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 .
DETAILED ACTION
Claims 1-3, 9-20, 26-34, 38, and 39 are pending. Claims 4-8, 21-25, and 35-37 have been canceled. Note that, Applicant’s amendment and arguments filed June 10, 2026, have been entered.
Claims 19, 20, and 26-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 December 29, 2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 26, 2026, has been entered.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 4/21/26 have been withdrawn:
None.
Claim Rejections - 35 USC § 102
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.
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 1-3, 9-18, 34, 38, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Piorkowski (US 2021/0054196).
With respect to independent, instant claim 1, Piorkowski teaches a surfactant composition comprises: (A) a surfactant component comprising an alcohol ethoxy sulfate having a 8-20C backbone that is ethoxylated with 1-10 moles of ethylene oxide and is present in an amount of 20-80 wt.% actives based on a total weight of the surfactant composition; (B) water present in a total amount of 10-50 wt.% based on a total weight of the surfactant composition; (C) an alkyl alcohol, preferably ethanol present in an amount of 3-10 wt.% based on a total weight of the surfactant composition; and (D) a liquid block copolymer present in an amount of 5-30 wt.% actives based on a total weight of the surfactant composition and where a weight average molecular weight of the liquid block copolymer is less than 5000 g/mol, and the surfactant composition has a viscosity of less than 5000 cps measured at 20°C. See Abstract.
Suitable block copolymers include those having the formula R1O-(EO)a(PO)b-(EO)cR2 wherein each of R1 and R2 are independently H or a C1-C22 alkyl group, wherein each C1-C22 alkyl group may independently be any alkyl group including linear, branched, and/or cyclic alkyl groups. Each of a, b, and c may be 1, 2, 3, 4, 5, 6, 7, 8, 9, 10. 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, etc. up to 70. See paras. 34-45. Water is present in the composition in an amount of from about 10 to about 50 weight percent based on a total weight of the composition. In various embodiments, water is present in a total amount of from about 15 to about 45, about 20 to about 40, about 25 to about 35, about 25 to about 30. about 20 to about 50, about 25 to about 45, about 30 to about 40, or about 35 to about 40, weight percent based on a total weight of the composition. Typically, the terminology "total amount" refers to a total amount of water present in the composition from all components, i.e., not simply water added independently from, for example, the surfactant component and/or the liquid block copolymer. In various nonlimiting embodiments, all values, both whole and fractional, between and including all of the above, are hereby expressly contemplated for use herein. An independent source of water, such as DI water, may be used to dilute the composition. This water may be independent from any water present in the composition as originating from one or more components. In other words, the composition includes water originating from the components themselves. However, to further dilute the composition, the independent water source may be used. See para. 30. The composition of this disclosure is typically described as a surfactant composition because it includes more highly concentrated components than a typical "detergent" composition. For example, the surfactant composition can be described as a type of surfactant masterbatch or component that is then used to form a detergent or detergent composition in a downstream production process. The surfactant composition of this disclosure may be further diluted and/or combined with other components to form an eventual detergent composition, as would generally be defined in the art. See para. 25.
Note that, the Examiner asserts that the broad teachings of Piorkowski would suggest compositions having the same biodegradability and microemulsion forming properties as recited by the instant claims because Piorkowski teaches compositions containing the same components in the same amounts as recited by the instant claims and further, such properties would flow naturally from the teachings of Piorkowski.
Piorkowski does not teach, with sufficient specificity, a composition containing a specific alkoxylated nonionic surfactant and the other requisite components of the composition as recited by independent, instant claim 1 and the respective dependent claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a specific alkoxylated nonionic surfactant and the other requisite components of the composition as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Piorkowski suggest a composition containing a specific alkoxylated nonionic surfactant and the other requisite components of the composition as recited by independent, instant claim 1 and the respective dependent claims.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 under Piorkowski, Applicant states that Piorkowski describes a generic block architecture, and gives no indication to direct a skilled artisan to select a C11 alcohol-based -(EO)x(PO)y(EO)z surfactant, where x is 1, y is 4 to 8 and z is 3 to 12.
