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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 6-7, 13-17 and 31-32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Melpolder (US 4,578,357, submitted in the Information Disclosure Statement filed on June 20, 2022).
With regards to claim 1, Melpolder teaches of a water indicating paste composition which produces a detectable color change upon contact with an aqueous liquid, such as an aqueous liquid located at the bottom of tanks and delivery systems holding gasoline (see abstract in Melpolder). The paste composition comprises at least one indicator dye capable of changing color in a pH range of about 7 to about 11, which range is totally encompassed by the pH range of about 3 to about 11 recited in instant claim 1. Therefore, the pH range of about 7 to about 11 for the at least one indicator dye in the paste composition taught by Melpolder anticipates the pH range of the at least one indicator dye recited in instant claim 1. The paste composition taught by Melpolder also comprises at least one first inorganic base capable of reacting with water to convert the at least one first inorganic base into a second inorganic base which is more basic than the first inorganic base, wherein the at least one first inorganic base comprises a caustic powder such as calcium oxide, calcium hydroxide, strontium oxide, strontium hydroxide, barium oxide, barium hydroxide, magnesium oxide, magnesium hydroxide, etc (see lines 6-27 in column 5 of Melpolder). The paste composition also comprises at least one liquid carrier such as polyalkylene glycols (see lines 28-68 in column 5 of Melpolder), and optionally, at least one gelling agent such as silica, talc, clay, etc. (see lines 4-24 in column 6 of Melpolder).
Melpolder also teach that prior art paste compositions containing each of the at least one indicator dye, the at least one first inorganic base, the at least one liquid carrier, and optionally, the at least one gelling agent, also have been known to contain acids such as adipic acid and stearic acid as water scavengers for reacting with water or aqueous liquids prior to the paste composition color reaction with an aqueous liquid in a sample such as gasoline. Both adipic acid and stearic acid are proton donating compounds having a pKa of at most 12, and are C6-C24 aliphatic carboxylic acids (adipic acid is a C6 aliphatic carboxylic acid and stearic acid is a C18 aliphatic carboxylic acid). Therefore, this teaching of prior art paste compositions by Melpolder comprising either adipic acid or stearic acid anticipate the paste composition recited in claim 1. It is also noted that the instant specification teaches that adipic acid is an effective proton donating compound in the instant paste composition (see line 23 on page 4 and example 3 on page 18 of the instant specification). Therefore, the adipic acid taught by Melpolder as being present in prior art paste compositions containing each of at least one indicator dye, at least one first inorganic base, at least one liquid carrier, and optionally, at least one gelling agent, anticipates the paste composition recited in instant claim 1 since the adipic acid taught by Melpolder can be used in the same way as taught by the instant specification as at least one proton donating compound having a pKa of at most 12 and being a C6-C24 aliphatic carboxylic acid. Although Melpolder teaches that the use of adipic acid and stearic acid in a water indicating paste composition is not preferred since it causes a color reaction with an aqueous liquid or water to occur too slowly or too fast, it is noted that “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed."). In addition, it has been held that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2123, I. and II.
See the abstract, lines 43-68 in column 2, lines 1-10 in column 3, lines 44-68 in column 4, lines 6-68 in column 5, lines 4-24 in column 6, and the claims in Melpolder.
With regards to claim 6, since the adipic acid taught by Melpolder is the same as the adipic acid used as a proton donating compound in the instant invention, the adipic acid in the prior art paste compositions taught by Melpolder would be expected to have a solubility in water at 25oC of from 0.01 g/L o 75 g/L.
With regards to claim 7, since the adipic acid taught by Melpolder is the same as the adipic acid used as a proton donating compound in the instant invention, the adipic acid in the prior art paste compositions taught by Melpolder would be expected to have a pKa of at least zero.
With regards to claims 13-14, Melpolder teaches that the at least one indicator dye in the paste composition is a water soluble dye such as phenolphthalein, o-cresolphthalein, p-naphtholbenzein, ethyl bis(2,4-dinitrophenol) acetate, thymolphthalein, and Nile Blue A.
