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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/24/2026 has been entered.
Status of the claims
Claim 2 was cancelled in previous communication. Claims 1 and 3-17 are pending, claims 9-17 are withdrawn.
Claims 1 and 3-8 are under current examination.
All rejections not reiterated have been withdrawn.
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.
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 1, and 3-8 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 1 recites “wt.” in line 7 in parentheses rendering the claim indefinite because it is unclear whether the limitations within the parentheses are part of the claimed invention. See MPEP § 2173.05(d).
Claims depending from rejected claims have also been rejected because they incorporate
all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness
concerns outlined above.
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, 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 1, 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer (US20140193324A1, Published 07/10/2014; cited in the IDS filed 09/27/2022) in view of Turganbay et al. (Eurasian ChemTech Journal 14 (2012) 313-319) further in view of Young (US3799884A, Published 03/26/1974).
Applicant’s Invention
The applicant’s claims are drawn to a method of producing a stable micronized sulphur, comprising the steps of: (a) determining, by empirical measurement the critical micelle concentration (CMC) of a surfactant in an aqueous dispersant solution which is representative of the aqueous dispersant solution used in step (b); (b) preparing the aqueous dispersant solution to include surfactant in a concentration below 1.5% (wt.) of the solution, and below the CMC determined in step (a); (c) heating the aqueous dispersant solution to form a heated dispersant solution; (d) preparing an emulsion of liquid molten sulphur by blending molten sulfur with the heated dispersant solution; and (e) solidifying the liquid sulphur emulsion to produce the stable micronized sulphur suspension, wherein the mean or median particle size of micronized sulphur in the suspension does not substantially increase over 24 hours, 2, 3, or 4 days
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Iyer teaches a method for the production of micronized sulphur powder (page 1, paragraph [0011]). Iyer also teaches the method comprises heating solid sulphur stock to a temperature above a melting point of sulphur such that the sulphur stock melts and forms liquid sulphur (page 1, paragraph [0012]), wherein the dispersant solution is aqueous (page 6, claim 1). Iyer further teaches preparing a dispersant solution in an open container by mixing a dispersant agent with solvent in selected proportions; pumping the dispersant solution through a pressurized heat exchanger to raise the temperature of the dispersant solution while containing same under pressure to maintain the dispersant solution in a liquid state, and pumping the dispersant solution from the heat exchanger to a pressurized blending chamber; pumping the liquid sulphur into the blending chamber and blending the liquid sulphur with the dispersant solution to form an emulsified sulphur suspension (paragraph [0013]). Iyer continues to teach in some embodiments a surfactant is effective for use as a dispersant agent (page 2, paragraph [0021]). Iyer also teaches it has been found that using Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % with a water solvent produces a satisfactory dispersant solution (page 5, paragraph [0062]). Iyer further teaches the finely dispersed and molten sulphur droplets in that emulsification will solidify, forming micron sized solid sulphur particles (page 2, paragraph [0023]). Iyer also teaches sulphur particles wherein the process can be performed to select for particles of a certain average size, for example particles of about 100 microns, or in some embodiments particles of about 30 microns or smaller (paragraph 0054]). Iyer further teaches on cooling of the emulsified sulphur suspension in this fashion, the finely dispersed molten sulphur droplets in that emulsification will solidify, forming micron sized solid sulphur particles. The cooled sulphur emulsion at this point would be very stable as well and could be stored in this form before further processing (paragraph [0048]). Therefore, a sulphur particle can be kept in suspension or used as a powder as the end product.
Regarding claim 3, Iyer teaches it will be understood that the ratio of dispersant agent used will be dependent upon the desired output of the process (e.g. desired average particle size) as well as the characteristics of the particular agent in question and that all such adjustments or modifications to the process are contemplated within the scope of the present invention (page 3, paragraph [0042]). Iyer also teaches it has been found that using Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % with a water solvent produces a satisfactory dispersant solution (page 5, paragraph [0062]).
Regarding claims 4 and 5, Iyer teaches in some embodiments a surfactant is effective for use as a dispersant agent, wherein Naphthalene Sulfonate (i.e., anionic surfactant) compounds such as in the trade product Morwet™ are used as a dispersant agent (page 2, paragraph [0021]) .
