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
This action is responsive to applicant’s amendment filed 4/1/2026.
Claims 1-4, 22-31 are pending.
The previous rejection of claims 1, 4, 22, 23, 26-28, and 31 under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (CN 1118547) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1-3, 22-30 under 35 U.S.C. 102(a)(1) as being anticipated by Hasanov et al. (ISSN 0018151X, High Temperature, 2012, Vol. 50, No. 1, pp. 44–51) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1, 4, 22, 23, 26-28, and 31 under 35 U.S.C. 103 as obvious over Chen et al. (CN 1118547) in view of Shiga et al. (US2017/0283539) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1-3, 22-30 under 35 U.S.C. 103 as obvious over Hasanov et al. (ISSN 0018151X, High Temperature, 2012, Vol. 50, No. 1, pp. 44–51) in view of Shiga et al. (US2017/0283539) is withdrawn in view of applicant’s amendment.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.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 24 and 29 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites “the swelling solvent…comprising between 70 % to 90 % by volume n-Octane”.
Claim 24 recites “the swelling solvent…comprising between 70 % to 90 % by volume n-Octane”.
Claim 29 recites “the swelling solvent…comprising between 70 % to 90 % by volume n-Octane”.
These recitations fail to further limit because claim 1, which these claims are depended from, recites the limit of n-octane is between 5 % to 85 % by volume.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claims 1-4, 22-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (Journal of Chemical and Engineering Data, Vol. 52, 1866-1871).
Wang discloses a fuel formula comprising 5-85 % n-heptane, 5-85 % n-octane, 10-90 % n-nonane (Table 2).
The recitation of “swelling solvent solution for a polymeric part” in the preamble and “the amount of the n-Octane and the heptane isomer of the swelling solvent solution is selected based on the desired swelling time for the polymeric part” are treated as a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The law also held that “arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102” and a reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims. See MPEP 2131.05. Wang discloses every limitation recited in the claims and thus is anticipatory.
Claim Rejections - 35 USC § 103
Claims 1-4, 22-31 are rejected under 35 U.S.C. 103 as obvious over Wang et al. (Journal of Chemical and Engineering Data, Vol. 52, 1866-1871) in view of Shiga et al. (US2017/0283539).
Wang discloses a fuel formula comprising 5-85 % n-heptane, 5-85 % n-octane, 10-90 % n-nonane (Table 2). The recitation of “swelling solvent solution for a polymeric part” in the preamble and “the amount of the n-Octane and the heptane isomer of the swelling solvent solution is selected based on the desired swelling time for the polymeric part” are treated as a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As disclosed by Shiga, hydrocarbon solvents such as n-heptane, n-octane, and n-nonane are known in the art to use as swelling solvents for polymer components and thus the formula disclosed by Chen is capable of performing the intended use.
The law held that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine). Since each of the solvents, n-heptane, n-octane, and n-nonane, are known in the art to use as swelling solvents for polymer components, the combination of them would also be to be useful for the same purpose.
Response to Arguments
Applicant’s arguments filed 4/1/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
6/10/2026
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