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 .
Claim Objections
Claims 2, 3, 16, and 18 are objected to because of the following informality:
• In claim 2, the claim should be amended as follows: “…and/or an alkyl polyglucoside sorbitan ester…”
• In claim 3, the phrase “A composition of claim 1” should be changed to read: “The composition of claim 1.”
• In claim 16, the claim should be amended as follows: “…or an alkyl polyglucoside sorbitan ester…”
• Claim 18 has a quotation mark (“) at the end of the claim, which should be deleted.
Appropriate correction is required.
Election/Restrictions
Applicant's election of Group I, claims 1-18, without traverse in the reply filed on 04/13/2026 is acknowledged.
Claims 19-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/13/2026.
Claim Rejections - 35 USC § 112
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.
Claims 1-18 are 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.
In claims 1 and 2, the claimed range of “0.01-50%” and “20-80%” do not clarify the units for the percentages. Is it wt%, mol%, or some other metric? For the purposes of examination, the Examiner is interpreting the units to be in wt%. Claims 3-18 are also rejected by virtue of their dependency on claim 1.
In claims 1 and 2, the phrase “of the dispersion” lacks sufficient antecedent basis. There is no previous mention of a dispersion. To correct, the Examiner suggests replacing the word “dispersion” with the word “composition” in claims 1 and 2. The Examiner is interpreting as such. Claims 3-18 are also rejected by virtue of their dependency on claim 1.
In claim 3, the phrase “including, but not limited to” is unclear. It is unclear what other compounds would be included in the group. To correct, the Examiner suggests amending the claim to read: “…functional mineral is selected from the group consisting of phthalocyanine pigments, calcium carbonate…” For the purposes of examination, the Examiner is interpreting as such.
Similarly, in claim 3, the phrase “or other organic or inorganic pigments/filler minerals” is unclear. The phrase appears to broaden the claimed Markush group to include functionally any pigment or mineral filler, resulting in confusion as to what the Markush group is meant to be limiting. To correct, the Examiner suggests deleting the phrase from the claim. For the purposes of examination, the Examiner is interpreting any organic or inorganic pigment/filler mineral to read on claim 3.
In claims 8 and 9, the phrase “of the present invention” lacks sufficient antecedent basis. There is no previous mention of “the present invention.” Further, it is unclear which embodiment constitutes the “present invention.” To correct, the Examiner suggests deleting the term from the claims. For the purposes of examination, the Examiner is interpreting as such.
In claims 10, 11, and 13, the dispersant is claimed to be a composition that includes a mixture of various components as a mixture. However, these components appear to be the constituent parts of the dispersant that are meant to polymerize into the final dispersant rather than the actual final dispersant itself. This results in confusion. It is unclear whether Applicants are claiming their dispersant to be in its final polymerized form, or where the dispersant is simply composed of the constituent parts that are not yet polymerized. For the purposes of examination, the Examiner is interpreting either to be the case. Claims 12 and 14 are also rejected by virtue of their dependency on claims 11 and 13, respectively.
In claims 10, 11, and 13, the phrase “and positional isomers thereof” is unclear. What are the positional isomers referring to? Positional isomers of the monosaccharide? The disaccharide? Both? The final polymerized dispersant? For the purposes of examination, the Examiner is interpreting the claimed positional isomers to refer to positional isomers of the monosaccharide and/or the disaccharide. Claims 12 and 14 are also rejected by virtue of their dependency on claims 11 and 13, respectively.
In claim 18, the claim claims a “pigment dispersion.” However, claim 1 does not necessitate the presence of a pigment dispersion. This results in confusion in the case that a pigment dispersion is not present in the composition. For the purposes of examination, the Examiner is interpreting any composition that reads on claim 1 to read on claim 18.
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 1-12 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata (JP-2019194276-A), with reference to the included machine translation (hereinafter referred to as “Shibata”).
