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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
A Declaration from the inventor of the present application, Charles F. Palmer, Jr., has been received on 6/10/2026. The Declaration is addressed within the “Response to Arguments” section below.
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 § 103
Claim(s) 1-7, 9, 11-16, 28, 30, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2018-154942A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 2, and 31, Tanaka teaches treating agent compositions (Abstract; Examples) and describes an embodiment in Example 9 comprising compound Polyoxypropylene (36 mol) polyoxyethylene (4 mol) monostearate ester A3 and Polyoxyethylene (2 mol) 2-ethylhexyl ether phosphate potassium salt B1 (¶ 53, 57, 67), consistent with Formula I where R = H and R’ = C(=O)-O-R1 where R1 is C17 alkyl, x = 36, y = 4, and z = 0 and Formula II where R2 = C8 alkyl, x = 2, y = 0, z = 1, and M = K. The compositions are used to treat hydrophobic fibers, rendering them hydrophilic (¶ 6), construed as hydrophobic surface.
Tanaka teaches embodiments where 5 wt% aqueous solutions are used (¶ 68), which differs from the subject matter claimed with respect to the 10-90 wt% range claimed. Tanaka also indicates the mixtures can be used indiluted (i.e. 100 wt%) or diluted with water (¶ 21). Thus, Tanaka is seen to suggest effective concentrations spanning 5-100 wt%. 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 Tanaka suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tanaka. See MPEP 2123.
Regarding Claims 3-6, Tanaka teaches the compounds have 1-20 oxyethylene groups and 10-60 pbw of oxyalkylene groups such as oxypropylene (¶ 9), which overlaps the ranges claimed. 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 Tanaka suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tanaka. See MPEP 2123.
Regarding Claim 7, the copolymers of Tanaka can be either block or random (¶ 7).
Regarding Claim 9, Tanaka teaches the compounds can be polyoxypropylene polyoxyethylene monostearate (¶ 11) with 1-20 oxyethylene groups and 10-60 pbw of oxyalkylene groups such as oxypropylene (¶ 9). Based on molecular weights of 44 for oxyethylene, 58.1 for oxypropylene, and 284.5 for stearic acid, Tanaka describes embodiments where the molecular weight is at least 909.5, which overlaps the range claimed. 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 Tanaka suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tanaka. See MPEP 2123.
Regarding Claim 11-15, Tanaka teaches the weight ratio of A / B ranges from 90/10 to 40/60 (¶ 15). A 2.2 / 1 ratio corresponds with roughly 73/27 A/B. As discussed above, Tanaka is suggestive of effective concentrations spanning 5-100 wt%. Therefore, Tanaka describes overlapping ranges. 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 Tanaka suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tanaka. See MPEP 2123.
Regarding Claim 16, Tanaka teaches polyoxyethylene (5 mol) decylether phosphate potassium salt can be used (¶ 57), which differs from the subject matter claimed with respect to the alkyl group used. In this regard, Tanaka teaches either linear or branched alkyls can be used (¶ 12). Accordingly, it would have been obvious to one of ordinary skill in the art to substitute linear (decyl) with branched (isodecyl) and thereby predictably afford workable treating compositions in accordance with the teachings of Tanaka.
Regarding Claim 28, Tanaka teaches the further inclusion of surfactant (¶ 16-17).
Regarding Claim 30, the limitation of “for treating a hydrophobic surface comprising soil” is construed as a recitation of intended use pertaining to the surfactant mixtures. Case law holds that 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. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In the present case, there is no perceivable difference in structure between the surfactant mixtures of the prior art and those claimed. Thus, such mixtures are construed as being capable of performing the indicated intended uses in the absence of evidence to the contrary.
Claim(s) 1-7, 9, 11-15, 28, 30, 31, and 66 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (WO2019/189922 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 2, 28, and 30, Okada teaches surfactant mixtures (¶ 6-12; Examples) and describes an embodiment in Example 13 comprising compound A-2, which is a stearic acid ester of polyoxyethylene/polyoxypropylene ether of 1-tridecanol and compound B3 which is a mixture of mono- and di-phosphates of polyoxyethylene methyl ether (¶ 45, 47-49, 59). For A-2, Okada teaches a preference for 2-15 mols of ethylene oxide and 10-70 mols of propylene oxide (¶ 21, 23). Compound B3 has 2 mol of ethylene oxide and M is H (¶ 49). The presence of further surfactant C3 is optional (Table 5; ¶ 14).
