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
Claims 1-8, 12-20, and 22-26 are pending. Claims 9-11 and 21 has been canceled. Note that, Applicant’s amendment and arguments filed April 8, 2026, have been entered.
Claims 16 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 3, 2025.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 2/13/26 have been withdrawn:
The rejection of claims 1-5 and 7-11 under 35 U.S.C. 102(a)(1) as being anticipated by Santos et al (US2020/0157402), has been withdrawn.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Santos et al (US2020/0157402).
The rejection of claims 12 and 13 under 35 U.S.C. 103 as being unpatentable over Santos et al (US2020/0157402) as applied to claims 1-11, 14, and 15 above, and further in view of Abad et al (US2019/0177603), has been withdrawn.
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.
Claim 8 is 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 broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “terpenes”, and the claim also recites “such as d-limonene” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note that, the Examiner asserts that the phrase “such as d-limonene” is merely exemplary and is not read as a patentable limitation.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Santos et al (US2020/0157402).
With respect to independent, instant claim 14, Santos et al teach a direct emulsion drilling fluid comprising an aqueous fluid, an oil, and a polysorbate emulsifier. See Abstract. The aqueous-based fluid may be freshwater, brine, etc. The aqueous-based fluid may be present in the direct emulsion drilling fluid at a volume ration of about 10 vol % aqueous-based fluid up to 80 vol % aqueous-based fluid. Alternatively, the aqueous-based fluid may be present in the direct emulsion drilling fluid at a volume ratio of from about 10 vol % aqueous-based fluid up to about 30 vol % aqueous-based fluid, from about 30 vol % aqueous-based fluid up to about 40 vol % aqueous-based fluid, from about 40 vol % aqueous-based fluid up to about 50 vol% aqueous-based fluid, from about 50 vol % aqueous-based fluid up to about 60 vol % aqueous-based fluid, from about 60 vol % aqueous-based fluid up to about 70 vol % aqueous-based fluid, or from about 70 vol % aqueous-based fluid up to about 80 vol % aqueous-based fluid. Suitable oils include at least one oil selected from the group consisting of an a-olefin, internal olefin, alkane, aromatic hydrocarbon, cycloalkane, liquefied petroleum gas, kerosene, diesel oil, crude oil, gas oil, fuel oil, paraffin oil, mineral oil, light cycle oil, tall oil, refined oil, low-toxicity mineral oil, olefin, ester, amide, synthetic oil (e.g., polyolefin), polydiorganosiloxane, siloxane, organosiloxane, ether, dialkylcarbonate, vegetable oil, and combinations thereof. See paras. 12-16. The oil may be present in the direct emulsion drilling fluid at a volume ratio of about 20 vol % oil up to 90 vol % oil. Alternatively, the oil may be present in the direct emulsion drilling fluid at a volume ratio of from about 20 vol % oil up to about 30 vol % oil, from about 30 vol % oil up to about 40 vol % oil, etc. See para. 17. Some specific examples of polysorbates may include, but are not limited to, polyoxyethylene (20) sorbitan monolaurate, polyoxyethylene (20) sorbitan monopalmitate, polyoxyethylene (20) sorbitan monostearate, and polyoxyethylene (20) sorbitan monooleate. See para. 19.
The direct emulsion drilling fluid may further include any drilling fluid additives such as, without limitations, pH buffers or control agents, shale inhibitors, corrosion inhibitors, scale inhibitors, degreasers, wetting agents, emulsifiers, filtrate control agents, lost circulation materials, lubricants, rate of penetration enhancers, spotting fluids, sweeping agents, thinners, deflocculants, suspending agents, and combinations thereof. The direct emulsion drilling fluid may include fluid loss additives such as, for example, lignin, lignite, lignin sulfonate, carbon-based fluid loss additives such as asphalt and asphaltenes, and combinations thereof. See para. 26. Santos et al disclose the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Santos anticipate the material limitations of independent, instant claim 14 and the respective dependent claims.
