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 .
Status of the Claims
The amendment filed on 10/22/2025 has been entered. Claim 26 has been amended and thus claims 26-41 are currently pending and are under examination.
Maintained Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 26-27 and 30-41 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Langston (Langston, J. A. et al. Patent application publication number US2012/0302477A1; cited in Office Action 03/29/2024). The rejection has been set forth in the Office Action 10/07/2024 and is reiterated herein.
Regarding claim 26, Langston teaches alkyl methacrylate composition (L125MA) comprising linear and branched residues with 2-methyl and 2-ethyl branching ([0010]-[0117]):
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It is noted that the limitation “produced as a product of a process comprising…” in claim 26 is a product by process claim language as a result of the product ester composition. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product ester composition, but only to the structure implied by the steps, in this case, only to the ester composition. 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, "[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."
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final composition, 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.
Accordingly, claims 30-32 that further limit the product by process limitation are also not given patentable weight.
Regarding claim 27, the alkyl methacrylates of Langston are mono-esters.
Regarding claim 33, Langston teaches that L125MA comprising alkyl methacrylates is used as lubricant oil composition ([0134]).
Regarding claims 34-41, the reference is silent about the ester composition being a plasticizer component, solvent component, coating component, ink component, cleaner component, binder component, paint stripper component or oilfield component. However, the aforementioned limitations are functional limitations reciting the purpose or intended use of the ester composition and do not impart a structural difference between the claimed composition and that of prior art. Accordingly, the intended use of the of claims 34-41 is of no significance to the structure of the ester composition and thus the recitation with respect to the manner in which a claimed ester composition is intended to be employed does not differentiate the claimed ester composition from that of prior art Langston.
Response to Arguments
Applicant argues that Langston fails to disclose or suggest claim 26 as amended. Applicant argues that the reference discloses a composition having 2-methyl branching of about 14 %, whereas instant claim 26 recites greater than 25 wt.% 2-methyl branched alcohols which is at least 78% greater than Langston's disclosed composition of 2-methyl branching. Applicant thus argues that because Langston does not disclose, teach or suggest Applicant's reactant, the reference cannot achieve Applicant's claimed
product ester composition by reacting the reference’s reactant composition with a mixture of compounds having one or more carboxylic acid functions.
The examiner disagrees. Claim 26 is amended in the product by process claim limitation and the examiner maintains that the product by process claim limitation is not given patentable weight as the instant claims are drawn to composition. Hence, the wt % of each 2-methyl and 2-ethyl branched alcohols that are recited in this product by process claim limitation are not given patentable weight. Applicant fails to address the points made by the examiner that reiterated and emphasized herein. Even though the reactant alcohols of the claimed invention comprises specific weight percent of each linear and branched, 2-methyl and 2-ethyl-, alcohols, there is no evidence that such reactant produces esters having the same weight percent of each linear and branched as the alcohol reactants by following the reaction steps as claimed. Neither the claims nor the specification indicates that the ester composition produced by reacting the claimed mixture of C10-C36 alcohols comprise the same wt% of the linear, 2-methyl and 2-ethyl as the claimed alcohols. Hence, any composition, as long as it comprises carboxyl esters of C10-C36 alcohols with linear esters, 2-methyl branched esters and 2-ethyl branched esters, such as Langston’s composition, would anticipate the instant claims.
In view of the foregoing, the claimed invention, even after amendment, remains being anticipated by Langston.
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.
Claim(s) 26 and 28-41 stand rejected under 35 U.S.C. 103 as being unpatentable over JP2014015527A (JP’527; original and machine translation cited in PTO-892 04/22/2025).
Regarding claims 26 and 28-29, JP’527 teaches a composition comprising phthalic diester of formula (1)
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wherein R1 and R2 may be the same or different and each represents a linear or branched alkyl group having 4 to 12 alkyl groups ([0029]).
Examples of the alkyl group include linear alkyl groups such as n-butyl, n-pentyl, n-hexyl, n-heptyl, n-octyl, n-nonyl, n-decyl, n-undecyl, and n-dodedecyl groups; branched alkyl groups having 4 carbon atoms such as 2-methyl-1-propyl, 2-butatyl, and 2-methyl-2-propyl groups; branched alkyl groups having 5 carbon atoms such as 3-methyl-1-butyl, 2-pentanol, 3-pentyl, 2-methyl-1-butyl, 2-methyl-2-butyl, 3-methyl-2-butyl, and 2,2-dimethyl-1-propyl groups; and 4-methyl- Branched chain alkyl groups having 6 carbon atoms, such as 1-pentyl, 2-hexyl, 3-hexyl, 2-methyl-1-pentyl, and 2-ethyl-1-butyl groups; branched chain alkyl groups having 7 carbon atoms, such as 5-methyl-1-hexyl, 2-heptyl, 3-heptyl, 4-heptyl, 2-methyl-1-hexyl, 2-methyl-3-hexyl, and 2-ethyl-1-pentyl groups; branched chain alkyl groups having 8 carbon atoms, such as 6-methyl-1-heptyl, 2-octyl, 3-octyl, 2-methyl-1-heptyl, and 2-ethyl-1-hexyl groups; and 7-methyl-1-octyl groups. branched alkyl groups having 9 carbon atoms, such as 2-nonyl, 3-nonyl, 2-methyl-1-octyl, 3-methyl-1-octyl, 4-methyl-1-octyl, 5-methyl-1-octyl, 6-methyl-1-octyl, 2-ethyl-1-heptyl, 2,4-dimethyl-1-heptyl, 2,5-dimethyl-1-heptyl, 4,6-dimethyl-1-heptyl, 2,6-dimethyl-4-heptyl, 3,5,5-trimethyl-1-hexyl, and 2,5,5-trimethyl-1-hexyl; 8-methyl-1-nonyl, 2-decyl, and 3-decyl groups ([0030]).
