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
Examiner Notes
Examiner notes the following:
The claims and specification in the application appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the set of claims; and
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors and grammatical errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on February 5, 2026 is acknowledged. Applicant’s traversal is on the ground that Groups I-II are inter-related (part of one and the same invention), and thus, would not be unduly burdensome. This is not found persuasive because Groups I-II are separate and patentably distinct because there is no patentable co-action among them. Hence, Applicant’s inventions are distinct and have acquired a separate status in the art due to their recognized divergent subject matter and different classification. Additionally, because each group has different subclasses, it would constitute a burden on the Examiner to search all subclasses. Further, different fields of search would be required in the non-patent literature. Still further, there is no special technical feature for the compounds or different fields of application of the compounds.
Thus, a search of the two groups would impose an undue burden upon the Examiner. Therefore, the restriction for examination purposes as indicated is proper. The requirement is still deemed proper and is therefore made FINAL.
Group II is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking.
Applicant reserved the right to file a divisional application to the non-elected subject matter.
An action on the merits of Group I (claims 1-6 and 9) is contained herein.
Claim Rejections - 35 USC § 112, 2nd paragraph
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 1-6 and 9 (including claims dependent thereon) 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 pre-AIA the applicant regards as the invention.
Claims 1-6 and 9 recite the term “derivative”, which implies more than what is being positively recited. The term "derivative" can include any or all organic compounds derived from the core structure, and thus, it is unclear what is included or excluded. Examiner suggests deleting the term in all claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Takayuki Aoki et al. (JP2014240378).
Applicant claims are directed to methods for improving the surface wettability in a solid, solubilizing an oily component, fragrance and saturated and unsaturated compounds in water with an alkylene oxide derivative represented by following formula (1): R-O-(AO)a-[(PO) b/(EO)c-]-H wherein R represents a linear or branched alkyl group having from 4 to 36 carbons; AO is an oxyalkylene group having three or four carbons, PO is an oxypropylene group, and EO is an oxyethylene group; a, b, and c are the average addition molar numbers of the oxyalkylene group, the oxypropylene group, and the oxyethylene group per molecule, respectively, and 1 <a < 40, | <b<40, 1 <5 c< 80, and (a+b +c) > 35; [(PO)b/(EO),] represents a polyoxyalkylene group in which b moles of PO and c moles of EO are bonded randomly, and the random rate x is 0.1 <x < 1).
Takayuki Aoki discloses methods for improving the surface wettability in a solid, solubilizing an oily component, fragrance and saturated and unsaturated compounds in water, with an alkylene oxide derivative represented by following formula an alkylene oxide adduct is represented by the general formula (1): RO-(PO)x-[(PO)y/(EO)z]-H, where R represents a C1-30 alkyl group or alkenyl group and may have a linear or branched chain structure; PO represents an oxypropylene group; EO represents an oxyethylene group; x, y and z represent respective average numbers of added moles in the ranges of x=1-20, y=1-10 and z=1-10; and [(PO)y/(EO)z] is a polyoxyalkylene group formed by random addition of y mol of PO and z mol of EO (Takayuki claim 1). The formula of Takayuki Aoki reads on the instantly claimed formula.
Takayuki Aoki does not disclosed the exact ranges of the alkylene oxide represented by Applicant’s general formula (I).
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the methods of Takayuki Aoki by various ranges of formula (I). One skilled in the art looking for alternative methods for improving the surface wettability in a solid, solubilizing an oily component, fragrance and saturated and unsaturated compounds in water with an alkylene oxide derivative would modify the methods of this reference by employing various ranges is widespread in the chemical arts and are considered to define matters that are easily established by routine experimentation. Additionally, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). Further, with respect to the claimed language in claim 2, Takayuki Aoki discloses the instantly claimed alkylene oxide adduct, it would be expected to function as a wetting agent or solubilizing agent. This is supported by the disclosure of Takayuki Aoki wherein the uses of the alkylene oxide include a dispersing agent, a solubilizer, and a surfactant [0047]. Therefore, one of ordinary skill in the art, confronted with providing an alternative methods for improving the surface wettability in a solid, solubilizing an oily component, fragrance and saturated and unsaturated compounds in water with an alkylene oxide derivative would modify the methods of this reference to employ various ranges is widespread in the chemical arts and are considered to define matters that are easily established by routine experimentation.. See In re Payne, 203 USPQ 245(CCPA 1979), and thus obvious.
Since Applicant’s claims are prima facie obvious in view of the teachings of Takayuki Aoki, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Conclusion
Claims 1-6 and 9 are pending. Claims 1-6 and 9 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL V WARD whose telephone number is (571)272-2909. The examiner can normally be reached M-F 9am to 5pm.
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/PAUL V WARD/ Primary Examiner, Art Unit 1622
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