DETAILED ACTION
The following Office action concerns Patent Application Number 18/264,213. Claims 1-20 are pending in the application.
Claims 5, 7 and 10-20 are withdrawn from consideration as being drawn to non-elected inventions or species.
Election/Restrictions
A restriction requirement was sent to the Applicant on December 3, 2025. The Applicant was required to elect among several groups of inventions. The Applicant responded to the restriction requirement on February 3, 2026 and elected Group I, claims 1-9, including linking claims, with traverse. The applicant also elected a species of inhibitor of HQ and PTZ. In traversing the restriction requirement, the Applicant argues that the invention has a special technical feature which provides a contribution over the prior art. However, the rejections below show that the claimed invention does not provide a contribution over the prior art. Therefore, restriction is proper.
Accordingly, claims 5, 7 and 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected inventions or species.
Claim Rejections - 35 USC § 112
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 112 that form the basis for the rejections under this section made in this Office action:
(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.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 4, 6 are rejected under 35 U.S.C. § 112(b) because the term “comprises or consists of” is indefinite. The scope of the term “comprises or consists of” cannot be determined. For the purpose of examination, the term is construed to mean “comprises.”
Claims 3, 4, 6 are rejected under 35 U.S.C. § 112(b) because the term “comprises” is inconsistent with the term “selected from the group consisting of” in claim 2, from which claim 3 depends. As a result, the scope of the claims cannot be determined.
Claim Rejections - 35 USC §§ 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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.
Claims 1-3 and 8 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by, or, alternatively, under 35 U.S.C. § 103 as being obvious over Tong (US 2005/0139807).
Tong teaches an anti-fouling composition (par. 1). The composition comprises polymerization inhibitors including hydroquinone (HQ), phenothiazine (PTZ) and monomethyl hydroquinone ether (MEHQ) (par. 3, 42). The composition further comprises anti-fouling dispersants including sulfonates (par. 43).
In the event that the above disclosure is not sufficiently specific to anticipate the above listed claims, the examiner submits that the selection of the instantly inhibitor and dispersant components and resultant properties would have been obvious to a person of ordinary skill in the art since Tong teaches an anti-fouling composition which contains each of the claimed components.
Claims 4 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Tong (US 2005/0139807) in view of Aoshima et al (US 4,518,462).
Tong teaches polymerization inhibitors including HQ, PTZ and MEHQ as described above. Tong does not teach the weight ratio of HQ to PTZ.
However, Aoshima et al teaches polymerization inhibitors HQ and PTZ which are included in a composition in amounts of 0.02 % and 0.03 %, respectively (col. 9, lines 30-36). The corresponding weight ratio HQ:PTZ is 0.67:1.
Tong further teaches an amount of MEHQ of 200 ppm, which equates to 0.02 % (par. 51). Combined with the amounts of HQ and PTZ of Aoshima et al, the ratio of MEHQ to inhibitor is (0.02)/(0.02+0.02+0.03)=28%.
A person of ordinary skill in the art would have been motivated by design need to combine the amounts of HQ and PTZ of Aoshima et al with the composition of Tong in order to obtain an anti-fouling composition having known effective amounts of polymerization inhibitors.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Tong (US 2005/0139807) in view of Clever (US 5,710,329).
Tong teaches a composition comprising anti-fouling dispersants as described above. Tong does not teach the amount of the anti-fouling dispersant.
However, Clever teaches that an effective amount of anti-fouling dispersant is 10-20,000 ppm (col. 6, lines 31-34; abstract). 20,000 ppm is 2 wt %.
A person of ordinary skill in the art would have been motivated by design need to combine the dispersant amount Clever with the composition of Tong in order to obtain an effective amount of anti-fouling dispersant.
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000./WILLIAM D YOUNG/Primary Examiner, Art Unit 1761 March 2, 2026
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