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 .
Status of the Claims
Claims 1-20 are currently pending.
Claims 14 and 18-20 are currently amended.
Response to Amendments
Applicant’s amendments filed on 22 June 2026 are acknowledged.
Claim Objections
Applicant’s amendments to claim 14 are sufficient to overcome the
objections of the claim. The claim has been amended to correct the typographical mistakes. The objection is withdrawn.
Applicant’s amendments to claims 18-20 are sufficient to overcome the
objections of the claims. The claims have been amended to include an ending period. The objections are withdrawn.
Response to Arguments
Applicant’s arguments filed on 22 June 2026 have been fully considered but they are not persuasive.
Applicant’s argue that Matsuura and Tatsuya do not disclose the limitations as recited in the claims. These arguments have been considered but are not persuasive for the reasons set forth in the maintained grounds of rejection below and the response to arguments below.
In response to Applicant’s arguments on pages 7-9 of the remarks filed on 22 June 2026 that “Applicant respectfully asserts that Matsuura [0013] discloses certain polyol esters as part of the refrigerant oil with the esters being produced from “aliphatic polyhydric alcohol and linear or branched fatty acid”. Differently, Applicant's claimed composition of its claimed process is produced from a polyhydric alcohol (often called a polyol), which is an organic compound featuring multiple hydroxyl (-OH) groups. Thus, Applicant's claimed esters are produced from alcohols having one -OH group (i.e. not polyhydric), specifically linear alcohols, 2-methyl branched alcohols and 2-ethyl branched alcohols.”
As stated on page 4 of the previous office action dated 22 December 2025 (hereinafter POA), claims 14-20 are product-by-process claims, where “[i]n regard to “produced as a product of the process, comprising the steps of: reacting … with compounds having one or more carboxylic acid functions. producing” in instant application claim 14 and the reactant compounds in instant application claims 15-20, see MPEP 2113(I) stating “even 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) (citations omitted)”. Matsuura teaches a composition comprising the ester composition; therefore, the process of production limitations in instant application claim 14, in instant application claim 15, in instant application claim 16, in instant application claim 17, in instant application claim 18, in instant application claim 19, and in instant application claim 20 are not given patentable weight.”
Applicant’s state the instant invention is drawn to esters produced from “a polyhydric alcohol (often called a polyol)” and Applicant’s state Matsuura teaches esters produced from “aliphatic polyhydric alcohol”. There is no patentable distinction between a polyhydric alcohol and an aliphatic polyhydric alcohol.
Applicant’s state the “claimed esters are produced from alcohols having one -OH group (i.e. not polyhydric), specifically linear alcohols, 2-methyl branched alcohols and 2-ethyl branched alcohols”. Instant application claim 14 recites “a mixture of C8-C36 alcohols”. The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004), see MPEP 2111.
In this case, the instant claims do not distinguish between single hydroxyl alcohols, diols, triols, etc. The claims simply state a mixture of C8-C36 alcohols including linear alcohols, 2-methyl branched alcohols, and 2-ethyl branched alcohols. It is well known within the art that all of the claimed alcohols may all have more than one hydroxyl group.
In addition, instant claim 14 is drawn to “[t]he transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps”, see MPEP 2111.03 I. Therefore, the alcohols recited in instant claim 14 may also include a variety of differing additional alcohols.
For all of the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on pages 7-8 of the remarks filed on 22 June 2026 that “Applicant respectfully asserts, non-phosphorus containing esters and carboxylic acids are produced from Applicant's claimed process.” Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims, see In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) and MPEP 2111.01. It is noted that the process and composition without phosphorus containing esters is not instantly claimed.
For the reasons indicated above, Applicant’s above argument is not persuasive.
In response to Applicant’s arguments on pages 8-9 of the remarks filed on 22 June 2026 that “Applicant respectfully asserts that Tatsuya does not disclose Applicant's recited composition, of the claimed process by which it is made.”
