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 .
Claim Status
Claims 12-29 were submitted in an amendment filed on 04/10/2026.
Claims 12-29 are currently pending and under examination.
Election/Restrictions
Applicant’s election with traverse of Group I claims 12-16, 20-22, and 26-28 in the reply filed on 04/10/2026 is acknowledged.
In regard to the traversal, applicant argues the restriction between the claims of Groups (I) and (III) fails to meet the burden to show that Groups (I) and (III) are independent and distinct inventions because the composition of Group (III) is not known in the prior art and therefore would not be known to have usefulness as a wellbore treatment fluid or as an additive for such.
The traversal is not persuasive because, for applications filed under 35 U.S.C. 111, MPEP 803 (I) states that “there are two criteria for a proper requirement for restriction between patentably distinct inventions: (A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 - § 806.05(j)); and (B) There would be a serious search and/or examination burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02)”. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, Hartshorne et al. (GB 2408506A, published 06/01/2005, PTO-892) teaches a Markush group of Formula I shown below in which R is a saturated or unsaturated, with one or more of the hydrogen atoms replaced by a hydroxyl group; or when X is -N(R7} (C=O)- or -O(C=O)-, the group (CR5R6) may include a coo- group R7 may be hydrogen, a linear saturated aliphatic hydrocarbon chain of at least 1 carbon atom, a branched saturated aliphatic hydrocarbon chain of at least 2 carbon atoms, a linear saturated aliphatic hydrocarbon chain of at least 1 carbon atom or a branched saturated aliphatic hydrocarbon chain or at least 2 carbon atoms with one or more of the hydrogen atoms replaced by a hydroxyl group, or a cyclic hydrocarbon group; and m is an integer of from 1 to 4; in the form of a monomeric unit, dimer or oligomer (see page 7, lines 15-34 and page 8, lines 1-10). Viscoelastic surfactant-based treatment fluids of the present invention may be prepared by mixing the appropriate viscoelastic surfactant or mixture of viscoelastic surfactants with an aqueous solution (see lines 1-4, page 28). Therefore, embodiments of both instant formulas (IIA) and (IIB) in a mixture are taught by
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Hartshorne et al. in Formula I and are taught to be useful as wellbore treatment fluids (see Abstract).
The election/restriction requirement is deemed proper and is therefore made FINAL.
Groups II and III, claims 17-19, 23-25, and 29 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.
Claims 12-16, 20-22, and 26-28 have been examined on the merits herein.
Priority
Applicant claims benefit to U.S. application No. 63/392591 filed on 07/27/2022. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
The instant application claims foreign priority to GB Application No. 2212972.0 filed on 09/06/2022. The certified copies of the foreign priority applications filed on 10/10/2023 are acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/07/2023 and 06/07/2024 were filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Rejections - 35 USC § 112(b)
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 15 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.
Regarding claim 15, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 (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.
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.
Claims 12-14, 20-22, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 2,857,370 (‘370, published 10/21/1958, PTO-892) in view of Kronberg et al. (NPL, published 1997, PTO-892).
‘370 teaches an improved process of preparing alkali metal, alkaline earth metal, and tertiary aromatic amine salts of esters and amide type compounds from carboxylic acids and amino- or hydroxy alkane sulfonic acids. The reaction of fatty acids, fatty acid chlorides and fatty acid esters with 2-amino- or 2-hydroxy-alkane sulfonic acids and the alkali metal salts thereof to yield anionic surface-active materials useful as wetting, cleansing, softening and dispersing agents is well known (see column 1, paragraphs 1-2). The process consists of heating a carboxylic acid with an alkali metal, alkaline earth metal or a tertiary amine salt of a taurine or of a 2-hydroxy-alkane sulfonic acid in the presence of a boron-containing compound as a catalyst at reduced pressure, or in an inert atmosphere (see column 2, paragraph 1). As examples of carboxylic acids which may be employed in the condensation or esterification reaction any carboxylic acid of at least 6 carbon atoms whether saturated, unsaturated, aliphatic, aromatic or cyclic aliphatic may be employed, the nature and character of the acid is immaterial so long as it contains a carboxylic acid group. Acids of this type which may be used include the following: Caproic acid, caprylic acid, pelargonic acid, capric acid, lauric acid, myristic acid, palmitic acid, stearic acid, oleic acid, linoleic acid, tall oil acid, hydrogenated tall oil acids, hydrogenated tallow acids, naphthenic acids, abietic acids. Alkyl benzoic acids such as, dodecylbenzoic acid, nonylbenzoic acid, octylbenzoic acid, alkyl naphthoic acids such as nonylnaphthoic acid, acids from oxo alcohols and aldehydes, acids from oxidized petroleum fractions, etc. Acid mixtures from various natural plant and animal oils such as, olive, tallow, castor, peanut, coconut, soybean, cottonseed, ucahuba, linseed; fish oils such as, cod, herring, menhaden, etc., neatsfoot, sperm, palm, corn, butter, babassu, kapok, hempseed, mustard, rubber seed, rape, safflower, sesame, etc. may also be employed (see Column 3, last paragraph). The 2-amino-alkane sulfonic acid salts and 2-hydroxy alkane sulfonic acid salts that are
