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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-4 in the reply filed on 04/20/26 is acknowledged. The traversal is on the ground(s) that: 1) applicant asserts that the examiner’s position that the composition comprising the polycationic polymer can be used as part of a detergent formulation for cleaning various surface was set forth without evidence. In response, the examiner holds that it is notoriously well known in the art that polycationic polymer are commonly used in various detergent compositions. Applicant is reminded that in determining the level of ordinary skill in the art, that the courts have admonished not to presume stupidity, In re Sovish, 226 USPQ 771 (CAFC 1985)., and 2) applicant also asserts that there would not be an undue burden on the examiner to examine both inventions together. The examiner’s response is that the examiner’s much closed proximately to both the searching and examining functions of the present application, gives the examiner a much better understanding of the burdens actually involved.
The requirement is still deemed proper and is therefore made FINAL.
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 1-4 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.
Independent claim 1 is very indefinite in regards to what is meant by “the quaternary ammonium group”. The problem here is that Applicant’s polycationic polymer surfactant has multiple quaternary ammonium groups and some of these are on the copolymer’s backbone. As evidenced of this, applicant’s attention is drawn to their FIG. IB wherein the PMDAAC has two pyrrolidinium rings on the backbone for every non-backbone quaternary ammonium group. As such, what quaternary ammonium group is applicant referring to? Applicant might want to consider amending independent claim 1 to include a specific chemical structural diagram of the claimed polycationic polymer surfactant, in order to clarify things.
Claims 2-4 are also being rejected here because they are dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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 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) 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by: C. Verma, et. al., Synthesis of 15 Polymeric Surfactant Containing Bis-cationic Motifs as a Highly Efficient acid Corrosion Inhibitor for C1018 Carbon steel (CS), New Journal of Chemistry, published on 02 Jan. 2023, pp 3445-3461, which was incorporated by reference in its entirety on page 29 of applicant’s own specification.
Applicant’s corrosion inhibitor composition comprising a polycationic polymer surfactant is directly anticipated over said reference, see Scheme 1 (specifically step 9) on page 3447.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Dexter U.S. Patent Application publication No.: 2013/0035266 A1.
Dexter discloses methods of controlling the stability of emulsions to coalescence and phase separation. Use of chaotropic counterions to promote coalescence and/or phase separation of emulsions stabilized by ionic surfactants is described, see abstract.
Dexter directly discloses the use of pDADAAC (i.e. PDADAAC), see Table 32 and paragraphs [0043]-[0046], which can encompass Applicant’s PMDAAC of FIG. 1B, as set forth in Applicant’s disclosure. Please note that Dexter’s paragraph [0043] directly discloses that heterocyclic containing monomers can be used to make the polycationic surfactants. Paragraph [0043] further discloses that said heterocyclic containing monomers can be those wherein the heterocyclic group is a pyrrolidinyl group (i.e. a pyrrolidinium group) when quaternized, which is the same heterocyclic group contained within the polycationic polymer surfactant of applicant’s dependent claim 4.
In light of Dexter’s said disclosure, it would have been obvious for one having ordinary skill in the art to actually make polycationic polymeric surfactants falling within the metes and bounds of applicant’s claims 1-4. It is well established that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
Prosecution Insights