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 .
DETAILED ACTION
Claims 1-4, 6-8, 10-18, 22, and 23 are pending. Claims 5, 9, and 19-21 have been canceled. Note that, Applicant’s amendment and arguments filed February 4, 2026, have been entered.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 11, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4, 2026, has been entered.
Objections/Rejection Withdrawn
The following objections/rejections as set forth in the Office action mailed 11/6/25 have been withdrawn:
None.
Claim Objections
Claims 1-4, 6-8, 16-18, 22, and 23 are objected to because of the following informalities:
With respect to instant claims 1 and 17, it is suggested that Applicant delete “the composition is free of surfactants” and “free of water”, respectively, since instant claim 1 already recites “consisting of” which limits the composition to the recited components. Note that, instant claims 2-4, 6-8, 16, 18, 22, and 23 have also been rejected due to their dependency on claim 1.
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.
Claim 3 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation of a length between 10 and 24 carbon atoms, and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note that, the Examiner asserts that the clause “preferably…” is merely exemplary and is not read as a patentable limitation.
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.
Claim 7 is 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. Claims 7 is dependent upon instant claim 1, wherein instant claim 1 recites “consisting of” with respect to the composition which closes the compositions to additional components; instant claim 7 recites “further comprises” which opens the claim to additional ingredients and does not further limit instant claim 1. 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 Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
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 1-4, 6-8, 16-18, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WO2018/178402 (See English language machine translation) in view of WO2021/043395.
With respect to independent, instant claim 1, ‘402 teaches a composition containing a fatty acid ester fraction and an alcohol fraction, wherein the fatty acid ester fraction can be more than 50% by weight, such as 55%, 70%, 70%, 80%, etc., and the alcohol fraction is, for example, 50, 45, 40. 35, 30, 25, 20, 15, 10 or 5 wt.%, etc., of the first composition. Additionally, the composition further comprises camphor, wherein the amount of camphor is at least 0.5 mg/l. See page 2. Note that, the Examiner asserts that ‘402 does not require the use of camphor and therefore, suggests embodiments containing camphor and embodiments not containing camphor as recited by the instant claims. ‘402 teaches a method for removing petroleum residues from a surface, comprising the steps of: contacting the first composition of the invention with the petroleum residues, incubating the first composition with the petroleum residues present on the surface to obtain a product of reduced viscosity, and removing the product from the surface. The first composition is used to clean a surface of a petroleum tank such as a tank or boiler. See page 3. The fatty acid ester fraction may be a biodiesel or a mixture of various biodiesel such as soybean oil methyl ester. Suitable alcohols include ethanol, methanol, isopropanol, etc. See page 7.
‘402 does not teach the use of lauric acid or a composition containing a fatty acid methyl ester, an alcohol, lauric acid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
‘395 teaches an aqueous neutral cleaning composition comprising (a) an alkylamine alkoxylate as a non-ionic surfactant, (b) an organic acid and (c) an amine. Use of said composition in cleaning of a hard surface. An organic acid may be added to the composition for the purpose of imparting chelating activity and antirust properties to the aqueous neutral cleaning composition. Suitable acids include lauric acid, etc. The acid may be used in amounts from 0.1 to 50% by weight. See Abstract and pages 5-7. Examples of the hard surface include the hard surfaces of mechanical parts, precision fixtures, electronic parts, industrial parts, tools, and the like. The aqueous neutral cleaning composition of the present invention is preferably used for removing organic substances including fats and oils, such as mechanical oils, cutting oils, grease, and waxes, adhering to the hard surface. See page 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 lauric acid in the composition taught by ‘402,
with a reasonable expectation of success, because ‘395 teaches that the use of lauric acid in a similar composition provides antirust properties (i.e., anticorrosion properties) and further, such antirust properties would be desirable in the compositions taught by ‘402.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a fatty acid methyl ester, an alcohol, lauric acid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘402 in view of ‘395 suggest a composition containing a fatty acid methyl ester, an alcohol, lauric acid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims. Note that, the Examiner asserts that the broad teachings of ‘402 in view of ‘395 would suggest compositions which are not miscible with water as recited by instant claim 18 because ‘402 in view of ‘395 teaches compositions containing the same components in the same amounts as recited by the instant claims and further, such properties would flow naturally from the teachings of ‘402 in view of ‘395.
