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 .
Continued Examination Under 37 CFR 1.114
The amendment of January 27, 2026 has been entered and considered. With the entry of the amendment, claims 1-25 and 27 are canceled, and claim 26 and 28-38 are pending for examination
Election/Restrictions
Applicant’s election of Group II, claim 26 in the reply filed on August 22, 2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
It is noted that non-elected claim 1, 3, 5-6, 8-19, 21, 25 and 27 have been canceled by the amendment of February 14, 2025.
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.
Claims 26 , 29-31 and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein et al (US 3374100) in view of Kaaret et al (US 2003/0192130).
Claims 26, 29, 31, 37, 38: Goldstein teaches a method of treating a fiber based material (which can be organic, for example) for enhancing the water repellency thereof (note column 1, lines 10-15 and 60-70, column 4, lines 15-25 and 60-75, column 6, lines 5-15). The method includes applying to the fiber based material an emulsified liquid composition (note column 3, lines 45-65, column 4, lines 15-75). The treated fiber based material is then dried (note column 60-70, which would be understood to be at least suggested to be predictably and acceptably until at least substantially dry, since the material is to be generally dried, and is not further being treated with wet material). As to the composition of the emulsified liquid composition, Goldstein teaches that the composition can comprise water (note column 3, lines 45-55, Example I), a hydrophobic phase (such as paraffin wax, which can be natural or synthetic wax as desired by claim 29 as the hydrophobic agent) (note column 3, lines 5-35 and 45-65, Example I), and further emulsifying composition materials, which can include emulsifying agents of (a) amides and (b) amines and also (c) zirconium acetate (a Lewis acid as desired by claims 37 and 38) (note column 3,lines 35-65, claim 1, Example I). The hydrophobic/wax phase of the total emulsified composition can be approx. 19.4 wt% (194 parts wax/998 total parts), and Goldstein further describes using 14-24 % of the aqueous composition in the form of the waxes (where it would be understood that this would be predictably and acceptably in the form of weight percent, noting the parts by weight in Example I), both of which would be in the claimed range (note Example I, column 3, lines 45-60). The water phase of the total emulsified composition can be from approx. 62.5 wt% (noting Example I, 624 parts water/998 parts total) to approx. 76.37 wt % (noting in Example I the acetic acid is in an 80 % solution and the zirconium acetate in a 13% solution, so the percents considered by weight and the rest of the solution water, the total water would be 762,25 parts/998 parts total, giving approx. 76.37 wt% water), where both would be in the claimed range for the water (note Example I). Furthermore, the total of the emulsifying compositions – amide, amine and zirconium acetate, can be approx. 2.8 wt% of the total composition, in the claimed range(note Example I, with 4 parts amine, 4 parts amide and 13 % of zirconium acetate solution so 0.13 x 155 or 20.15, so 28.15/998 total parts). It is also noted not the amide/amine can be 0.2 to 1.2 % and the Lewis acid/zirconium acetate can be 3-25%, giving a total percent overlapping the claimed range (note column 3, lines 45-65). Furthermore, as to the amide used being an organic amide of Formula 1, which would be non-water soluble at a pH of 1-7, which can be at least a primary amide of saturated or unsaturated, branched or linear acids, with less than 40 carbons and a molar ratio of carbon to nitrogen atoms of 40>C/N>6, meeting the structural requirements of claim 26, part (A)(a), Goldstein teaches providing fatty acid amide derivatives of N, N dialkyl alkaline diamines having 2-4 carbons in the alkylene group with organic acids having 16 to 20 carbon atoms (note column 2, lines 35-60, where the acids can be stearic acid, palmitic acid, etc.) and where the compound would desirably have 18-22 carbon atoms to the molecule (note column 2, line 70 to column 3, line 10), in the claimed range, where this combination would give an amide of the Formula 1 as claimed (noting same acid used as listed in claim 31, where octadecanoic acid=stearic acid, for example) and with molar ratio claimed noting the possible carbon atoms and nitrogen atoms, and would be understood to be non-water soluble as emulsifying material and the same material of the same formula as claimed, and understood to meet all the requirements of claim 26, part(A)a). Also note the amide material of Example I. Furthermore as to the amine being an amine of Formula II as in claim 26 part (A)b)(ii), this would be suggested by Goldstein, which notes that aliphatic amines such as N, N-dialkyl alkylene amines can be used (where it describes such amines containing 17-20 carbon atoms and noting N, N dimethyl octadecylamine (which would have 20 carbon and 1 N, giving less than 50 carbon and a ratio of 20, in the claimed range, and provide amine meeting the requirements of claim 26 part (A)b)(ii)), and understood to be not water soluble as claimed as meeting the formula requirements and also as emulsifying material (note column 2, lines 35-55, claim 1).
