pg. 3, lines 1-2, teaching that the composition further comprises a copolymer of sodium styrene sulfonate and maleic anhydride as a dispersant, meeting the limitation of a surfactant).
Claims 18-23, 26-27 and 29-32 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 Marinho, et al. (U.S. Pub. No. 2007/0120094-A1) (hereinafter, “MARINHO”), with evidence from HARDY as to the rejection of claims 18-21 and 30-32.
Regarding claims 18 and 30, MARINHO teaches an anticorrosive composition (see MARINHO generally at Abstract and paragraphs [0020]-[0021]), wherein the anticorrosive composition comprises:
(a) one or more alkali metal silicate components of the formula Me2O-xSiO2, wherein Me is sodium and x has a value of from 0.5 to 3.0 (see MARINHO at paragraph [0068] and Table 1, teaching sodium silicate, i.e., Na2SiO3, wherein Me is sodium and x has a value of 1),
(b) one or more alkali metal phosphate components of the formula Me2O:nP2O5, wherein n has a value of from 0.33 to 1, and/or hydrates thereof (see MARINHO at paragraph [0024], teaching alkali metal phosphates (i.e., Na3PO4, K3PO4, Li3PO4, etc.), which are of the claimed formula wherein n has a value of 0.33),
(c) one or more carboxylic acids having 6-22 carbon atoms, and/or salts thereof (see MARINHO at paragraphs [0054]-[0056], teaching carboxylic acids with 4 to 20 carbon atoms, such as citric acid which has 6 carbon atoms, or 1,2,3,4-butane tetracarboxylic acid which has 8 carbon atoms).
While MARINHO does not explicitly mention a mineral wool or aerogel product, the limitation of the composition being present on and/or in a mineral wool or aerogel product is directed toward an intended use of the composition rather than being directed toward the composition itself, and is therefore not interpreted as limiting the anticorrosive composition. MARINHO discloses a composition as claimed by the present claim, therefore the composition of MARINHO would be expected to be able to perform the intended use of being present on and/or in a mineral wool product or an aerogel product. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot 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.
Further, it is known that an anticorrosive composition is capable of being used on and present on and/or in a mineral wool product, as evidenced by HARDY (see HARDY at Abstract, claims 1, 5 and 19-20, and paragraph [0017], disclosing the use of an anticorrosive composition on a rock wool (i.e., mineral wool) insulation mat to impart anticorrosive properties).
Regarding claims 19-21 and 31-32, as applied to claims 18 and 30 above, MARINHO teaches a composition according to claims 18 and 30, wherein the product is selected from a pipe section, a roof product, a façade product, a mat, and a wired mat, as recited by claims 19 and 31; wherein the product is a pipe section or a mat, as recited by claim 20; and wherein the composition is present at least in a surface layer of the pipe section or mat, as recited by claims 21 and 32.
While MARINHO does not explicitly mention a pipe section or mat, the limitations regarding the composition being present on and/or in a product selected from a pipe section or mat are directed toward an intended use of the composition rather than being directed toward the composition itself, and are therefore not interpreted as limiting the anticorrosive composition. MARINHO discloses a composition as claimed by the present claim, therefore the composition of MARINHO would be expected to be able to perform the intended use of being present on and/or in a product selected from a pipe section or mat. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot 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.
Further, it is known that an anticorrosive composition is capable of being used on and present on and/or in a mineral wool product selected from a pipe section or mat, as evidenced by HARDY (see HARDY at Abstract, claims 1, 5 and 19-20, and paragraphs [0008] and [0017], disclosing an anticorrosive composition which is applied to a surface of and dispersed in a rock wool insulation mat).