Regarding claim 6, Iyer teaches it has been found that using Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % with a water solvent produces a satisfactory dispersant solution (page 5, paragraph [0062]).
Regarding claim 8, Iyer teaches on cooling of the emulsified sulphur suspension in this fashion, the finely dispersed molten sulphur droplets in that emulsification will solidify, forming micron sized solid sulphur particles. The cooled sulphur emulsion at this point would be very stable as well and could be stored in this form before further processing with just mild mixing or agitation (page 5, paragraph [0048]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Iyer does not teach a step of empirically measuring the critical micelle concentration and the effect the critical micelle concentration has on particle size. However, this deficiency is cured by Turganbay et al and Young et al.
In the analogous art of agriculture, Turganbay teaches Sulfur nanoparticles, which can be used in agriculture as a fungicide treatment (abstract). Turganbay also teaches since getting the stable dispersed system largely depends on the size of the dispersed phase, it is appropriate to study the effect of concentration of surfactants on the particle size of sulfur (Fig. 3). The experimental results showed that with the increase of the surfactant concentration there is an increase the size of the sulfur particles. At the critical micelle concentration, there is a minimum value of particle size (page 315, last paragraph). Turganbay teaches in Fig. 1, the influence of the critical micelle concentration of surfactant on the surface tension using a tensiometer (i.e., determining the CMC of a surfactant) (beginning of page 315). The examiner points out that the instant specification in paragraph [0048] states that the CMC of a surfactant in solution may be quantified by empirically measuring surface tension.
Moreover, Young, in the analogous art of agricultural sulfur suspensions teaches, by adding the sulfur particles to an aqueous medium contained within the applicator storage vessel and pumping the resulting suspension in a closed circulation system through the pump of the applicator and back to the storage vessel, this comminutes the sulfur particles to the desired, finely subdivided state (column 2, lines 24-32); wherein the sulfur can be stored as the porous particulate sulfur and can be handled in either a dry state or as a suspension in water (column 2, lines 33-35). Young further teaches that it is preferred to incorporate a minor amount of a surfactant in the aqueous medium during, before, or after the comminution of the sulfur to stabilize the resulting suspension and reduce the frictional flow resistance of the suspension (column 2, lines 54-58), therefore, Young directs the artisan of ordinary skill to add a surfactant in order to provide stability to the suspension.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have prima facie obvious to one of ordinary skill in the art at the time of filing to optimize the quantity of surfactant by measuring the CMC in the solution which would determine particle size in Iyer’s dispersant solution comprising a surfactant. Iyer teaches that the amount of dispersant agent (i.e., surfactant) depends upon factors, for example the desired average particle size, wherein the surfactant is Naphthalene Sulfonate. Naphthalene sulfonate is also the same surfactant used in the instant specification. Iyer also teaches that using Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % with a water solvent produces a satisfactory dispersant solution. This range of the surfactant taught by Iyer narrowly embraces the concentrations that are used in the instant application. One would have understood in view of Turganbay that an increase in surfactant concentration increase the size of sulfur particles and at the critical micelle concentration, there is a minimum value of particle size. It would have been obvious to one of ordinary skill in the art to optimize the quantity of surfactant by measuring the CMC in the solution which would determine particle size in Iyer’s dispersant solution comprising a surfactant because Turganbay teaches that there is a relationship between surfactant concentration, critical micelle concentration, and particle size and Iyer also teaches that the amount of surfactant is optimizable depending on factors like desired particle size.
With regards to limitation requiring the surfactant concentration to be below the CMC of the surfactant, the Examiner points out that the preponderance of the evidence supports the conclusion that the surfactant of Iyer, which is Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight %, would be inherently have a concentration below the CMC of the surfactant because Iyer teaches the claimed surfactant at a concentration which can be below 1.5 weight % as Iyer teaches a range below 1.5% as well. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972). Absolute predictability is not a necessary prerequisite to a case of obviousness. Rather, a degree of predictability that one of ordinary skill would have found to be reasonable is sufficient. The Federal Circuit concluded that “[g]ood science and useful contributions do not necessarily result in patentability.” Id. at 1364, 83 USPQ2d at 1304. PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 83 USPQ2d 1289 (Fed. Cir. 2007). The Examiner also recognizes that not all the information concerning the surfactant in an aqueous medium is present such as pH, temperature, ionic strength, and presence of additives in the solution which can affect the CMC of the surfactant, however, in the alternative, this property of the surfactant having a concentration below the CMC of the surfactant would be obvious to optimize. Iyer teaches Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % which narrowly embraces the instantly claimed range of below 1.5% wt. Iyer also teaches the cooled sulphur emulsion at this point would be very stable as well and could be stored in this form before further processing (paragraph [0048]), therefore, Iyer teaches seeking stability of sulphur suspension and Young also directs the artisan of ordinary skill to seek stable suspensions by adding surfactant. Therefore, it would have been obvious to optimize with routine experimentation with the objective of reaching a stable suspension wherein the surfactant concentration is in the range of 0.5% to 1.5 % as taught by Iyer.
