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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/04/2026 has been entered.
Response to Arguments
Regarding the Applicant’s arguments to claims 1 and 17 wherein they state Beylich discloses a “very large genus” of compounds, and therefore one of ordinary skill in the art would not be motivated to modify with dodecanoic acid, nor expect success is not persuasive for the following reasons:
While Beylich may disclose a number of combinations for the compound, the list is limited, not indefinite. Along with this, the applicant further limits the functional group as they have the claimed dodecanoic acid functional group in one of the five figures listed on that page.
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While Beylich may disclose a number of possibilities for this compound, there would be no reason for one of ordinary skill in the art not to expect success utilizing a permutation of a compound disclosed in the reference. Rather it would be unreasonable to expect anything other than success when using a compound that is supported in Beylich’s disclosure.
MPEP § 2131.02 further supports the reasons stated above, wherein it recites, “The limited number of compounds … resulted in a finding that the reference sufficiently described "each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name." Therefore, the reference "described" the claimed compound and the reference anticipated the claims.” For the reasons set forth above, these arguments are not persuasive.
Regarding the arguments for the dependent claims, they appear to be a continuation of the arguments regarding the independent claims, and do not introduce any new arguments. Therefore, the examiner directs the Applicant to the response to the arguments for independent claims 1 and 17 above.
Response to Amendment
The examiner acknowledges the amendments set forth by the Applicant on 07/08/2026 wherein claims 1 and 17 have been amended and claims 10-11 with 24 have been cancelled.
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.
Claim(s) 1-2, 6-9, and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beylich (WO2005110930A1) in view of Ceaser (US4780518A).
Regarding claim 1, Beylich teaches a method comprising: applying a fatty acid comprising dodecanoic acid to a surface slick located on an aqueous fluid, {Page 2 lines 29-32, re. method for treatment of oil on a solid or liquid surface involving a fatty acid & Page 3 Figure (see below) with lines 10-15 re. C1-C24-alkyl carbon chains of said compounds may optionally include oxygen and groups which are chosen among consideration products} Note that the structure below, along with the claimed C12 configuration, is dodecanoic acid.
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the surface slick comprising an oleaginous substance; {Page 6 line 33 re. added to raw oil on a water surface} applying a metal cation to the surface slick {Page 2 lines 29-32 re. method with a metal complex and a metal cation} and interacting the fatty acid salt with a surface of the surface slick {Abstract re. a fat-soluble metal added to the oil; the metal containing substance may be prepared with a metal salt reacting with an acidic organic compound} to reduce a surface area of the surface slick. {Page 1 lines 25-29 re. stiffening the oil, so it does not disperse & Figures 1-2 (oil before and after the composition addition)}
Beylich fails to teach the addition of the metal cation to the surface slick after applying the fatty acid; and reacting the fatty acid and the metal cation upon the surface slick.
Ceaser, drawn to a composition for oil cleanup {Ceaser, Abstract}, teaches the addition of the metal cation to the surface slick after applying the fatty acid; {Column 5 lines 27-39 re. the ingredients [fatty acid] are added and ingredients 3, 4, and 5 [metal cation] are added to the circulating liquid} and reacting the fatty acid and the metal cation upon the surface slick. {Column 1 lines 48-50 re. contacting the surface layers of oil with the composition taught}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Beylich with the order of composition addition as taught by Ceaser’s teachings of the addition of the metal cation to the surface slick after applying the fatty acid; and reacting the fatty acid and the metal cation upon the surface slick as Ceaser, similar to Beylich, teaches a composition suitable for oil adsorption. {Ceaser, Abstract}. Doing so allows the absorbent material to stay afloat on top of the water as it is hydrophobic, even after the absorption of the oil has occurred, something that the prior art hadn't been able to accomplish in an effective manner. {Ceaser, Column 1 lines 22-26 & 45-53}
Regarding claim 2, Beylich teaches skimming at least a portion of the surface slick off the aqueous fluid after the surface area has been reduced. {Page 2 lines 23-24 re. mechanical means removal of oil}
Regarding claim 6, Beylich teaches the metal cation comprises a transition metal cation or a rare earth metal cation. {Pages 2-3 lines 34-2 re. metallic cation can be chosen from the transition metals or the lanthanides (rare earth metals)}
Regarding claim 7, Beylich teaches the metal cation comprises a copper (II) cation, a neodymium (III) cation, a cerium (III) cation, a zinc (II) cation, or any combination thereof. {Pages 2-3 lines 34-2 re. metallic cation can be chosen from the transition metals or the lanthanides (rare earth metals) & Page 3 Figure (see below) with line 9 re. 'n+' from integers 0-4 (pertaining to the charge of the metal cation)}