Regarding claims 22-23, as applied to claim 18 above, ENGELHARDT teaches a composition according to claim 18, wherein at least one of the one or more alkali metal phosphate components is: a sodium phosphate, as recited claim 22; and is Na3PO4, as recited by claim 23 (see MARINHO at paragraph [0024], teaching alkali metal phosphates, i.e., Na3PO4, K3PO4, Li3PO4, etc., which would meet the limitation of sodium phosphate); and wherein at least one of the one or more alkali metal silicate components is Na2SiO3, as recited by claim 22 (see MARINHO at paragraph [0068] and Table 1, teaching sodium silicate, i.e., Na2SiO3, wherein Me is sodium and x has a value of 1).
Regarding claims 26-27, as applied to claim 18 above, MARINHO teaches a composition according to claim 18, wherein the composition comprises amounts overlapping with the claimed ranges of 60-96 weight parts or 70-93 weight parts (a), 1-25 weight parts or 2-20 weight parts (b), and 1-20 weight parts or 2-15 weight parts (c), based on a total weight of (a), (b) and (c). MARINHO teaches an anticorrosive composition comprising, by weight, 0.001% to 25% of alkali metal phosphate (b) (see MARINHO at paragraph [0026]), 0.01% to 40% of inorganic (sodium) silicate (a) (see MARINHO at paragraph [0064]), and 0.001% to 20% of tri or tetra carboxylic acid (c) (see MARINHO at paragraph [0059]). Based on the total weight of only components a, b and c, this results in mass percentage ranges of approximately 0.02% to nearly 100% a (overlapping with the claimed range of 60-96%), 0.002% to nearly 100% b (overlapping with the claimed range of 1-25%), and 0.002% to nearly 100% c (overlapping with the claimed range of 1-20%) based on the total weight of a, b and c, therefore rendering the claimed ranges obvious. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 29, as applied to claims 18 above, MARINHO teaches a composition according to claim 18, wherein the composition further comprises a hydrophobic agent comprising at least one silicone compound (see MARINHO at Abstract and paragraphs [0020]-[0021] and [0075], teaching silicone).
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.
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.
Claims 1-17 and 33-37 are rejected under 35 U.S.C. 103 as being unpatentable ENGELHARDT in view of HARDY.
Regarding claims 1 and 33, ENGELHARDT teaches a method of imparting anticorrosive properties to a product, wherein the method comprises contacting the product with an anticorrosive composition (see ENGELHARDT at claim 9 and pg. 2, lines 14-23), wherein the anticorrosive composition comprises:
(a) one or more alkali metal silicate components of the formula Me2O-xSiO2, wherein Me is sodium and x has a value of from 0.5 to 3.0 (see ENGELHARDT at claim 9 and pg. 2, lines 29-30; the non-corrosive antifreeze liquid composition of ENGELHARDT comprises 1 to 50 parts by weight of a mixture comprising sodium silicate; sodium metasilicate, also called sodium silicate, is of formula Na2SiO3; Me is sodium, and x is 1),
(b) one or more alkali metal phosphate components of the formula Me2O:nP2O5, wherein n has a value of from 0.33 to 1, and/or hydrates thereof (see ENGELHARDT at claim 9 and pg. 2, lines 1-7; 0.33; the composition of ENGELHARDT comprises 5 to 75 parts by weight of sodium phosphate; sodium phosphate is of formula Na3PO4; Me is sodium, and n is 0.33),
(c) one or more carboxylic acids having 6-22 carbon atoms, and/or salts thereof (see ENGELHARDT at claim 12 and pg. 1, lines 55-56; the composition of ENGELHARDT comprises sebacic acid, which is of formula HO2C(CH2)8CO2H, which is a carboxylic acid having 10 carbon atoms).
However, ENGELHARDT fails to explicitly teach that the product is selected from mineral wool products and aerogel products.
