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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed April 30, 2026 in reply to the Non-final Office Action mailed January 28, 2026. Claims 17, 21, and 22 have been amended; and claims 1-8, 18, 19, and 23 have been canceled. Claims 9-16 and 25 have been withdrawn. Claims 17, 20-22, and 24 are under examination.
Claim Objections
Claims 17, 20-22, and 24 are objected to because of the following:
1. The terminology employed in claims 17, 20-22, and 24 is not consistent with the subject matter now claimed. For example, the claims are directed to “an additive composition”. However, claim 17, as now amended, as interpreted in light of the original specification, is directed to “a marker fluid dispersion”, not “an additive composition” (see e.g. paragraph 0013).
2. The term “dispersion phase” appears nowhere in the original specification and claims. The original specification employs the term “discrete phase” (e.g. paragraph 0013). Applicant is advised that “dispersed phase” would be satisfactory as well.
3. The expression “about 50 ppm to about 1000 ppm of the additive composition in the dispersed phase is dispersed in the continuous phase” is awkward and simply makes no sense at all. First, the claim states that the “additive composition” itself comprises the “dispersed phase” and the “continuous phase”, so one of ordinary skill in the art cannot make heads or tails out of the notion that the additive composition is in the dispersed phase, specifically that about 50 ppm to about 1000 ppm of the additive composition is in the dispersed phase. To make matters worse, the claim appears to provide that this additive composition that is in the dispersion phase is somehow then dispersed in the continuous phase, even though the additive composition itself is said to comprise the entire continuous phase.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17, 20-22, and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
1. Claim 17 stipulates in a wherein clause that “about 50 ppm to about 1000 ppm of the additive composition in the dispersion phase is dispersed in the continuous phase”, and claim 21 provides that “about 200 ppm to about 600 ppm of the solvent and the bismuth of the additive composition is dispersed in the continuous phase”. As already noted, supra, the original specification and claims say nothing at all about “dispersion phase”. Claim 17 is directed to “an additive composition” that itself comprises “a continuous phase” and “a dispersion phase”. In claim 17, the dispersion phase is thus a constituent element of the additive composition. The original specification says nothing about the additive composition being “in the dispersion phase”, specifically that only about 50 ppm to about 1000 ppm of the additive composition is in the dispersion phase. To make matters worse, claim 17 appears to provide that this additive composition that is in the dispersion phase is somehow then dispersed in the continuous phase, even though the additive composition itself is said to comprise the entire continuous phase. Applicant points to paragraphs [0017] and [0037] for support. However, paragraph [0017] discloses that “when mixed with water, the surfactant is preferably capable of emulsifying about 50 ppm to about 1000 ppm of the hydrocarbonaceous solvent and the bismuth carboxylate in water”; paragraph [0037] discloses that “the surfactant should be capable of emulsifying about 50 ppm to about 1000 ppm of the hydrocarbonaceous solvent and the bismuth carboxylate in water”. As anyone of ordinary skill in the art would immediately recognize, the claimed limitations now presented are not one and the same as the disclosure of paragraphs [0017] and [0037].
2. Claim 17 stipulates in a wherein clause that “the bismuth carboxylate includes in the range of 6 to 18 moles of carbon per mole of bismuth”. However, the original specification provides that the bismuth carboxylate can contain about 6 to about 24 moles of carbon atoms per mole of the bismuth (e.g. paragraphs 0011, 0016), or preferably the carboxylate includes about 6 to about 12 moles of carbon per mole of bismuth (e.g. paragraph 0036). Applicant admits that “the specification does not expressly recite the claimed range”, but dismisses this fact by asserting “the specification need not recite the claimed range to provide written description support”. However, the original specification does not provide adequate support for the claimed range of 6 to 18 moles of carbon per mole of bismuth, such a specific range was simply not contemplated at the time of filing the present application.
2. Claim 17 now stipulates in a wherein clause that “the additive composition is free of a sulfur compound”. Applicant contends that support for such a limitation is found in the specification since “if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”, and further that “the present specification discloses that the surfactant may be an anionic surfactant such as an alkyl sulfate”. While Applicant may have adequate support for a composition that excludes an anionic surfactant that contains sulfate, the original specification and claims do not provide adequate support for the exclusion of any and all sulfur compounds known to man, including sulfur itself. Such a limitation was not contemplated at the time of filing the present application.