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condensed with the foregoing carboxylic acids are characterized by the following general formulae: wherein R represents either hydrogen, methyl or ethyl, R1 represents either hydrogen or- a hydrocarbon radical having from 1 to 20 carbon atoms, e. g. methyl, ethyl, propyl, butyl, amyl, hexyl, cyclohexyl, phenyl, heptyl, octyl, dodecyl, oleyl, linoleyl, stearyl, abietinyl, etc., and M represents an alkaline earth metal, e.g., calcium, magnesium, barium, alkali metal, e.g., lithium, sodium, potassium, or a tertiary amine, e. g., trioctylamine, N,N- diphenylmethylamine, N,N-dimethyloctadecylamine, etc. Highly hindered secondary amines may also be employed especially those which do not readily form amides with fatty acids. As examples of 2-amino-alkane sulfonic acids and 2 hydroxy-alkane sulfonic acids that are reacted in the form of their salts with the above carboxylic acids to form anionic surface-active agents, the following are illustrative: a Markush group comprising N-methyl-2-methyl-taurine, N-methyl-2-ethyl-taurine, and N-methyl-1,2-dimethyl taurine (see Column 4). The products obtained by this process are valuable anionic surface-active agents and have many varied commercial uses. In addition, these products are valuable emulsifiers for insecticidal compositions and agricultural sprays such as DDT, 2,4-D, toxaphene, chlordane, dormant or mineral oil sprays, nicotine sulfate, Methoxychlor, etc. and are effective dispersants for pesticidal powders, such as those containing the above toxicants. The products are also useful as emulsifiers for emulsion polymerization, as mercerizing assistants, wetting agents, rewetting agents, dispersing agents, detergents, penetrating agents, softening agents, lime soaps dispersants, dishwashing agents, anti-static agents, disinfectants, insecticides, moth-proofing agents, bactericides, fungicides and biocides. They are valuable as anti-fogging agents for use on glass and other surfaces where the accumulation of an aqueous fog is detrimental. They are useful in the rayon industry as additives to the dope or to the spinning bath and as aids in clarifying viscose rayon. They are of value in hydraulic fluids to improve viscosity characteristics. The products may be employed in the preparation of skin creams, lotions, salves and other cosmetic preparations such as home hair-wave sets, shaving creams, shampoos, toothpastes, etc. They may also be employed in food products as foaming agents, emulsifying agents, and softening agents (see Column
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6). An example of the general formula is N-stearoyl taurine, sodium salt, shown below (see Example I).
‘370 does not teach a specific embodiment of the composition (mixture of) as recited in instant claims 12-14, a specific embodiment of the compound as recited in instant claims 20-22, a specific embodiment of a product comprising the composition of instant claim 12 as required by instant claim 26, a specific embodiment of a product comprising the compound of instant claim 20 as required by instant claim 27, and a method of making a product formulation utilizing the composition of instant claim 12 as required by instant claim 28.
Kronberg et al. teaches surfactant mixtures are of considerable interest for numerous technical applications, because surfactant mixtures enhance the performance of applications when compared to the use of neat surfactants. When mixing surfactants, one is allowed to combine properties that are of interest. In some cases even new properties are found, such as is the case in mixing cationic and anionic surfactants (see Introduction).
In regard to instant claims 12-14, it would have been obvious before the effective filing date of the claimed invention to combine the teachings of ‘370 with Kronberg et al. by modifying a hydrogen on the carbon proximal to the nitrogen in N-stearoyl taurine to be a methyl, as taught by ‘370 in the Markush group for R, to arrive at the instantly claimed (IA) and by modifying a hydrogen on the carbon proximal to the sulfur in N-stearoyl taurine to be a methyl, as taught by ‘370 in the Markush group for R, to arrive at the instantly claimed (IB) and mixing the two surfactants, as taught by Kronberg et al., to arrive at the instantly claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to modify the two carbons on the N-stearoyl taurine because ‘370 teaches those positions are modifiable with the Markush group of R. One of ordinary skill in the art would have a reasonable expectation of success because ‘370 teaches a successful example of a compound of the general formula. It would have been prima facie obvious for one of ordinary skill in the art to mix the surfactants because Kronberg et al. teaches surfactant mixtures enhance the performance of applications. One of ordinary skill in the art would have a reasonable expectation of success because Kronberg et al. teaches numerous applications use mixed surfactants.