As to specifically providing that the amides and amines are positively charged, Goldstein notes that the fabric to be treated can be cotton (column 4, lines 15-25).
Kaaret describes providing a fabric treatment composition to impart water repellency (note 0002), where it is described that the composition can contain various materials, including hydrophobic waxes such as paraffin waxes (note 0024, 0033), and water (liquid carrier) (note 0038), and can also contain emulsifiers including fatty amides, fatty amines (note 0052), where it is noted that it is desirable to provide a positive zeta potential to the treatment liquid to attract to fibers such as cotton which can be negatively charged, and other fibers can also be negatively charged (note 0042-0045), where zeta potential modifiers are provided in the form of cationic (positively charged materials) that are provided in the treatment liquid where such material can be amines, for example (note 0046).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Goldstein to provide that the amines and amides are positively charged to help the treatment liquid be attracted to the fiber material as suggested by Kaaret, since Goldstein provides the liquid treatments for fiber fabrics such as cotton for water repellency, and Kaaret teaches that when providing a treatment liquid for similar purpose, it is desired to provide positively charged material (including amines) to help attract the treatment liquid to fibers material such as cotton, and where Goldstein uses amines and amides from amines, so by providing these materials as positively charged the attraction benefits would be provided. Kaaret would further indicate that the paraffin waxes of Goldstein would be considered hydrophobic phase.
Claim 30: As to the wt% of the hydrophobic phase, this would be covered by Goldstein as discussed for claim 26 above. As to the wt% of the emulsifying composition , this would be covered by claim 26 as discussed above. The Lewis acid would be zirconium acetate as discussed for claim 26 above. The amount of zirconium acetate can be approx. 2 wt% of the overall composition, noting the amounts in Example I and as discussed for claim 26 above. Part c) materials are not required as optional.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Goldstein in view of Kaaret as applied to claims 26, 29-31 and 37-38 above, and further in view of Wagle et al (US 2013/0303410), EITHER alone OR further as evidenced by WO 2021/020344 (hereinafter ‘344).
Claim 28: further as to the use of fatty dimer diamines with less than 50 carbon atoms, and having two primary amino groups, Kaaret further notes emulsifiers used in the treatment liquid, include fatty amines (note 0052).
Wagle describes that PRIAMINE 1071, PRIAMINE 1073, PRIAMINE 1074 are fatty dimer diamines that can be used in emulsion liquid (here drilling liquid) with stable rheologies (note 0019, 0028-0029), and as diamines can be understood to have two primary amino groups.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Goldstein in view of Kaaret to additionally use at least one fatty dimer diamines of PRIAMINE 1071, PRIAMINE 1073, PRIAMINE 1074 with an expectation of desirable rheology control as suggested by Wagle, since Kaaret indicates the conventional use of fatty amines as emulsifiers and Wagle notes fatty amines as fatty dimer diamines of PRIAMINE 1071, PRIAMINE 1073, PRIAMINE 1074 that can be used in emulsions and help give rheology control. It is understood that these would have two primary amino groups as diamines, and would have less than 50 carbon atoms, since the same material indicated by applicant as having such a feature (note previous claim 28).
Optionally, further as evidenced by ‘344, ‘344 further evidences that PRIAMINE 1073 and PRIAMINE 1075 have two primary amino groups, and less than 50 carbon atoms (note page 7, translation, formulas (4) and (5)). Therefore when using the PRIAMINE 1073, PRIAMINE 1075 as suggested by Goldstein in view of Kaaret and Wagle as discussed above, ‘344 would further evidence that these PRIAMINES would have two primary amino groups, and less than 50 carbon atoms.
Claim 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein in view of Kaaret as applied to claims 26, 29-31 and 37-38 above, and further in view of Carslon et al (US 2008/0217044).
Claim 32, 33: further as to the use of amides of erucamide, oleamide, oleyl palmitamide, stearyl erucamide, etc., Kaaret further notes emulsifiers used in the treatment liquids, include fatty amides (note 0052).
Carlson describes that erucamide, oleamide, oleyl palmitamide, stearyl erucamide, etc are fatty amides can be used in emulsion liquid with lubricant activity (note 0024-0025).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Goldstein in view of Kaaret to additionally use at least one amide of erucamide, oleamide, oleyl palmitamide, stearyl erucamide with an expectation of predictably acceptable emulsion forming as suggested by Carlson, since Kaaret indicates the conventional use of fatty amides as emulsifiers and Carlson notes fatty amides of erucamide, oleamide, oleyl palmitamide, stearyl erucamide that can be used in emulsions and help give lubrication as well.
Claim 32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein in view of Kaaret as applied to claims 26, 29-31 and 37-38 above, and further in view of Zhu et al (US 2012/0295189).
Claim 32, 36: further as to the use of amides of oleamide and octadecanamide, for example, Goldstein notes using paraffin and hydrocarbon waxes (note column 3, lines 3-25).