This appears to be new matter.
Claims 20-22 and 24 depend from claim 17.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17, 20-22, and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17, as now amended, stipulates in a wherein clause that “about 50 ppm to about 1000 ppm of the additive composition in the dispersion phase is dispersed in the continuous phase”. Claim 17 is directed to “an additive composition” that itself comprises “a continuous phase” and “a dispersion phase”. The dispersion phase is thus a constituent element of the additive composition. Hence, one of ordinary skill in the art thus cannot make heads or tails out of the notion that the additive composition is “in the dispersion phase”, specifically that only about 50 ppm to about 1000 ppm of the additive composition is in the dispersion phase. The claim never even defines what the “ppm” is based on or relative to. To make matters worse, the claim appears to provide that this additive composition that is in the dispersion phase is somehow then dispersed in the continuous phase, even though the additive composition itself is said to comprise the entire continuous phase. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter.
***Applicant is advised that one of ordinary skill in the art would generally understand that 100% of the dispersion phase is dispersed in the continuous phase. Perhaps Applicant is attempting to claim that the composition as a whole comprises the dispersion phase in the amount of about 50 ppm to about 1000 ppm, based on the weight of the composition as a whole?
Claim 21, which depends from claim 17, as now amended, stipulates in a wherein clause that “about 200 ppm to about 600 ppm of the solvent and the bismuth of the additive composition is dispersed in the continuous phase”, which renders the claim indefinite for the following reasons:
1. There is insufficient antecedent basis for bismuth metal. Claim 17 requires bismuth carboxylate, specifically bismuth carboxylate with 6 to 18 moles of carbon per mole of bismuth, not simply bismuth metal.
2. It is noted that both the solvent and bismuth carboxylate are constituents of the dispersion phase. One of ordinary skill in the art would thus generally understand that 100% of the dispersion phase, including all constituents therein, is dispersed in the continuous phase. Moreover, since the claim refers to “the solvent” and “the bismuth”, one of ordinary skill in the art would have to infer that reference is being made to the solvent and the bismuth (correction, the bismuth carboxylate) introduced in claim 17, both of which are constituents of the dispersion phase. Therefore, one of ordinary skill in the art can only reasonably conclude that 100% of the solvent and 100% of the bismuth carboxylate are dispersed in the continuous phase, not about 200 ppm to about 600 ppm. Hence, one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claims 20-22 and 24 are (also) indefinite for depending from an indefinite claim.
Obviousness-Type 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 17, 20-22, and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-18 of U.S. Patent No. 10,495,626.
Applicant’s elected subject matter is directed to a composition comprising a continuous phase comprising water; and a dispersion phase comprising petroleum distillate, a bismuth carboxylate, an alkyl polyethoxylate surfactant and a biocidal metal, e.g. copper; wherein the bismuth carboxylate contains about 6-24 moles of carbon per mole of bismuth, and wherein the composition is free of a sulfur compound.
Claims 1-5 and 7-18 of U.S. Patent No. 10,495,626 disclose a composition comprising a continuous phase comprising water; and a dispersed phase comprising a hydrocarbonaceous solvent, a metal carboxylate, and a surfactant; wherein the hydrocarbonaceous solvent can be a petroleum distillate; wherein the metal carboxylate can be bismuth carboxylate with 6-18 carbon atoms; wherein the surfactant can be an alkyl polyethoxylate surfactant; and wherein the composition can further comprise a biocidal metal, e.g. copper.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent disclose that the metal carboxylate can be a bismuth carboxylate and that the carboxylate can have 6-18 carbon atoms, i.e. the bismuth carboxylate can contain about 6-18 moles of carbon per mole of bismuth. Further, the claimed composition of the patent does not necessarily require a sulfur compound.
Conclusion
No claims are allowed.
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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM 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, Sue Liu can be reached at 571-272-5539. 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.
/DAVID BROWE/Primary Examiner, Art Unit 1617
Prosecution Insights