With regards to the limitation wherein the mean or median particle size of micronized sulphur in the suspension does not substantially increase over 24 hours, 2, 3, or 4 days, it would have been obvious to one of ordinary skill in the art to recognize this property as a result from the method steps. Iyer teaches that a surfactant is effective for use as a dispersant agent (page 2, paragraph [0021]). Iyer also teaches it has been found that using Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % with a water solvent produces a satisfactory dispersant solution (page 5, paragraph [0062]). Iyer also teaches the cooled sulphur emulsion at this point would be very stable as well and could be stored in this form before further processing (paragraph [0048]). Young further teaches that it is preferred to incorporate a minor amount of a surfactant in the aqueous medium during, before, or after the comminution of the sulfur to stabilize the resulting suspension and reduce the frictional flow resistance of the suspension (column 2, lines 54-58). It would have been obvious to one of ordinary skill in the art for the mean or median particle size of micronized sulphur in the suspension to not substantially increase over 24 hours, 2, 3, or 4 days in Iyer’s micronized sulphur suspension because Iyer teaches doing the active steps to produce the micronized sulphur suspension with the claimed surfactant and with the claimed concentration of surfactant in an aqueous dispersant solution as well as having a very stable sulphur emulsion which can be stored before further processing and Young teaches stabilizing the sulphur suspension by incorporating amounts of surfactants. Therefore, Iyer and Young directs the artisan of ordinary skill to add a surfactant in order to provide stability to the suspension, making this property a result from the method steps.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Iyer (US20140193324A1, Published 07/10/2014; cited in the IDS filed 09/27/2022) in view of Turganbay et al. (Eurasian ChemTech Journal 14 (2012) 313-319) further in view of Young (US3799884A, Published 03/26/1974) further in view of Kijlstra et al (US 20110071228 A1, Published 03/24/2011)
Applicant’s Invention
Iyer, Turganbay, and Young render obvious all the limitations of instant claim 1. Applicant’s claim 7 adds the limitation wherein the dispersant solution is made up with demineralized water.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 7, Iyer teaches blending the liquid sulphur and dispersant solution together to produce an emulsified sulphur suspension (page 1, paragraph [0012]), wherein the dispersant solution is aqueous (page 6, claim 1).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Iyer and Turganbay do not teach wherein the dispersant solution is made up with demineralized water. However, this deficiency is cured by Kijlstra et al.
In the analogous art of emulsions in agriculture, Kijlstra teaches the invention contain an aqueous anionic polymer dispersion (page 2, paragraph [0026]). Kijlstra also teaches the polymer dispersion is in demineralized water (page 12, claim 6).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have the dispersant solution be made up with demineralized water in Iyer’s dispersant solution. Iyer teaches the dispersant solution is aqueous (claim 1). One would have understood in view of Kijlstra that the demineralized water can be used in an aqueous dispersion. It would be obvious to one of ordinary skill in the art to have a dispersant solution be made up with demineralized water in Iyer’s dispersant solution because in view of Kijlstra, demineralized water can be used as a source of water in the dispersion. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 06/24/26 have been fully considered but they are not persuasive.