Regarding claims 1, 2, and 6, Shibata teaches a composition (see Shibata at pg. 1, para. 1, teaching a water-based ink composition), comprising:
a. at least one derivatized alkyl polyglucoside, and/or an alkyl polyglucoside sorbitan ester crosspolymer dispersant in a range of 0.01-50%, wherein the alkyl polyglucoside crosspolymer is a sorbitan ester alkylglucoside crosspolymer including sorbitan oleate decylglucoside crosspolymer (regarding claim 6) (see Shibata at pg. 2, para. 3, teaching the ink as containing a compound represented by a general formula (1), which is a cross polymer of sorbitan oleate and alkyl glucoside; also see Shibata at pg. 6, para. 10, teaching PolySugar Mulse D9 (i.e., PolySuga Mulse D9) as a suitable crosspolymer represented by the general formula (1); PolySuga Mulse D9 is a sorbitan oleate decylglucoside crosspolymer, as disclosed by Applicant’s specification at para. 0035; also see Shibata at pg. 2, para. 5, teaching the compound represented by the general formula (1) may be added in a range of 0.1 to 15% by mass in the ink; this range falls completely within the claimed range; also see Shibata at pg. 2, para. 4, teaching the compound of formula (1) as functioning as a dispersant for a fragrance in the ink);
b. an organic solvent, in a range from 20-80% by weight (see Shibata at pg. 4, para. 5-6, teaching the ink may contain an organic solvent in a range of 2 to 60% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
c. at least one pigment, filler mineral, or functional mineral making up 20-80% of the dispersion (see Shibata at pg. 3, para. 1, teaching the ink may contain a colorant, such as a pigment; also see Shibata at pg. 4, para. 4, teaching the content of the colorant may range from 1 to 30% by mass in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 3, see Shibata at pg. 3, para. 6, teaching carbon black as a suitable pigment.
Regarding claims 4-5 and 8-12, the claims do not necessitate the presence of the derivatized alkyl polyglucoside in the composition (via the “and/or” language); consequently, Shibata necessarily reads on the claims.
Regarding claim 7, Shibata does not necessitate the presence of ethylene oxide or 1,4-dioxane in their composition; consequently, Shibata necessarily teaches the composition to be free of such compounds.
Regarding claim 15, see Shibata at pg. 3, para. 7, teaching the pigment may be dispersed with a resin; the dispersing resin for the pigment corresponds to the claimed “co-dispersant.”
Regarding claims 16-17, while Shibata teaches the composition according to claim 15 outlined above, Shibata fails to explicitly teach the co-dispersant to be a derivatized alkyl polyglucoside or alkyl polyglucoside sorbitan ester crosspolymer dispersant that is ethylene oxide and 1,4-dioxane free (alkyl polyglucoside sorbitan ester crosspolymer, regarding claim 17).
However, Shibata teaches their ink to include the compound of general formula (1), see below:
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Shibata further teaches example compounds of general formula (1), where one example compound is PolySuga Mulse D9, and another example compound is the formula above where R = 12, n = 20, and m = 5 (see Shibata at pg. 10-11).
In this case, both examples of the formula (1) taught by Shibata are used for the same purpose, as dispersants for the fragrance molecule (see Shibata at pg. 2, para. 4). Furthermore, their combination would form a material that would also be used as dispersant in the ink of Shibata.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use both of the compounds of general formula (1) taught in the examples of Shibata in the ink of Shibata, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06. Moreover, the duplication of parts is an obvious modification. See MPEP § 2144.04.
Following the above modification, the ink of modified Shibata contains PolySuga Mulse D9 and the compound of general formula (1) where R = 12, n = 20, and m = 5. Accordingly, the latter compound is an alkyl polyglucoside sorbitan ester crosspolymer “co-dispersant.” Additionally, Shibata does not necessitate the presence of ethylene oxide or 1,4-dioxane in their composition, and thus, necessarily teaches the composition to be free of such compounds.
Furthermore, it is noted that the claim 16 rejection does not rely on the teaching of Shibata for the resin pigment dispersant like in the claim 15 rejection above (i.e., the second compound of the general formula (1) corresponds to the claimed “co-dispersant” rather than the resin pigment dispersant).
