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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 42-62) in the reply filed on 17 November 2025 is acknowledged. The traversal is on the ground(s) that the Group II process is well suited for forming the compounds of the remaining groups and that a search of one group would necessarily be directed to a search of the others (reply, pg. 1). This is not found persuasive because unity is not present for the reasons of record in 18 September 2025; Banno teaches the compound
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.
The requirement is still deemed proper and is therefore made FINAL.
Claims 63-66 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 18 September 2025.
Applicant’s election of Formula 37b in the reply filed on 18 September 2025 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)).
Claims 45, 47, 49-51, 53, 61 & 62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the election requirement in the reply filed on 18 September 2025.
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, 46, 48, 52 & 54.
Claim Status
Claims 42-66 are pending.
Claims 1-41 are cancelled.
Claims 42-66 are new.
Claims 45, 47, 49-51, 53 & 61-66 are withdrawn.
Claims 42-44, 46, 48, 52 & 54-60 are under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 19 September 2022 and 30 October 2024 have been fully considered by the examiner. A signed and initialed copy of each IDS is included with the instant Office Action.
Objections/Rejections
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the superfluous language “The present invention is directed…” and “The invention also relates…”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: kiliavalent organic anion (pg. 4), “30000-valent” and henhectavalent. The examiner queries what sort of chemicals/compounds have these exceptional charges and what number, the scientific notation “henhecta”, represents. The examiner queries whether translation errors and misspellings have occurred.
Claim Objections
Claims 42, 52, 54, 57 and 60 are objected to because of the following informalities:
Claims 42 and 52 recite “tertiary amino groups and then immediately recites
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which is a redundant recitation. Applicant may recite one or the other but not both.
Claims 42 & 52 recites “quaternary ammonium groups” and then immediately recites
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which is a redundant recitation. Applicant may recite one or the other but not both.
In claim 42, on page 3 & 4 in the definitions of R1 and R2, Applicant is missing the word “or” between “-C(S)-“ and “tertiary” due to use of “selected from” versus “selected from the group consisting of”.
In claim 42, on page 4 in the definitions of R3, R4 and R5, Applicant is missing the word “or” between “tertiary” and “quaternary ammonium groups” due to use of the phrase “selected from” versus “selected from the group consisting of”.
In claim 42, on page 5 in the definition of R11, Applicant is missing the word “or” between “-C(S)-“ and “tertiary” due to use of “selected from” versus “selected from the group consisting of”.
In claim 52, on page 12 in the definition of R10, Applicant is missing the word “or” between “tertiary” and “quaternary ammonium groups” due to use of the phrase “selected from” versus “selected from the group consisting of”.
Claim 52 needs the word “or” between “copolymers, poly (itaconic acid)” since it’s a list of options (i.e. “the group consisting of…”)
Claim 54 is objected to because it has two periods at the end of the claim.
Claim 57 has an additional “in” reciting “wherein in”.
Claim 60 recites the informal scientific jargon “di-quat” and “tetra-quat”.
Appropriate correction is required.
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 & 54-60 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.
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 claims 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 & 54-60 are rejected under 35 USC 112(b) because they depend from indefinite claim 42.
Claims 42-44, 46, 48, 52 & 54-60 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.
Claim 42 recites the limitation “the counter ions A- of the ammonium ions..” on pg. 4, ll. 15; however general formula I fails to recite A- counter ions. There is insufficient antecedent basis for this limitation in the claim.
Claim 42 recites the limitation "the cationic structure of the general formulas (I) and (II) " on pg. 4, ll. 17. There is insufficient antecedent basis for this limitation in the claim.
Claim 42 also does not make sense, reciting “at least one of R1…present in the cationic structure of the general formulas (I)”. R1 is a hydrocarbon radical and is not required to be cationic on pg. 3, ll. 5 of the claims. It is unclear whether R1 is required to be cationic or just a hydrocarbon radical.
Claims 42 on pg. 3, ll. 7 recites ”-O-“. This portion of the claim appears 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 43, 44, 46, 48, 52 & 54-60 are rejected under 35 USC 112(b) because they ultimately depend from indefinite claim 42 and do not clarify the issues.
Claims 52 and 54 and depend from claim 42 recite R7 being as defined, however claim 42 does not recite R7. It is unclear what R7 is.
Claim 52 on pg. 12 recites ”-O-“. This portion of the claim appears 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.
Claim 52 is indefinite for the recitation of “type” as it makes it unclear if the items following “type” can or should be moieties listed or if they have to be other items that are not listed but in some way resemble the compounds. As “type” can open the items to various types of derivatives for such moieties and these are not provided in the limitation, it would be unclear what moieties are encompassed by these limitations.
