DETAILED ACTION
Pending Claims
Claims 1, 3-5, and 8 are pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/277,933, filed on March 19, 2021.
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 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 29, 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on September 5, 2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,692,096 has been reviewed and accepted. The terminal disclaimer has been recorded.
Response to Amendment
The objection to claims 1, 3-5, and 8 has been overcome by amendment.
The rejection of claims 1 and 3-5 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cheng et al. (US Pat. No. 3,066,159) has been overcome by amendment.
The rejection of claims 1 and 3-5 under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cheng et al. (US Pat. No. 3,066,159) has been overcome by amendment.
The rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Pat. No. 3,066,159) has been overcome by amendment.
The rejection of claims 1, 3-5, and 8 under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Pat. No. 3,066,159) in view of Zimmer et al. (US Pat. No. 2,184,952) has been overcome by amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fordemwalt (US Pat. No. 2,536,978) in view Cheng et al. (US Pat. No. 3,066,159).
Regarding claims 1 and 3-5, Fordemwalt discloses an oil-in-water type emulsion for treating/coating fabrics and paper (column 1, lines 1-12; column 6, lines 46-60), which contains pigments (column 2, lines 37-40). The emulsion can also contain “dispersing and/or emulsifying agents to maintain the necessary interfaces between the phases,” (column 3, lines 23-28), which include mahogany soap (column 3, line 40). He fails to disclose the instantly claimed surfactant formed from reactants (a) and (b).
Cheng et al. disclose: (1) a surfactant (claim 1; column 11, lines 13-33) that is a reaction product (claim 1; column 6, line 50 through Table 1 in columns 9-10) of:
(a) an epoxidised carboxylic acid ester (Examples 29a to 33a in Table 1: see “epoxy methyl soyate”; see also column 2, line 31 through column 5, line 11); and
(b) a compound of formula (I): Page 3 of 8AYL-00003-U-US-01U.S.S.N. TBD Filed: Herewith Preliminary Amendment
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93
185
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(I)
wherein n is a positive integer; each X is O; each group R4 is independently an optionally substituted alkylene, alkenylene or arylene group; and R5 is hydrogen or an optionally substituted alkyl, alkenyl, aryl, alkaryl or aralkyl group (Examples 29a to 33a in Table 1: see “polyethylene glycol”, “polypropylene glycol”, “butylene glycol”, and “butylenediol, 1,4”; see also column 5, line 12 through column 6, line 48); and
wherein the reactants (a) and (b) are the only reactants of the reaction product (Examples 29a to 33a in Table 1; see also claim 1); (3) wherein component (a) comprises an ester of formula RCOOR1 in which R is a hydrocarbyl group including an epoxy functional group and R1 is a hydrocarbyl group (Examples 29a to 33a in Table 1: see “epoxy methyl soyate”); (4) wherein R is an unbranched aliphatic group having 6 to 26 carbon atoms and R1 is methyl or 2-ethylhexyl (Examples 29a to 33a in Table 1: see “epoxy methyl soyate”); and (5) wherein component (a) is derived from soybean oil fatty acid (Examples 29a to 33a in Table 1: see “epoxy methyl soyate”). Furthermore, Cheng et al. disclose that their surfactant is useful as a replacement for mahogany soaps in the preparation of emulsions (see column 11, lines 13-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the oil-in-water emulsion of Fordemwalt with the instantly claimed surfactant (formed from reactants (a) and (b)) because: (a) the emulsion of Fordemwalt can contain “dispersing and/or emulsifying agents to maintain the necessary interfaces between the phases;” (b) the dispersing and/or emulsifying agents of Fordemwalt include mahogany soap; (c) Cheng et al. disclosed the instantly claimed surfactant formed from reactants (a) and (b); and (d) Cheng et al. disclose that their surfactant is useful as a replacement for mahogany soaps in the preparation of emulsions.
Regarding claim 8, the combined teachings of {Fordemwalt and Cheng et al.} are as set forth above and incorporated herein. The polyethylene glycol and polypropylene glycol reactants in Examples 29a to 31a of Cheng et al. satisfy: (8) wherein each X is O, R5 is hydrogen and each R4 is a C2 to C4 alkylene group. The relatively low molecular weights of these materials do not satisfy: (8) wherein n is 20 to 100. However, the general teachings of Cheng et al. contemplate the use of glycol reactants having higher molecular weights (see column 5, lines 30-39). These glycol reactants having higher molecular weights would have obviously embraced materials satisfying the instantly claimed n range. In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the reaction product of Cheng et al. with the instantly claimed reactant (b) (wherein n is 20 to 100), to be provided in the composition resulting from the combined teachings of {Fordemwalt and Cheng et al.}, because: (a) the polyethylene glycol and polypropylene glycol reactants in Examples 29a to 31a of Cheng et al. have relatively low molecular weights, correspondent to n values below the instantly claimed range; (b) the general teachings of Cheng et al. contemplate the use of glycol reactants having higher molecular weights, which would have obviously embraced materials satisfying the instantly claimed n range; and (c) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-5, and 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Hawley’s Condensed Chemical dictionary defines “emulsifier” on page 554, “surface-active agent” on page 1294, and “surfactant” on page 1295.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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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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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
February 20, 2026
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