Zhu describes providing emulsion with paraffin wax, where oleamide and octadecanamide are described as meeting such wax requirements (note 0024-0025).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Goldstein in view of Kaaret to additionally use at least one amide of oleamide and octadecanamide with an expectation of predictably acceptable emulsion forming as suggested by Zhu, since Goldstein also indicates the conventional use of paraffin waxes including hydrocarbon waxes and Zhu describes providing emulsion with paraffin wax, where oleamide and octadecanamide are described as meeting such wax requirements and while listed as amides, the material could meet part of the overall req1uiremnt for waxes in the final combination of materials as well.
Claim 35 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein in view of Kaaret as applied to claims 26, 29-31 and 37-38 above, and further in view of Beamer (US 3186912).
Claim 35, 26: further as to the use of amines of stearyl amine, oleyl amine or dioleyl amine, for example, Goldstein notes using amine emulsifiers (note column 2, lines 30-40).
Beamer describes that amines for forming emulsions include primary, secondary and tertiary amines and can include stearyl amine, oleyl amine and dioleyl amine, for example (note column 2, lines 15-45).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Goldstein in view of Kaaret to additionally use at least one amine of stearyl amine, oleyl amine or dioleyl amine with an expectation of predictably acceptable emulsion forming as suggested by Beamer, since Goldstein indicates the use of emulsion forming amines, and Beamer indicates that such emulsion forming amines can be stearyl amine, oleyl amine or dioleyl amine.
Response to Arguments
Applicant's arguments and the declaration filed January 27, 2026 have been fully considered.
As to the 35 USC 103 rejections, it is argued that Goldstein teaches use of amine type emulsifiers, and only teaches the use of emulsifiers that are functional amines, where the references to “fatty acid amide of a dialkyl alkylene diamine” would be a functional amine, and does not teach use of emulsifiers with an amide and amine as defined in the presently claimed invention or give a hint that it may be an improvement to add an amide type emulsifying agent to the amines, and would not look to add amines. As to the use of Kaaret, it is argued that one of ordinary skill in the art would consider the zeta potential modifier would be more useful to effectively attract fluoropolymers to the fabric, and would not be suggested to modify the already water repellent emulsions of Goldstein to add positively charged amides. It is argued that the present invention uses both amine and amide in the emulsifying composition and being concerned with the problem of reducing or eliminating backwetting, where the combination of amine and amide give such a benefit The declaration is further argued as providing test results comparing use of only organic amine as corresponding to Goldstein with both amine and amide, and shows surprisingly better results for the amine and amide use, and further takes the position that the organic amines used by Goldstein are functional cationic amines although they may contain other functional groups such as esters and amides, and refers to Warchem 194 as providing an amide of the material (N-[3-(dimethylamino)propyl]octadecanaamide. It is argued that the additional results from both amine and amide cannot be predicted from Goldstein or Kaaret, and thus do not render the present invention obvious. As to the additional references to Wagle, Carlson, Zhu or Beamer, it is argued that they would not overcome the deficiencies in Goldstein and Kaaret, or suggest the improvements.
The Examiner has reviewed the arguments by applicant’s attorney and the declaration, however, the rejections are maintained. Firstly, as to Goldstein only teaching amines and not also teaching the use of amides, the Examiner disagrees with applicant’s and the declaration’s position. Goldstein specifically describes the use of “at least one member of the group consisting of (a) N, N dialkyl alkylene amines, (b) fatty acid amides of N,N dialkyl alkaline diamines” (note claim 1). Thus both “amines” and “amides” are described. Furthermore, as to the fatty acid amides of N,N dialkyl alkaline diamine being a functional amine vs. an amide as claimed, the Examiner notes that Warchem 194 (194-5), an amide as described by Goldstein (since used in Examples), and described by applicant’s attorney/declaration as N-[3-(dimethylamino)propyl]octadecanamide (so with the term “amide”) is referred to by applicant’s attorney/declaration as an amine. However, in claim 1, part a) describing the amide using Formula 1, the formula of N-[3-(dimethylamino)propyl]octadecanamide (as indicated by NIST Chemistry WebBook, page 1), would have a formula meeting these requirements as a secondary amide, note for X 1, the hydrocarbon chain to the left of the =O bond, X2 as H, and X3 as the (CH2),-N(CH3)2 group, giving an amine substituted hydrocarbon chain, and where there would be 23 Carbon (so less than 40) and 23/2 C/N groups that would be in the claimed range. Therefore, the evidence of the structure as shown by the NiST Chemistry WebBook opposes and overcomes the opinion evidence by applicant’s attorney/declaration, that such material cannot be considered an amide, even if it could also be considered an amine based on formula requirements, as well. Additionally, Goldstein teaches using stearic acid to form the amides (note column 2, line 70 to column 3, line 5), which is the same material indicated for forming amides in claim 31 (stearic acid=octadeconanoic acid), and as well other amide formed materials can be used (note column 2, line 70 to column 3, line 5, and the general teaching of the material used in claim 1). It is understood that the materials can be water insoluble as claimed as discussed in the rejection above. Therefore, since amides that can be considered as meeting the formula requirements of claim 1 are taught as an option by Goldstein and can be used in combination with described amines as claimed, Goldstein would provide that the emulsifiers can include an amide and an amine.