Response to Arguments
With respect to the rejection claims 1-4, 6-8, and 16-21 under 35 U.S.C. 103 as being unpatentable over WO2018/178402 in view of WO2021/043395, Applicant states that ‘402 and ‘395 are not drawn to the same field of endeavor and have different problems solved and therefore, a person having ordinary skill in the art would not look to an aqueous hard-surface cleaner for bulk oil viscosity reduction. Additionally, Applicant states that adding lauric acid from ‘395 would import this surfactant requirement, rendering the composition unsuitable for '402's non-emulsified, petroleum-miscible use and while ‘402 does not require surfactants, combining with ‘395 would require them, thereby teaching away from a surfactant-free blend. Also, Applicant states that the Examiner has relied upon impermissible hindsight reasoning in rendering the claimed invention obvious.
In response, note that, the Examiner asserts that ‘395 is analogous prior art relative to the claimed invention and ‘402 since they are drawn to the same field of endeavor, namely hard surface cleaning compositions, and that one of ordinary skill in the art clearly would have looked to the teachings of ‘395 to cure the deficiencies of ‘402. ‘395 is a secondary reference relied upon for its teachings of lauric acid. Note that, while ‘395 teaches the use of a nonionic surfactant, ‘402 which is the primary reference, does not require the use of nonionic surfactants and ‘402 clearly teaches embodiments which are free of surfactants as recited by instant claim 1. While Applicant states that combining the teachings of ‘402 with ‘395 would result in an overall composition that contains a surfactant, the Examiner does not concur; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to lauric acid in the composition taught by ‘402, with a reasonable expectation of success, because ‘395 teaches that the use of lauric acid in a similar composition provides antirust properties (i.e., anticorrosion properties) and further, such antirust properties would be desirable in the compositions taught by ‘402. Note that, obviousness does not require certainty of success; it requires only a reasonable expectation of success. PAR Pharm., Inc. v. TWE Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) (“The reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success.”).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thus, the Examiner asserts that teachings of WO2018/178402 in view of WO2021/043395 are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that data has been provided in the instant specification which is sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that pages 10-12 and Figures 1-3 provide data showing that the claimed invention provides unexpected and superior crude oil viscosity reduction and cleaning in comparison to compositions falling outside the scope of the instant claims.
In response, note that, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims are open to any fatty acid methyl ester component in broad amounts, an alcohol in broad amounts, and lauric acid in any amount, while the instant specification provides data with respect to only several specific embodiments which is not commensurate in scope with the instant claims. Note that, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); See MPEP 716.02(d)(I).
Applicant has not provided on this record a sufficient basis for concluding that the generic scope of protection sought by claim 1 is reasonably commensurate with the showing of alleged unexpected results. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (obviousness rejection affirmed because evidence establishing that one (or a small number of) species gives unexpected results is inadequate proof); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims). Note that, the evidence in the Specification is not commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having an “alkali metal”. Appellants have not established that the results using the single embodiment in (Example 3) is representative of the results which would be obtained over the broad scope of compositions covered by the claims).
Additionally, the Examiner would like to point out that Figures 1-3 are blurry and unclear and that no objective determination can be made with respect to the unexpected and superior properties of the claimed invention due to the lack of clarity of the Figures. For example, Figures 3a-3c, which are presented to show the cleaning properties of the claimed invention, are very blurry and not sufficient or persuasive. Further, while the instant specification provides data with respect to the claimed invention, it appears that there is no data provided with respect to compositions falling outside the scope of the instant claims (i.e., comparative data) such that it is unclear if the data provided with respect to the claimed invention actually rises to the level of unexpected and superior or merely shows the characteristics and properties of the claimed invention and what one of ordinary skill in the art would reasonably expect. Thus, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
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 GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/February 26, 2026