The limitations “wetting agent” and “mixture for treating a hydrophobic surface” such as soil are construed as recitations of intended use pertaining to the surfactant mixtures. Case law holds that 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. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In the present case, there is no perceivable difference in structure between the surfactant mixtures of the prior art and those claimed. Thus, such mixtures are construed as being capable of performing the indicated intended uses in the absence of evidence to the contrary.
The particular embodiment of Okada differs from the subject matter claimed in that M = H and the alkyl group (tridecanol) exceeds the C1-6 range claimed. However, Okada teaches M can be metals such as Na, K, Ca, Mg, or Li (¶ 26, 31). Accordingly, it would have been obvious to one of ordinary skill in the art to substitute H with a metal such as Na, K, Ca, Mg, or Li, thereby predictably affording workable surfactant mixtures suitable for use as antifoaming agents in accordance with the teachings of Okada. Okada further teaches the relevant alkyl group can range form 1-30 carbons (¶ 16), which overlaps the range claimed. 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 Okada suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Okada. See MPEP 2123.
With respect to the total concentration of Formulae I and II, Okada teaches the surfactant compositions comprise 60-99 wt% of A and 1-40 wt% of B (¶ 24, 32), suggesting overlapping ranges. 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 Okada suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Okada. See MPEP 2123.
Regarding Claims 3-6, Okada describes an embodiment in Example 13 comprising compound A-2, which is a stearic acid ester of polyoxyethylene/polyoxypropylene ether of 1-tridecanol (¶ 45). For A-2, Okada teaches a preference for 2-15 mols of ethylene oxide (corresponding with “y”) and 10-70 mols of propylene oxide (corresponding with “x”) (¶ 21, 23). The disclosed values overlap the ranges claimed. 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 Okada suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Okada. See MPEP 2123.
Regarding Claim 7, Okada teaches embodiments where first compound is a block copolymer (¶ 23).
Regarding Claim 9, Okada describes an embodiment in Example 13 comprising compound A-2, which is a stearic acid ester of polyoxyethylene/polyoxypropylene ether of 1-tridecanol (¶ 45). For A-2, Okada teaches a preference for 2-15 mols of ethylene oxide (corresponding with “y”) and 10-70 mols of propylene oxide (corresponding with “z”) (¶ 21, 23). Given the molecular weights of stearate (283.5), tridecyl (183.4), oxyethylene (44), and oxypropylene (58.1), Okada is suggestive of molecular weights spanning [283.5 + 183.4 + (44 x 2) + (58.1 x 10)] = 1,140 to [283.5 + 183.4 + (44 x 15) + (58.1 x 70)] = 5194, which overlaps the range claimed. 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 Okada suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Okada. See MPEP 2123.
Regarding Claims 11-14, Okada teaches the mass ratio of (A)/(B) is preferably 99/1 to 60/40 (¶ 32) whereby the content of monophosphate is B is preferably 10-70 wt% (¶ 30), suggestive of ratios spanning 2.1:1 to 990:1. The disclosed range overlaps the ranges claimed. 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 Okada suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Okada. See MPEP 2123.
Regarding Claims 15 and 31, Okada teaches the surfactant mixtures can be diluted with water (¶ 36) whereby the total content of phosphate B ranges from 1-40 wt% (¶ 32) whereby the content of monophosphate is B is preferably 10-70 wt% (¶ 30). Therefore, Okada is suggestive of overlapping ranges. 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 Okada suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Okada. See MPEP 2123.
Regarding Claim 66, Okada teaches the alkyl groups can be butyl (¶ 16).
Claim(s) 1-7, 9, 11-16, 28, 30, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer (US 2008/0172937 A1) in view of Hayakawa (JP2007-107131A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1-6 and 28, Palmer teaches compositions comprising wetting agents of nonionic surfactants (Abstract; ¶ 42) that may be further used in combination with other surfactants such as phosphates (Abstract; ¶ 73). Palmer teaches surfactants of Formula I where preferably x is 19, y = 2, and z = 0 (¶ 46-47) and where one terminal end is a C1-C24 alkylaryl group and the other an ester from a C1-C24 fatty acid (¶ 50). Both terminal ends may also be ester from C1-C24 fatty acid (¶ 46). Palmer teaches the compositions are useful for the treatment of hydrophobic surfaces, such as fabrics (¶ 2, Examples). Palmer differs from the subject matter claimed in that particular phosphate surfactants consistent with Formula II is not described.