Regarding claim 18, since the composition of Shibata is the same as that claimed, it necessarily follows the crosspolymer demonstrates the claimed property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Claims 1-4 and 6-18 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid et al. (US-20210338563-A1) (hereinafter referred to as “Schmid”) in view of O’Lenick (US-7507399-B1) (hereinafter referred to as “O’Lenick”), with evidence from Peters et al. (US-20200263052-A1) (hereinafter referred to as “Peters”) as to the rejection of claims 1-4 and 6-18 only.
Regarding claims 1, 2, and 4, Schmid teaches a composition (see Shmid at para. 0006, teaching a composition for conditioning and/or styling hair), comprising:
b. an organic solvent, in a range from 20-80% by weight (see Schmid at para. 0054, teaching the composition may contain one or more organic solvents in a range of 0 to 20% by weight; this range touches an end-point of the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
c. at least one pigment, filler mineral, or functional mineral making up 20-80% of the dispersion (see Schmid at para. 0030, teaching the composition to comprise powder calcium sulphate in a concentration of 2 to 35% by weight; calcium sulphate is a mineral filler, as evidenced by Peters at para. 0059; also see Schmid at para. 0055 and 0063, teaching the composition may comprise a pigment in an amount ranging from 0.001 to 10%; thus, Schmid necessarily teaches a concentration for their at least one pigment, filler mineral, or functional mineral to range from 2.001 to 45% by weight (2% calcium sulphate min + 0.001% pigment min = 2.001% total min; 35% calcium sulphate max + 10% pigment max = 45% total max); this range of 2.001 to 45% by weight overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
While Schmid teaches the composition outlined above, Schmid fails to explicitly teach the composition as comprising at least one derivatized alkyl polyglucoside in a range of 0.01 to 50%, wherein the derivatized alkyl polyglucoside is a sulfonate derivatized alkyl polyglucoside (regarding claim 4).
However, O’Lenick teaches alkyl polyglucosides that contain additional functional groups such as sulfonate groups (see O’Lenick at col. 1, lines 1-20 and col. 4, lines 1-65). O’Lenick further teaches the alkyl polyglucosides provide an outstanding softening and conditioning to the skin and hair (see O’Lenick at col. 1, lines 12-15; and col. 13, lines 56-60). Additionally, O’Lenick teaches the compounds may be used as surfactants in personal care applications like bubble bath, shampoos and body wash (see O’Lenick at col. 13, lines 61-65).
Shmid teaches their composition may contain at least one surfactant, such as an anionic or non-ionic surfactant, in an amount ranging from 2 to 35% by weight in the composition (see Schmid at para. 0014 and 0029). Moreover, Schmid suggests alkyl polyglucosides as suitable surfactants (see Schmid at para. 0015). Schmid additionally teaches the composition to condition and/or style hair (see Schmid at para. 0006).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the sulfonate derivatized alkyl polyglucoside of O’Lenick as a surfactant in the hair treatment composition of Schmid in an amount ranging from 2 to 35% by weight. One of ordinary skill in the art would have been motivated to do so in order to provide an outstanding softening and conditioning to the skin and hair (see O’Lenick at col. 1, lines 12-15; and col. 13, lines 56-60).
Since the derivatized alkyl polyglucoside is the same as that claimed (e.g., a sulfonate derivatized alkyl polyglucoside, see instant claim 4), and further given that the pigment is the same as that claimed (e.g., titanium dioxide, see claim 3 below), it necessarily follows that the sulfonate derivatized alkyl polyglucoside of modified Schmid functions as a dispersant as claimed. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Regarding claim 3, see Schmid at para. 0062, teaching the pigment may include titanium dioxide.
Regarding claims 6 and 13-14, the claims do not necessitate the presence of the alkyl polyglucoside crosspolymer (via the “and/or” language); consequently, modified Schmid necessarily reads on the claims.
Regarding claim 7, Schmid does not necessitate the presence of ethylene oxide or 1,4-dioxane in their composition; consequently, Schmid necessarily teaches the composition to be free of such compounds.