In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of Piorkowski suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions". Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, Piorkowski clearly teaches that use of a liquid block copolymer present in an amount of 5-30 wt.% actives based on a total weight of the surfactant composition, wherein suitable block copolymers include those having the formula R1O-(EO)a(PO)b-(EO)cR2 wherein each of R1 and R2 are independently H or a C1-C22 alkyl group, wherein each C1-C22 alkyl group may independently be any alkyl group including linear, branched, and/or cyclic alkyl groups; Each of a, b, and c may be 1, 2, 3, 4, 5, 6, 7, 8, 9, 10. 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, etc. up to 70 (See Abstract and paras. 34-45 of Piorkowski), which would clearly suggest, for example, nonionic surfactants containing a C11 alkyl wherein a = 1, b = 4, and c = 8, which would clearly fall within the scope of the instant claims.
Additionally, the Examiner asserts that the broad teachings of Piorkowski would suggest compositions having the same biodegradability and microemulsion forming properties as recited by the instant claims because Piorkowski teaches compositions containing the same components in the same amounts as recited by the instant claims and further, such properties would flow naturally from the teachings of Piorkowski. While the Piorkowski does not specifically mention or discuss the biodegradability and microemulsioin forming properties, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Note that, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). See MPEP 2144. To render an invention obvious, the prior art does not have to address the same problem addressed by a patent applicant. KSR Int’l Co. v. Teleflex Inc., 550, U.S. 398, 420 (2007); see also, In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.”). The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention."). See MPEP 2145(II.). Thus, the Examiner asserts that the teachings of Piorkowski are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that data has been provided in the instant specification which is sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that Examples 1-3 of the instant specification provides data showing that the claimed invention provides unexpected and superior emulsification and cleaning properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
In response, note that, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims are open to a broad group of extended chain nonionic surfactants wherein the R group of the surfactants is a linear or branched, saturated or unsaturated, substituted, or unsubstituted, aliphatic, or aromatic alcohol with 11 carbon atoms, while the instant specification provides data with respect to only several specific embodiments which is not commensurate in scope with the instant claims. Note that, 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); See MPEP 716.02(d)(I).
Applicant has not provided on this record a sufficient basis for concluding that the generic scope of protection sought by claim 1 is reasonably commensurate with the showing of alleged unexpected results. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (obviousness rejection affirmed because evidence establishing that one (or a small number of) species gives unexpected results is inadequate proof); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims). Note that, the evidence in the Specification is not commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having an “alkali metal”. Appellants have not established that the results using the single embodiment in (Example 3) is representative of the results which would be obtained over the broad scope of compositions covered by the claims).
Additionally, the Examiner would like to point out that while para. 168 of the instant specification states that Surfactants #7-12, which fall within the scope of the instant claims, have further improved biodegradability, this statement does not appear to be supported by any numeric or factual data. Note that, it is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); See also In re Wood, 582 F.2d 638, 5642 (CCPA 1978) (“Mere lawyer’s arguments and conclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.”). See MPEP 716.01(c)(I). Also, para. 166 of the instant specification states that “All twelve extended surfactants easily emulsified the olive oil on the polyester napkin at room temperature, both in neutral water and in water with 1500 ppm caustic. This indicates good cleaning of food soil on such a surface with these extended surfactants” which shows that Surfactant #1-6, which fall outside the scope of the instant claims provide emulsification properties which are the same Surfactants 7-12 which fall within the scope of the instant claims. Also, while Examples 2 and 3 appear to provide a comparison between a composition containing extended surfactant #11, which falls within the scope of the instant claims, to compositions falling outside the scope of the instant claims, the control compositions 1-5 and the composition containing Surfactant #11 all contain varying amounts of different components and therefore, it is unclear if the superior cleaning properties of the composition containing Surfactant #11 rise to the level of unexpected or merely show what one of ordinary skill in the art would reasonably expect based on the different components in the compositions, and no objective determination can be made. Thus, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/September 4, 2026
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