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Regarding claim 8, Beylich teaches the metal cation comprises a zinc (II) cation. {Pages 2-3 lines 34-2 re. metallic cation can be chosen from the transition metals (Zinc) or the lanthanides (rare earth metals) & Page 3 Figure (see below) with line 9 re. 'n+' from integers 0-4 (pertaining to the charge of the metal cation)}
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Regarding claim 9, Beylich teaches the metal cation is applied to the surface slick as a metal chloride salt. {Page 6 lines 26-31 re. experiment 1 with the addition of aqueous ferric chloride (metal chloride salt) & page 7 lines 1-2 re. the product of experiment 1 being added to the oil spill}
Regarding claim 12, Beylich teaches the aqueous fluid comprises freshwater, seawater, or brine. {Page 6 lines 1-2 re. the method with water or salt water or fresh water}
Regarding claims 13-14, Beylich teaches the surface area of the surface slick is reduced by about 50% or greater; (Claim 13) and the surface area of the surface slick is reduced by about 80% or greater. (Claim 14) {Page 7 lines 9-10 re. 95% of the oil spill was removed}
Regarding claim 15, Beylich teaches interacting the fatty acid salt with the surface of the surface slick promotes formation of a plurality of clusters {Page 7 lines 7-8 re. the oil spill quickly attracts to the PET fibers} comprising the oleaginous substance, crystallization of the oleaginous substance upon the surface slick, or any combination thereof. {Page 4 lines 16-19 re. adding a polymeric materials to help with stiffening (crystallization) of the oil spill}
Regarding claim 16, Beylich teaches the oleaginous substance comprises petroleum or crude oil. {Page 6 line 33 re. raw oil (crude oil or petroleum) on a water surface}
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beylich (WO2005110930A1) modified by Ceaser (US4780518A), as applied to the claims above, and in further view of Laux (US6316398B1).
Regarding claim 3, Beylich modified by Ceaser fails to teach the fatty acid is applied to the surface slick in a first fluid and the metal cation is applied to the surface slick in a second fluid.
Laux, drawn to a cleaning composition for non-water soluble compounds, teaches the fatty acid is applied to the surface slick in a first fluid {Column 1 lines 58-65 re. second surfactant being anionic with a solvent & Column 2 lines 20-25 re. surfactants are derived from long-chain fatty acids} and the metal cation is applied to the surface slick in a second fluid. {Column 1 lines 58-65 re. the first surfactant being a cationic surfactant with a salt and a solvent}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Beylich modified by Ceaser with Laux’s teachings wherein the fatty acid is applied to the surface slick in a first fluid and the metal cation is applied to the surface slick in a second fluid as Laux, similar to Beylich modified by Ceaser, has been created with the similar goal of removing or cleaning non-water soluble substances. {Laux, Abstract}. One would be motivated to modify the composition with these features as Laux provides a superior cleaning composition that forms emulsions with the oils, wherein waste drops out of the emulsions in the absence of separate waste treatment chemicals. {Laux, Column 1 lines 35-41}
Regarding claims 4-5, Beylich modified by Ceaser fails to teach the fatty acid has a concentration in the first fluid of about 0.5 wt% to about 2.0 wt%, based on a total weight of the first fluid; (Claim 4) and the metal cation has a concentration in the second fluid of about 2,500 ppm to about 10,000 ppm, based on a total weight of the second fluid. (Claim 5)
Laux teaches the fatty acid has a concentration in the first fluid of about 0.5 wt% to about 2.0 wt%, based on a total weight of the first fluid; (Claim 4) {Column 4 lines 53-56 re. anionic surfactants making up about 0.1% to about 25.0% of the total weight} and the metal cation has a concentration in the second fluid of about 2,500 ppm to about 10,000 ppm, based on a total weight of the second fluid. (Claim 5) {Column 3 lines 3-4 re. cationic surfactant makes up about 0.2 to about 3.5% by weight of the total weight (2,000-35,000 ppm)}
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention wherein the ranges of Laux (fatty acid and metal cation concentrations) teaches the claimed range, as 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP § 2144.05(I)
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Beylich modified by Ceaser with Laux’s teachings the fatty acid has a concentration in the first fluid of about 0.5 wt% to about 2.0 wt%, based on a total weight of the first fluid; (Claim 4) and the metal cation has a concentration in the second fluid of about 2,500 ppm to about 10,000 ppm, based on a total weight of the second fluid (Claim 5) as Beylich modified by Ceaser fails to teach specific experimental concentrations for the taught composition. Given Laux teaches a superior cleaning composition due to the emulsion capabilities of their compound, {Laux, Column 1 lines 35-41} it would be obvious to one of ordinary skill in the art to have a reasonable expectation of success using the concentrations taught by Laux.