With regards to claim 15, Melpolder teaches that the at least one first inorganic base in the paste composition includes CaO (see lines 17-18 in column 5 of Melpolder).
With regards to claim 16, Melpolder teaches that the at least one liquid carrier in the paste composition includes at least one polyalkylene glycol (see lines 40-57 in column 5 of Melpolder).
With regards to claim 17, Melpolder teaches that the paste composition is prepared by customary methods employed in the art for the production of paste compositions, wherein the components of the composition (i.e. the at least one indicator dye, the at least one first inorganic dye, the at least one liquid carrier, the at least one optional gelling agent, and the at least one proton donating compound having a pKa of at most 12) are conventionally fed to a mixer and blended together to form an even, smooth paste. Melpolder teaches that the ingredients of the composition may be incorporated prior to, concurrently with or after the incorporation of any other of the ingredients. See lines 25-40 in column 6 of Melpolder.
With regards to claim 31, the method taught by Melpolder for mixing the ingredients of the paste composition (i.e. the at least one indicator dye, the at least one first inorganic dye, the at least one liquid carrier, the at least one optional gelling agent, and the at least one proton donating compound having a pKa of at most 12) results in a paste composition substantially as recited in claim 1, prepared by the mixing steps recited in claim 17.
With regards to claim 32, Melpolder teaches of a method of detecting an aqueous liquid within a container having contents disposed therein, such as an aqueous liquid located at the bottom of tanks and delivery systems holding gasoline (see abstract in Melpolder), comprising contacting a measuring probe having disposed thereon a layer of a paste composition comprising at least one indicator dye, at least one first inorganic dye, at least one liquid carrier, at least one optional gelling agent, and at least one proton donating compound having a pKa of at most 12 with the contents of the container, withdrawing the measuring probe from the container, and visually inspecting the layer of the paste composition for a color change resulting from the interaction of the paste composition with the aqueous liquid. See the abstract, and lines 31-39 in column 2 of Melpolder.
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.
Claim(s) 8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melpolder (US 4,578,357, submitted in the Information Disclosure Statement filed on June 20, 2022). For a teaching of Melpolder, see previous paragraphs in this Office action.
Melpolder fails to teach of the specific limitations recited in each of claims 8 and 10-12. However, with regards to claim 8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an amount of the at least one proton donating compound in the paste composition taught by Melpolder that is in stoichiometric excess relative to a total amount of water and the second inorganic base which is present when the paste composition is prepared because the proton donating compound serves to inhibit moisture from reacting with the other components of the paste composition prior to its use to detect an aqueous liquid in a test sample, and thus, using a greater amount of the proton donating compound than a total amount of water and the second inorganic base when preparing the paste composition would ensure that any moisture or water present during the preparation is scavenged and inhibited by the proton donating compound.
With regards to claim 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an amount of the proton donating compound in the paste composition taught by Melpolder that is effective to permit the paste composition to exhibit a color change within 1 minute of being contacted with water at 25oC because the paste composition taught by Melpolder is intended to rapidly detect an aqueous liquid in a test sample (i.e. about 10 seconds), and in order for this function to occur, one of ordinary skill in the art would desire to use an amount of the proton donating compound which does not adversely affect the reaction of an aqueous liquid in a test sample with the other components of the paste composition.
With regards to claims 11-12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the proton donating compound in the paste composition taught by Melpolder in an amount of about 0.01 to about 5 percent by weight in total and to use amounts of the at least one first inorganic base and the proton donating compound in a weight ratio of first inorganic base: proton donating compound of from 1:1 to 100:1 because Melpolder teach that the components of the paste composition are present in amounts that provide desirable water sensitivity properties, thus motivating one of ordinary skill in art to vary the amounts of both the first inorganic base and the proton donating compound in the paste composition taught by Melpolder to the values recited in claims 11-12 in order to produce desirable water sensitivity properties.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melpolder (US 4,578,357, submitted in the Information Disclosure Statement filed on June 20, 2022) in view of Mohtadi (US 6,376,250, submitted in the Information Disclosure Statement filed on June 20, 2022). For a teaching of Melpolder, see previous paragraphs in this Office action.