Claims 1-8 are product-by-process claims. As stated on pages 6-7 of the POA, “[i]n regard to “produced as a product of the process, comprising the steps of: reacting … with an amine and hydrogen to produce” in instant application claim 1 and “the reacting ..” in instant application claims 2-4, see MPEP 2113(I) stating “even 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) (citations omitted)”. Tatsuya teaches a composition comprising the specific amines; therefore, the process of production limitations in instant application claim 1, in instant application claim 2, in instant application claim 3, and in instant application claim 4 are not given patentable weight.” The examiner suggests amending the claims to read on a method or a process instead of a product by process.
For the reasons indicated above, Applicant’s above argument is not persuasive.
In response to Applicant’s arguments on pages 8-9 of the remarks filed on 22 June 2026 that Tatsuya “does not disclosed Applicant's amine composition produced from its process which has a “a mixture of C8-C36 amines wherein less than 60% of the amines are linear amines, and greater than 25% of the amines are 2-methyl branched amines and greater than 8% of the amines are 2-ethyl branched amines.” See pages 5-6 of the POA specifically detailing Tatsuya’s teaching of the “product amine composition including a mixture of C8-C36 amines, mixtures of primary, secondary, and tertiary amines, within the range of linear amines, within the range of 2-methyl branched amines, and within the range of 2-ethyl branched amines in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, in instant application claim 5, in instant application claim 6, in instant application claim 7, and in instant application claim 8”.
For the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on page 9 of the remarks filed on 22 June 2026 that “Applicant also respectfully asserts that its claimed process from which the claimed composition is produced does not recite contains aluminum hydride [Tatsuya, 013], diamine compounds, triamine compounds, and tetraamine compounds [Tatsuya, 016], or aryl (rings) groups [Tatsuya, 022], and is further distinguished over Tatsuya.” Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims, see In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) and MPEP 2111.01. It is noted that the process and composition without aluminum hydride, diamine compounds, triamine compounds, and tetraamine compounds are not instantly claimed.
In addition, instant claim 1 is drawn to “[t]he transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps”, see MPEP 2111.03 I, and recites “a mixture of C8-C36 amines” including linear amines, 2-methyl branched amines, and 2-ethyl branched amines. Therefore, the mixture of C8-C36 amines recited in instant claim 1 may also include a variety of differing additional amines.
For the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on page 9 of the remarks filed on 22 June 2026 that “[b]ecause Tatsuya's technology seeks to solve different problems than Applicant, it logically follows that Tatsuya teaches away from Applicant's process and composition”. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain”, see In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)) and MPEP 2123. In addition, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….”. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).”, see MPEP 2123.
In this case, Tatsuya’s Para. [0029] teaching of a variety of amines does not criticize, discredit, or otherwise discourage the solution of producing the product amine composition as detailed on pages 5-6 of the POA.
For the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on page 9 of the remarks filed on 22 June 2026 that “Applicant respectfully asserts that Tatsuya does not disclose, teach or suggest Applicant's independent claim 1, or its dependent claims, and no prima facie case of obviousness under 35 U.S.C. § 103 exists.”
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
As stated on pages 7-8 of the POA, “[t]he rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Tatsuya teaches the selection of tri-2-methylbutylamine and tri(2-ethylhexyl)amine from a list of only 15 amines, a person of ordinary skill in the art has good reason to produce an amine composition by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of obtain an aluminum film of good quality and storage stability by selecting tri-2-methylbutylamine and tri(2-ethylhexyl)amine, see Paras. [0009]-[0011] and MPEP 2141.”
For the reasons indicated above, Applicant’s above argument is not persuasive.
In response to Applicant’s arguments on pages 9-10 of the remarks filed on 22 June 2026 that “Applicant respectfully asserts that Matsuura does not disclose Applicant's recited composition, of the claimed process by which it is made.”
