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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 10/22/2025.
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 new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 10/22/2025. In particular, claim 1 has been amended to include phosphoric acid, and claims 9-14 are new. Thus, the following action is properly made final.
Claim Objections
Claim 9 is objected to because of the following informalities: in line 6, “R4” should have a superscript for the “4”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Schalitz (US 6,387,874).
Schalitz discloses an aqueous cleaning composition comprising a blending of wetting agents and an effective amount of a thickener agent (rheology modifier) in an effective amount (abstract). Schalitz teaches that the principal wetting agent having HLB of at least 10 includes ethoxylated amine such as Triton RW-50 (col. 8, line 1) which reads on claimed Ia when x = 5 and R4 = decyl as disclosed by applicant on page 4, lines 17-21 of the specification as originally filed. Schalitz discloses that the amount of wetting agent that includes Triton RW-50 is 0.1-5 wt %, and the amount of thickening agent is 0.1-10 wt % (col. 4, lines 10-20)--which provides a ratio of rheology modifier to surfactant of Formula I of 50:1 to 100:1. In a preferred formulation, the composition includes 0.38 wt % wetting agent having HLB of at least 10 and 5.0 wt % thickener (col. 9, line 55 to col. 10, line 20) which provides for a ratio of about 13:1, but does not include a wetting agent having claimed formula I.
Schalitz fails (i) to disclose with sufficient specificity to anticipate a composition comprising rheology modifier and surfactant of Formula I or (ii) adding phosphoric acid.
With respect to (i), Schalitz discloses a range of ratios that overlap with the claimed range and includes formulations having a ratio within claimed range and teaches that the thickening agent is used in an effective amount, it would have been obvious to one of ordinary skill in the art to prepare an aqueous composition comprising rheology modifier and surfactant of Formula I within a ratio of 1:2 to 100:1.
With respect to (ii), Schalitz teaches that mineral acids such as phosphoric acid are used to clean surfaces because they are “very effective” at removing hard water deposits however they also can cause serious issues with biomass in wastewater (col. 1, lines 25-31). Schalitz teaches using organic acids in place of these mineral acids as a cleaner to remove the same deposits (col. 7, lines 1-9).
Despite the teach away from phosphoric, it would have been obvious to one of ordinary skill in the art to substitute at least some of the organic acid for phosphoric acid because phosphoric acid is a known cleaner. Case law holds that “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”. KSR Int'l Co v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007), citing Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). 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).
Given that Schalitz teaches that phosphoric acid is an effective cleaner and further given that there not appear to an inventive step by adding known phosphoric acid to Schalitz’s cleaning composition, it would have been obvious to one of ordinary skill in the art to utilize a small amount of phosphoric acid in place of the organic acid and expect the same cleaning and reducing biomass issues related to only phosphoric acid addition.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Schalitz (US 6,387,874) in view of evidence provided by Braeckman (US 2020/0339913).
The discussion with respect to Schalitz in paragraph 6 above is incorporated here by reference.
Schalitz discloses that the thickening agent can be Acusol 880/882 which are hydrophobically modified ethoxylated urethanes (HEUR) as evidenced by Bracekman in paragraph 0084. Therefore, Schalitz discloses an ethylene oxide urethane polymer and it would have been obvious to one of ordinary skill in the art to utilize a rheology modifier that is an ethylene oxide urethane polymer.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Schalitz (US 6,387,874) in view of evidence provided by Braeckman (US 2020/0339913) and further in view of Brown (US 4,923,514).
The discussion with respect to Schalitz and Bracekman in paragraph 7 above is incorporated here by reference.
Schalitz discloses that the principal wetting agent includes ethoxylated amines (col. 7, line 67 to col. 8, line 1) but does not explicitly disclose the surfactants of formula IIb and IIc.
Brown discloses a cleaning composition comprising an alkoxylated amine surfactant and teaches that “typical” alkoxylated amine surfactants include
PNG
media_image1.png
82
134
media_image1.png
Greyscale
(reads on claimed formula Ic),
PNG
media_image2.png
76
132
media_image2.png
Greyscale
(reads on claimed formula Ia), and
PNG
media_image3.png
112
192
media_image3.png
Greyscale
(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 Schalitz is open to the use of ethoxylated amines as a wetting agent such as Triton RW-50 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 wetting agent in the composition of Schalitz. 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).
Claims 1, 3-6, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Brush (US 2018/0112100).
With respect to claim 1, Brush discloses 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) and Carbowet 106 ethoxylated nonionic surfactant (paragraph 0146, Table 7A) and a letdown formulation comprising two associative thickeners (i.e., rheology modifier) (paragraph 0146, Table 7B). The ethoxylated nonionic surfactant is present in an amount of 3 pounds and the combination of the hydrophobically modified hydroxyl cellulose rheology modifier and associative thickeners is present in an amount of 33 pounds which provides for a weight ratio of rheology modifier to nonionic surfactant of 11:1.
Brush does not exemplify a formulation comprising an ethoxylated amine as the ethoxylated nonionic surfactant.
However, 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.
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.
Brush discloses pH adjustment agents such as phosphoric acid (paragraph 0078).
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 3, Brush does not exemplify a formulation comprising a rheology modifier that is a urethane 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.
With respect to claim 4, 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--absent a showing of unexpected or surprising results.
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), and titanium dioxide pigment (paragraph 0146, Table 7A) 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 comprising an ethoxylated amine as the ethoxylated nonionic surfactant.
However, 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.
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.
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 5, 7, 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
PNG
media_image1.png
82
134
media_image1.png
Greyscale
(reads on claimed formula Ic),
PNG
media_image2.png
76
132
media_image2.png
Greyscale
(reads on claimed formula Ia), and
PNG
media_image3.png
112
192
media_image3.png
Greyscale
(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 10/22/2025 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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 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 VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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, Joseph Del Sole can be reached at (571)272-1130. 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.
/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
vn
Prosecution Insights