DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 6/23/2023 was filed timely. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
3. Applicant’s election without traverse of Group 3, claims 13-20 in the reply filed on 1/16/2026 is acknowledged. Claims 1-12 are withdrawn.
Claim Rejections - 35 USC § 103
4. 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 (i.e., changing from AIA to pre-AIA ) 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.
5. 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.
6. Claims 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over (US 4,946,507) to Peng et al. (hereinafter Peng) in view of the teachings of the reference (US 4,876,355) to Hughes et al. (hereinafter Hughes).
Peng is directed toward imidazolines reacted with cyclic carbonates. Peng discloses at (C2, L35) that the primary amine with imidazoline is reacted with an alkylene carbonate adduct. Peng discloses at (C6, L35) that 2000g of imidazoline were reacted with 764g of propylene carbonate at 160F(72C) (2000/76=2.6), Applicants ratio is 1:0.05 to 1:2 (20 to 0.5) that is within the ratio range. Peng discloses at (C6, L25) that the imidazoline was preheated to 104F (40C). One skilled in the art would find 72C to be approximately 80C as the adduct reaction takes place at a similar temperature and no unexpected results would occur at 80C or by preheating to only 40C instead of 80C. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
PNG
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Structure (i) and (ii) read on the above compound reacted with a propylene carbonate where R is C12-C16, which reads on Applicants R1 and R2 of C8-C22. Peng teaches each and every method step, but is silent regarding the step of obtaining from a fatty acid.
Hughes is directed toward imidazolines. Peng and Hughes are both directed toward imidazolines and it would be analogous art to look toward the source. Hughes discloses at (C2, L5) that imidazoline may be derived from a tall oil source. Hughes discloses at (C1, L23) that imidazolines are commercially made from a fatty acid and an amine such as DETA. One skilled in the art would be motivated to obtain imidazoline from renewable plant sources for lower environmental harm
It would be obvious to one skilled in the art at the time of the filing of Peng in view of the teachings of Hughes to provide the method of making a carbonate adduct using an imidazoline from a natural source, which forms a prime facie case of obviousness for claims 13-20.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY D WASHVILLE whose telephone number is (571)270-3262. The examiner can normally be reached M-F 9-5.
8. 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.
9. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY D WASHVILLE/Primary Examiner, Art Unit 1766
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