Claim 54 contains the parenthetical expression “(self repeating)” in the last line. It is unclear whether it is required that the branched or dendrimeric motif be self repeating or not.
Claim 54 recites “the counter ions A- of this group”. It is unclear as to which group, “this group” refers. The counter ions A- ? R7 carboxylate groups ? Polymeric fatty acid carboxylates of the type? Something else? Since the metes and bounds of the claim cannot be determined the claim is indefinite.
Claim 56 recites the limitation "the cationic structure of the general formulas (I) and (II) ". There is insufficient antecedent basis for this limitation in the claim.
Claim 56 also does not make sense, reciting “at least one of R1…present in the cationic structure of the general formulas (I)”. R1 is a hydrocarbon radical and is not required to be cationic. It is unclear whether R1 is required to be cationic or just a hydrocarbon radical.
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.
Claim 57 recites the limitation “wherein in at least one moiety of the general formula R1*[(-O-C(O)- R6)m-O-C(O)-]2,” There is insufficient antecedent basis for this limitation in the claim.
Claim 57 is indefinite for the recitation of “derived” as it makes it unclear if the items following “derived” can or should be compounds listed or if they have to be other items that are not listed but in some way derived from the compounds. As “derived” can open the items to various types of derivatives for such compounds and a type of derivation is not provided in the limitation, it would be unclear what compounds are encompassed by these limitations.
Claim 58 recites the limitation "the cationic structure of the general formulas (I) and (II) ". There is insufficient antecedent basis for this limitation in the claim.
Claim 58 also does not make sense, reciting “at least one of R1…present in the cationic structure of the general formulas (I)”. R1 is a hydrocarbon radical and is not required to be cationic. It is unclear whether R1 is required to be cationic or just a hydrocarbon radical.
Claim 58 recites the limitation “R1*[(-O-C(O)- R6)m-O-C(O)-R7*-]2…. wherein R1*…as defined,” There is insufficient antecedent basis for this limitation in the claim as claim 42 does not recite an R1*.
Claim 59 recites the limitation “R1*[(-O-C(O)- R6)m-O-C(O)-R7*-]2….on one or both terminal R7* groups”. There is insufficient antecedent basis for this limitation in the claim as claims 42 & 56 do not recite an R1*.
Claim 60 is rejected under 35 USC 112(b) because it depends from indefinite claim 59 and doesn’t clarify the issue.
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 59 & 60 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 59 depends from claim 56. Claim 56 recites the moiety:
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. Claim 59 expands the moiety by adding an R7* unit and reciting:
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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 60 is rejected under 35 USC 112(d) because it depends from rejected claim 59.
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, 46, 48, 52, 54 & 55 are rejected under 35 U.S.C. 103 as being unpatentable over Linder (WO 2014/039502; Published 03/13/2014; IDS-09/19/2022).
Claim Interpretation: The -O- substituent is interpreted as being an oxygen given parlance in the field and this section of the claims referring to substituents by their atomic constituents and not abbreviations.
Linder in claim 39 teaches the compound:
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With regard to claims 42 & 48, Linder teaches X = -N+R5aR5bR5c in which R5aR5bR5c are independently H or substituted or unsubstituted C1-C20 alkyl (i.e. x =2, F = general formula (II) in which n= 0; R3, R4, R5 can be the same or different and are selected from hydrogen and straight-chain, cyclic or branched, saturated, unsaturated or aromatic hydrocarbon radicals which have up to 20 carbon atoms; claim 39). With regard to claim 42, R1 is divalent with a hydrocarbon with 34 carbon atoms and is substituted with oxygen atoms, and -C(O)- groups. With regard to claims 42 & 54, Linder in paragraph [00102] teaches counterions which are “negatively charged group associated with a cationic quaternary amino group in order to maintain electronic neutrality. Exemplary counterions include halide ions (e.g., F-, Cl-, Br-, I-), NO3-, ClO4-, OH-, H2PO4-, HSO4-, sulfonate ions…” With regard to claims 43, 44 & 48, Linders VIIId compound has x =2 and does not comprise polyethylene oxide or polypropylene oxide units. With regard to claims 42, 46, 52 & 55, Linders VIIId compound has the moiety of -O-C(O)-m(R6-C(O)-O) in which m=1 and R6 is 10 which is a position isomer to the claim 46 recitation of (-C(O)-X-R6)m-C(O)-X- (IV). 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 reWilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977)(See MPEP 2144.09)
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, and 49-60 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 12/04/2025). 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 42-60 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 60, 62, 63, 65-68, 71, 76, 90-97 & 108-110 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.
Conclusion
No claims are allowed.
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).
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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