Claim(s) 17-18, 21-23, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beylich (WO2005110930A1) in view of Laux (US6316398B1).
Regarding claim 17, Beylich teaches a method comprising: applying a fatty acid salt comprising a fatty acid comprising dodecanoic acid and a metal cation {Page 2 lines 29-32, re. method for treatment of oil on a solid or liquid surface involving a fatty acid & Page 3 Figure (see below) with lines 10-15 re. C1-C24-alkyl carbon chains of said compounds may optionally include oxygen and groups which are chosen among consideration products} Note that the structure below, along with the claimed C12 configuration, is dodecanoic acid.
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in a second aqueous fluid {Page 4 lines 2-4 re. a fat-soluble metal containing substance is present as a liquid} to a surface slick located on an aqueous fluid, the surface slick comprising an oleaginous substance {Page 6 line 33 re. added to raw oil on a water surface} and interacting the fatty acid salt with a surface of the surface slick {Abstract re. a fat-soluble metal added to the oil; the metal containing substance may be prepared with a metal salt reacting with an acidic organic compound} to reduce a surface area of the surface slick. {Page 1 lines 25-29 re. stiffening the oil, so it does not disperse & Figures 1-2 (oil before and after the composition addition)}
Beylich fails to teach the fatty acid salt having a concentration in the second aqueous fluid ranging from about 0.75 wt% to about 3 wt%.
Laux, drawn to a cleaning composition for non-water soluble compounds, teaches the fatty acid salt having a concentration in the second aqueous fluid ranging from about 0.75 wt% to about 3 wt%. {Column 5 lines 27-29 re. the composition is diluted with about 90-99.5% by weight water}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Beylich with Laux’s teachings wherein the fatty acid salt having a concentration in the second aqueous fluid ranging from about 0.75 wt% to about 3 wt% as Beylich modified by Ceaser fails to teach specific experimental concentrations for the taught composition. Given Laux teaches a superior cleaning composition due to the emulsion capabilities of their compound; {Laux, Column 1 lines 35-41} thus it would be obvious to one of ordinary skill in the art to have a reasonable expectation of success using the concentrations taught by Laux.
Regarding claim 18, Beylich teaches skimming at least a portion of the surface slick off the aqueous fluid after the surface area has been reduced. {Page 2 lines 23-24 re. mechanical means removal of oil}
Regarding claim 21, Beylich teaches the metal cation comprises a transition metal cation or a rare earth metal cation. {Pages 2-3 lines 34-2 re. metallic cation can be chosen from the transition metals or the lanthanides (rare earth metals)}
Regarding claim 22, Beylich teaches the metal cation comprises a copper (II) cation, a neodymium (III) cation, a cerium (III) cation, a zinc (II) cation, or any combination thereof. {Pages 2-3 lines 34-2 re. metallic cation can be chosen from the transition metals or the lanthanides (rare earth metals) & Page 3 Figure (see below) with line 9 re. 'n+' from integers 0-4 (pertaining to the charge of the metal cation)}
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Regarding claim 23, Beylich teaches the metal cation comprises a zinc (II) cation. {Pages 2-3 lines 34-2 re. metallic cation can be chosen from the transition metals (Zinc) or the lanthanides (rare earth metals) & Page 3 Figure (see below) with line 9 re. 'n+' from integers 0-4 (pertaining to the charge of the metal cation)}
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Regarding claim 25, Beylich teaches the aqueous fluid comprises freshwater, seawater, or brine. {Page 6 lines 1-2 re. the method with water or salt water or fresh water}
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Koebner (US4151160A), drawn to a composition for treating oil with metal cations and fatty acids.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR J ROTONDI whose telephone number is (571)272-2058. The examiner can normally be reached M-F 8:00am-4:30pm.
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, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CONNOR J ROTONDI/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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