Claims 1-8, 12, 24, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2014/108350.
With respect to independent, instant claim 1, ‘350 teaches a method of fracturing subterranean formations using aqueous compositions comprising at least an aqueous base fluid, proppants, a viscosifier, at least one flowback aid and removing at least a portion of the aqueous fracturing fluid from the formation after fracturing. The flowback aid is selected from the group of alkyl or alkenyl polyglucosides, carboxylated alkyl or alkenyl polyglucosides and alkoxylated branched alcohols. See page 1, lines 1-10. Besides water the aqueous formulation may also comprise organic solvents miscible with water. Examples of such solvents comprise alcohols such as ethanol, n-propanol, i-propanol or butyl diglycol. If organic solvents are present their amount should not exceed 50% by weight with respect to the solvents present in the aqueous base fluid. In a preferred embodiment of the invention the aqueous base fluid comprises at least 70% by weight of water with respect to the solvents present in the aqueous base fluid, more preferably at least 90% by weight. In a further preferred embodiment of the invention only water is used as solvent in the aqueous base fluid. See page 4, lines 15-30. Alkoxylated branched alcohols of the general formula R3-0-(-CH -CH(R4)-0) -H (III) are used. In formula (III) R3 is a branched alkyl chain having from 8 to 18 carbon atoms, preferably from to 18 carbon atoms, R4 is a group selected from H, methyl or ethyl with the proviso that at least 50 mole % of the 25 groups R4 are H, i.e. at least 50% of the groups -CH2-CH(R4)-0- are ethyleneoxy groups. If different alkoxy groups are present they may be arranged statistically or as a block. Preferably, at least 80 mole % of the R4 groups are H, more preferably at least 90% and most preferably all R4 are H, i.e. (F3) is an ethoxylated alcohol. In the formula n is a number from 5 to 30, preferably a number from 8 to 20 and even more preferably from 10 to 15. R3 may have 1 branching point or more than one branching point. The groups R3 may be derived from Oxo alcohols or from Guerbet alcohols. Guerbet alcohols are branched alcohols known in the art and are manufactured by a Guerbet condensation of lower alcohols thus yielding alcohols branched in 2-position. In one embodiment of the invention R3 has an even number of carbon atoms and is derived from a Guerbet alcohol. Examples of such groups R3 comprise 2-ethylhexyl-, 2-propylheptyl-, 2- butyloctyl-, 2-pentylnonyl-, and 2-hexyldecyl groups. In a preferred embodiment R³ is a 2- propylheptyl group. See pages 7 and 8. Specifically, ‘140 teaches compositions containing water, 2-propylheptanol*14 EO as a surfactant, etc. ‘350 discloses the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of ‘350 anticipate the material limitations of instant claim 1 and the respective dependent claims.
Claims 1-8, 12, 13, 24, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abad et al (US2019/0177603).