With regards to claim 18, Melpolder teaches that the paste composition is prepared by customary methods employed in the art for the production of paste compositions, wherein the components of the composition (i.e. the at least one indicator dye, the at least one first inorganic dye, the at least one liquid carrier, the at least one optional gelling agent, and the at least one proton donating compound having a pKa of at most 12) are conventionally fed to a mixer and blended together to form an even, smooth paste. However, Melpolder fails to teach that the at least one liquid carrier, the at least one indicator dye and the at least one proton donating compound (i.e. a water scavenger) are mixed together first to form a first mixture, and then the first mixture is combined with the at least one inorganic base and optionally the gelling agent to form the paste composition.
Mohtadi also teaches of a paste composition for detecting an aqueous liquid in a test sample containing hydrocarbons by producing a color change. The paste composition comprises a liquid carrier, a first inorganic base, a gelling agent, an indicator dye, and a water scavenger. Mohtadi teaches that in order to produce a paste composition of high quality, the components of the composition are mixed in a precise order to ensure the best homogeneity and consistency of the paste. In particular, Mohtadi teaches that it is best to first combine the liquid carrier, the indicator dye and the water scavenger together to form a first mixture, and then combining this first mixture with the first inorganic base (calcium oxide) and the gelling agent. See the abstract, lines 56-66 in column 3 and lines 1-3 in column 4 of Mohtadi.
Based upon the combination of Melpolder and Mohtadi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the paste composition taught by Melpolder by first combining the at least one liquid carrier, the at least one indicator dye and the at least one proton donating compound (i.e. a water scavenger) together to form a first mixture, and then combining the first mixture with the at least one inorganic base and optionally the gelling agent to form the paste composition because Mohtadi teaches that this order of mixing ingredients of a water indicating paste composition produces a paste composition of high quality by ensuring the best homogeneity and consistency of the paste.
Allowable Subject Matter
Claims 5 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims since the closest prior art reference to Melpolder (US 4,578,357) and the other prior art of record fails to teach or fairly suggest a paste composition for producing a detectable color change upon contact with an aqueous liquid comprising at least one indicator dye capable of changing color in a pH range of about 3 to about 11, at least one first inorganic base, at least one liquid carrier, optionally at least one gelling agent, and either nonanoic acid, dodecylbenzene sulfonic acid, or a combination thereof. In addition, the closest prior art reference to Melpolder (US 4,578,357) and the other prior art of record fails to teach or fairly suggest a paste composition for producing a detectable color change upon contact with an aqueous liquid comprising at least one indicator dye capable of changing color in a pH range of about 3 to about 11, at least one first inorganic base, at least one liquid carrier, and at least one proton donating compound present in the paste composition in an amount which is effective to stabilize the paste composition against color change upon exposing the paste composition to air having a relative humidity of 70% at 25oC for at least 10 minutes.
Response to Arguments
Applicant's arguments filed February 23, 2026 have been fully considered but they are not persuasive.
The previous objections to the claims made in the last Office action mailed on August 21, 2025 have been withdrawn in view of the amendments made to the claims. In addition, the previous rejection of the claims under 35 USC 112(a) made in the last Office action has been withdrawn in view of Applicant’s persuasive arguments.
