Response to Amendment
Claim Rejections - 35 USC § 103
Claim(s) 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/092366
WO ‘366 disclose a formulation for detergency and their properties as low foaming surfactants of secondary alcohol alkoxylates and their foam reduction capabilities. The examples show average molar mass of 70-200g/mol (0048) as claimed and the ethoxylation of 2-octanol and ethoxylation-propoxylation of 2-octanol and wherein the EO/PO mixtures are from 10-100 (0016-0023; 0046). Further, additional additives such as surfactants, fillers and adjuncts are employed (0080). See example 1 and 3, where 1240g of 2-octanol with 3 EO was recovered in the formulation. Accordingly, the amount falls within the 1-50% as suggested and wherein it would have been within the purview of the skilled artisan to optimize the proportions to suggest the claimed single composition for said purpose of producing a cleansing formulation as called, in the absence of a showing to the contrary.
With respect to the mixture of EO units being less than or equal to the mixture of PO units, the examiner contends that it would have been obvious to the skill artisan to optimize the amount of said mixture given the guidance of WO ‘366 that leads to said EO/PO mixtures (0016) being preferred within the degrees as claimed as an obvious choice of said 2-Octanol compound for their foam reduction capabilities. Furthermore, in the absence of unexpected results, commensurate in scope with the claimed invention, the skill artisan would expect the homologs to perform in an obvious manner with similar foam reduction capabilities and wherein said proportions would again behave with similar capabilities of reducing foam as suggested by WO ‘366.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601
(CCPA 1978) (stereoisomers prima facie obvious).
Response to Arguments
Applicant's arguments filed 1-5-2026 have been fully considered but they are not persuasive.
Applicant argues the 2-octanol was unexpectedly observed to reduce foaming in Table 1 and Declaration submitted under 1.132 submitted 11/10/2025.
The examiner contends and suggest that the arguments and opinions are not commensurate in scope with the claimed invention. The specific 2-octanol secondary surfactants and method of reducing foam are taught and suggested by the prior art and broadly taught as one of several embodiments that the claims disclose. Specifically, applicant should limit the method to “consisting of” 2-octanol with EO/PO units from 3-8 as suggested and close of the composition to materials specified. Applicant’s Declaration does not permit criticality beyond a single system that does not include or call out any additional surfactant system. Accordingly, the prima facie case of obviousness rejection over prior art of record is maintained given that the Declaration is not commensurate in scope with the claims.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
Allowable Subject Matter
Claims 1, 5-6 are allowed.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761