With respect to independent, instant claim 1, Abad et al teach a wellbore, wherein the method includes introducing a treatment fluid comprising at least a surfactant having at least a branched alcohol ethoxylated surfactant to the subterranean formation. See Abstract. In embodiments, Abad et al teach methods of use of treatment fluids comprising branched alcohol ethoxylated nonionic surfactants. In particular the disclosure also relates to methods of use of treatment fluids comprising environmentally acceptable Guerbet branched alcohol ethoxylated nonionic surfactants. See para. 13. A “branched alcohol ethoxylated” refers to an organic surface active molecule or compound comprising a functional hydrocarbon structure having an hydrophilic ethylene oxide portion linked to a hydrophobic branched hydrocarbon alcohol portion, with an overall carbon chain length of about 10 to about 60 carbon atoms, such as for, example, from about 10 to about 42, from about 10 to about 36, from about 12 to about 32, from about 14 to about 30 carbon atoms. Furthermore, the ethylene oxide hydrophilic portion of the organic surface active molecule may have an average EO length (with each mole of ethylene oxide comprising 2 carbon atoms, four hydrogen atoms, and one oxygen atom) from about 1 to about 16 moles of ethylene oxide (EO) per mole of alcohol, from about 1 to about 12 moles of ethylene oxide (EO) per mole of alcohol, from about 2 to about 10 moles of ethylene oxide (EO) per mole of alcohol, from about 3 to about 8 moles of ethylene oxide (EO) per mole of alcohol. Where it is understood that the length of the ethylene oxide chain is a distribution of chains with an average polymerization rate which is defined as the average EO length, and wherein the hydrophobic branched hydrocarbon chain portion is branched comprising at least one alkyl group. The alcohol from which the hydrocarbon chain is derived may be mono-substituted. The hydrophobic branched hydrocarbon chain alcohol portion may be derived from a primary alcohol or a secondary alcohol. The hydrophobic branched hydrocarbon chain alcohol portion may be derived from a naturally occurring alcohol or a synthetically manufactured alcohol. The hydrophobic branched hydrocarbon chain alcohol portion may be derived from a saturated alcohol or an unsaturated alcohol. The alcohol may have an average carbon chain length of about 8 to about 36 carbon atoms, or an average carbon chain length of about 8 to about 24 carbon atoms, or an average carbon chain length of about 10 to about 18 carbon atoms, or an average carbon chain length of about 10 to about 16 carbon atoms. See para. 39. It has been surprisingly found that branched alcohols obtained through a dimerization process yielding monodispersed chain distributions of branched alcohols, the Guerbet reaction, can yield upon ethoxylation, surfactants with improved biodegradation, bioaccumulation, and lower toxicity, but yet provide appropriate compatibility with stimulation fluids. These branched alcohol are sometimes referred to as “Guerbet alcohols”, and the surfactants derived therefrom can be referred to as “Guerbet surfactants”. See paras. 59-65.
Suitable solvents for use with the unviscosified fluid, viscosified fluid, and/or the environmental surfactant may be aqueous or organic based and mixtures thereof. In embodiments, the surfactant may be introduced into the subterranean formation in a fluid (aqueous or organic) that is separate from the unviscosified fluid or viscosified fluid. In embodiments, the surfactant may be introduced into the subterranean formation after being mixed into either an unviscosified fluid or a viscosified fluid. Aqueous solvents may include at least one of fresh water, sea water, brine, heavy brine, mixtures of water and water-soluble organic compounds and mixtures thereof. Organic solvents may include methanol, isopropanol, ethylene glycol, ethylene glycol monomethyl ether, ethylene glycol dimethyl ether, ethylene glycol monoethyl ether, ethylene glycol monopropyl ether, ethylene glycol monobutyl ether, diethylene glycol monomethyl ether, diethylene glycol dimethyl ether, diethylene glycol monoethyl ether, diethylene glycol monopropyl ether, diethylene glycol monobutyl ether, any organic solvent which is able to dissolve or suspend the various components of the crosslinkable fluid.
In embodiments, the solvent, such as an aqueous solvent, may represent up to about 99.9 weight percent of the unviscosified or viscosified fluid, such as in the range of from about 85 to about 99.9 weight percent of the viscosified fluid, or from about 98 to about 99.7 weight percent of the viscosified fluid. See paras. 78-80.
Specifically, Abad et al teach the use of a Guerbet C10 alcohol based branched nonionic surfactant based on ethoxylated branched 2-propylheptanol and manufactured by AkzoNobel Surface Chemistry AB, (2) ARMOCLEAN 4350, a Guerbet C10 alcohol based branched nonionic surfactant based on ethoxylated branched 2-propylheptanol and manufactured by AkzoNobel Surface Chemistry AB and (3) NATRASENSE AG810-50, a non-ionic surfactant based on alkyl polyglucoside chemistry and manufactured by Croda Europe Ltd. The concentrations of these surfactants were tested up to 2.3 gpt (gallon of water). Abad et al teach a composition containing fresh water, 167 ppt potassium chloride, 2 gpt Armoclean 4350 surfactant, 12.2 gpt Green guar slurry gel, 2 gpt non-emulsifying agent, 1 gpt iron stabilizer, etc. See para. 114. Abad et al disclose the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Abad et al anticipate the material limitations of instant claim 1 and the respective dependent claims.