HARDY teaches a method of imparting anticorrosive properties to an insulation mat comprised of rock wool (a mineral wool) fibers by contacting the rock wool insulation mat with an anticorrosive composition, thereby dispersing the corrosion inhibitor composition in the rock wool mat product (see HARDY at Abstract, claims 1, 5 and 19-20, and paragraph [0017]). HARDY discloses that pH characteristics of fiber compositions may accelerate/contribute to corrosion under insulation, and therefore there is a significant need for insulation materials comprising corrosion inhibitors (see HARDY at paragraph [0002]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have combined the teachings of ENGELHARDT and HARDY by using the anticorrosive composition taught by ENGELHARDT to impart anticorrosive properties to a mineral wool insulation mat as taught by HARDY. One of ordinary skill in the art would have been motivated to employ the anticorrosive composition of ENGELHARDT to impart anticorrosive properties to mineral wool insulation mats for the benefit of creating an insulation material capable of inhibiting corrosion under insulation, as the pH characteristics of fiber compositions can accelerate corrosion under insulation.
Regarding claims 2 and 4, as applied to claim 1 above, ENGELHARDT in view of HARDY teaches a method according to claim 1, wherein in at least one of the one or more alkali metal silicate components x is from 0.5 to 3.0, as required by claim 2, and wherein at least one of the alkali metal silicate components is Na2SiO3, as required by claim 4 (see ENGELHARDT at claim 9 and pg. 2, lines 29-30, teaching sodium metasilicate, i.e., sodium silicate, Na2SiO3, wherein x is 1).
Regarding claims 3, 7-9 and 35, as applied to claims 1 and 33 above, ENGELHARDT in view of HARDY teaches a method according to claims 1 and 33, wherein at least one of the one or more carboxylic acids: has 7-14 carbon atoms, as required by claim 3; is of formula HO2C(CH2)mCO2H, wherein m in the formula is 4-20, as required by claims 7 and 35; wherein m in the formula is 4-10, as required by claim 8; and wherein m in the formula is 8, as required by claim 9 (see ENGELHARDT at claim 12 and pg. 1, lines 55-56, teaching sebacic acid, which is of formula HO2C(CH2)8CO2H and has 10 carbon atoms).
Regarding claims 5-6 and 34, as applied to claims 1 and 33 above, ENGELHARDT in view of HARDY teaches a method according to claims 1 and 33, wherein at least one of the one or more alkali metal phosphate components is: a sodium phosphate, as required claim 5; is Na3PO4, as required by claims 6 and 34 (see ENGELHARDT at claim 9 and pg. 2, lines 1-7, teaching sodium phosphate which is of formula Na3PO4).
Regarding claims 10-11 and 36, as applied to claims 1 and 33 above, ENGELHARDT in view of HARDY teaches a method according to claims 1 and 33, wherein the composition comprises amounts overlapping with 60-96 weight parts or 70-93 weight parts (a), 1-25 weight parts or 2-20 weight parts (b), and 1-20 weight parts or 2-15 weight parts (c), based on a total weight of (a), (b) and (c).
The anticorrosive composition of ENGELHARDT comprises sodium metasilicate (component a), sodium phosphate (component b) and a carboxylic acid (component c) which can be either adipic acid, (CH₂)₄(COOH)₂, or sebacic acid, HO2C(CH2)8CO2H. ENGELHARDT teaches an embodiment of the anticorrosive composition comprising, by weight, 0.5-10 parts adipic acid, 5-75 parts sodium phosphate, and 1-50 parts of a mixture of sodium nitrate, sodium silicate, sodium 2-mercapentobenzothiazole, and 1,2,3-tolytriazole (see ENGELHARDT at claim 9). Regarding the breakdown of the aforementioned “mixture”, ENGELHARDT describes an embodiment wherein this mixture is, by weight, 7.76 parts sodium metasilicate, 7.76 parts sodium nitrate, 6.74 parts 2- mercapentobenzothiazole, and 1.44 parts 1,2,3-tolytriazole (see ENGELHARDT at pg. 2, line 63 – pg. 3, line 4); this mixture is 33% sodium metasilicate (component a) by weight. Applying the same weight percentages of 4 components of this mixture to the composition of claim 9, the 1-50 weight parts of the mixture would comprise 0.3-16.5 weight parts of sodium metasilicate (component a). The “parts by weight” of ENGELHARDT’s compositions are not based upon a total weight of the composition and therefore have not been interpreted to mean “weight percentage”; i.e., a total composition could have from 0.3-16.5 g of component a, 5-75 g of component b, and 0.5-10 parts of component c, yielding the following weight percentage ranges based only on the weight of components a, b and c: 0.4%-75% component a, 16-99% component b, and 1-65% component c. Claims 24-25, 43-44 and 53 of the present application, by contrast, recite weight parts “based on a total weight of a, b and c” and have therefore been interpreted as meaning weight percentages, i.e., 60%-96% component a, 1%-25% component b, and 1%-20% component, or 70%-93% component a, 2%-20% component b, and 2%-15% component c.
