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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 112
Claims 11, 12, 14, 17, 19, 21, 24, and 26-30 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.
Claims 11 and 12 recite “wherein the alcohol alkoxylate has an average particle size less than 45 μm”. In view of the specification, it is unclear what the particle size corresponds to (the particle size of alkoxylate in isolation, the particle size of alkoxylate within the provided composition of i) or the particle size of alkoxylate after contact with aqueous foam/material in ii)) or how it is measured. Pages 4-5 of the specification indicate the alkoxylates have a particle size of less than 45 microns in order to improve the dispersibility of the defoamer/antifoams in aqueous feeds, suggesting either the defoamers themselves have the particle size or the particle size pertains to compositions at step i). However, experiment 9 at Page 13 compares the particle size to other known conventional defoamers such as Basopur DF 5, of which Basopur DF 5 is known to be liquid (see BASF (Basopur DF 5 SDS)), potentially suggesting the particle sizes at issue are not those of the composition at step i), but rather what is obtained after mixing in step ii). Should the particle size pertain to alkoxylate particle sizes within a medium, it is unclear under what conditions (shear, temperature) the particle size is measured. In view of this, it is concluded the scope of the claim is indefinite.
As claims 14, 17, 19, 21, 24, and 26-30 depend from either claim 11 or 12, they are rejected for the same reasons discussed above.
Claim Rejections - 35 USC § 103
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poschmann (DE2532888 A1). As the cited DE publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claim 31, Poschmann teaches methods of using alkoxylated fatty alcohols for the purpose of foam suppression in aqueous papermaking mixtures (Page 1; Examples). Poschmann teaches embodiments where alkoxylated fatty alcohol is either added to aqueous mixture to prevent foaming (i.e. as an antifoam) (Example 2) and embodiments where ethoxylated fatty alcohol is added to an already foamed aqueous mixture to eliminate a foam (i.e. as a defoamer) (Example 3). Additional emulsifiers are not used in conjunction with the alkoxylates.
To the extent Poschmann differs from the subject matter claimed by a particular antifoam/defoamer corresponding with Formula [I] of claim 31, Poschmann teaches alkoxylated fatty acids whereby the fatty acid is a linear alkyl group of 12-30 carbon atoms, propylene oxide is present at 5-60 mol per mol of alcohol, and ethylene oxide is present at 0.5-20 mol per mol of alcohol, whereby propylene oxide is reacted first followed by ethylene oxide (Page 2). Accordingly, Poschmann suggests overlapping ranges with respect to R/m/n. The PO and EO ranges taught by Poschmann infers PO to EO ratios that overlap what is claimed (5 / 20 = 0.25 / 1; 60 / 0.5 = 120 / 1). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Poschmann suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Poschmann. See MPEP 2123.
Claim(s) 11, 12, 14, 17, 21, 24, and 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poschmann (DE2532888 A1) in view of Hilberer (Encyclopedia of Polymer Science and Technology). As the cited DE publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 11, 12, 14, 21, 27, and 28, Poschmann teaches methods of using alkoxylated fatty alcohols for the purpose of foam suppression in aqueous papermaking mixtures (Page 1; Examples). Poschmann teaches embodiments where alkoxylated fatty alcohol is either added to aqueous mixture to prevent foaming (i.e. as an antifoam) (Example 2) and embodiments where ethoxylated fatty alcohol is added to an already foamed aqueous mixture to eliminate a foam (i.e. as a defoamer) (Example 3). Additional emulsifiers are not used in conjunction with the alkoxylates.
To the extent Poschmann differs from the subject matter claimed by a particular antifoam/defoamer corresponding with Formula [I] of claims 11 and 12, Poschmann teaches alkoxylated fatty acids whereby the fatty acid is a linear alkyl group of 12-30 carbon atoms, propylene oxide is present at 5-60 mol per mol of alcohol, and ethylene oxide is present at 0.5-20 mol per mol of alcohol, whereby propylene oxide is reacted first followed by ethylene oxide (Page 2). Accordingly, Poschmann suggests overlapping ranges with respect to R/m/n. The PO and EO ranges taught by Poschmann infers PO to EO ratios that overlap what is claimed (5 / 20 = 0.25 / 1; 60 / 0.5 = 120 / 1). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Poschmann suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Poschmann. See MPEP 2123.