On pages 4-5 of Applicants remarks, Applicants argue that the CMC dynamically varies and is not a fixed value. For example, the CMC of a surfactant varies based on a number of factors including pH, temperature, ionic strength, ion type and presence of additives in the solution with the surfactant, therefore the value of the CMC needs to be measured empirically on a case by case basis. Applicants also argues that Applicants have appreciated an unexpected result in apply surfactant below the CMC, in the context of the claimed process. This ensures long term stability, such that a mean or median particle size “does not substantially increase over 24 hours, 2, 3, or 4 days,” as claimed. Applicants continue to argue that Turganbay expressly identifies that adding surfactant at the CMC results in desirable minimum particle size, which therefore, teaches away from the claimed requirement of operating below the CMC. Lastly, Applicants argue that Iyer does not specifically direct itself to appreciating that surfactants applied below an empirically measured CMC act to prevent solubilization of sulphur particles in the suspension over elongated periods.
These arguments are not persuasive. The Examiner reiterates that the prior art Iyer teaches the active method steps of the claimed invention such as preparing an emulsion of liquid sulphur in the aqueous dispersant solution and solidifying the liquid sulphur emulsion to produce the micronized sulphur suspension as recited in the rejection above, but does not specifically teach the step of determining the critical micelle concentration of a surfactant in an aqueous dispersant solution. Iyer teaches that a surfactant is effective for use as a dispersant agent (page 2, paragraph [0021]). Iyer also teaches it has been found that using Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % with a water solvent produces a satisfactory dispersant solution (page 5, paragraph [0062]). With regards to Applicants arguments that the Iyer does not explicitly state the step of determining the critical micelle concentration of a surfactant, the Examiner points out that in this one case, the preponderance of the evidence supports the conclusion that the surfactant of Iyer which is Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % would be inherently have a concentration below the CMC of the surfactant because Iyer teaches the claimed surfactant at a concentration which can be below 1.5 weight % as Iyer teaches a range below 1.5% as well. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972). Absolute predictability is not a necessary prerequisite to a case of obviousness. Rather, a degree of predictability that one of ordinary skill would have found to be reasonable is sufficient. The Federal Circuit concluded that “[g]ood science and useful contributions do not necessarily result in patentability.” Id. at 1364, 83 USPQ2d at 1304. PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 83 USPQ2d 1289 (Fed. Cir. 2007). The Examiner also recognizes that not all the information concerning the surfactant in an aqueous medium is present such as pH, temperature, ionic strength, and presence of additives in the solution which can affect the CMC of the surfactant, however, in the alternative, this property of the surfactant having a concentration below the CMC of the surfactant would be obvious to optimize. Iyer teaches Morwet™ D-425 (i.e., surfactant) at about 0.5 to 1.5 weight % which narrowly embraces the instantly claimed range of below 1.5% wt. Iyer also teaches the cooled sulphur emulsion at this point would be very stable as well and could be stored in this form before further processing (paragraph [0048]), therefore, Iyer teaches seeking stability of sulphur suspension. Therefore, it would have been obvious to optimize with routine experimentation with the objective of reaching a stable suspension wherein the surfactant concentration is in the range of 0.5% to 1.5 % as taught by Iyer. The Examiner points out that Applicants have not shown that the critical micelle concentration of the surfactant in Iyer is not inherent but only arguing that one couldn’t know and must be determined. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003).
Insomuch as this may be an assertion of unexpected results, please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims. In the instant case, the data of record is not commensurate in scope with instant claims. The instant claims recite “determining, by empirical measurement, the critical micelle concentration of a surfactant in an aqueous dispersant solution”. Therefore, any surfactant can be used, whereas the data in the instant specification is only directed to Morwet and Triton X-405. The Examiner points to Madhu (Difference between Dispersant and Surfactant, Published August 23, 2018) which teaches that a dispersant is a form of surfactant. But all surfactants are not dispersants. A surfactant can act as a detergent, wetting agent, emulsifier, foaming agent apart from acting as a dispersant (Abstract, second paragraph). Therefore, the identity of the surfactant is important as not all surfactants can be used as dispersants as taught by Madhu. The Examiner also points out that the need to determine by empirical measurement of the CMC of the surfactant also supports the position that not necessarily that all surfactants will behave the same. The Applicants also argued that the presence of additives in the solution with the surfactant impact the CMC of a surfactant, whereas the examiner points out that the record does not establish that the stability observed in figure 2, for one particular solution would also extend across the scope of all aqueous solutions. The Examiner further points out that it is not clear whether all surfactants below their critical micelle concentration would ensure long term stability, such that a mean or median particle size “does not substantially increase over 24 hours, 2, 3, or 4 days,” as claimed. For these reasons, the data is not commensurate in scope of the claims. Therefore, no conclusions as to the unexpectedness of the data can be drawn.
