DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 31, 2026 has been entered.
Response to Amendment
Amendments to the claims should be indicated with markings to show the changes that have been made relative to the immediate prior version. Strike-through of words should be used to show deleted matter and underlining should be used to show added matter (see MPEP 714). The examiner notes that the claims filed May 31, 2026 have been amended from the claims filed October 20, 2025 with no marking indications of what the amendments are.
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 7, 11, 12, and 16 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.
Regarding claim 7: Claim 7 is unclear since it is dependent on cancelled claim 5. For the purpose of further examination, it is taken to be dependent on claim 1.
Regarding claim 11: Claim 11 recites the limitation "or alkoxylated polyamine" in the third line. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 12: Claim 12 recites the limitation "or alkoxylated polyamine" in the second and third lines. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 16: The word “imineaccording” should be “imine according”. Further, there is insufficient antecedent basis for the limitation “or of the polyamine backbone” in lines 2 and 3.
Response to Arguments
Applicant's arguments filed May 31, 2026 have been fully considered but they are not persuasive.
A) Applicant’s argument that Cleary et al. does not teach the butylene oxide units in the claims nor in the working examples is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiment. 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 (see MPEP 2123).
B) Applicants argue that a person having ordinary skill in the art would be able to tell the polymer structure of the examples disclosed in the instant specification since they are prepared by stepwise synthesis, specifying the sequence and amounts of alkylene oxides employed. While this argument is persuasive regarding the E moiety of the structure, it does not appear to address what the values of y and z are in the structure. The results found in table 2 in the specification do appear to show that example 1 and example 2, which have ethylene oxide reacted first before butylene oxide, have better results than the polyethylene imine of comparative example 3, which has butylene oxide reacted first and then ethylene oxide, which is comparable to what is taught by the prior art. However, example 1 teaches the E moiety where m is 24 and n is 4, while example 2 teaches the E moiety where m is 24 and n is 6. In comparative example 3, the blocks are in the opposite order and there are 4 blocks butylene oxide followed by 24 blocks of ethylene oxide. Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). In this case, only results from the lower end of the range of m and n are shown and it is unknown if at the higher end of the range of m and n, ethylene oxide blocks first before butylene oxide blocks would also have the same unexpected properties. Therefore, unexpected results are not present over the entire claimed range.
C) Applicant’s argument that the backbone structure of Cleary et al. is different than claimed since with the claimed ranges of y and z, there is a minimum of 12 nitrogen atoms while in Cleary et al., there is a minimum of 13 nitrogen atoms, is not persuasive. The range of nitrogen atoms of the prior art substantially overlaps the range of nitrogen atoms in the claims. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I).
D) In response to applicant's arguments against the references individually, i.e. Kirkpatrick, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
E) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, at the time of the invention a person having ordinary skill in the art would have found it obvious to react the ethylene oxide units first and then the butylene oxide units as in Kirkpatrick et al. and would have been motivated to do so since Kirkpatrick et al. teaches this sequential addition gives reproducible results and that one skilled in the art can change the order of the steps depending on the type of composition desired (col. 3 lines 10-25). The fact that Cleary et al. and Kirkpatrick et al. have different molecular weights of the desired polymer does not change the chemistry of the side chain reactions at issue since the functional groups are the same in each case.
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.
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, 12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cleary et al. (U.S. Pat. 6,127,331) in view of Kirkpatrick et al. (U.S. Pat. 3,152,188).
Regarding claim 1: Cleary et al. teaches an alkoxylated polyalkylene imine (title) of the general formula (I) (abstract) where R is ethylene (col. 4 line 26), B represents a continuation of the chain structure by branching (col. 3 lines 15-20), x and y (which correspond to the claimed y and z, respectively) are about 4 to 200 (col. 2 lines 15-20), which overlaps the claimed range. The moiety E is
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(col. 2 lines 10-15), where R1 can be 1,2-butylene, R2 is ethylene and R3 is hydrogen (col. 3 lines 40-45). The variable m (which is the claimed n) is 1-10 and n (which is the claimed m) is 10-40 (col. 4 lines 5-10).
This alkoxylated polyalkylene imine is different than the claimed structure in that the butylene oxide units are directly bonded to the nitrogen followed by the ethylene oxide groups, whereas in the claim, the ethylene oxide groups are bonded to the nitrogen followed by the butylene oxide groups. However, Kirkpatrick et al. teaches a similar alkoxylated polyalkylene imine where the ethylene oxide is first reacted to the amine followed by the butylene oxide (example I). Cleary et al. and Kirkpatrick et al. are analogous art since they are both concerned with the same field of endeavor, namely alkoxylated polyalkylene imine resins that have been alkoxylated with ethylene and butylene. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to react the ethylene oxide units first and then the butylene oxide units as in Kirkpatrick et al. and would have been motivated to do so since Kirkpatrick et al. teaches this sequential addition gives reproducible results and that one skilled in the art can change the order of the steps depending on the type of composition desired (col. 3 lines 10-25).
Regarding claim 12: Cleary et al. teaches the polymer can be used for laundry detergent (col. 1 lines 5-10), which can remove oil (col. 1 lines 10-15). Crude oil is a type of oil.
Regarding claim 16: Cleary et al. teaches the molecular weight for the polyamine backbone is 600-25,000 g/mol (col. 4 lines 16-20), which overlaps the claimed range.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cleary et al. (U.S. Pat. 6,127,331) in view of Kirkpatrick et al. (U.S. Pat. 3,152,188) as applied to the claims set forth above and in view of Ebert et al. (US 2016/0222160).
Regarding claim 11: Cleary et al. teaches the basic claimed alkoxylated polyalkylene imine as set forth above. Not disclosed is the quaternization of the nitrogen atoms. However, Ebert et al. teaches a similar alkoxylated polyalkyleneimine that has been quaternized, up to 100%, in particular 10-95% (para. 71). Cleary et al. and Ebert et al. are analogous art since they are both concerned with the same field of endeavor, namely alkoxylated polyalkylene imines. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to quaternize the nitrogen atoms in Cleary et al. as in Ebert et al. and would have been motivated to do so since Ebert et al. teaches quaternization achieves better compatibility and phase stability (para. 72).
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Cleary et al. is the closest prior art. However, there are unexpected results shown in the specification at the when the ethylene oxide block is attached to the nitrogen atom before the butylene oxide block when m is around 24 and when n is around 4-6. Since the prior art did not recognize the criticality of the order of blocks of the E moiety, there is no teaching or suggestion in the prior art for the polymer claimed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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