Applicant argues the rejection of the claims under 35 USC 102(a)(1) as being anticipated by Melpolder (US 4,578,357, submitted in the Information Disclosure Statement filed on June 20, 2022) by stating that Melpolder fails to disclose a single embodiment with the specific combination of limitations recited in claims 1 and 17 since there is no clear and unambiguous disclosure in Melpolder of a composition comprising all of the distinct components recited in claims 1 and 17, and it is not possible to infer from the background of Melpolder that the compositions of its prior art also comprised the other components of instant claims 1 and 17 in addition to the proton donating compound. This argument is not persuasive since lines 59-68 in column 2 and lines 1-4 in column 3 of Melpolder (US 4,578,357) state “As is noted in the aforementioned application Ser. No. 490,744, the disclosure of which is hereby incorporated by reference, water or aqueous solutions promote the caustic powder-indicator dye color reaction of the paste compositions dissolved therein. It was indeed surprising to discover that certain esters of boric acid and related organic compounds in which boron is attached to oxygen are capable of acting as a water scavenger in such compositions, thereby chemically reacting with water or aqueous solutions prior to the caustic powder (i.e. an inorganic base)-indicator dye color reaction, especially since attempts to employ other added organic compounds including acids, anhydrides, salts, oxides, molecular sieve adsorbents and active metal compounds were all unsuccessful”. This section of Melpolder serves as evidence that the prior art compositions described by Melpolder containing a C6-C24 aliphatic carboxylic acid, such as adipic acid and stearic acid, were the dyes described in prior patent application Ser. No. 490,744, and these prior art dyes also contained an indicator dye, a first inorganic base (i.e. a caustic powder) and a liquid carrier as recited in the paste composition of the instant invention. It is noted that patent application serial no. 490,744 is now U.S. Patent no. 4,699,885, which was submitted in the IDS filed on June 20, 2022 in the instant application. U.S. Patent no. 4,699,885 teaches of prior art paste compositions for detecting water or an aqueous liquid in a hydrocarbon sample such as gasoline or oil. These prior art paste compositions taught by U.S. Patent no. 4,699,885 comprise each of an indicator dye capable of changing color in a pH range of 7 to about 11, a first inorganic base such as calcium oxide capable of reacting with water to convert the first inorganic base into a second inorganic base which is more basic than that first inorganic base, a liquid carrier comprising at least one polyalkylene glycol, and optionally, a gelling agent. See columns 2-4 in U.S. Patent no. 4,699,885. Therefore, the prior art paste compositions disclosed in application 490,744 (i.e. U.S. Patent 4,699,885) which Melpolder (U.S. 4,578,357) indicates that a proton donating compound comprising a C6-C24 aliphatic carboxylic acid (i.e. adipic acid and stearic acid) was added to contains each of the components of the paste composition recited in independent claims 1 and 17. For this reason, the prior art paste compositions taught by Melpolder containing an added C6-C24 aliphatic carboxylic acid (i.e. adipic acid and stearic acid) anticipate the paste composition recited in claims 1, 6-7, 13-17 and 31-32.
Applicant further argues that claims 9 and 10 are patentable over Melpolder (US 4,578,357) because Melpolder discloses that the compositions of the prior art comprising conventional carboxylic acids were ineffective as the reaction between the base (caustic powder) and the indicator dye was either too slow or too active thereby rendering the base impotent. This argument is persuasive with regards to claim 9, which has now been indicated to be allowable. However, with regards to claim 10 which recites an amount of the proton donating compound which is effective to permit the paste composition to exhibit a color change within 1 minute of being contacted with water at 25oC, this limitation indicates that the color reaction of the paste composition with water recited in the instant claims occurs very fast (i.e. within one minute or 1 minute or less), and Melpolder teaches that the addition of a carboxylic acid such adipic acid or stearic acid to the prior art indicator paste compositions resulted in a very fast (i.e. too active) reaction. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to realize that an amount of the proton donating compound (i.e. adipic acid or stearic acid) in the prior art paste compositions taught by Melpolder is an amount effective to permit the paste composition to exhibit a color change within 1 minute of being contacted with water at 25oC because Melpolder discloses that these paste compositions comprising one of adipic acid or stearic acid react with water very fast in a “too active” reaction, thus suggesting that the color reaction occurs in less than one minute at room temperature (i.e. about 25oC).
For all the above reasons, Applicant’s arguments are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please make note of: Owen et al (US 12,448,535) who teach of a composition for wetness indication.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAUREEN M WALLENHORST whose telephone number is (571)272-1266. The examiner can normally be reached on Monday-Thursday from 6:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander, can be reached at telephone number 571-272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAUREEN WALLENHORST/Primary Examiner, Art Unit 1797 March 10, 2026