DETAILED ACTION
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
Newly submitted claims 16-27 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Groups I (claims 1-6), II (claims 16-21) and III (claims 22-27) lack unity of invention because even though the inventions of these groups require the technical feature of a composition comprising a mixture of an alcohol (1) and an alcohol (2), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Naik et al (US 4732707 A) as stated in the 10/17/2025 office action.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 16-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
The amendment filed on 1/14/2026 has been entered. Claim(s) 1 is/are currently amended. Claim(s) 7-15 has/have been cancelled. Claims 16-27 are new. Claim(s) 1-6 and 16-27 is/are pending with claims 16-27 withdrawn from further consideration. Claims 1-6 is/are under examination in this office action.
Response to Arguments
Applicant's argument, filed on 1/14/2026, with respect to 102 and 103 rejections has been fully considered but is moot in view of the new grounds of rejection presented below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1, 3, 4, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al (US 20190359915 A1).
Regarding claims 1, 3, 4 and 6, Holland teaches a detergent of C14-C19 alkylene-bridged surfactant [0142] derived from fatty alcohols such as 2-propyl-1-undecanol, 2-pentyl-1-nonanol [0166], and a C18 fatty alcohol [0170].
It would have been obvious to one of ordinary skill in the art at the time of filing to select a mixture of 2-propyl-1-undecanol, 2-pentyl-1-nonanol, and a C18 fatty alcohol as the fatty alcohol to make the detergent in Holland’s composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The 2-propyl-1-undecanol reads on the claimed alcohol (1) wherein a=2, R1=H, R2=C7 alkyl group. The 2-pentyl-1-nonanol reads on the claimed alcohol (2) wherein R3=pentyl group. The C18 fatty alcohol reads on the claimed alcohol (3).
Claim(s) 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al (US 20190359915 A1) as applied to claim 1 above, further in view of Naik et al (US 4732707 A).
Regarding claims 2 and 5, Holland teaches the composition in claim 1 as stated above. Holland further teaches that the fatty alcohol can be 2-butyl-1-decanol [0166], which reads on the claimed alcohol (2) having the structure (2) wherein R3=butyl group as specified in claims 2 and 5.
Holland does not expressively teach the claimed structure (1) wherein a=1.
In the same field of endeavor, Naik teaches a C12/C13 alcohol composition used to make alkyl ether sulphate detergents [abstract]. The C12/C13 alcohol composition comprises 2-ethyl-1-undecanol and 2-butyl-1-nonanol [col.3 line 49-62].
It would have been obvious to one of ordinary skill in the art at the time of filing to add 2-ethyl-1-undecanol as the fatty alcohol to make the detergent in Holland’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Alternatively, it is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Holland teaches 2-propyl-1-undecanol as a fatty alcohol in making the detergent as stated above. Since Holland and Naik recognized 2-ethyl-1-undecanol and 2-propyl-1-undecanol are equivalent for the same purpose as fatty acid alcohols for making the detergent, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute 2-propyl-1-undecanol with 2-ethyl-1-undecanol in Holland’s composition.
Still alternatively, 2-ethyl-1-undecanol and 2-propyl-1-undecanol are homologs - compounds differing regularly by the successive addition of the same chemical groups, in the present instance, a -CH2- group. Homologs “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Additionally, 2-ethyl-1-undecanol and 2-propyl-1-undecanol have the same utility as fatty acid alcohol for detergent making. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); MPEP 2144.09.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Holland to select 2-ethyl-1-undecanol as homolog of 2-propyl-1-undecanol, as 2-ethyl-1-undecanol is expected to possess similar properties and have similar utility relative to 2-propyl-1-undecanol.
The examiner submits that the 2-ethyl-1-undecanol reads on the claimed alcohol (1) in claims 2 and 5 wherein a=1, R1=H, R2=C7 alkyl group.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762