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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/24/2026 has been entered.
Formal Matters
Receipt of Applicant’s response dated 03/24/2026 is acknowledged.
Claims 1-3, 5-19, and 21-23 are pending.
Claims 4 and 20 are canceled.
Claims 1-3, 5-10, 17-18, and 21-22 are amended.
Claims 11-23 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-3 and 5-10 are under consideration in the instant Office action.
Information Disclosure Statement
The information disclosure statement (IDS) filed 03/19/2026 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection to the specification set forth in the Office action dated 01/21/2026 is hereby withdrawn in light of Applicant’s amendments to the specification.
Claim Objections
The objections to claims 2-3 and 5-10 set forth in the Office action dated 01/21/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(a)
The rejection to claims 1-3 and 5-10 set forth in the Office action dated 01/21/2026 is hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The rejections to claims 1-3 and 5-10 set forth in the Office action dated 01/21/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The rejection to claims 1-3 and 5-10 set forth in the Office action dated 01/21/2026 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because “which mixture” in line 1 should be amended to “wherein the mixture” for grammatical correctness and “total weight of polyether phosphate ester” in the last line should be amended to “total weight of the mixture of polyether phosphate esters” in order to improve claim readability and consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 2-3 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.
(a) Claim 2 is indefinite in the recitation of “the mixture of polyether phosphate esters according to claim 1, comprising at least one terminal C6 to C36 hydrocarbyl group” because claim 1 recites “a mixture of polyether phosphate esters…comprises at least one mono-ester species having one phosphate ester group and at least one di-ester species having two phosphate ester groups”, and therefore, it is unclear whether claim 2 requires that one of the at least one mono-ester species or the at least one di-ester species comprise the at least one terminal C6 to C36 hydrocarbyl group, at least one of the at least one mono-ester species and the at least one di-ester species comprise the at least one terminal C6 to C36 hydrocarbyl group, all of the at least one mono-ester species and the at least one di-ester species comprise the at least one terminal C6 to C36 hydrocarbyl group, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims. Claim 3 is rejected for depending from claim 2 without resolving the ambiguity of claim 2.
(b) Claim 3 recites the limitation “the hydrocarbyl group” in line 2. There is insufficient antecedent basis for this limitation in the claim because none of claims 3, 2, or 1 earlier recite “a hydrocarbyl group”, however claim 2 recites “at least one terminal C6 to C36 hydrocarbyl group”. The Examiner suggests amending “the hydrocarbyl group” in claim 3 to “the hydrocarbyl group of the least one terminal C6 to C36 hydrocarbyl group” in order to overcome this rejection.
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 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Pereira et al (US 6,117,915 A, published 09/12/2000, cited in IDS dated 12/30/2022).
Pereira et al teach a composition comprising alkoxylated fatty alcohol phosphate esters and non-alkoxylated fatty alcohol phosphate esters (See entire document, e.g., Col. 1 Line 66-Col. 2 Line 2). The non-alkoxylated fatty alcohol phosphate esters are a mixture of mono-esters and di-esters, wherein the ratio of mono-esters to di-esters is preferably between about 20:80 and 80:20 (e.g., Col. 2 Lines 4-7). The phosphate esters of the non-alkoxylated fatty alcohols are formed by reacting non-alkoxylated fatty alcohols with phosphorous pentoxide, wherein suitable non-alkoxylated fatty alcohols have formula R-OH, wherein R is a saturated or unsaturated, substituted or unsubstituted fatty moiety containing from 12 to 22 carbon atoms (e.g., Col. 3 Lines 26-29, 44-46, and 50-54).
Instant claims 6-10 are product-by-process claims and therefore the product is given patentable weight, not the process by which the product is made. “[Elven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorne, 777 F.2d 695, 698, 227 USPQ S64, 966 (Fed. Cir. 1985). Therefore, claims 6-10 are being examined to the extent of the resulting mixture of polyether phosphate esters, i.e., “a mixture of polyether phosphate esters, which mixture does not comprise an alkylene oxide residue, wherein the mixture comprises at least one mono-ester species having one phosphate ester group and at least one di-ester species having two phosphate ester groups, wherein each of the polyether phosphate esters comprises 3 to 15 ether bonds, wherein the amount of mono-ester species is at least 10% of the total weight of polyether phosphate ester,” and not to the extent of the method for obtaining the mixture of polyether phosphate esters, i.e., “reacting a mixture of polyether species with a phosphorus oxide, wherein the mixture of polyether species is the reaction product of reactants comprising a diol and a mono-alcohol, wherein the diol comprises 2 to 6 carbon atoms, wherein the mono-alcohol comprises 12 to 20 carbon atoms, and wherein the molar ratio of diol to mono-alcohol is from 2:1 to 20:1”.
The non-alkoxylated fatty alcohol phosphate esters of Pereira et al being non-alkoxylated meets the limitation of the mixture not comprising an alkylene oxide residue (instant claim 1). The non-alkoxylated fatty alcohol phosphate esters of Pereira et al being a mixture of mono-esters and di-esters meets the limitation of the mixture comprising at least one mono-ester species having one phosphate ester group and at least one di-ester species having two phosphate ester groups (instant claim 1). The non-alkoxylated fatty alcohol phosphate esters of Pereira et al being formed by reacting non-alkoxylated fatty alcohols with phosphorous pentoxide, wherein suitable non-alkoxylated fatty alcohols have formula R-OH, wherein R is a saturated or unsaturated, substituted or unsubstituted fatty moiety containing from 12 to 22 carbon atoms is inclusive to a mixture wherein each of the esters comprises 3 to 15 ether bonds (instant claim 1), a mixture comprising at least one terminal C6 to C36 hydrocarbyl group (instant claim 2), wherein the hydrocarbyl group is an alkyl or alkenyl group (instant claim 3), and wherein the esters in the mixture do not comprise a carboxylic acid ester bond (instant claim 5).
Regarding the requirement that the amount of mono-ester species is at least 10% of the total weight of polyether phosphate ester (instant claim 1), the non-alkoxylated fatty alcohol phosphate esters of Pereira et al having a ratio of mono-ester to di-esters preferably between about 20:80 and 80:20 corresponds to an amount of mono-esters being preferably from 20% to 80% of the total amount of the non-alkoxylated fatty alcohol phosphate esters. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Thus, the non-alkoxylated fatty alcohol phosphate esters of Pereira et al being a mixture of mono-esters and di-esters, wherein the ratio of mono-esters to di-esters is preferably between about 20:80 and 80:20, wherein the non-alkoxylated fatty alcohol phosphate esters are formed by reacting non-alkoxylated fatty alcohols with phosphorous pentoxide, wherein suitable non-alkoxylated fatty alcohols have formula R-OH, and wherein R is a saturated or unsaturated, substituted or unsubstituted fatty moiety containing from 12 to 22 carbon atoms render obvious instant claims 1-3 and 5-10.
Response to Applicant’s Arguments
Applicant’s arguments filed 03/12/2026 have been fully considered, however, the rejection under 35 USC 103 over Seifert et al set forth in the Office action dated 01/21/2026 has been withdrawn and the teaching of Seifert et al is not applied in a prior art rejection in the instant Office action, and therefore, the arguments regarding the teaching of Seifert et al are considered moot.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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, David Blanchard can be reached at (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
Prosecution Insights