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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/23/2026 has been entered.
Status of the Claims
The amendment filed on 09/23/2026 has been entered. Claim 16 has been amended. Claims 16-17 and 21-29 are thus currently pending and are under examination.
Withdrawn Rejection
Claim 16 has been amended to now recite that the branched surfactant composition from said mixture of alcohols having said 2-methyl branched alcohols has greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants. Vinson (Vinson, P. K. et al. Patent application publication number US2016/0068784A1; cited in PTO-892 03/20/2023) fails to specifically teach that the surfactant composition has greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants. Thus the 102(a)(1) rejection as being anticipated by Vinson has been withdrawn.
Claim Interpretation
The claims are drawn to a branched surfactant composition. The claim also recites a product by process limitation “produced by a process, comprising the steps of..”. The product by process limitations initiates from alpha olefin mixture that comprises carbon chain lengths in the range of C6-C36 that is isomerized to obtain linear and internal olefins with specific weight percent; hydroformylating the linear and internal olefins to produce 2-alkyl branched aldehydes with specific weight percent of linear aldehydes and branched aldehydes that include 2-alkyl branched aldehydes (2-methyl, 2-ethyl and 2-propyl); hydrogenating these aldehydes to obtain 2-alkyl branched alcohols with specific weight percent of linear and branched alcohols, wherein the branched alcohols include 2-methyl, 2-ethyl and 2-propyl; and finally producing the branched surfactants from the aforementioned 2-alkyl branched alcohols, wherein the surfactants have surfactants produced from said 2-methyl branched alcohols, surfactants produced from said 2-ethyl branched alcohols, and surfactants produced from said 2-propyl branched alcohols. The entire product by process limitation does not appear to impart distinctive structural characteristic to the final branched surfactant composition other than the alcohol side of the surfactant composition has a carbon chain number in the range C7-C37 containing 2-alkyl, i.e. 2-methyl, 2-ethyl and 2-propyl, and wherein the branched surfactant composition has greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants.
Claim Rejections - 35 USC § 112 – New Matter
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 16-17 and 21-29 are newly rejected in a modified form 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.
Claim 16 has been amended to recite the new limitation wherein the branched surfactant composition from said mixture of alcohols having said 2- methyl branched alcohols has greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants. In view of the claim interpretation set forth above, the claimed surfactant now comprises 28 wt.% 2-methyl branching of the alcohols of the surfactants. However, this specific weight percent of 2-methyl branching of the alcohols of the surfactants has not been disclosed, either explicitly or implicitly, in the original disclosure. The only weight percent of 2-methyl branching described in the specification is within an aldehyde composition or alcohol composition as set forth in [235], [237], [240], [242] and [245]:
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Furthermore, the specification describes the surfactant composition can have 40 wt.% or greater branched surfactants ([0034]) but fails to provide support that the surfactant composition comprises 28 wt.% 2-methyl branching of the alcohols of the surfactants.
Thus, at the time the application was filed, a skilled artisan would not recognize from the disclosure that Applicant was in possession of the newly added limitation discussed above.
MPEP § 2163.06 notes: " If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement.
MPEP § 2163.02 states that “Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention.
MPEP § 2163.06 further notes " When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not "new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure."
This is a new matter rejection.
Claims 17 and 21-29 also introduce new matter for depending on claim 16.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-17 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Vinson (Vinson, P. K. et al. Patent application publication number US2016/0068784A1; cited in PTO-892 03/20/2023).
NOTE: In view of the claim interpretation set forth above, the only limitation given weight in the claim is that the branched surfactant composition comprises C7-C37 with 2-methyl, 2-ethyl and 2-propyl in the alcohol side of the surfactant and wherein the branched surfactant composition from said mixture of alcohols having said 2- methyl branched alcohols has greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants.
Regarding claim 16, Vinson teaches a surfactant composition comprising a linear surfactant of formula (I) and 2-alkyl branched surfactant of formula (II):
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where from about 50% to about 100% by weight of the surfactant composition are surfactants having m+n=11; where from about 0.001% to about 25% by weight of the surfactant composition are surfactants of Formula II; and where X is a hydrophilic moiety ([0006]). Thus, the branched surfactant of formula I is present in the surfactant composition at an amount of greater than 25% by weight. Formula (II) reads on the claimed 2-methyl branched surfactant when m = 0.
Vinson teaches in Examples 3 and 6-10 C14/C15/C16 branched sulfate composition with 2-methyl, 2-ethyl and 2-propyl based on the branched alcohol composition they derive from (Tables 1-5).
Vinson fails to specifically teach that the surfactant composition comprises greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants. As discussed above, the branched surfactant of formula I make up greater than 25% by weight in the surfactant composition and thus if m = 0, the 2-methyl branching can be present at any amount greater than 25% by weight. Furthermore, other 2-alkyl branching surfactants can be present in the surfactant composition that include 2-ethyl and 2-propyl branching as instantly claimed. In such case, 2-methyl branching can be present at an amount less than 25% by weight to make up the distribution of the other 2-alkyl branching. However, whether the amount of 2-methyl branching either overlaps or merely close to the claimed amount, a prima facie case of obviousness exists absent any showing of unexpected results or criticality. See MPEP § 2144.05.
Regarding claims 16-17 and 24-25, it is noted that the limitation “produced by a process, comprising the steps of…” in claim 16 and all the process steps and/or elements in claims 17 and 24-25 that further limit the aforementioned limitation are product by process claim languages as a result of the branched surfactant product. The product by process limitation is not limited to the manipulations of the recited steps for preparing the branched surfactant, but only to the structure implied by the steps, in this case, only to the branched surfactant. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final branched surfactant, the process steps are not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.