Claims 1-8, 12, 17-20, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over WO2019/152470.
With respect to independent, instant claims 1 and 17, ‘470 teaches liquid surfactant compositions. The liquid surfactant compositions can comprise a surfactant package, a co-solvent, and a liquid polymer (LP) composition. The surfactant package can be present in the surfactant composition in an amount of from 0.2% to 98% by weight, based on the total weight of the surfactant composition. The co-solvent can be present in the surfactant composition an amount of from greater than 0% to 95% by weight, based on the total weight of the surfactant composition. The LP composition can be present in the surfactant composition in an amount of from 0.1% to 60% by weight, based on the total weight of the surfactant composition. The surfactant composition can have a total water content (including the water present in all components of the surfactant composition, of from 0.5% to 20% by weight, based on the total weight of the surfactant composition). See pages 8 and 9. The concentrated surfactant composition can be directly diluted with an aqueous fluid (e.g., brine) to produce an aqueous surfactant-polymer solution having the desired concentration of components (e.g., the desired polymer concentration, the desired surfactant concentration, the desired co-solvent concentration, or any combination thereof for a particular oil and gas operation) in a single step. See page 9. In some embodiments, the surfactant package can comprise one or more anionic surfactants, one or more non-ionic surfactants, or any combination thereof. See page 11. In some embodiments, the nonionic surfactant is a Guerbet PO(0-65) and EO (0-100) (Guerbet can be C6-C36); or alkyl PO(0-65) and EO (0-100): where the alkyl group is linear or branched C1-C36. See pages 14 and 15.
The co-solvent can comprise any co-solvent(s) suitable for use in oil and gas operations. Suitable co-solvents include, for example, alcohols, such as lower carbon chain alcohols such as isopropyl alcohol, ethanol, n-propyl alcohol, n-butyl alcohol, sec-butyl alcohol, n-amyl alcohol, sec-amyl alcohol, n-hexyl alcohol, sec-hexyl alcohol and the like; alcohol ethers, polyalkylene alcohol ethers, polyalkylene glycols, poly(oxyalkylene)glycols, poly(oxyalkylene)glycol ethers, etc. See page 17. In some embodiments, the LP composition can include one or more hydrophobic liquids. In some cases, the one or more hydrophobic liquids can be organic hydrophobic liquids. In some embodiments, the one or more hydrophobic liquids each have a boiling point at least 100°C (e.g., at least 135°C, or at least 180°C). If the organic liquid has a boiling range, the term "boiling point" refers to the lower limit of the boiling range. In some embodiments, the one or more hydrophobic liquids can be aliphatic hydrocarbons, aromatic hydrocarbons, or mixtures thereof. Examples of hydrophobic liquids include but are not limited to water-immiscible solvents, such as paraffin hydrocarbons, naphthene hydrocarbons, aromatic hydrocarbons, olefins, oils, stabilizing surfactants, and mixtures thereof. The paraffin hydrocarbons can be saturated, linear, or branched paraffin hydrocarbons. Examples of suitable aromatic hydrocarbons include, but are not limited to, toluene and xylene. In certain embodiments, the hydrophobic liquid can comprise an oil, for example, a vegetable oil, such as soybean oil, rapeseed oil, canola oil, or a combination thereof, and any other oil produced from the seed of any of several varieties of the rape plant. In some embodiments, the amount of the one or more hydrophobic liquids in the inverse emulsion or LP composition is from 20% to 60%, from 25% to 54%, or from 35% to 54% by weight, based on the total amount of all components of the LP composition. See page 23. These aqueous surfactant-polymer solutions are used in a variety of oil and gas operations, including enhanced oil recovery operations and/or wellbore remediation. See page 2, lines 20-30.