Hayakawa is also directed toward surfactant treating compositions that can be used to render surfaces such as fibers hydrophilic (¶ 1, 54). Hayakawa teaches the further inclusion of phosphate and polyglyceryl fatty acid surfactants in specified proportions provides excellent uniformity and hydrophilicity characteristics (¶ 13, 15, 47, 54; Examples). It would have been obvious to one of ordinary skill in the art to further include the phosphate and polyglyceryl fatty acid surfactants of Hayakawa within the compositions of Palmer because doing so would provide excellent uniformity and hydrophilicity characteristics as taught by Hayakawa.
Hayakawa describes examples using phosphates consistent with Formula II, such as potassium octyl phosphate or potassium polyoxyethylene dodecyl ether phosphate with 5 mols of oxyethylene (¶ 61). The further polyglyceryl fatty acid surfactant of Hayakawa is none of surfactant III/IV, surfactant V, or silicone surfactant (¶ 46).
Hayakawa teaches 20-70 wt% of nonionic surfactant and 15-50 wt% of phosphate surfactant (¶ 5-7, 35-36), which is suggestive of overlapping concentrations of combined nonionic and phosphate surfactant. 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Regarding Claim 7, Palmer teaches the copolymers can be random or block copolymers (¶ 46).
Regarding Claim 9, Palmer teaches examples where a polyalkylene oxide monoether with a molecular weight of 1200 is subject to esterification with stearic acid (MW = 284.5) to provide surfactant (¶ 77-78), suggesting embodiments where the surfactant has a molecular weight of roughly 1467.
Regarding Claims 11-14, Hayakawa teaches 20-70 wt% of nonionic surfactant and 15-50 wt% of phosphate surfactant (¶ 5-7, 35-36), which is suggestive of overlapping ratios (e.g. for 20 wt% of phosphate, 20-70 wt% of nonionic surfactant would correspond with a 1:1 to 3.5:1). 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Regarding Claims 15 and 31, Palmer teaches the treating agents are in the form of aqueous solutions, such as 2 wt% mixtures (¶ 62, 101). Hayakawa teaches the surfactant mixtures can be formulated into treating compositions via dilution with water to 0.1-15 wt% (¶ 51). Accordingly, the combination of surfactants would suggest aqueous solutions with overlapping phosphate contents. 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 the combination of references suggest the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of the cited art. See MPEP 2123.
Regarding Claim 16, Hayakawa teaches monoesters and/or diesters of polyoxyethylene alkyl ether phosphate esters having an alkyl radical of 8 to 14 carbon atoms and 1-10 oxyethylene units, inclusive of polyoxyethylene decyl ether phosphate ester (¶ 38). Hayakawa indicates both linear and branched alkyl groups are suitable, suggestive of branched C10 alkyls (i.e. isodecyl). The disclosed number of oxyethylene units overlap x = 6 claimed. 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Regarding Claim 30, Palmer teaches the compositions are useful for the treatment of hydrophobic surfaces, inclusive of soils (¶ 2).
Claim(s) 1-3, 7, 9, 11-16, 28, 30, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa (JP2007-107131A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1-3 and 28, Hayakawa describes treatment agents comprising nonionic surfactant, anionic surfactant, and polyglyceryl fatty acid ester surfactant (Abstract) and describes an embodiment in Example 10 comprising α-octadenecoyl-ω-octadencenyoloxy-poly(oxyethylene) with 9 moles of oxyethylene (A-7) and polyoxyethylene (n=5) dodecyl ether phosphate potassium (¶ 57, 60-62). A-7 is consistent with Formula I whereby R and R’ are C(=O)-O-R1 where R1 is C18 alkyl, x=0, y=5, and z=0 and Formula II whereby R2 = C12 alkyl, x=5, y=0, z=1, and M = K. The additional polyglyceryl fatty acid ester surfactant of Hayakawa is none of surfactant III/IV, surfactant V, or silicone surfactant (¶ 46). Thus, the compound of Formula I of Hayakawa differs from the subject matter claimed with respect to the amounts of x/y. Hayakawa teaches the nonionic surfactants contain 5-100 oxyethylene and/or oxypropylene units (¶ 8), which is suggestive of 5-100 oxypropylene units exclusively. Accordingly, Hayakawa is seen to suggest overlapping ranges. 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 Hayakawa suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Hayakawa teaches 20-70 wt% of nonionic surfactant and 15-50 wt% of phosphate surfactant (¶ 5-7, 35-36), which is suggestive of overlapping concentrations of combined nonionic and phosphate surfactant. 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Hayakawa teaches the compositions are used to treat fibers to impart durability hydrophilicity (¶ 54) and thus, is seen to describe mixtures used to treat hydrophobic surfaces (i.e. the relatively hydrophobic fibers) where the combination of surfactants function as a wetting agent. Alternatively, the limitations “wetting agent” and “mixture for treating a hydrophobic surface” are construed as recitations of intended use pertaining to the surfactant mixtures. Case law holds that 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. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In the present case, there is no perceivable difference in structure between the surfactant mixtures of the prior art and those claimed. Thus, such mixtures are construed as being capable of performing the indicated intended uses in the absence of evidence to the contrary.