Regarding claims 21 and 23, in view of the definition of m and n in the above formula I and II of Vinson, the instant surfactant composition with C15 or a mixture of C13 and C15 is encompassed in the above formula II. Thus, selecting C15 or a mixture of C13 and C15, a skilled artisan would still have a reasonable expectation of success in arriving at the instantly claimed branched surfactant composition.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain a branched surfactant composition in view of the teachings of Vinson.
Claim(s) 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Vinson (Vinson, P. K. et al. Patent application publication number US2016/0068784A1; cited in PTO-892 03/20/2023) as applied to claims 16-17 and 21-25 above, and further in view of Zeller (Zeller, E. et al. Patent application publication number US2004/0030200A1; cited in PTO-892 03/20/2023).
Regarding claims 26-29, while Vinson teaches the surfactant composition with branched sulfated alcohol, the reference fails to teach or suggest surfactant with branched alkoxylated alcohol or with branched sulfated alkoxylated alcohol. However, the deficiencies are cured by Zeller.
Zeller teaches branched surfactant composition that comprises functionalized alcohol mixture with alkoxylated alcohol, sulfated alcohol or alkoxylated followed by sulfated alcohol ([0156]).
In accordance to MPEP § 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) simple substitution of one known element for another to obtain predictable results applies. Vinson teaches a sulfated alcohol branched composition and Zeller teaches various examples of branched surfactant compositions, in which alkoxylated alcohol, sulfated alcohol or alkoxylated sulfated alcohol are among the listed. In both references, both obtain surfactant compositions, i.e. compositions with the same utility. Thus, a simple substitution of Vinson’s sulfated alcohol branched composition with Zeller’s alkoxylated alcohol or alkoxylated sulfated alcohol, a skilled artisan would have a reasonable expectation of success in obtaining nothing more than the predictable surfactant composition.
Regarding claims 28-29, it is noted that the limitation “producing according to the process of…” is a product by process claim languages as a result of the branched surfactant product. The product by process limitation is not limited to the manipulations of the recited steps for preparing the branched surfactant, but only to the structure implied by the steps, in this case, only to the branched surfactant. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final branched surfactant, the process steps are not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture").
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain branched surfactant composition of claims 26-29 in view of the combination of Vinson and Zeller.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. De Witt (De Witt, W. J. et al. Patent number US3,480,556; cited in PTO-892 03/20/2023) teaches a surfactant composition comprising
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R2 encompasses 2-methyl, 2-ethyl and 2-propyl.
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 16-17, 21-26 and 28 are provisionally rejected in a modified form (see underlined) on the ground of nonstatutory double patenting as being unpatentable over claims 6-13 of copending Application No. 17/827,754 in view of Vinson (Vinson, P. K. et al. Patent application publication number US2016/0068784A1; cited in PTO-892 03/20/2023).
NOTE: In view of the claim interpretation set forth above, the only limitation given weight in the claim is that the branched surfactant composition comprises C7-C37 with 2-methyl, 2-ethyl and 2-propyl in the alcohol side of the surfactant and wherein the branched surfactant composition from said mixture of alcohols having said 2- methyl branched alcohols has greater than 28 wt.% 2-methyl branching of the alcohols of the surfactants.
The claims at issue are both drawn to branched surfactant composition.
The copending claims recite that the surfactant compositions is obtained from C8-C36 branched alcohols with 2-methyl and 2-ethyl branching, wherein 2-methyl branching alcohol is at an amount of greater than 25%. Thus, a skilled artisan would have a reasonable expectation of success in obtaining a surfactant composition comprising 2-methyl and 2-ethyl branching and with 2-methyl branching of greater than 25%. Even if the surfactant composition in the copending claim obtains 2-methyl branching at an amount less than 25%, a prima facie case of obviousness exists absent any showing of criticality and unexpected results. See MPEP § 2144.05.
Regarding claims 16-17 and 24-25, it is noted that the limitation “produced by a process, comprising the steps of…” in claim 16 and all the process steps and/or elements in claims 17 and 24-25 that further limit the aforementioned limitation are product by process claim languages as a result of the branched surfactant product. The product by process limitation is not limited to the manipulations of the recited steps for preparing the branched surfactant, but only to the structure implied by the steps, in this case, only to the branched surfactant. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final branched surfactant, the process steps are not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.
The copending claims fail to recite that the branched surfactants comprise 2-propyl branching as instantly claimed. The deficiency is cured by Vinson.
Vinson teaches in Examples 3 and 6-10 C14/C15/C16 branched sulfate surfactant composition with 2-methyl, 2-ethyl and 2-propyl based on the alcohol composition they derive from (Tables 1-5).
In accordance to MPEP 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) Combining prior art elements according to known methods to yield predictable results.
Thus, combining the composition of the copending claims and the sulfate composition of Vinson, a skilled artisan has a reasonable expectation of success in arriving the instantly claimed composition that would yield nothing more than branched surfactant composition.
In view of the foregoing, it would have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain the branched surfactant composition as instantly claimed in view of the combination of the copending claims and Vinson.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Applicant’s arguments with respect to the newly added limitation have been addressed above in the newly applied 103 rejection and the modified nonstatutory double patenting rejection.
Conclusion
Claims 16-17 and 21-29 are rejected and no claims are allowed.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
