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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/21/2026 has been entered.
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 4/21/2026.
Claim Rejections - 35 USC § 103
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Brush (US 2018/0112100).
With respect to claim 9, Brush discloses a method of forming an aqueous coating composition comprising a lactam-functionalized polymer (abstract), wherein an exemplified coating composition is formed from grind formulation comprising a hydrophobically modified hydroxyethyl cellulose (rheology modifier, paragraph 0077), Carbowet 106 ethoxylated nonionic surfactant, a defoamer, Tamol 1124 sodium salt of a maleic anhydride copolymer (functionally a dispersant), titanium dioxide pigment (paragraph 0146, Table 7A), and Nuosept 498B (a biocide) and a letdown formulation comprising vinyl acetate/ethylene emulsion (i.e., binder) and two associative thickeners (i.e., rheology modifiers) (Table 7B). The ethoxylated nonionic surfactant is present in an amount of 3 pounds and the combined hydrophobically modified hydroxyl cellulose rheology modifier and associative thickeners are present in an amount of 3 pounds which provides for a weight ratio of rheology modifier to nonionic surfactant of 11:1.
Brush does not exemplify a formulation (i) comprising an ethoxylated amine as the ethoxylated nonionic surfactant or (ii) not comprising biocide (Nuosept 498B).
With respect to (i), in paragraph 0086, Brush teaches that suitable nonionic surfactants include amine ethoxylates such as oleyl amine+12EO (paragraph 0086) which reads on claimed formula I when R is hydrogen, x = 15, y = 0 or 15 if secondary or tertiary amine, R1 is C18 unsaturated alkyl. Brush teaches that associative thickeners (i.e., rheology modifiers) are used to thicken aqueous solutions (paragraph 0005) and that surfactants are used to improved substrate wetting (paragraph 0085) but does not teach or suggest that the mixture of rheology modifier and surfactant promotes microbial growth. In the absence of evidence to the contrary, the mixture of rheology modifiers is expected to “not promote microbial growth” like claimed any more or less than the other ingredients in Brush’s paint.
Given that Brush discloses a ratio of rheology modifier to nonionic surfactant within the claimed range and further given that Brush teaches that a suitable nonionic surfactant includes alkoxylate amine which reads on claimed formula I, it would have been obvious to one of ordinary skill in the art to utilize a nonionic surfactant having claimed formula I in the method of preparing a coating composition taught by Brush to obtain a mixture of rheology modifier and surfactant that does not promote microbial growth.
With respect to (ii), while exemplified, a biocide is not a required ingredient in the disclosure of Brush. Specifically, paragraph 0068 states that biocides “may be” be added. Case law holds that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others. In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Therefore, it would have been obvious to one of ordinary skill in the art to not utilize any of Brush’s optional ingredients, including biocides.
With respect to claim 10, Brush does not exemplify a formulation comprising a rheology modifier that is an ethylene oxide polymer.
Even so, Brush teaches that suitable rheology modifiers also include polyalkylene ether derivatives and HEUR (hydrophobically modified ethylene oxide urethane polymer) as an alternative to the cellulose derivatives (paragraph 0077). Therefore, it would have been obvious to one of ordinary skill in the art to select one of these as the rheology modifier.
Brush discloses pH adjustment agents such as acids including phosphoric acid (paragraph 0078). While Brush does not disclose adding the pH adjustment agent to the rheology modifier and nonionic surfactant of formula I, case law holds that the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Therefore, it would have been obvious to one of ordinary skill in the art to prepare an aqueous coating composition by mixing the acid pH adjustment agent to the rheology modifier and nonionic surfactant before mixing with the remaining ingredients—absent a showing of unexpected or surprising results.
With respect to claim 11, Brush fails to disclose the amount of the pH adjustment agent such as phosphoric acid.
However, it is the examiner’s position that the amount of phosphoric acid is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate amounts of phosphoric acid, including those within the scope of the present claims, so as to produce desired end results.
With respect to claim 12, Brush discloses oleyl amine+12EO (paragraph 0086) which reads on claimed formula I when R is hydrogen, x = 15, y = 0, and R1 is C18 unsaturated alkyl.
This one specified compound does not read on claimed formula Ia because of the branched nature of the alkyl group. Even so, case law holds that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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).
Therefore, it would have been obvious to one of ordinary skill in the art to arrive at claimed Formula Ia.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Brush (US 2018/0112100) in view of Brown (US 4,923,514).
The discussion with respect to Brush in paragraph 9 above is incorporated here by reference.
Brush fails to specify other amine ethoxylates that read on claimed formulae Ib and Ic.
Brown discloses a cleaning composition comprising an alkoxylated amine surfactant and teaches that “typical” and “commercially available” alkoxylated amine surfactants include
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(reads on claimed formula Ic),
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(reads on claimed formula Ia), and
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(reads on claimed formula Ib), wherein R, R’, and R’’ are hydrogen or an alkyl radical with 1-30 carbon atoms, and x, y, and z are integers 1-15 (col. 4, lines 1-57).
Given that Brush teaches using ethoxylates amines as surfactant and further given that Brown teaches the equivalence of typical ethoxylated amines including those of formulae Ib and Ic, it would have been obvious to one of ordinary skill in the art to utilize the claimed compounds as an effective ethoxylated amine surfactant in the composition of Brush. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Response to Arguments
Applicant's arguments filed 4/21/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Brush fails to disclose that the mixture of the rheology modifier and surfactant would “not promote microbial growth” (claimed) or inhibit microbial growth.
First, the claims do not state that the mixture “inhibits microbial growth.” Rather, the claims only require that the mixture “does not promote microbial growth.” Inhibiting and promoting are two distinct characteristics. Second, Brush teaches that associative thickeners (i.e., rheology modifiers) are used to thicken aqueous solutions (paragraph 0005) and that surfactants are used to improved substrate wetting (paragraph 0085) but does not teach or suggest that the mixture of rheology modifier and surfactant promotes microbial growth. In the absence of evidence to the contrary, the mixture of rheology modifier and surfactant is expected to “not promote microbial growth” any more or less than the other neutral ingredients (including water) in Brush’s paint.
Also, Applicant argues that Brush exemplifies composition comprising biocides which are excluded by claim 9.
In paragraph 0068 states that biocides “may be” be added. While the exemplified formulations of Brush include a biocide, a biocide is not a required ingredient in the disclosure of Brush. Case law holds “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others. In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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