Poschmann differs from the subject matter claimed in that a particular particle size is not disclosed. Hilberer teaches polyoxyalkylene derivatives are known amphiphilic antifoam/defoamer substrates (Page 5) and indicates it is common within the art to predisperse antifoam on a carrier to provide an easy-to-handle, readily dispersible system for delivering active antifoam components to the foaming system (Page 6). Hilberer teaches for aqueous foaming applications, water being used as a carrier fluid such that the antifoam is used as an oil-in-water emulsion, is a preferred type of antifoam formulation due to concern over unrecovered solvents (Page 6). Hilberer teaches the optimal particle size of antifoam droplets depends on the foaming system but generally ranges from 5-30 microns for the purpose achieving lower dosages and higher antifoam efficiency (Page 7). It would have been obvious to one of ordinary skill in the art to formulate Poschmann’s defoamer/antifoam mixtures as oil-in-water emulsions with a particle size of 5-30 microns because doing so would provide an easy-to-hand, readily dispersible mixture for delivering the composition with high efficiency as taught by Hilberer.
Regarding Claims 17 and 24, Poschmann teaches concentrations such as 0.05 wt% or 0.02 wt% of alkoxylated alcohol (Examples 3 and 4), equivalent to roughly 500 ppm and 200 ppm respectively.
Regarding Claims 29 and 30, Hilberer teaches the optimal particle size of antifoam droplets depends on the foaming system but generally ranges from 5-30 microns for the purpose achieving lower dosages and higher antifoam efficiency (Page 7). While less than 4 microns is outside the range described, Hilberer makes clear the range is only “generally” and the optimal particle size used depends on the foaming system for achieving low dosage and antifoam efficiency. Thus, Hilberer indicates the particle size used is a result effective variable because changing it would will clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the discover workable or optimal particle sizes within the scope of the present claims so as to produce desirable dosage/efficiency characteristics.
Claim(s) 11, 12, 14, 17, 19, 21, 24, and 26-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poschmann (DE2532888 A1) in view of Munzing (“Defoamer Technologies”). As the cited DE publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 11, 12, 14, 21, and 27-30, Poschmann teaches methods of using alkoxylated fatty alcohols for the purpose of foam suppression in aqueous papermaking mixtures (Page 1; Examples). Poschmann teaches embodiments where alkoxylated fatty alcohol is either added to aqueous mixture to prevent foaming (i.e. as an antifoam) (Example 2) and embodiments where ethoxylated fatty alcohol is added to an already foamed aqueous mixture to eliminate a foam (i.e. as a defoamer) (Example 3). Additional emulsifiers are not used in conjunction with the alkoxylates.
To the extent Poschmann differs from the subject matter claimed by a particular antifoam/defoamer corresponding with Formula [I] of claims 11 and 12, Poschmann teaches alkoxylated fatty acids whereby the fatty acid is a linear alkyl group of 12-30 carbon atoms, propylene oxide is present at 5-60 mol per mol of alcohol, and ethylene oxide is present at 0.5-20 mol per mol of alcohol, whereby propylene oxide is reacted first followed by ethylene oxide (Page 2). Accordingly, Poschmann suggests overlapping ranges with respect to R/m/n. The PO and EO ranges taught by Poschmann infers PO to EO ratios that overlap what is claimed (5 / 20 = 0.25 / 1; 60 / 0.5 = 120 / 1). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Poschmann suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Poschmann. See MPEP 2123.
Poschmann differs from the subject matter claimed in that a particular particle size is not disclosed. Munzing teaches it was known in the art the particle size of the defoamers used is important in terms of defoaming efficiency, whether the particles are solid particles or liquid particles within the foaming system (Section 3.3). Munzing teaches too small particle sizes result in lost efficiency while too large particle sizes cannot enter foam lamellae (Section 3.3). Thus, Munzing indicates the particle size of defoamer is a result effective variable subject to routine optimization because changing it would clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal defoamer particle sizes within the scope of the present claims so as to produce desirable end results.
Regarding Claims 17 and 24, Poschmann teaches concentrations such as 0.05 wt% or 0.02 wt% of alkoxylated alcohol (Examples 3 and 4), equivalent to roughly 500 ppm and 200 ppm respectively.
Regarding Claims 19 and 26, the examples of Poschmann add compositions consisting of defoamer/antifoam to the aqueous mixtures.
Response to Arguments
Applicant's arguments filed 8/5/2025 have been fully considered but they are not persuasive.
With respect to the particle size, Applicant essentially argues one of ordinary skill would understand the particle size corresponds to alkoxylate dispersed within aqueous feeds. The examiner notes Applicant previously appeared to indicate the particle size corresponded to alkoxylate within the composition of step i) within the remarks received 10/8/2024. Regardless, the Examiner remains of the position that the claims/specification is ambiguous as to whether the defined particle size corresponds to 1) alkoxylate compound in isolation, 2) alkoxylate composition within the composition of step i), or 3) the alkoxylate composition within the aqueous system after addition in step ii).
Applicant argues the inventive examples of Poschmann do not correspond with the PO:EO ratios claimed. Applicant acknowledges Poschmann describes overlapping ranges, but urges the C20-C30 chain length and PO:EO ratios give unexpected improvements in antifoaming/defoaming capabilities. This is not found persuasive.
