Prosecution Insights
Last updated: April 19, 2026
Application No. 18/278,753

MIXTURES CONTAINING PHOSPHORUS COMPOUNDS AND USE THEREOF

Non-Final OA §103§112
Filed
Aug 24, 2023
Examiner
ZIMMER, MARC S
Art Unit
1765
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Wacker Chemie AG
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
2y 7m
To Grant
95%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
1230 granted / 1549 resolved
+14.4% vs TC avg
Strong +16% interview lift
Without
With
+15.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
48 currently pending
Career history
1597
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
39.2%
-0.8% vs TC avg
§102
27.7%
-12.3% vs TC avg
§112
24.2%
-15.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1549 resolved cases

Office Action

§103 §112
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 Applicant is strongly encouraged to replace “compound (X) of polyethers ” in claims 12-13, 17, 18, 20, 22, and 24 with “polyether compound (X)”. Likewise, “compound (Y) of phosphorus” should be replaced with “phosphorus compound (Y)” in claims 14-16. The phrase ““compound (Y) of phosphorus compounds” in claims 17, 18, 20, 22, and 24 is even more awkward and should be addressed similarly. The word “of” in line 3 of claim 18 should be deleted. Claim 21 does not even constitute a complete sentence and it is suggested that Applicant recite instead: 20. The process of claim 20, wherein the compositions are obtained as moldings. The article “ the ” should be deleted from line 1 of claim 22. 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 appl icant regards as his invention. Claims 20-23 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. Both claims 20 and 22 mention silanes of the formula (VI) but no formula (VI) is set forth thereafter thus a practitioner of the claimed invention is unable to ascertain scope with respect to this aspect of the invention. 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. Claim s 12-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Teshima et al., U.S. Patent Application Publication No. 2012/0288792 in view of Taniguchi et al., U.S. Patent Application Publication No. 2001/0029273 . Teshima teaches developer, or liquid ink, compositions for electrophotographic processes. Applicant is directed to [0216] where the makeup of some embodiments of said developer composition are summarized. Relevant to the present discussion, there are disclosed as components of the developer polyoxyethylene compounds A1 to A5, all of which feature aromatic ether end groups thus correlating with claimed compound (X) where R 2 is a C 2 divalent hydrocarbon moiety and R 1 is an aryl hydrocarbon group. (The description doesn’t say whether or not aryl groups occupy both ends or not but one of ordinary skill would immediately appreciate that hydrogen atoms will reside at those terminal positions not occupied by aryl moieties.) These compounds A, which fulfill the role of dispersants for the toner particles [0047,0050], are used in concert with phosphate compounds B that satisfy formula (II) of claim 1 where m=o, n=1, and R 6 is ethylhexyl (mono-2-ethylhexyl phosphate) and where m=o, n=2, and R 6 is ethylhexyl (di-2-ethylhexyl phosphate) . See Table 7, Ex C1-Ex C9, and Ex C14 to Ex C17. The Examiner acknowledges that the degree of polymerization of the polyoxyethylene compounds is not divulged and, thus, the limitation defining “p” is not anticipated. On the other hand, the breadth of formula describing the structure of prior art component A allows that the chain length of the polyoxyalkylene chain be any number of repeating units above 1, which of course is encompassing of the claimed range for “p”. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Moreover, there is no evidence in the record that the range of degree of polymerization values are essential to the successful practice of the instant invention. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, one of ordinary skill considers the application of the polyoxyalkylene , and that of the overall composition to which it is added, when selecting suitable permutations. In this instance, the polyoxyalkylene is, to reiterate, used as a dispersing agent in ink jet ink compositions. Polyether compounds employed in the context of facilitating uniform dispersion of pigments in an ink jet composition generally are oligomeric. See, for instance, the teachings of Taniguchi et al . which is also directed to ink jet ink compositions. Exemplified in paragraph [0035] are polyoxyethylene dispersants also bearing aryl terminal groups, and with degrees of polymerization between 40 and 60, which [0036] says is within the optimal range, 30-60, for optimal dispersing ability. Allowable Subject Matter Claims 15 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 20-23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action. Claims 18, 19, and 24 are allowable. Teshima et al. teach mixtures of the compounds of claim 12 in a completely different context than in claims 18-24. As for claim 15, the phosphorus compound constitutes only a small percentage of the total weight of the developer composition. There were surprisingly few disclosures teaching blends that comprised claimed compounds (X) and (Y), and those few that did including JP 2008-163335 and U.S. 2009/0131585 at [0120] did not furnish enough information about the polyether component for it to be clear that all the structural attributes of claimed compound (X) were met. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MARC S ZIMMER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1096 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8:30-5:00 . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Heidi Kelley can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-1831 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. February 27, 2026 /MARC S ZIMMER/ Primary Patent Examiner, Art Unit 1765
Read full office action

Prosecution Timeline

Aug 24, 2023
Application Filed
Feb 27, 2026
Non-Final Rejection — §103, §112 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
95%
With Interview (+15.6%)
2y 7m
Median Time to Grant
Low
PTA Risk
Based on 1549 resolved cases by this examiner. Grant probability derived from career allow rate.

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