In response to applicant's argument that Turganbay expressly identifies that adding surfactant at the CMC results in desirable minimum particle size, which therefore, teaches away from the claimed requirement of operating below the CMC, the examiner points out that Turganbay also teaches since getting the stable dispersed system largely depends on the size of the dispersed phase, it is appropriate to study the effect of concentration of surfactants on the particle size of sulfur (Fig. 3). The experimental results showed that with the increase of the surfactant concentration there is an increase the size of the sulfur particles. At the critical micelle concentration, there is a minimum value of particle size (page 315, last paragraph). Therefore, the very narrow range taught by Iyer would lead to the most stable concentration because Turganbay teaches that concentration affects stability. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2123(II).
With regards to Applicants argument that Iyer does not specifically direct itself to appreciating that surfactants applied below an empirically measured CMC act to prevent solubilization of sulphur particles in the suspension over elongated periods as claimed, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The Examiner points out that Iyer teaches the same claimed surfactant and the narrow concentration range of the surfactant present in the aqueous dispersant solution and Iyer also teaches the cooled sulphur emulsion at this point would be very stable as well and could be stored in this form before further processing (paragraph [0048]), therefore, Iyer teaches seeking stability of sulphur suspension. Therefore, the micronized sulphur suspension of Iyer, wherein the average particle size does not increase over elongated periods of time is a property of Iyer’s suspension, it would have been obvious to one of ordinary skill in the art to recognize this property as a result from the method steps because Iyer teaches doing the active steps to produce the micronized sulphur suspension, and also seeks stability of the sulphur suspension.
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, 3-6 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. US9278858B2 in view of Turganbay et al. (Eurasian ChemTech Journal 14 (2012) 313-319) as evidenced by as evidenced by Young (US3799884A, Published 03/26/1974).
The ‘858 patent embraces A method for the production of micronized sulphur particles, the method comprising: (a) producing an emulsion of liquid sulphur in an aqueous dispersant solution above a melting point of sulphur, wherein dispersant is present at between about 1 and about 100 parts per thousand of the dispersant solution; (b) cooling the sulphur emulsion to a temperature below the melting point of sulphur to solidify sulphur particles. The ‘858 patent also embraces wherein the dispersant comprises a naphthalene sulfonate compound (i.e., anionic surfactant) and is present at 0.5% to 1.5% by weight. The ‘858 further embraces further steps of drying the sulphur particles, and mixing the sulphur particles with ingredients to form dispersible micronized sulphur pellets. As evidenced by Young, by adding the sulfur particles to an aqueous medium contained within the applicator storage vessel and pumping the resulting suspension in a closed circulation system through the pump of the applicator and back to the storage vessel, this comminutes the sulfur particles to the desired, finely subdivided state (column 2, lines 24-32); wherein the sulfur can be stored as the porous particulate sulfur and can be handled in either a dry state or as a suspension in water (column 2, lines 33-35). Young further teaches that it is preferred to incorporate a minor amount of a surfactant in the aqueous medium during, before, or after the comminution of the sulfur to stabilize the resulting suspension and reduce the frictional flow resistance of the suspension (column 2, lines 54-58). Therefore, a sulphur particle can be kept in suspension or used as a powder as the end product.
The ‘858 patent does not teach the critical micelle concentration and the effect the critical micelle concentration has on particle size. However, Turganbay teaches Sulfur nanoparticles, which can be used in agriculture as a fungicide treatment (abstract). Turganbay also teaches Since getting the stable dispersed system largely depends on the size of the dispersed phase, it is appropriate to study the effect of concentration of surfactants on the particle size of sulfur (Fig. 3). The experimental results showed that with the increase of the surfactant concentration there is an increase the size of the sulfur particles. At the critical micelle concentration, there is a minimum value of particle size (page 315, last paragraph). Turganbay teaches in Fig. 1, the influence of the critical micelle concentration of surfactant on the surface tension using a tensiometer (i.e., determining the CMC of a surfactant ) (beginning of page 315). The examiner points out that the instant specification in paragraph [0048] states that the CMC of a surfactant in solution may be quantified by empirically measuring surface tension. It would have been obvious to one of ordinary skill in the art to optimize the quantity of surfactant by measuring the CMC in the solution which would determine particle size in ‘858 patent’s dispersant solution comprising a surfactant because Turganbay teaches that there is a relationship between surfactant concentration, critical micelle concentration, and particle size.
