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 .
Elected Species Free of the Prior Art
Compound 37b:
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appears free of the prior art. The examiner has moved on to the next species which encompasses claims 42-44, 48, 52 & 54.
Claim Status
Applicant’s claim amendments and arguments filed on 25 June 2026 are acknowledged.
Claims 42-54 & 56-66 are pending.
Claims 42, 43, 45, 49, 50, 52, 54, 57-61 are amended.
Claims 1-41 & 55 are cancelled.
Claims 45, 47, 49-51, 53 & 61-66 are withdrawn.
Claims 42-44, 46, 48, 52, 54 & 56-60 are under consideration.
Withdrawn Objections/Rejections
The objection to the abstract is withdrawn due to Applicant’s amendments to remove superfluous language.
The objection to the specification is withdrawn due to Applicant’s clarification of prefixes and submission of the “Extension of Rules…Concerning Numerical Terms Used in Organic Chemical Nomenclature” which provides fundamental numerical terms for use in hydrocarbon names at pg. 1695.
The objection to claims 42 and 52 for reciting “tertiary amino groups and then immediately reciting
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and reciting “quaternary ammonium groups” and then immediately reciting
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is withdrawn due to cancellation of the redundant chemical structures.
The objection to claim 42 is withdrawn due to amendments to the R1 substituent and cancellation of the R2 substituent definitions.
The objection to claim 42 is withdrawn due to amendments to the R3, R4 and R5 definition, and using the word “or” before the recitation of “tertiary amino groups”.
The objection to claim 52 is withdrawn due to the amendment to the definition of R10 which places the word “or” before “tertiary”.
The objection to claim 54 is withdrawn due to an amendment which places the word “or” between “copolymers, poly (itaconic acid)” .
The objection to claim 54 is withdrawn due to deletion of the extra period at the end of the claim.
The objection to claim 57 is withdrawn due to deletion of the additional “in” in line 1.
The objection to claim 60 for the informal scientific jargon of “di-quat” and “tetra-quat” is withdrawn due to Applicant’s amendment.
The rejection of claim 42 under 35 USC 112(b)-lack of antecedent basis is withdrawn due to cancellation of the term, “the”, in the recitation of “the counter ions A- of the ammonium ions...”
The rejection of claims 42, 56 & 58 under 35 USC 112(b) for reciting the limitation "the cationic structure of the general formulas (I) and (II)" is withdrawn due to Applicant’s arguments.
The rejection of claims 42, 56 & 58 under 35 USC 112(b) for reciting the limitation “at least one of R1…present in the cationic structure of the general formulas (I)” is withdrawn due to Applicant’s arguments.
The rejection of claims 42 & 52 under 35 USC 112(b) is withdrawn due to amendments which delete limitations pertaining to ”-O-“.
The rejection of claims 52 and 54 under 35 USC 112(b)- lack of antecedent basis is withdrawn due to deletion of limitations pertaining to R7.
The rejection of claim 54 under 35 USC 112(b) as indefinite for the recitation of the indefinite words, “type”, is withdrawn due to deletion of this term, the parenthetical expression “(self repeating)”, and the indefinite phrase “ of this group”.
The rejection of claim 55 under 35 USC 112, 35 U.S.C. 103 and nonstatutory double patenting is withdrawn due to cancellation of the claim.
The rejection of claim 57 under 35 USC 112(b) as indefinite for the recitation of “derived” is withdrawn due to Applicant’s amendment which recite “by abstraction of the carboxylate group and one OH group”.
The rejection of claim 57 under 35 USC 112(b) is withdrawn due to Applicant’s amendments.
The rejection of claim 58 under 35 USC 112(b) is withdrawn due do amendments which recite a definition for R1*.
The rejection of claim 59 under 35 USC 112(b) is withdrawn due to Applicant’s amendment which changes the claims dependency.
The rejection of claim 59 under 35 U.S.C. 112(d) is withdrawn due to the claim amendments which change the dependency of claim 59 from claim 56 to claim 58.