‘470 does not teach, with sufficient specificity, a composition containing a first surfactant which is an alkoxylated branched alcohol, a base fluid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claims 1 and 17 and the respective dependent claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a first surfactant which is an alkoxylated branched alcohol, a base fluid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claims 1 and 17 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Hart et al suggest a composition containing a first surfactant which is an alkoxylated branched alcohol, a base fluid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claims 1 and 17 and the respective dependent claims.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over WO2019/152470 or WO2014/108350 as applied to the rejected claims above, and further in view of Abad et al (US2019/0177603).
‘470 and ‘350 are relied upon as set forth above. However, ‘470 or ‘350 do not teach the use of ethylene glycol monobutyl ether in addition to the other requisite components of the composition as recited by the instant claims.
Abad et al are relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use ethylene glycol monobutyl ether in the composition taught by ‘470 or ‘350, with a reasonable expectation of success and similar results with respect to other disclosed components, because Abad et al teach the use of ethylene glycol monobutyl ether as a solvent in a similar composition and further, ‘470 or ‘350 teach the use of a wide variety of solvents and the use of alcohol ethers in general.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 102 using Santos et al, Applicant states that Santos et al teach a drilling fluid, and fails to teach or suggest a wellbore cleaning fluid, as recited in independent claim 14, "wherein the wellbore cleaning fluid is configured for introduction into a wellbore subsequent a drilling operation, to convert an oil- wet surface to a water-wet surface", as recited in independent claim 14, as amended herein.
In response, note that, the Examiner asserts that the compositions as specifically taught by Santos et al would have the same cleaning properties and ability to convert an oil-wet surface to a water-wet surface as recited by the instant claims because Santos et al teach compositions containing the same components in the same amounts as recited by the instant claims and further, such properties would flow naturally from the teachings of Santos et al. The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention."). See MPEP 2145(II.). Note that, the Examiners that “is configured for introduction into a wellbore subsequent a drilling operation, to convert an oil- wet surface to a water-wet surface" as recited by the instant claim 14 is merely an intended use of the composition and is not read as a patentable limitation. Note that, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states, for example, the purpose or intended use for the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81. See MPEP 2111.02. Thus, the Examiner asserts that the teachings of Santos et al are sufficient to anticipate the claimed invention under 35 USC 102.
With respect to the rejection of instant claims under USC 103 using WO2019/152470, '470 teaches an aqueous surfactant-polymer composition that comprises a surfactant package, a co-solvent, and a liquid polymer (LP), and as '470 necessarily includes the liquid polymer, '470 fails to teach or suggest a wellbore cleaning composition as recited in independent claim 17, that consists essentially of (i) the single surfactant, and (ii) the base fluid, as recited in independent claim 17, as amended.
In response, note that, the Examiner asserts that “consisting essentially of” as recited by instant claim 17 only serves to exclude those components that would materially or negatively affect the claimed composition. Applicant has provided no statement or data in the instant specification showing that a liquid polymer as taught by ‘470 would materially or negatively affect the claimed composition. Therefore, in the absence of such a statement or data in the instant specification, the Examiner asserts that “consisting essentially of” fails to exclude a liquid polymer from the composition as recited by the instant claims. Note that, for the purposes of searching for and applying prior art under 35 USC 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising”. See e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03. The claim term “consisting essentially of” indicates, for example, that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention. PPG Industries Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); see also In re Herz, 537 F.2d 549, 551-52 (CCPA 1976). Applicant has the burden of showing that the ingredients not specifically claimed, but taught in the applied prior art, would materially affect the basic and novel characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). The ingredients that are not detrimental to the desired properties of a claimed composition are not construed as materially affecting the basic and novel characteristics of a claimed invention. In re Herz, 537 F.2d at 551-52. Thus, the Examiner asserts that the teachings of ‘470 are sufficient to render the claimed invention obvious under 35 USC 103.
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 GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/June 13, 2026
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