In regard to instant claims 20-22, it would have been obvious before the effective filing date of the claimed invention to combine the teachings of ‘370 by modifying both carbons proximal to the nitrogen and to the sulfur in N-stearoyl taurine to be a methyl, as taught by ‘370 in the Markush group for R, to arrive at the instantly claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to modify the two carbons on the N-stearoyl taurine because ‘370 teaches those positions are modifiable with the Markush group of R. One of ordinary skill in the art would have a reasonable expectation of success because ‘370 teaches a successful example of a compound of the general formula.
In regard to instant claims 26 and 27, it would have been obvious before the effective filing date of the claimed invention to combine the teachings of ‘370 and Kronberg et al. by modifying the compounds as discussed in regard to instant claims 12 and 20, and using the compounds in a personal care product, a home care product, an industrial product, and an agricultural product, as taught by ‘370, to arrive at the instantly claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to utilize the compounds and compositions, as taught by ‘370 and Kronberg et al. because, as taught by ‘370, the products obtained by the taught process are valuable anionic surface-active agents and have many varied commercial uses. One of ordinary skill in the art would have a reasonable expectation of success because anionic surfactants are known by one of ordinary skill in the art to be stable and versatile.
In regard to instant claim 28, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113 (I)). Therefore, the obviousness rationale as discussed in regard to instant claim 26 is also applied to instant claim 28.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 2,857,370 (‘370, published 10/21/1958, PTO-892) in view of Kronberg et al. (NPL, published 1997, PTO-892), as applied to claim 12 above, and further in view of Holland et al. (NPL, published 1986, PTO-892).
The combined teachings of ‘370 and Kronberg et al. were discussed above.
The combined teachings of ‘370 and Kronberg et al. differ from that of the instantly claimed invention in that ‘370 does not teach the mixture of surfactants in a molar ratio of 99:1 to 1:99, for example 99:1 to 1:1, for example 99:1 to 4:1 as required by instant claim 15 and in a molar ratio of 99:1 to 1:1 or a molar ratio of 99:1 to 4:1 as required by instant claim 16.
Holland et al. teaches in mixed surfactant systems, physical properties such as the critical micelle concentration (cmc) and interfacial tensions are often substantially lower than would be expected based on the properties of the pure components. Such nonideal behavior is of both theoretical interest and industrial importance. For example, mixtures of different classes of surfactants often exhibit synergism and this behavior can be utilized in practical applications. In addition, commercial surfactant preparations usually contain mixtures of various species (e.g. different isomers and chain lengths) and often include surface active impurities which affect the critical micelle concentration and other properties. An important motivation for understanding the behavior of mixed micellar solutions is that equilibrium between the micelles and monomers establishes the chemical potential of the different surfactant species in bulk solution. In turn, these chemical potentials provide the driving force for processes such as interfacial tension lowering, contact angle changes, and partitioning, and at equilibrium exert a controlling influence on physical properties at the solution interfaces of interest (see paragraphs 1-2). Results for the binary mixture of C10PO and SDS are shown in figure 1, and good agreement with the nonideal model is seen for both mixed cmc’s and the surface tensions at the cmc. Here, the surface tensions show the interesting feature of a sharp increase in going from pure C10PO, followed by a leveling off, and a further sharp increase in going to pure SDS. This suggests that nonideal interaction of
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the more surface active CJQPO with SDS may be causing a relative enhancement of SDS at the surface.
It would have been obvious before the effective filing date of the claimed invention to combine the teachings of ‘370 and Kronberg et al. with the teachings of Holland et al. by varying the mole fraction of the mixture (molar ratio), as taught by Holland et al., of the surfactants in the composition, as taught by ‘370 and Kronberg et al., to arrive at the instantly claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to vary the molar ratio of the surfactants because, as taught by Holland et al., physical properties such as the critical micelle concentration (cmc) and interfacial tensions are often substantially lower than would be expected based on the properties of the pure components. One of ordinary skill in the art would have a reasonable expectation of success because varying concentration of a mixture is a part of routine optimization.
Conclusion
No claim is found allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN WEEKS BRADY whose telephone number is (571)272-5906. The examiner can normally be reached 8am-5pm.
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/KRISTEN W BRADY/ Examiner, Art Unit 1692
/SCARLETT Y GOON/ Supervisory Patent Examiner, Art Unit 1693
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