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 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 2, 17-20 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.
Claims 2, 17-20 provides for the use of a reaction product., but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 2, 17-20 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Appropriate correction and or clarification is required.
Claims 17-20 depend from a rejected claim 2 and therefore are included as such. Appropriate corrections.
Claim Interpretation
The claim is given its’ broadest and reasonable interpretation, where the most comprehensive claim is a surfactant composition having binary components a) an epoxidized carboxylic acid ester and b) a compound having a reactive alcohol or amino functional group.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 3-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Garbark et al. (US 2019/0177655 A1).
Garbark et al discloses a composition and method of preparing a surfactant composition (Abstract; paragraphs 0027-0040; see also examples 7-10, 14 & 15 in paragraphs 0085-0093 & 0100-0103), the method comprising reacting: (a) an epoxidised carboxylic acid ester (paragraphs 0029 & 0036-0039; see also examples 7-8 in paragraphs 0085-0089 and example 14 in paragraphs 0100-0101); and (b) a compound including at least one reactive alcohol and/or amino functional group (paragraphs 0029-0035; see also examples 7-8 in paragraphs 0085-0089 and example 14 in paragraphs 0100-0101); wherein component (a) comprises an ester of formula RCOOR¹ in which R is a hydrocarbyl group including an epoxy functional group and R¹ is a hydrocarbyl group (paragraphs 0036-0038; see also example 2 in paragraphs 0073-0074 and examples 7-10, 14 & 15 in paragraphs 0085-0093 & 0100-0103); wherein R is an unbranched aliphatic group having 6 to 26 carbon atoms and R¹ is methyl or 2-ethylhexyl (paragraphs 0036-0038; see also example 2 in paragraphs 0073-0074 and examples 7-10, 14 & 15 in paragraphs 0085-0093 & 0100-0103); wherein component (a) is derived from soybean oil fatty acid (paragraphs 0036-0038; see also example 2 in paragraphs 0073-0074 and examples 7-10, 14 & 15 in paragraphs 0085- 0093 & 0100-0103); wherein component (b) comprises a compound of formula (I): wherein n is 0 or a positive integer; each X is independently O or NH; each group R⁴ is independently an optionally substituted alkylene, alkenylene or arylene group; and R⁵ is hydrogen or an optionally substituted alkyl, alkenyl, aryl, alkaryl or aralkyl group provided that n is not 0 when R⁵ is hydrogen (paragraphs 0031-0035; see also examples 7-8 in paragraphs 0085- 0089 and example 14 in paragraphs 0100-0101) wherein component (b) comprises an alkoxylated compound (paragraph 0034; see also example 7 in paragraphs 0085-0087: "PEG 400"); wherein each X is O, n is 20 to 100, R⁵ is hydrogen and each R⁴ is a C2 to C4 alkylene group (paragraph 0034; see also example 7 in paragraphs 0085-0087: "PEG 400"); wherein the surfactant comprises a derivatized surfactant, and wherein the method further comprises reacting: (c) a derivatizing agent (paragraph 0065; see also example 7 in paragraphs 0085-0087: "sodium hydroxide", example 9 in paragraphs 0090-0091: "chloroacetic acid", and example 15 in paragraphs 0102-0104: "sulfuric acid"); wherein reaction with component (c) introduces a polar functional group into the derivatized surfactant (paragraph 0065; see also example 7 in paragraphs 0085-0087, example 9 in paragraphs 0090-0091, and example 15 in paragraphs 0102-0104); wherein the polar functional group is selected from the group consisting of anionic and cationic functional groups (paragraph 0065; see also example 7 in paragraphs 0085-0087, example 9 in paragraphs 0090- 0091, and example 15 in paragraphs 0102-0104); wherein the polar functional group is selected from the group consisting of a sulfonate moiety, a sulfate moiety, a carboxylate moiety, a quaternary ammonium moiety, a phosphonate moiety, a phosphate moiety, a hydroxy group, an amino group, an alkoxylated chain, and a combination thereof (paragraph 0065; see also example 7 in paragraphs 0085-0087, example 9 in paragraphs 0090-0091, and example 15 in paragraphs 0102-0104); wherein component (c) comprises a sulfonating agent (example 15 in paragraphs 0102-0104: "sulfuric acid"); wherein component (c) comprises a hydrolysis agent (paragraphs 0030 & 0065; see also example 7 in paragraphs 0085-0087: "sodium hydroxide"); a composition comprising the surfactant (paragraphs 0002-0004, 0051 & 0061- 0063); further comprising one or more further components (paragraphs 0002-0004, 0051 & 0061-0063); wherein the surfactant comprises a derivatized surfactant, and wherein the method further comprises reacting a derivatizing agent (paragraph 0065; see also example 7 in paragraphs 0085-0087: "sodium hydroxide", example 9 in paragraphs 0090-0091: "chloroacetic acid", and example 15 in paragraphs 0102-0104: "sulfuric acid").
As this reference teach all of the instantly required it is anticipatory.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761