Regarding Claim 7, Example 10 comprises α-octadenecoyl-ω-octadencenyoloxy-poly(oxyethylene) with 9 moles of oxyethylene (A-7) (¶ 61). As no indication of a particular monomer arrangement is indicated, it is inferred the copolymer is random.
Regarding Claim 9, Hayakawa teaches surfactants such as dodecyl-octanoyloxy-poly(oxyethylene) with 15 mols of oxyethylene moeities (¶ 61). Given the molecular weights of dodecyl (562.1), octanoyloxy (143.2) and oxyethylene (44), the molecular weight would be roughly 1365. Accordingly, Hayakawa is seen to suggest molecular weights consistent with what is claimed.
Regarding Claims 11-14, Hayakawa teaches 20-70 wt% of nonionic surfactant and 15-50 wt% of phosphate surfactant (¶ 5-7, 35-36), which is suggestive of overlapping ratios (e.g. for 20 wt% of phosphate, 20-70 wt% of nonionic surfactant would correspond with a 1:1 to 3.5:1). 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Regarding Claims 15 and 31, Hayakawa teaches 20-70 wt% of nonionic surfactant and 15-50 wt% of phosphate surfactant (¶ 5-7, 35-36). Hayakawa teaches the surfactant mixtures can be formulated into treating compositions via dilution with water to 0.1-15 wt% (¶ 51). Accordingly, Hayakawa suggests aqueous solutions with overlapping phosphate contents. 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Regarding Claim 16, Hayakawa teaches monoesters and/or diesters of polyoxyethylene alkyl ether phosphate esters having an alkyl radical of 8 to 14 carbon atoms and 1-10 oxyethylene units, inclusive of polyoxyethylene decyl ether phosphate ester (¶ 38). Hayakawa indicates both linear and branched alkyl groups are suitable, suggestive of branched C10 alkyls (i.e. isodecyl). The disclosed number of oxyethylene units overlap x = 6 claimed. 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 Hayakawa suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hayakawa. See MPEP 2123.
Regarding Claim 30, the limitation “mixture for treating a hydrophobic surface” such as soil are construed as recitations of intended use pertaining to the surfactant mixtures. Case law holds that 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. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In the present case, there is no perceivable difference in structure between the surfactant mixtures of the prior art and those claimed. Thus, such mixtures are construed as being capable of performing the indicated intended uses in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
The examiner notes a copy of the machine translation referred to with respect to Tanaka was provided to Applicant on 12/12/2025.
Applicant argues ¶ 19 of Tanaka suggests a range of 0.1-1.50 wt%. This is not found persuasive as the ranges of ¶ 19 are with respect to the amount of non-woven fabric to which the hydrophilic agent is applied, particularly in the case of hygiene applications. The paragraph is not describing quantities within an actual coating composition.
Applicant generally argues the examples of Tanaka describe concentrations spanning 0.25-5 wt%, which is outside the range claimed. This is not found persuasive as Tanaka indicates the mixtures can be used indiluted (i.e. 100 wt%) or diluted with water (¶ 21), thus suggesting overlapping ranges.