The rejection of claims 42-44, 46, 48, 52 & 54 under 35 U.S.C. 103 over Linder is withdrawn due to Applicant’s amendment to require that m =2 to 20.
New and Maintained Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 42-44, 46, 48, 52, 54 & 56-60 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors including using undefined substituents in chemical formulae (see for e.g. R11 & R7 substituents in claim 52 and “-O-“ in amended claim 54).
Claim 42 is rejected under 35 USC 112(b) as it is a prolix claim extending over 3 pages, having long recitations, and numerous compounded alternatives in the claims which render the claim indefinite in the same manner as improperly dependent claims. The metes and bounds of claim 42 cannot be determined (MPEP 2173.05(m)).
Claims 43, 44, 46, 48, 52, 54 & 56-60 are rejected under 35 USC 112(b) because they depend from indefinite claim 42.
Claims 42-44, 46, 48, 52, 54, & 56-60 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of a compound in the claims is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: a compound in the claims encompasses numerous different structures of the compound which do not share a single structural similarity and common use. For example, as recited in Applicant’s specification, the compound has numerous varied structures of groups such as R1 which can have a valency of up to 50, up to 1000 carbon atoms and oxygen, sulfur, amine, carboxyl and tertiary amine groups. The F radicals can be cyclic, branched, or straight chain having substitutions and contain oxygen, sulfur, amine, carboxyl and tertiary amine groups. To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claims 43, 44, 46, 48, 52, 54 & 56-60 are rejected under 35 USC 112(b) because they ultimately depend from indefinite claim 42 and do not clarify the issues.
Claims 42-44, 46, 48, 52, 54, & 56-60 are rejected under 35 USC 112(b) for being indefinite because claim 42 is internally inconsistent. Claim 42 recites R1 is “x-valent hydrocarbon radicals…and may contain optionally one or more groups selected from an ether, an epoxide, -NH-, -C(O)-, -C(S)- or tertiary amino groups. Claim 42 also recites R3, R4, and R5 can be “hydrocarbon radicals which have up to 1000 carbon atoms, which optionally contain one or more groups selected from an ether, an epoxide, -NH-, -C(O)-, -C(S)-, or tertiary amino groups” . Claim 54 recites “R1 …as defined…” Hydrocarbon is understood to mean “a compound of hydrogen and carbon”. However, the formulae (III) or (IV), in which “X is O” yields structures of “O-C(O)” or “C(O)-O” which is not encompassed by the term “hydrocarbon radicals”. There is an extra oxygen not permitted as an optional group. Claims 43, 44, 46, 48, 52, & 56-60 are rejected under 35 USC 112(b) because they ultimately depend from indefinite claim 42 and do not clarify the issue.
Claim 52 recites the limitations "R11" and “ R7” in last line. There is insufficient antecedent basis for this limitation in the claim.
Claim 54 recites ”-O-“ in two locations of the claim. These portions of the claim appear to be discussing oxygen atoms however, page 3 of the specification discloses “the group “-O-“ represents an ether group which also includes the presence of an epoxide moiety, which is a tri-membered cyclic ether group…the group “-O-“ may contain epoxy groups… This applies…to the residues R3, R4, and R5…which may include a terminal epoxy group”. It is unclear whether “-O-“ represents an oxygen atom, ether group, or an epoxide moiety. Since the metes and bounds of the claim are unclear, the claim is indefinite.
Claims 56-59 recite ”-O-“. This portion of the claims appear to be discussing oxygen atoms however, page 3 of the specification discloses “the group “-O-“ represents an ether group which also includes the presence of an epoxide moiety, which is a tri-membered cyclic ether group…the group “-O-“ may contain epoxy groups… This applies…to the residues R3, R4, and R5…which may include a terminal epoxy group”. It is unclear whether “-O-“ represents an oxygen atom, ether group, or an epoxide moiety. Since the metes and bounds of the claims are unclear, the claims are indefinite.
Response to Arguments
In arguing whether or not the claims are a literal translation into English from a foreign document, Applicant requests the “Examiner properly set forth specific language” (reply, pg. 21). Applicant also argues claim 42 is not a prolix claim (reply, pg. 22).