Claims 9-13 are product-by-process claims. As stated on page 10 of the POA, “[i]n regard to “produced as a product of the process, comprising the steps of: reacting … with oxygen or other oxidizing agents to produce” in instant application claim 9, see MPEP 2113(I) stating “even 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) (citations omitted)”. Matsuura teaches a composition comprising the specific carboxylic acids; therefore, the process of production limitations in instant application claim 9 are not given patentable weight.”
For the reasons indicated above, Applicant’s above argument is not persuasive.
In response to Applicant’s arguments on page 10 of the remarks filed on 22 June 2026 that “Applicant respectfully asserts that Matsuura does not disclose, teach or suggest Applicant's process and claimed carboxylic acid composition”, “Applicant has considered and respectfully asserts that Matsuura's [0114-0115] disclosure of a laundry list of fatty acids that may be used in Matsuura's technology doe not disclose, teach or suggest Applicant's claimed composition or the applicant's claimed process”, and “Applicant also respectfully asserts that Matsuura does not disclose, teach or suggest Applicant's independent claim 9, or its dependent claims, and no prima facie case of obviousness under 35 U.S.C. § 103 exists.”
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
As detailed on page 9 of the POA, Matsuura teaches the “product carboxylic acid composition including a mixture of C8-C36 carboxylic acids, within the range of linear carboxylic acids, within the range of 2-methyl branched carboxylic acids, and within the range of 2-ethyl branched carboxylic acids in instant application claim 9, in instant application claim 10, in instant application claim 11, in instant application claim 12, and in instant application claim 13”.
As stated on pages 10-11 of the POA, “Matsuura details 12 preferred linear dibasic carboxylic acids, see Para. [0117]. 12 carboxylic acids are within a finite number of carboxylic acids to be tested for predictable improved properties leading to a reasonable expectations of success for those of ordinary skill in the art, before the effective filing date of the claimed invention, in producing a polyol ester compatible in the specific refrigerant oil, see Paras. [0113]-[0117].”
As stated on page 11 of the POA, “[t]he rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Matsuura teaches the selection of tri-2-methylbutylamine and tri(2-ethylhexyl)amine from a list of only 12 dibasic linear carboxylic acids, a person of ordinary skill in the art has good reason to produce a carboxylic acid composition with the optimal dibasic linear carboxylic acid by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of producing a polyol ester compatible in the specific refrigerant oil, see Paras. [0113]-[0117] and MPEP 2141.”
For all of the reasons indicated above, Applicant’s above arguments are not persuasive.
As a result, Applicant’s arguments in the remarks filed on 22 June 2026 are all not persuasive and are all not sufficient to overcome the rejections of:
Claims 14-20 under 35 U.S.C. 102(a)(1) as being anticipated by Matsuura et al. (US20110011124, hereinafter Matsuura);
Claims 1-8 under 35 U.S.C. 103 as being unpatentable over Tatsuya et al. (WO2008105557, see machine translation, hereinafter Tatsuya); and,
Claims 9-13 under 35 U.S.C. 103 as being unpatentable over Matsuura et al. (US20110011124, hereinafter Matsuura).
The above rejections are all maintained.
Double Patenting
Applicant’s acknowledgement on pages 10-11 of the remarks filed on 22 June 2026 that steps will be taken to render the provisional statutory and the provisional nonstatutory double patenting rejections moot during the prosecution of this application is insufficient to overcome the rejections of:
Claims 1-20 under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18562959 to Killebrew et al. (hereinafter Killebrew ‘959) (reference application); and,
Claims 14-20 on the ground of nonstatutory double patenting as being unpatentable over claims 26-32 of copending Application No. 17553752 to Killebrew et al. (hereinafter Killebrew ‘752) (reference application).
The above rejections are all maintained.
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
New Objection
Specification
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Maintained Rejections Based on the reply filed on 22 June 2026
Claim Rejections - 35 USC § 102
(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.