With regards to the limitation wherein the mean or median particle size of micronized sulphur in the suspension does not substantially increase over 24 hours, 2, 3, or 4 days, it would have been obvious to one of ordinary skill in the art to recognize this property as a result from the method steps. ‘858 patent teaches the dispersant comprises a naphthalene sulfonate compound (i.e., anionic surfactant) and is present at 0.5% to 1.5% by weight. The ‘858 further embraces further steps of drying the sulphur particles, and mixing the sulphur particles with ingredients to form dispersible micronized sulphur pellets. It would have been obvious to one of ordinary skill in the art for the mean or median particle size of micronized sulphur in the suspension to not substantially increase over 24 hours, 2, 3, or 4 days in Iyer’s micronized sulphur suspension because Iyer teaches doing the active steps to produce the micronized sulphur suspension with the claimed surfactant and with the claimed concentration of surfactant in an aqueous dispersant solution, therefore, this property is a result from the method steps.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. US9278858B2 in view of Turganbay et al. (Eurasian ChemTech Journal 14 (2012) 313-319) as applied to claims 1, 3-6 and 8 above in further view of Kijlstra et al (US 20110071228 A1, Published 03/24/2011).
The relevant limitations of the ‘858 patent and Turganbay are set forth above.
The ‘858 patent does not teach wherein the dispersant solution is made up with demineralized water. However, Kijlstra teaches the invention contain an aqueous anionic polymer dispersion (page 2, paragraph [0026]). Kijlstra also teaches the polymer dispersion is in demineralized water (page 12, claim 6). It would be obvious to one of ordinary skill in the art to have a dispersant solution be made up with demineralized water in ‘858 patent’s dispersant solution because in view of Kijlstra, demineralized water can be used as a source of water in the dispersion. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 06/24/2026 with regards to the nonstatutory double patenting rejection have been fully considered but they are not persuasive.
On page 6 of Applicants remarks, Applicants argue that in view of the above submitted arguments Applicants maintains that the present claimed subject matter is not obvious over the claims of the ‘858 patent in view of Turganbay as evidenced by Young.
The Examiner’s response to the arguments concerning the 103 rejection addressed above applies to the arguments concerning the nonstatutory double patenting rejection.
The examiner points out that there is no evidence from Applicants that the 858 patent’s composition would not be stable. The examiner further points out that ‘858 patent teaches the same claimed surfactant and the same concentration of the surfactant present in the aqueous dispersant solution, therefore, the micronized sulphur suspension of ‘858 patent, therefore, ‘858 patent’s suspension that was formed must be stable. “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. See MPEP 2112.01 (II).
See MPEP 2143.01(I): The disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention. In In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004), the claims of a utility patent application were directed to a shoe sole with increased traction having hexagonal projections in a "facing orientation." 391 F.3d at 1196-97, 73 USPQ2d at 1142. The Board combined a design patent having hexagonal projections in a facing orientation with a utility patent having other limitations of the independent claim. 391 F.3d at 1199, 73 USPQ2d at 1144. Applicant argued that the combination was improper because (1) the prior art did not suggest having the hexagonal projections in a facing (as opposed to a "pointing") orientation was the "most desirable" configuration for the projections, and (2) the prior art "taught away" by showing desirability of the "pointing orientation." 391 F.3d at 1200-01, 73 USPQ2d at 1145-46. The court stated that "the prior art' s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." Id. In affirming the Board' s obviousness rejection, the court held that the prior art as a whole suggested the desirability of the combination of shoe sole limitations claimed, thus providing a motivation to combine, which need not be supported by a finding that the prior art suggested that the combination claimed by the applicant was the preferred, or most desirable combination over the other alternatives. Id. See also In re Urbanski, 809 F.3d 1237, 1244, 117 USPQ2d 1499, 1504 (Fed. Cir. 2016).
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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, Ali Soroush can be reached on (571) 272-9925. 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.
AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
Prosecution Insights