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
This Office action is responsive to Applicant's Response to Election/Restriction, filed Oct. 27, 2025. As filed, claims 1-14, 16-19 are pending in the instant application.
Priority
This application filed 12/16/2022 is a National Stage entry of PCT/EP2021/058080 , International Filing Date: 03/29/2021 PCT/EP2021/058080 Claims Priority from Provisional Application 63128985 , filed 12/22/2020 claims foreign priority to PCT/EP2020/066649, filed 06/16/2020.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Election/Restrictions
Applicant's election of Group I, claims 1-5, drawn to compound of formula I and the species monohydroxyl monoester of formula shown below in the reply filed on 10/27/2025 is acknowledged.
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The traversal is on the basis that there is unity of invention with respect to the claims of Group I-V and are linked to form a single general inventive concept as they share compound of formula (I) as a common structure (Remarks page 2-8).
In response it is noted that as discussed in the previous office action there is no special technical feature shared by Groups I-V.
Furthermore, additional prior art cited herein (vide infra) renders claimed compounds of formula I obvious, therefore the technical feature is not be a special technical feature that is a contribution over the prior art.
Applicants' argument is noted and the Examiner will reconsider rejoinder upon a finding of allowability for the claims of invention Group I.
The requirement is still deemed proper and is therefore made FINAL.
The instantly elected species was searched and examined. It was determined that the elected species was free of the prior art. As a result, the search and examination were expanded within the Markush-type claim 1 until claims 1-5 have been searched in their entirety.
Claims 6-14, 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-5 are examined on the merits herein.
Claim Objections
1. Claim 1 is objected to because of the following informalities: the chemical structure should be replaced with more illegible chemical drawings.
2. Claim 2 is objected for reciting improper Markush language: the recitation in claim 2 for definition of variables of Markush formula “chosen from” should be changed to “selected from the group consisting of”. See MPEP 803.02. “A Markush-type claim recites alternatives in a format such as "selected from the group consisting of A, B and C."
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 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over JPH09105076, April 1997, by Yamaguchi et al. (“the ‘076 publication”; cited in PTO982 attached herewith).
Determining the scope and contents of the prior art: The ‘076 publication teaches the quaternary ammonium salts compounds of formula II ( which corresponds to claimed formula I) in which when variable Y is of formula III ( which corresponds to the fragment
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of the claimed formula I) and variables R1 is a C18 alkyl, R2-R4 are C1-5 alkyl (e.g. methyl which correspond to variables R”, R”, R’” of claimed formula I -instant claim 5) or hydroxyalkyl, R5-6 are C12-44 alkyl or hydroxyalkyl, x is 1 (which correspond to methylene as variable Y of instant formula I; instant claim 4) – the compounds of prior art correspond to the compounds of formula I (abstract, page 2; claims 1-5).
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The compounds of the prior art by ‘706 patent share the same core structure with instantly claimed compound and can be used as an surfactants in the softening agent composition, same utility as instant application.
Ascertaining the differences between the prior art and the claims at issue:
The difference in compounds of the prior art and the claimed compounds, is that the prior art does not teach preparative examples of compounds in which variable Y of formula I comprises R5 as hydroxyalkyl group. Instead, the preparative examples disclosed are drawn to compounds containing alkyl terminal groups (e.g. compound on [0028]).
Conclusion:
A prima facie case of obviousness based on structure exists if the prior art suggests to one of ordinary skill in the art to make the substitution or modification. In re Tabor, 502 F.2d 775 (CCPA 1974). It has been held several times that structurally similar compounds are obvious over one another. See, e.g., In re Payne, 606 F.2d 303, (CCPA 1979) (An obviousness rejection based on similarity in chemical structure and function entails motivation of one skilled in the art to make the claimed compound with an expectation that compounds similar in structure will have similar properties. When prior art compounds essentially "bracket" the instantly claimed compound, one of ordinary skill in the art would clearly be motivated to make the claimed compound.).
MPEP 2141 provides that exemplary rationales that may support a conclusion of
obviousness include (E) " Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In the instant case, before the effective filing date of the claimed invention based on structural similarity, one of ordinary skill in the art would have an expectation of success in making and using the claimed compounds because of the structural similarity between the prior art and the instantly claimed compounds and a suggestion to try various combination of variables on the core structure. The ‘709 publication which describe ammonium compounds that are useful surfactants showing the utility as instant application, and the prior art as a whole suggests that variables R1-R6 may be used in the same location of core structure, that would have motivated the skilled artisan to utilize the hydroxyalkyl structural motif at the core structure and have reasonable expectation of success in obtaining claimed compounds suitable as surfactants. In the interest of generating additional compounds that have the same utility as the compounds taught by the prior, a person having ordinary skill in the art would be motivated to make additional compounds that are most closely related to compounds specifically taught by the prior art that have already been demonstrated to have the desired utility.
The rationale to support a conclusion that the claim would have been obvious is that teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Thus, the claimed invention as a whole is prima facie obvious over the teachings of the prior art.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of US 12503671.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘671 recite a composition which requires the compounds of formula (I). Formula (I) of US ‘671 in claim 1, wherein the cation is identical to instant formula (I) in claim 1. Therefore, the claims of ‘671 require the claimed compounds of formula I.
Conclusion
Claims 1-5 are rejected. Claims 6-14, 16-19 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692