Claims 14-20 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuura et al. (US20110011124, hereinafter Matsuura).
Matsuura teaches the instant application claim 14 limitations of a complex ester composition made by esterifying a polyhydric alcohol with a dibasic acid at a predetermined rate for partial esterification, then the partial ester reacts with the fatty acid, such as a fatty acid having the carbon number of 5, such as 2-methyl-butyric acid, mixed with fatty acid having the carbon number of 6, such as 2-ethyl-butyric acid, at a weight ratio equal to or greater than 10:90 and equal to or less than 90:10, which is also mixed with fatty dibasic acids such as undecanoic diacid, dodecanoic diacid, tridecanoic diacid, and docosanoic diacid aka a C22 carboxylic acid, see Paras. [0113]-[0117], meeting the product ester composition in instant application claim 14.
In regard to “produced as a product of the process, comprising the steps of: reacting … with compounds having one or more carboxylic acid functions. producing” in instant application claim 14 and the reactant compounds in instant application claims 15-20, see MPEP 2113(I) stating “even 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) (citations omitted)”. Matsuura teaches a composition comprising the ester composition; therefore, the process of production limitations in instant application claim 14, in instant application claim 15, in instant application claim 16, in instant application claim 17, in instant application claim 18, in instant application claim 19, and in instant application claim 20 are not given patentable weight.
Claim Rejections - 35 USC § 103
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.
Claims 1-8 stand rejected under 35 U.S.C. 103 as being unpatentable over Tatsuya et al. (WO2008105557, see machine translation, hereinafter Tatsuya).
Tatsuya teaches the instant application claims 1-8 limitations of a product amine composition containing (A) a complex of an amine compound and aluminum hydride, (B) an amine compound and (C) an organic solvent, see Abstract, where the (A) amine compounds, see Paras. [0016]-[0029], are specifically selected from the preferred amines of t-butylamine aka a primary amine, 2-methylbutylamine aka a branched primary 2-methyl amine, n-hexylamine, cyclohexylamine, 2-ethylhexylamine aka a branched primary 2-ethyl amine, octylamine aka a C8 amine, phenylamine, and benzylamine, see Para. [0024], and (B) amine compounds are mixtures of the above amines, see Paras. [0030]-[0036], including trimethylamine aka a tertiary amine, triethylamine, methyldiethylamine, dimethylethylamine, dimethylamine aka a secondary amine, diethylamine, and ethylenediamine, see Para. [0036]. The content of the (A) and (B) amines is based on the (B) amines present in the composition at a concentration of 1 to 70% by mass, see Para. [0065]; therefore, specifically tri(2-ethylhexyl)amine has a concentration in the amine composition of 1 to 70% by mass, or tri-2-methylbutylamine has a concentration in the amine composition of 1 to 70% by mass, or tri(2-ethylhexyl)amine has a concentration in the amine composition of 21% by mass, tri-2-methylbutylamine has a concentration in the amine composition of 49% by mass, and 0 % by mass liner amines, meeting:
The product amine composition including a mixture of C8-C36 amines, mixtures of primary, secondary, and tertiary amines, within the range of linear amines, within the range of 2-methyl branched amines, and within the range of 2-ethyl branched amines in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, in instant application claim 5, in instant application claim 6, in instant application claim 7, and in instant application claim 8.
In regard to “produced as a product of the process, comprising the steps of: reacting … with an amine and hydrogen to produce” in instant application claim 1 and “the reacting ..” in instant application claims 2-4, see MPEP 2113(I) stating “even 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) (citations omitted)”. Tatsuya teaches a composition comprising the specific amines; therefore, the process of production limitations in instant application claim 1, in instant application claim 2, in instant application claim 3, and in instant application claim 4 are not given patentable weight.
Tatsuya teaches the specific instantly claimed branched amines in a list of possible choices.
