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 .
Claims 1-20 are pending in the instant application. Claims 1-20 are rejected.
Information Disclosure Statement
The information disclosure statement filed on November 28, 2023 has been considered and a signed copy of form 1449 is enclosed herewith.
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.
Claim 7 is 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.
Regarding claim 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). This rejection can be overcome, for example, by deleting the phrase “such as coconut and soybean oils” from the claim. Also, the phrase “mixture of alkyl chain carbon compositions” in line 1 of the claim renders the claim indefinite and this rejection can be overcome by amending the phrase to “mixture of alkyl chain carbon contents” as in line 4 of the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 9 and 19 of U.S. Patent No. 12,570,923 (previously Appl. No.18/060,673) (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 12,570,923 claims a method of neutralizing the produced at least two of the first oleo-furan sulfonic acid according to formula (2), the second oleo-furan sulfonic acid according to formula (3), and the third oleo-furan sulfonic acid according to formula (4) to produce to at least two of a first neutralized oleo-furan sulfonic acid according to formula (5), a second neutralized oleo-furan sulfonic acid according to formula (6), and a third neutralized oleo-furan sulfonic acid according to formula (7) (see claim 9) and a method of neutralizing the produced at least two of the first oleo-methylfuran sulfonic acid according to formula (2), the second oleo-methylfuran sulfonic acid according to formula (3), and the third oleo-methylfuran sulfonic acid according to formula (4) to produce to at least two of a first neutralized oleo-methylfuran sulfonic acid according to formula (5), a second neutralized oleo-methylfuran sulfonic acid according to formula (6), and a third neutralized oleo-methylfuran sulfonic acid according to formula (7) (see claim 19). Since R in the compounds of formulae (6) and (7) of the reference can be H, CH3, CH2CH3, or SO3-; X and Z can be SO3-; n is 1-21; and M can be Na+, NH4+, Li+, K+, Ca2+, or Mg2+ (see claim 9) with compounds (6) and (7) in claim 19 being more limited (i.e., R is methyl and X and Z are SO3-), it would have been obvious for one of ordinary skill in the art at the time of the invention through routine experimentation to arrive at the compounds of formula (1) of the instant claims with a reasonable expectation of success. The motivation would have been to make additional surfactants. For example, the compounds of instant claims 9, 10, and 11 fit within the scope of the compounds of formula (7) in the reference patent (See claim 19 of U.S. Patent No. 12,570,923) and the compounds of instant claims 19 and 20 fit within the scope of the compounds of formula (6) in the reference (See claim 19 of U.S. Patent No. 12,570,923). Thus, a prima facie case of obviousness has been established.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622