The composition of ENGELHARDT comprises 0.4%-75% component a, 16-99% component b, and 1-65% component c; each of these ranges overlaps with the claimed ranges, thereby rendering the claimed ranges obvious. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 12-13 and 37, as applied to claims 1 and 33 above, ENGELHARDT in view of HARDY teaches a method according to claims 1 and 33, wherein the composition further comprises at least one surface-active compound selected from: soaps and surfactants, as recited by claims 12 and 37, and alkali stable water dispersible surfactants, alkali stable water soluble surfactants, and emulsifying surfactants, as recited by claim 13 (see ENGELHARDT at pg. 2, lines 31-37 and pg. 3, lines 1-2, teaching that the composition further comprises a copolymer of sodium styrene sulfonate and maleic anhydride as a dispersant, meeting the limitation of an alkali stable water dispersible/soluble surfactant).
Regarding claim 14, as applied to claim 1 above, ENGELHARDT in view of HARDY teaches a method according to claim 1, wherein the composition further comprises one or more water-miscible organic solvents (see ENGELHARDT at claim 9 and pg. 2, lines 44-46; the composition of ENGELHARDT comprises an aqueous solution of ethylene glycol, which is a water-miscible solvent).
Regarding claims 15-17, as applied to claims 1 above, ENGELHARDT in view of HARDY teaches a method according to claim 1, wherein the composition is dispersed in a mineral wool product, as required by claim 15; wherein the product is selected from a pipe section, a roof product, a façade product, a mat, and a wired mat, as required by claims 16; and wherein the product is selected from mineral wool products, as required by claim 17 (see HARDY at Abstract, claims 1, 5 and 19-20, and paragraphs [0008] and [0017], teaching that the composition is applied to a surface of and dispersed in a rock wool insulation mat).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 15 and 17-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8, 10-13, 15-19 and 21 of copending Application No. 19/227,808 (reference application; hereinafter, “-808”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding present claims 1-3, 15, 17 and 33, claim 21 of -808 recites all limitations of present claims 1, 15 and 17. Claim 21 of -808 recites a method according to present claims 1 and 33 wherein x has a value of from 0.5 to 4.0, which encompasses and therefore renders obvious the range of 0.5 to 3.0 recited by present claims 2 and 33. Claim 21 of -808 recites a method according to present claim 1 wherein one or more carboxylic acids have 6-22 carbon atoms, which encompasses and thereby renders obvious the range of 7-14 carbon atoms recited by present claim 3.
Regarding present claims 18-32, as discussed above, the recitation of “wherein the composition is present on and/or in a mineral wool product or an aerogel product” recited in claims 18 and 30, and recitations of features of the mineral wool or aerogel product recited in claims 19-21 and 31-32, are merely recitations of an intended use of the claimed composition rather than being directed toward the composition itself, and are therefore not treated as limiting the claimed composition. Therefore, claims 1, 5 and 8 of -808 each recite all limitations of present claims 18-21 and 30-32.
Regarding present claim 22, as discussed above, claim 1 of -808 recites all limitations of present claim 18. Claims 10 and 18 of -808 further recite Na2SiO3, and claims 11 and 18 of -808 further recite sodium phosphate.
Regarding present claim 23, as discussed above, claim 1 of -808 recites all limitations of present claim 18. Claims 12 and 18 of -808 further recite Na3PO4.