Regarding claims 8-9, see O’Lenick at col. 4, teaching the derivatized alkyl polyglucoside to be composed of the following components:
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Thus, the derivatized polyglucoside dispersant of modified Schmid necessarily contains a monosaccharide unit (see component “a” above), a disaccharide unit (see component “b” above), a linker (a crosslinking agent, regarding claim 9) (see the “polymerizing agent” above), and a functionalizing agent (see the “functionalizing agent” above).
Regarding claims 10-11, see O’Lenick at col. 4, teaching the derivatized alkyl polyglucoside to be composed of the components in the picture shown earlier above; it necessarily follows that upon polymerization, the derivatized alkyl polyglucoside of O’Lenick reads on the claims; also see O’Lenick at col. 3, lines 1-3, teaching many positional isomers are formed.
Regarding claim 12, see O’Lenick at col. 12, lines 20-25, teaching 1,3-dichloro isopropanol, i.e., 1,3-dichloro-2-propanol, as a suitable polymerizing agent (i.e., crosslinking agent).
Regarding claims 15-17, see O’Lenick at col. 3, lines 1-3, teaching that many various positional isomers of the derivatized alkyl polyglucoside are formed upon polymerization; consequently, it necessarily follows that the composition of modified Schmid contains a “co-dispersant,” where the co-dispersant is at least one positional isomer of the alkyl polyglucoside of O’Lenick; in other words, the different positional isomers suitably read on the claimed “co-dispersant;” such additional positional isomers are derivatized alkyl polyglucosides that are ethylene oxide and 1,4-dioxane free (given that O’Lenick does not necessitate ethylene oxide and 1,4-dioxane in the composition).
Regarding claim 18, since the composition of modified Schmid is the same as that claimed, it necessarily follows the derivatized alkyl polyglucoside demonstrates the claimed property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 3-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 11-14, 19, 28, and 29 of U.S. Patent Application No. 17/603,335 (herein referred to as ‘335) (see claim set dated 05/01/2026) in view of Swank (US-3595822-A) (hereinafter referred to as “Swank”).
With respect to instant claims 1 and 3, claim 1 of ‘335 teaches all the limitations of instant claim 1 except for the presence of a pigment (titanium dioxide, regarding instant claim 3) in an amount ranging from 20 to 80%.
However, Swank teaches a latex paint containing a titanium dioxide pigment that is aftertreated with boehmite-type alumina (see Swank at col. 2, lines 1-12). Swank further teaches the pigment results in little or no change in viscosity on aging, and therefore no tendency towards gelation, of the paint (see Swank at col. 2, lines 25-28). Moreover, Swank teaches the content of the pigment to range from 40% to 60% in the paint (see Swank at col. 2, lines 34-38).
Claim 37 of ‘335 claims their latex may be used as a paint, where the paint contains a pigment. Further, in general, titanium dioxide pigments confer a white color to a paint, which may be desired for certain color applications.
Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the titanium dioxide pigment of Swank in the latex of claim 1 of ‘335 in an amount ranging from 40 to 60% to form a latex paint. One of ordinary skill in the art would have been motivated to do so in order to confer a white color to use the latex as a paint, and further, in order to result in little or no change in viscosity on aging, and therefore no tendency towards gelation, of the paint (see Swank at col. 2, lines 1-12 and 25-28).
Following the above modification the composition of claim 1 of ‘335 contains a pigment in a concentration that falls within the instantly claim range.
With respect to instant claims 4-18, although the claims at issue are not identical, they are not patentably distinct because instant claim 4 is met by claim 1 of ‘335; instant claim 5 is met by claim 1 of ‘335; instant claim 6 is met by claim 11 of ‘335; instant claim 7 is met by claim 2 of ‘335; instant claim 8 is met by claim 12 of ‘335; instant claim 9 is met by claim 12 of ‘335; instant claim 10 is met by claim 13 of ‘335; instant claim 11 is met by claim 14 of ‘335; instant claim 12 is met by claim 14 of ‘335; instant claim 13 is met by claim 19 of ‘335; instant claim 14 is met by claim 19 of ‘335; instant claim 15 is met by claim 28 of ‘335; instant claim 16 is met by claim 29 of ‘335; instant claim 17 is met by claim 29 of ‘335; and instant claim 18 is met by claim 1 of ‘335 (products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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