When there is motivation to solve a problem and there are a finite number of identified, predictable solutions to be tested for improved properties, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense, see KSR, 550 U.S. at 402-03, 82 USPQ2d at 1390 and MPEP 2143 I.E. Tatsuya details 15 preferred amines as amine (A) and/or amine (B), see Paras. [0024];[0036]. 15 amines are within a finite number of amines to be tested for predictable improved properties, such as storage stability, of the aluminum hydride composition leading to a reasonable expectations of success for those of ordinary skill in the art, before the effective filing date of the claimed invention, to obtain an aluminum film of good quality and storage stability by selecting tri-2-methylbutylamine and tri(2-ethylhexyl)amine, see Paras. [0009]-[0011].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Tatsuya teaches the selection of tri-2-methylbutylamine and tri(2-ethylhexyl)amine from a list of only 15 amines, a person of ordinary skill in the art has good reason to produce an amine composition by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of obtain an aluminum film of good quality and storage stability by selecting tri-2-methylbutylamine and tri(2-ethylhexyl)amine, see Paras. [0009]-[0011] and MPEP 2141.
Selection of a known material, such as a 2-methyl and 2-ethyl branched amines, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the 2-ethyl branched amines, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Claims 9-13 stand rejected under 35 U.S.C. 103 as being unpatentable over Matsuura et al. (US20110011124, hereinafter Matsuura).
Matsuura teaches the instant application claims 9-13 limitations of a carboxylic acid composition containing a fatty acid having the carbon number of 5, such as 2-methyl-butyric acid, mixed with a fatty acid having the carbon number of 6, such as 2-ethyl-butyric acid, at a weight ratio equal to or greater than 10:90 and equal to or less than 90:10, which is also mixed with fatty dibasic acids such as undecanoic diacid, dodecanoic diacid, tridecanoic diacid, and docosanoic diacid aka a C22 carboxylic acid, see Paras. [0115]-[0117], therefore, specifically 2-methyl-butyric acid has a concentration in the carboxylic acid composition of 10 to 90% by mass, or 2-ethyl-butyric acid has a concentration in the carboxylic acid composition of 10 to 90% by mass, or 2-ethyl-butyric acid has a concentration in the carboxylic acid composition of 21% by mass, 2-methyl-butyric acid has a concentration in the carboxylic acid composition of 49% by mass, and 30% by mass linear docosanoic diacid, meeting:
The product carboxylic acid composition including a mixture of C8-C36 carboxylic acids, within the range of linear carboxylic acids, within the range of 2-methyl branched carboxylic acids, and within the range of 2-ethyl branched carboxylic acids in instant application claim 9, in instant application claim 10, in instant application claim 11, in instant application claim 12, and in instant application claim 13.
In regard to “produced as a product of the process, comprising the steps of: reacting … with oxygen or other oxidizing agents to produce” in instant application claim 9, see MPEP 2113(I) stating “even 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) (citations omitted)”. Matsuura teaches a composition comprising the specific carboxylic acids; therefore, the process of production limitations in instant application claim 9 are not given patentable weight.
Matsuura teaches the specific instantly claimed linear carboxylic acids in a list of possible dibasic choices.
When there is motivation to solve a problem and there are a finite number of identified, predictable solutions to be tested for improved properties, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense, see KSR, 550 U.S. at 402-03, 82 USPQ2d at 1390 and MPEP 2143 I.E. Matsuura details 12 preferred linear dibasic carboxylic acids, see Para. [0117]. 12 carboxylic acids are within a finite number of carboxylic acids to be tested for predictable improved properties leading to a reasonable expectations of success for those of ordinary skill in the art, before the effective filing date of the claimed invention, in producing a polyol ester compatible in the specific refrigerant oil, see Paras. [0113]-[0117].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Matsuura teaches the selection of tri-2-methylbutylamine and tri(2-ethylhexyl)amine from a list of only 12 dibasic linear carboxylic acids, a person of ordinary skill in the art has good reason to produce a carboxylic acid composition with the optimal dibasic linear carboxylic acid by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of producing a polyol ester compatible in the specific refrigerant oil, see Paras. [0113]-[0117] and MPEP 2141.