Regarding present claims 24-25, as discussed above, claim 1 of -808 recites all limitations of present claim 18. Claims 13 and 14 of -808 further recite the formula of present claims 24-25, wherein m is 2-20 and wherein m is 8, respectively, and claim 18 of -808 further recites sebacic acid, which is of the formula of present claims 24-25.
Regarding present claims 26-27, as discussed above, claim 1 of -808 recites all limitations of present claim 18. Claim 15 of -808 further recites ranges of (a), (b) and (c) identical to the ranges of present claim 26, and encompassing and thereby rendering obvious the ranges of present claim 27.
Regarding present claim 28, as discussed above, claim 1 of -808 recites all limitations of present claim 18. Claims 16-18 of -808 further recite the soaps/surfactants of present claim 28.
Regarding present claim 29, as discussed above, claim 1 of -808 recites all limitations of present claim 18. Claim 19 of -808 further recites a hydrophobic agent comprising at least one silicone compound.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, 15, 17, 18-25 and 28-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-9 of U.S. Patent No. 12,428,346 (hereinafter, “-346”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding present claims 1-9, 15, 17 and 33-35, claim 6 of -346 (which depends from claim 1) recites all limitations of present claims 1-9, 15, 17 and 33-35.
Regarding present claims 18-25 and 28-32, as discussed above, the recitation of “wherein the composition is present on and/or in a mineral wool product or an aerogel product” recited in claims 18 and 30, and recitations of features of the mineral wool or aerogel product recited in claims 19-21 and 31-32, are merely recitations of an intended use of the claimed composition rather than being directed toward the composition itself, and are therefore not treated as limiting the claimed composition. Therefore, claims 1 and 7-9 of -346 each recite all limitations of present claims 18-25 and 30-32.
Regarding present claim 28, as discussed above, claim 1 of -346 recites all limitations of present claim 18. Claims 2-3 of -346 further recite soaps/surfactants.
Regarding present claim 29, as discussed above, claim 1 of -346 recites all limitations of present claim 18. Claim 4 of -346 further recites a hydrophobic agent comprising at least one compound.
Claims 1-9, 12-25 and 28-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,454,488 (hereinafter, “-488”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding present claims 1-9, 15, 17 and 33-35, claims 1, 6 and 8 of -488 recite all limitations of present claims 1-9, 15, 17 and 33-35.
Regarding present claims 12-13 and 37, as discussed above, claim 1 of -488 recites all limitations of present claims 1 and 33. Claims 2-3 of -488 further recite the soaps/surfactants of present claims 12-13 and 37.
Regarding present claims 14 and 37, as discussed above, claim 1 of -488 recites all limitations of present claims 1 and 33. Claim 4 of -488 further recites a hydrophobic agent comprising at least one silicone compound.
Regarding present claim 14, as discussed above, claim 1 of -488 recites all limitations of present claim 1. Claim 5 of -488 further recites one or more water-miscible organic solvents.
Regarding present claim 16, as discussed above, claim 1 of -488 recites all limitations of present claim 1. Claim 7 of -488 further recites wherein the product is selected from a pipe section, a roof product, a façade product, a mat, and a wired mat.
Regarding present claims 18-25 and 28-32, as discussed above, the recitation of “wherein the composition is present on and/or in a mineral wool product or an aerogel product” recited in claims 18 and 30, and recitations of features of the mineral wool or aerogel product recited in claims 19-21 and 31-32, are merely recitations of an intended use of the claimed composition rather than being directed toward the composition itself, and are therefore not treated as limiting the claimed composition. Therefore, claims 9-12 of -488 each recite all limitations of present claims 18-25 and 30-32
Regarding present claim 28, as discussed above, claim 9 of -488 recites all limitations of present claim 18. Claim 13 of -488 further recites wherein the soaps/surfactants of present claim 28.
Regarding present claim 29, as discussed above, claim 9 of -488 recites all limitations of present claim 18. Claim 14 of -488 further recites a hydrophobic agent comprising at least one silicone compound.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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