The reference further teaches that examples of branched alkyl groups having 10 carbon atoms include 2-methyl-1-nonyl group, 2-ethyl-1-octyl group, 2-propyl-1-heptyl group, 2,7-dimethyl-1-octyl group, 2,6-dimethyl-2-octyl group, 2,4-dimethyl-1-octyl group, 3,7-dimethyl-1-octyl group, 3,6-dimethyl-3-octyl group, 4-methyl-2-propyl-1-hexyl group, 5-methyl-2-propyl-1-hexyl group, 2-(1-methylethyl)-4-methyl-1-hexyl group, and 2-(1-methylethyl)-5-methyl-1-hexyl group ([0030]).
The difference between JP’527 and the instant claim is that the instant claim is drawn to a composition comprising carboxyl esters with C10-C36 linear, C10-C36 2-methyl and C10-C36 2-ethyl on the alcohol side of the carboxyl esters whereas JP’527 teaches a composition comprising phthalic esters with a number of linear and branched alkyl groups on the alcohol side, including C10-C11 that are linear, 2-methyl branched and 2-ethyl branched as claimed. However, a skilled artisan would have had reason to try the limited number of linear and branched alkyl groups of JP’527 with a reasonable expectation of success that at least one would work.
MPEP § 2143 states that 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. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
JP’527 teaches that the composition comprising the phthalic diester of formula (1) is used as a lubricant. As such, blending any linear and branched diester, including the alkyls with C10-C11 linear, 2-methyl and 2-ethyl, a skilled artisan has a reasonable expectation of success in arriving at a composition having a lubricant characteristic.
It is noted that the limitation “produced as a product of a process comprising the steps of…” in claim 26 is a product by process claim language as a result of the product ester composition. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product ester composition, but only to the structure implied by the steps, in this case, only to the ester composition. 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, "[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."
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final composition, 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.
Accordingly, claims 30-32 that further limit the product by process limitation are also not given patentable weight.
Regarding claim 33, as already indicated above, JP’527 teaches use of the diester composition in as lubricant.
Regarding claims 34-41, the reference is silent about the ester composition being a plasticizer component, a solvent component, a coating component, and ink component, a cleaner component, binder component, paint stripper component or oilfield component. However, the aforementioned limitations are functional limitations reciting the purpose or intended use of the ester composition and do not impart a structural difference between the claimed composition and that of prior art. Accordingly, the intended use of the of claims 34-41 is of no significance to the structure of the ester composition and thus the recitation with respect to the manner in which a claimed ester composition is intended to be employed does not differentiate the claimed ester composition from that of JP’527.
It would thus have been prima facie obvious to a skilled artisan before the effective to obtain a composition comprising carboxyl ester as instantly claimed in view of the teachings of JP’527.
Response to Arguments
Applicant argues
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The examiner disagrees as JP’527 has been described as teaching the product ester composition that comprises linear and branched, 2-methyl and 2-ethyl, diesters. The examiner maintains as above that the reaction steps recited in claim 26 is product by process claim language that is not given patentable weight. Furthermore, the examiner reiterates herein that there is no evidence that by following the reaction steps as claimed using reactants with the specific weight percent of each linear and branched, 2-methyl and 2-ethyl-, alcohols produces esters having the same weight percent of each linear and branched as the alcohol reactants. Neither the claims nor the specification indicates that the ester composition produced comprise the same wt% of the linear, 2-methyl and 2-ethyl as the claimed alcohols. Hence, any composition, as long as it comprises carboxyl esters of C10-C36 alcohols with linear esters, 2-methyl branched esters and 2-ethyl branched esters, such as the composition of JP’527, would read on the instant claims.
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 26-41 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-20 of copending Application No. 18/266,039 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are drawn to a composition comprising linear, 2-methyl and 2-ethyl on the alcohol side of the esters.
The difference between the instant composition and copending claims is that the instant composition recites that the esters are obtained from C10-C36 alcohols and carboxylic acids, whereas the copending claims recite that the esters are obtained from C8-C36 alcohols and carboxylic acids. The instant carbon numbers lie inside that of the copending claims, and in view of MPEP § 2144.04, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
It is noted that the limitation “produced as a product of a process comprising the steps of…” in claim 26 is a product by process claim language as a result of the product ester composition. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product ester composition, but only to the structure implied by the steps, in this case, only to the ester composition. 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, "[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."
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final composition, 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.
Accordingly, claims 30-32 that further limit the product by process limitation are also not given patentable weight.
Regarding claims 33-41, the copending claims are silent about the ester composition being a lubricant component, a plasticizer component, a solvent component, a coating component, and ink component, a cleaner component, binder component, paint stripper component or oilfield component. However, the aforementioned limitations are functional limitations reciting the purpose or intended use of the ester composition and do not impart a structural difference between the claimed composition and that of prior art. Accordingly, the intended use of the of claims 34-41 is of no significance to the structure of the ester composition and thus the recitation with respect to the manner in which a claimed ester composition is intended to be employed does not differentiate the claimed ester composition from that of the copending claims.
It would thus have been prima facie obvious to a skilled artisan before the effective to obtain a composition comprising carboxyl ester as instantly claimed in view of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 26-41 stand rejected and no claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692