Selection of a known material, such as a linear dibasic carboxylic acid, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the 2-ethyl branched carboxylic acids, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 stand provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18562959 to Killebrew et al. (hereinafter Killebrew ‘959) (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The claims of Killebrew ‘959 recite the instant application claim 1 product composition produced as a product of a process, see claim 1, comprising the steps of: reacting a mixture of C8-C36 aldehydes, wherein less than 60% of the mixture of C8- C36 aldehydes are linear aldehydes, wherein greater than 25% of the mixture of C8-C36 aldehydes are 2-methyl branched aldehydes, and wherein greater than 8% of the mixture of C8-C36 aldehydes are 2-ethyl branched aldehydes, see claim 1, with an amine and hydrogen to produce a mixture of C8-C36 amines wherein less than 60% of the amines are linear amines, and greater than 25% of the amines are 2-methyl branched amines and greater than 8% of the amines are 2-ethyl branched amines, see claim 1; and producing an amine composition, see claim 1;
The reacting amines and the amine compositions produced in instant application claims 2-4, see claims 2-4;
The % 2-ethyl branched amines in instant application claims 5-8, see claims 5-8;
The instant application claim 9 product carboxylic acid composition produced as a product of a process, see claim 9, comprising the steps of: reacting a mixture of C8-C36 aldehydes, wherein less than 60% of the mixture of C8-C36 aldehydes are linear aldehydes, wherein greater than 25% of the mixture of C8-C36 aldehydes are 2-methyl branched aldehydes, and wherein greater than 8% of the mixture of C8-C36 aldehydes are 2-ethyl branched aldehydes, see claim 9, with oxygen or other oxidizing agents to produce a mixture of C8-C36 carboxylic acids wherein less than 60% of the carboxylic acids are linear carboxylic acids, and greater than 25% of the carboxylic acids are 2-methyl branched carboxylic acids and greater than 8% of the carboxylic acids are 2-ethyl branched carboxylic acids, see claim 9; producing a product carboxylic acid composition, see claim 9;
The % 2-ethyl branched carboxylic acids in instant application claims 10-13, see claims 10-13;
The instant application claim 14 product ester composition produced as a product of a process, see claim 14, comprising the steps of: reacting a mixture of C8-C36 alcohols, wherein less than 60% of the mixture of C8-C36 alcohols are linear alcohols, wherein greater than 25% of the mixture of C8-C36 alcohols are 2-methyl branched alcohols, and wherein and greater than 8% of the mixture of C8-C36 alcohols are 2-ethyl branched alcohols, see claim 14, with compounds having one or more carboxylic acid functions., see claim 14, producing a product ester composition, see claim 14;
The compounds comprising one or more carboxylic acids in instant application claims 15-17, see claims 15-17; and,
The % 2-ethyl branched alcohols in instant applications 18-20, see claims 18-20.
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 14-20 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 26-32 of copending Application No. 17553752 to Killebrew et al. (hereinafter Killebrew ‘752) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The claims of Killebrew ‘752 recite the instant application claim 14 product ester composition produced as a product of a process, see claim 26, comprising the steps of: reacting a mixture of C8-C36 alcohols, wherein less than 60% of the mixture of C8-C36 alcohols are linear alcohols, wherein greater than 25% of the mixture of C8-C36 alcohols are 2-methyl branched alcohols, and wherein and greater than 8% of the mixture of C8-C36 alcohols are 2-ethyl branched alcohols, see claim 26, with compounds having one or more carboxylic acid functions., see claim 26, producing a product ester composition, see claim 26;
The compounds comprising one or more carboxylic acids in instant application claims 15-17, see claims 27-29; and,
The % 2-ethyl branched alcohols in instant applications 18-20, see claims 30-32.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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