Response to Amendment
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 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Claim 2, 17-20 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improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101 is withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-5, 7-17, 19-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended claims state the phrase “wherein (a) is used in molar excess compared with (b)”. This phrase appears to be new matter, since it has not been found in the specification where the one skilled would interpret applicant having possession of this imitation at the time the invention was made. Molar excess is used as description for caustics and other ingredients independently but applicants specification appears to be silent with said terminology in comparison with component (a) and component (b).
Appropriate corrections and/or clarifications are required.
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 1-5, 7-17, 19-20 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 epoxidized 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.
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 1-5, 7-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Garbark et al. (US 2019/0177655 A1).
Garbark et al is relied upon as set forth above. Specifically, with respect to the “molar excess limitation” as amended and rejected under 112 (a), the prior art is thereby relied upon in the event the 112(a) rejection is n0t sustained.
One skilled in the art would have been able to optimize the molar excess of component (a) to (b) as recited in the amended claims since optimization is within the level of ordinary skill in the detergent art to suggest optimum components to deliver surface active agents with the expectation to reduce surface tension a substrate. In the absence of a showing to the contrary, one skilled in the art would have been motivated to try optimal molar excess of components to suggest the claimed invention, in the absence of a showing or criticality commensurate in scope with the claimed invention.
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
“The 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 is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Response to Arguments
Applicant's arguments filed 5-20-2026 have been fully considered but they are not persuasive.
Applicant argues that the “molar excess of component (a) to (b) is not suggested by the prior art and furthermore, unexpected results show results of said ratio within the claimed invention.
The examiner contends and respectfully disagrees. The “molar excess” limitation purported would have been obvious to optimize given that the specification shows a range of ratios broadly formed to include either excess from (a) to (b) or (b) to (a). The examples in Garbark et al narrowly show an excess from the polyol to epoxidized fatty ester however, one skilled in the art would readily optimize the polyol with the expectation of success to try in order to solvate the composition. Furthermore, since applicant’s showing in Tables 2 and 3 equate to specific surfactants and their irritancy or mildness factors one skilled would be unable to determine from the Tables or the figures what encompasses a molar excess criticality. Moreover, neither the figures nor the Tables are commensurate in scope with the claims, where a broadly written epoxidized fatty acid ester and polyol are compared with very specific ingredients of the claims.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
“The 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 is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Conclusion
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.
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
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