Applicant urges the invention satisfies a long-felt need associated with improving the ability of soil to hold water. Establishing long felt need requires objective evidence showing 1) the need has been a persistent one that was recognized by those of ordinary skill in the art, 2) the need must not have been satisfied by another before the inventor, and 3) the invention must in fact satisfy the long-felt need. MPEP 716.04. The presented arguments of counsel is not factual evidence establishing there was a long-felt need of such and that such a need was not already satisfied by others. This is particularly evident since the hydrophobic treatment of soils via surfactant mixtures was already well known in the art. See Palmer cited above.
Applicant argues Okada is non-analogous art, reasoning the specification describes surfactant mixtures for treating soils whereas Okada teaches surfactant mixtures for defoaming. Applicant questions whether the surfactant blends of Okada would be effective toward soil applications. This is not found persuasive as the claims at issue are not directed toward a method of treating soils, but is directed to a particular blend of surfactants. As Okada is within the same field of endeavor to the invention claimed, Okada is analogous art.
Moreover, Case law holds that 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. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The examiner finds no distinguishment in claimed structure between what is set forth within the claims and what is suggested by Okada. It is unclear how or why surfactant blends identical in structure to what is being claimed would successfully perform the intended use in the hands of Applicant, but fail to function as such in those of Okada. The examiner fails to find factual evidence of record illustrating surfactant blends of Okada co-extensive with those claimed would fail to achieve such characteristics. While Applicant refers to Example 4 of Okada, the disclosure of Okada is not limited to such.
Applicant argues Palmer is specific toward wetting hydrophobic soils whereas Hayakawa is for wetting fabrics and fibers. This is not found persuasive as Palmer teaches wetting of hydrophobic surfaces in general (Abstract) such as polymer fabrics / fibers (¶ 81; Examples).
Applicant further argues Hayakawa requires further polyglycerin fatty acid ester as component C, whereas the claims do not require such. This is not found persuasive as the claims are open to further components through use of the transitional phrase “comprising”.
Applicant argues Ethox 5149 enjoys considerable commercial success. According to the specification, Ethox 5149 comprises a mixture of CH3O-[EO-PO]-O-C(O)-C17H32 and acid phosphate of POE (6) decyl alcohol (i.e. [C10H21O-(CH2CH2O)6]z-P(O)(OH)3-z (¶ 84).
Applicant’s allegation of commercial success is not persuasive. There is a lack of nexus between the subject matter claimed and Applicant’s allegation of commercial success. The phosphate of Ethox 5149 is [C10H21O-(CH2CH2O)6]z-P(O)(OH)3-z, but claim 1 requires M to be Na, K, Ca, Mg or Li.
Even arguendo the claims encompass Ethoxy 5149, it is Applicant’s burden to establish commercial success. Applicant cites a sales figure of half a million pounds, but the context of such a figure is not explained with respect to what sales would normally be expected in the market for comparable materials and how the figure is the result of the invention claimed. There is no indication that such sales are derived from a marketplace where the consumer is free to choose based on objective principles as opposed to heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention. MPEP 716.03.
Further, Applicant’s allegation of commercial success is not commensurate in scope with the claims. The commercial success is solely tied to Ethox 5149, but the scope of the claim 1 extends beyond the two particular surfactants within the formulation; notwithstanding the Ethox 5149 formulation itself is outside the scope of the claims presently (see “M is Na, K, Ca, Mg, or Li”).
Applicant argues Hayakawa pertains to treating fibers as opposed to soil. This is not found persuasive as the claims at issue are not directed toward a method of treating soils, but is directed to a particular blend of surfactants. As Hayakawa is within the same field of endeavor to the invention claimed, Hayakawa is analogous art. The discussion of intended use above with respect to Okada applies to Hayakawa as well.
Applicant argues unexpected results with respect to soil treatment characteristics, referring to the submitted Declaration. Applicant’s argument is unpersuasive. There is a lack of nexus between the subject matter claimed and Applicant’s allegation of unexpected results. The phosphate of Ethox 5149 is [C10H21O-(CH2CH2O)6]z-P(O)(OH)3-z, but claim 1 requires M to be Na, K, Ca, Mg or Li.
Further, Applicant’s allegation of unexpected results is not commensurate in scope with the claims. The allegation of unexpected results is solely tied to Ethox 5149, but the scope of the claim 1 extends beyond the two particular surfactants within the formulation; notwithstanding the Ethox 5149 formulation itself is outside the scope of the claims presently (see “M is Na, K, Ca, Mg, or Li”).
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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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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