Furthermore, as to providing the amines and amides as positively charged, the Examiner cited Kaaret as to this suggestion. Initially, the declaration seems to say that the emulsifier material in Goldstein is positively charged (cationic). This could be considered an admission that the material would be positively charged (note MPEP 2145(I)). Furthermore, Kaaret is cited as to the benefit of providing positively charged material which can include amines to the treatment solution to help attract the fibers such as cotton to the treatment liquid when providing a water repellent composition. While Kaaret uses fluoropolymers, it also uses hydrophobic agents that can be waxes (note 0035), where Goldstein also uses waxes (note column 2, lines 25-35). Kaaret also notes bonding with hydrophobic agents that can also have bonding affected (note 0042) and thus as well as fluoropolymer it is understood that the positive zeta potential can affect other bonding as well. Furthermore, even if fluoropolymers had to be included, they are not prevented by the present claims, and Kaaret would demonstrate how similar materials to Goldstein, with the wax, amines, amides, etc. can also include fluoropolymers when making water repellant coatings on fabric/fiber surfaces. Goldstein does not specifically exclude fluoropolymer material. Thus, the teachings of Kaaret would be considered beneficial to the process of Goldstein, and Kaaret would not teach away from the use of/features of Goldstein. It is argued in the declaration that one would not consider Kaaret because the cationic characteristic of the amine type emulsifiers of Goldstein would already provide for a suitably positive zeta potential. However, the Examiner is of the position that this opinion evidence does not overcome the rejection, because first (1) it would appear to therefore say that the materials of Goldstein would be cationic/positively charged, which is what is desired. (2) Since Goldstein does not specifically say that its material is positively charged, this argument would support providing that the amine/ amide emulsifier material is positively charged for the positive zeta potential.
As to benefits of backwetting prevention, with the use of the amide and amine as tested including in the declaration, the declaration provides an example with better results than using the amide material alone. However, there is not a showing of criticality commensurate in scope to what is claimed (note MPEP 716.02(d)). For example, (1) the use of amide/amide emulsifier is in a 1.0 w/w% of the composition, and the comparative example uses 0.8 wt/w% of emulsifier, so the total amount used could have an effect, and (2) furthermore, as claimed in claim 1, for example, there has to be 0.01 to 12 wt% of an emulsifying composition used in the emulsified liquid composition, however, other than the presence of amine and amide as claimed, there is no limit as to the amount of each of the amine and amide. Therefore, for example, as worded, the amount of amide or amine could approach zero (could have 99.9999 % of the total of amide and amine be amine, and 0.0001 % be amide and vice versa, for example), and so would effectively act as a solution with only amine and amide, or as worded, both of the amounts of amine and amide can approach zero and the emulsifying composition could be effectively the material c) of Lewis acid/Bronsted acid, and there is no showing of criticality with such amounts. As well, (3) as to the temperature of drying, there is currently no limit as to the temperature of drying, and the declaration indicates that at a high temperature of drying, the benefits are the same for both tested materials (note paragraph 12), so there is again not a showing for the entire possible range of the claim.
As to the additional references used for the dependent claims, Wagle, while directed to drilling liquid, still shows conventionally known fatty diamer diamines, which use for the water repellent composition is suggested by Kaaret. As to WO ‘344, it is cited as evidenced as to known chemical formulations. As to the use of Carlson, while not directed to a water repellent composition, it shows known fatty amides with lubricant ability, which use in water repellant compositions is suggested by Kaaret. As to the use of Zhu, Goldstein specifically teaches the use of paraffin and hydrocarbon waxes, and Zhu is cited as teaching known such materials used in emulsions, and one looking at Goldstein would be suggested to look to such materials that can be used in emulsions, even if not specifically described for water repellent compositions. As to the use of Beamer, Goldstein notes using amine emulsifiers, and Beamer teaches known such emulsifiers, and one looking at Goldstein would be suggested to look to such materials that can be used in emulsions.
As to the request for the Examiner to call if it is determined that the case is not in condition for allowance, the Examiner notes the detailed response to arguments above, and has therefore provided this Office Action which the applicant can review. If an interview is desired after review, the Examiner can be contacted for an interview as discussed in the Conclusion section below.
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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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, GORDON BALDWIN can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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