This is not persuasive. It is Applicant’s representative’s responsibility to construct the claims. Claims are a sentence, yet base claim 42 is three pages long. Applicant’s representative uses colloquial, verbose language (e.g. “can be substituted”) instead of concise, definite language (e.g. “optionally substituted”) in claim 42. Recitation of counter ions (i.e. A-) randomly appears mid-claim but is not even present in the recited chemical structures. Applicant’s representative is also still using undefined substituents in chemical formulae (see for e.g. R11 & R7 substituents in claim 52 and “-O-“ in amended claim 54).
In the traverse claims 42-44, 46, 48, 52, and 54-60 under 35 USC 112(b)-improper Markush group, Applicant argues the claims are in proper Markush format because the claims require 2 or more quaternary N atoms as mandatory and that they share a common use (i.e. haircare; reply, pg. 22).
This is not persuasive. The claims do not encompass a similar chemical structure/use in that the claims encompass a di-quaternary or tetra-quaternary ammonium compound (which is in the class of surfactants) to compounds with 30,000 valent organic anions, falling into the class of polymers (see claim 42, and Applicant’s admission of “the answer is ‘polymers with anionic moieties, such as for example’” in the reply, pg. 20).
In the traverse of the rejection of claims 56-59 under 35 USC 112(b), Applicant argues since “-O-“has been replaced by the recitation of “an ether, an epoxide” these claims are no longer indefinite (reply, pg. 23).
This is not persuasive. Page 3 of the specification discloses “the group “-O-“ represents an ether group which also includes the presence of an epoxide moiety, which is a tri-membered cyclic ether group…the group “-O-“ may contain epoxy groups…”. Applicant may wish to consider whether an amendment to these claims to recite “O is oxygen” would obviate the rejection.
Claim Rejections - 35 USC § 103
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.
Claims 42-44, 48, 52 & 54 are rejected under 35 U.S.C. 103 as being unpatentable over Takazawa (WO 2016/104803; Published: 06/30/2016).
*All references refer to the English language translation.
With regard to claims 42-44, 48, 52 & 54, Takazawa teaches a compound called Chemical 48 at paragraph [0157] which has the structure of :
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in which R1 = C3H6; x =2; R4 and R5 = CH3; counter ions (A-) = halide; R3 contains the moiety of Formula (III) in which m =36; X is O; and R5 = 5. More broadly, with regard to claims 42 & 52, Takazawa teaches Rx1 (i.e. R6) = 2 to 12 carbon atoms , and a (i.e. “m”) = 2-100 ([0006]). With regard to claim 44, Takazawa does not require a subunit comprising polyethylene oxide or polypropylene oxide.
While there is not a single example of a compound comprising each of the claimed components with the recited number of carbon atoms or subunits, these parameters are included among Takazawa’s teachings. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the recited R1, R3, R4, R5, R6, x, n, A-. and m, Takazawa teaches these parameters with values which fall within or overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 42-46, 49-54 & 56-60 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 127-137 and 143 of copending Application No. 17/786,128 (hereinafter the ‘128; claims filed 06/24/2026). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘128 application cites a compound
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with F containing moieties
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reading on the instant General Formula (I ) structure when R3-R5 are
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when connected through an optionally substituted hydrocarbyl radical as recited. The claims of the ‘128 do not require polypropylene oxide or polyethylene oxide. The claims of the ‘128 provide for structures that have similar formula. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 42-54 & 56-60 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 60, 62, 63, 65-68, 71, 76, & 90-97 of copending Application No. 17/840,922 (hereinafter the ‘922; claims filed 03/02/2026). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘922 application cites a compound
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with F containing moieties
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reading on the instant General Formula (I ) structure. The claims of the ‘922 do not require polypropylene oxide or polyethylene oxide. The claims of the ‘922 provide for structures that have similar formula. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant requests the outstanding double patenting rejections be held in abeyance (reply, pg. 25-26).
Applicants' request is acknowledged, however, a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejection is maintained as no action regarding these rejections has been taken by applicants at this time
Conclusion
No claims are allowed.
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 LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (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, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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