The closest prior art is Poschmann, whose example describes a C18-C26 hydrophobe (roughly 0.513 pbmol) coupled to 850 pbw PO (14.6 pbmol) and 100 pbw EO (2.3 pbmol), giving a molar PO:EO ratio of roughly 6.3:1 (essentially C1826-28.5PO-4.5EO). The prior art indicates the relationship between defoaming performance and hydrophobe carbon count /PO:EO ratio was already well known. For instance, Lappi (U.S. Pat. No. 4,445,971) teaches the relative quantities of EO and PO within compounds can be subject to routine optimization in order to procure optimal defoaming characteristics (Col. 3, Lines 11-56) whereby the optimal EO/PO amount for a given system is dependent on the particular hydrophobe used (Compare Tables I and IV). Lappi teaches higher defoaming/antifoam performance occurs at relatively high PO:EO ratios within fatty alcohol alkoxylates (Table IV). See also the general discussion of Hilberer at page 5 with respect to EO-PO block copolymer surfactant antifoams, whereby the relative proportion of EO and PO contribute to defoaming characteristics owing to their ability to modify the cloud point of the defoamer (above the cloud point, the compound acts as a defoamer; below the cloud point they are less effective). Thus, Applicant’s observation of optimal defoaming capability resulting from the optimization of hydrophobe length and EO/PO ratio is not seen to be unexpected or at least not significant to the extent that it can be regarded as unexpected.
Also, the claims at issue do not appear to be commensurate in scope with the evidence Applicant relies upon in support of the allegation of unexpected results. Evidence is only provided for defoamers with a hydrophobe of C20-C30, but the claims only require that the composition of issue comprise such defoamers with C20-C30 hydrophobe. As is known in the art, such hydrophobes typically are a range of various carbon lengths (e.g. for those of Figure 9, it is a range of C20-C30; for Poschmann’s example, it is a range of C18-C26). Even if the hydrophobes at issue exhibit a minor proportion of C20-C30 (e.g. a broad distribution averaging C10 with a minor tail portion of C20), it still meets the claim. The evidence fails to show the results alleged to be unexpected occurs throughout the scope of the claim and one of ordinary skill would be unable to ascertain a trend within the exemplified data to reasonably extend the probative value thereof to encompass the entire scope claimed.
With respect to Poschmann and Hilberer, Applicant generally argues the claims require that the composition include no emulsifiers whereas Hilberer teaches maintaining droplet sizes through emulsifiers/thickeners. This is not found persuasive. The passage of Hilberer recites:“The particle size distribution can be controlled by the shear and the temperature during the dispersion process and maintained by the addition of emulsifiers and thickeners. Examples of emulsifying agents used for oil-in-water antifoam emulsions are fatty acid esters and metallic soaps of fatty acids: fatty alcohols and sulfonates, sulfates, and sulfosuccinates; sorbitan esters; ethoxylated alcohols/carboxylic esters, and silicone-polyether copolymers.”
Poschmann expressly teaches the alcohol alkoxylates themselves have “sufficient emulsifiability” that “forms emulsions with oils which are stable for a long time”. Thus, Poschmann indicates the alcohol alkoxylates at issue are emulsion surfactants capable of forming oil-in-water emulsions themselves. The combination of references is seen to meet the claim since 1) there is no apparent requirement of a storage period for the composition created in step i) and the combination of references is suggestive of instances where an oil-in-water emulsion with a suitable particle size is created via shear/temperature and is then added to a foaming system and/or 2) the fatty alcohol / ethoxylated alcohol defoamers themselves function as emulsifying surfactants.
With respect to Poschmann and Munzing, Applicant argues Munzing only provides general remarks about the size of defoaming particles within foaming systems in relation to emulsifier concentration whereas the present claims do not require an emulsifier. This is not found persuasive. Firstly, the combination of references suggests achieving/optimizing the particle size at issue after mixing composition i) with aqueous material; since the particle size in this case is being construed as the particle size of defoamer within the resulting aqueous material. Secondly, Munzing at section 3.3 indicates the particle size of the defoamer is directly dependent on the defoamers “ease to emulsify” and applied shear forces. As discussed above, Poschmann’s surfactants are emulsifying surfactants themselves and need to be used where they are not solubilized in water in order to function as a defoamer (see Hilberer). Thus, one of ordinary skill would readily ascertain that such defoamers would not require any additional emulsifier and would be “easy to emulsify” in of themselves. The rejection is maintained as Munzing indicates the particle size of a defoamer within a foam system was clearly known to be a crucial parameter that is subject to routine optimization by one of ordinary skill in the art by adjusting parameters such as shear speed and temperature.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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