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 .
This office action is in response to applicant’s amendments filed June 11, 2026.
Claims 1-5, 7-10 and 14-16 are pending. Claims 1-3,5 and 9 have been amended. Claims 6 and 11-13 have been cancelled.
The objections to the claims and drawings are withdrawn.
The rejection of claims 1-6 and 11-16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendment to the claims.
Claims 7-10 and 15-16 stand rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth below.
Claims 10,15 and 14-16 stand rejected under 35 U.S.C. 103 as being unpatentable over Papalos (US 3,764,358) in view of Debaremdik (SU1214765A).
All other prior 103(a) rejections are withdrawn in view of applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112
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 1-5,7-10 and 14-16 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. Claims 1,7,10 and 16 recite “phosphate (C8-C24) fatty alcohol” but the placing of the carbon number of the fatty alcohol group in parenthesis renders it unclear if this limitation is required or a preferred optional embodiment. Defining what the C8-C24 refers to does not remedy the indefiniteness of it being in parenthesis. It is still unclear if the (C8-C24) is required. For examination purposes, the examiner interpreted the claims to require a phosphate fatty alcohol with 8-24 carbons in the alkyl portion of the fatty alcohol and also having 1 to 2 hydroxyl groups. Claims 2-5,8,9,14 and 15 are also rejected for being dependent upon claim 7 and inheriting the same deficiency.
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.
Claims 1,3-5,7-10 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Papalos (US 3,764,358) in view of Debaremdik (SU1214765A).
Papalos teaches methods for fatliquoring leather (column 1, lines 45-51) comprising using sulfated hemp oil (column 4, lines 38 and 60-67) wherein the degree of sulfation is about 4% to about 11% preferably 5.5-9% in a fatliquoring step (column 7, lines 43-50).
Papalos does not teach phosphate (C8-C24) fatty alcohol having from 1 to 2 hydroxyl groups or phosphate (C8-C24) fatty alcohol triethanolamine.
Debaremdik teaches leather fatliquoring compositions advantageously comprise triethanolamine salts of alkyl-phosphoric acids based on 10-20C fatty alcohol fraction for the benefit of good emulsification of the fatliquor and providing good quality leather (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select sulfated hemp oil with a degree of sulfation of 2-10% to be used in fatliquoring leather as Papalos teaches unsaturated oils such as hemp seed oil are effectively sulfated to a degree of preferably 5.5-9% to fatliquor leather for the benefit being an alternative to sperm oil which is harvested from endangered whale species. Papalos teaches fatliquoring with these compositions replenishes natural oils in the leather which have been removed in the tanning operation. Papalos teaches these compositions applied in fatliquoring methods to leather provide superior qualities including improved surface feel.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the compositions and methods of Papalos by adding triethanolamine salts of alkyl-phosphoric acids based on 10-20C fatty alcohol fraction to the fatliquor as taught by Debaremdik for the benefit of good emulsification of the fatliquor and providing good quality leather.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Papalos (US 3,764,358) in view of Debaremdik (SU1214765A) and further in view of Komforth (WO 2013/157941).
Papalos and Debaremdik are relied upon as set forth above.
Papalos and Debaremdik do not teach retanning.
Komforth teaches retanning and fatliquoring leather in one step (page 4, 26-28) wherein the fatliquoring agent is present in the retanning composition (page 5, lines 13-20).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the fatliquoring sulfated hemp oil in the retanning step of leather processing of Papalos and Debaremdik as Komforth teaches it is beneficial to combine the retanning and fatliquoring compositions into a single blend to perform a combined step of fatliquoring and retanning of leather resulting in a more ecofriendly process which uses less chemicals, saves on the amount of water and energy consumed as well as substantially reduces the time required for treatment (page 3, lines 18-30).
Response to Arguments
Applicant's arguments filed regarding Papalos, Debaremdik and Komforth have been fully considered but they are not persuasive. Papalos does not need to be directed to the same technical problem as it teaches applying the hemp oil derivative to the same leather substrate which would be expected to produce the same benefits to the leather even if applicant’s technical problem or benefit is not specifically identified in the prior art. The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable, In re Best, 562 F.2d 1252,1254,195 USPQ 430,433 (CCPA 1977). See also MPEP 2112 I.
Even if the esters of Papalos are the essential component, the hemp oil is taught as a component that may be included and therefore in embodiments is present in the composition. The comprising language in applicant’s claims permits the presence of additional components such as the esters in combination with the hemp oil derivative. The examiner argues that the unsaturated oil can be sulfated as Papalos teaches the sperm oil can be sulfated by itself or the combination of the sperm oil and the unsaturated oil (in this case hemp oil) can be sulfated as a blend (col 1, lines 45-49). Since Papalos teaches sulfating the entire blend and not just one component of the blend, the hemp oil would be sulfated also.
Selecting hemp oil from a list of oils taught to be useful in the composition is obvious as they are all taught as acceptable alternatives which can be chosen. The hemp oil does not need to be exemplified but can be present in the broad teachings of the reference. A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982). All disclosures of the prior art, including non-preferred embodiment, must be considered. See In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967); In re Snow 176 USPQ, 328, 329 (CCPA 1973). Non-preferred embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ 2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278(CCPA 1976); In re Kohler, 177 USPQ 399.
Debaremdik is relied upon for the teaching that leather fatliquoring compositions advantageously comprise triethanolamine salts of alkyl-phosphoric acids based on 10-20C fatty alcohol fraction for the benefit of good emulsification of the fatliquor and providing good quality leather (abstract). Komforth is relied upon to demonstrate retanning and fatliquoring in a single step. Applicant’s claims are to combining the sulfated hemp oil derivative and claimed phosphate in a single retanning or fatliquoring step. Together the teachings of Debaremdik and Komforth demonstrate that combining applicant’s hemp oil derivative and phosphate in a fatliquor would be obvious for oiling and emulsifying and that fatliquoring agents and retanning agents can be done in a singular composition, indicating that the fatliquoring composition could be applied in a retanning step. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980). Since the prior art teach the claimed components of applicant’s leather treatment in compositions for fatliquoring leather and claim 2 requires that this be done in a retanning step, the teaching that the fatliquoring composition comprising the claimed components can be present in a retanning step. Applicant’s claims 2 and 3 teach the identical composition applied in a retanning step or a fatliquoring step, but do not disclose the steps have to be separate.
Regarding applicant’s allegation of unexpected results, applicant’s data in the example (particularly example 5) are not commensurate in scope with the claims as the data for superiority are for a specific 90% sulfated hemp oil of example 1 and example 5 only tests one concentration of 725 g sulphated hemp oil and 80 g of a 50/50 mixture of phosphates C16-C18 fatty acid. The claims are much broader in scope and include many types of hemp oil derivatives, don’t mention degree of sulfation, have a narrower carbon range for the phosphated fatty alcohol and have not concentration amounts for either component. The data in the examples cannot be extended to demonstrate unexpected results for a broader method. The relevant comparisons are those of treatments B and C as they are performed in an analogous manner with only substitution of the inventive composition 5 for Hydroil retanning agent. Accordingly, the unexpected results are not persuasive against the broader disclosure of the claims.
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 AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
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