DETAILED ACTION
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 .
Applicant has amended the claims. Support for the amendments is found in the original filing.
The rejections under section 112 have been addressed by the claim amendments.
The amendments to the claims in conjunction with the remarks filed 12/11/2025 are persuasive. After further search and consideration new grounds of rejection are below set forth in the form of a non-final rejection.
After further consideration of the claim amendments and remarks associated therewith the previous rejections have been withdrawn as to claims 4 and 7 over the prior art. Rejections of claims 4 and 7 are maintained as to the double patenting rejection. Further search and consideration results in the rejections below set forth.
The examiner left a message for applicant on 2/15/26 to discuss a potential examiner’s amendment. As of 2/18/2026 no return call has been received. Accordingly this office action is mailed and will afford the applicant an opportunity to file a terminal disclaimer.
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.
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.
Claim(s) 1-3, and 5-6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sekutowski et al US 6,060,521
Regarding Clams 1-3, and 5-6 and 8-10:
Sekutowski discloses an aqueous dispersion comprising a particulate solid a low boiling organic liquid in which the particulate solid has hydrophobic outer surface suitable for applying to a substrate to form a continuous hydrophobic film thereon (Abstract)
The composition comprises the particulate solid the low boiling organic liquid to form a dispersion in water and water (C2 L20-30)
The solid hydrophobic particulates include colorants such as titanium dioxide (C3 L10-15) (meeting the limitation for an inorganic pigment of claim 1)
The low boiling organic liquid includes alcohols such as methanol (C3 L24-35) is in an amount of 3- 5 vol % or 3.5 to 4.5 vol. % (C3 L3-48)
The reference also teaches the dispersion with four drops of alkoxylated fatty amine Ethomeen 0/12 (overlapping the claimed ranges) instead of the methanol No other components are required (i.e. no biocide) with particulate.
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2,2′-(9-Octadecen-1-ylimino)bis[ethanol] or Oleyl bis(2-hydroxyethyl)amine.
See also Tables 3 and 4.
(meeting claimed formula I when x=0 y=2 z= 0 and R1 is C18 making x + y + z =2)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-14 of copending Application No. 18016879 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim an aqueous composition comprising an alkoxylated amine of the same/overlapping formulae and a pigment (see claim 9 of copending application for titanium dioxide which is the instantly claimed pigment) the ratios fo the components set forth and 0.1 to 5 wt. % phosphoric acid such that the ranges will overlap the instantly claimed ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim(s) 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.
Applicant's arguments filed 12/11/2025 have been fully considered and in conjunction with the claim amendments are persuasive as to claims 4 and 7 but they are not persuasive as to the remaining claims as above set forth..
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action.
Kessell (US 8,137,659) discloses an aqueous dispersion comprising particles of metal oxide which are hydrophobic (See claim 1 and claim 12 of refence) such as titanium dioxide and the composition comprises at least 40 wt. of the metal oxide particles (Claim 23 refeence0
The composition has a whiteness index/photo greying index etc. (see claims 18-19 – i.e. are pigments) and may be transparent when applied to skin (See claim 22 reference (i.e. opacity)
the composition may comprise at least one nonionic surfactant at 5- 50 wt.% calculated with respect to the metal oxide particles. (claim 26 of refence)
The composition comprises a nonionic surfactant which includes alkoxylated surfactants and fatty amine alkoxlyate
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(C6) No biocide is required.
This reference differs from the instant claims in that claimed Formula I does not possess a group corresponding to the R1 group of the reference/R3 and R1 of the reference do not render obvious the claimed formulae R1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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