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 without traverse of Group I, claims 1-14, in the reply filed on 12/18/25 is acknowledged.
Claims 15-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/18/25.
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 8 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.
Claim 8 teaches RB can be -RHC(O)ORD wherein RD is RB. It is unclear all of the combinations of this specific compound.
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.
Claims 1-7, 10-11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (CN102532919, English translation).
Li teaches a nano wax emulsion, comprising the following components in weight percentage:
Polyethylene wax 10.00-40.00%, montan wax 5.00-40.00%, polyethylene oxide 0.40-3.00%, co-solvent 0.05-1.00%, ionic emulsifier 1.00-8.00%, non-ionic emulsifier 1.00-10.00%, diffusion Agent 0.01-1.00%, stabilizer 0.004-0.20%, pH regulator 0.0001-0.100%, deionized water 30.00-70.00%.
Li teaches prepare the oil phase dispersion mixture by:
Add metered polyethylene wax, montan wax, polyethylene oxide and co-solvent to the high-pressure reaction kettle in turn, heat and melt, and stir; under low-speed stirring, add metered ionic emulsifier and non-ionic emulsifier to the reaction kettle in turn. Disperse it uniformly in the wax to obtain an oil phase dispersion mixture.
Li teaches the ionic emulsifier can be sodium stearate.
Li teaches the nonionic emulsifier can be stearic acid monoglyceride.
Polyethylene wax in the amount of 10.00-40.00% and montan wax in the amount of 5.00-40.00% reads on a wax in the total amount of 15-80 wt% of the composition as claimed in claim 1.
Sodium stearate in the amount of 1-8 wt% reads on a sodium salt of a C16 fatty acid as claimed in claim 1.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that Li discloses the wax in the amount of 15-40 wt% of the composition and sodium stearate in the amount of 1-8 wt% of the composition that overlap the presently claimed composition of claim 1, it therefore would be obvious to one of ordinary skill in the art, to use the wax and sodium stearate, which is both disclosed by Li and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 3, teaches the nonionic emulsifier can be stearic acid monoglyceride which is a monoglyceride of a C16 fatty acid.
Regarding claims 4-5, Li teaches a non-ionic emulsifier 1.00-10.00% which can be a stearic acid monoglyceride.
Li teaches polyethylene wax in the amount of 10.00-40.00% and montan wax in the amount of 5.00-40.00% reads on a wax in the total amount of 15-80 wt% of the composition as claimed in claim 1.
Sodium stearate in the amount of 1-8 wt% reads on a sodium salt of a C16 fatty acid as claimed in claim 1.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 6, it 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 to substitute in a small amount of carnauba wax for the montan wax as both are considered a hard wax.
Regarding claim 7, Li teaches montan wax which comprises a wax ester.
Regarding claim 10, Li teaches sodium stearate. This reads on formula II when Rh is a C18 side chain and Xn+ is a Na+ cationic moiety having a formal charge as claimed in claim 10.
Regarding claim 11, Li teaches stearic acid monoglyceride.
This reads on Formula I-i in claim 11 when RA1 and RA2 are H and RH is a C18 side chain as claimed in claim 11.
Regarding claim 13, Li teaches the solvent to be water.
Regarding claim 14, Li teaches paper pulp sizing agent in paper industry, curing agent for reinforced concrete, dispersant in printing ink and finishing agent in leather industry.
It 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 that it can be used in other fields such as a coating for a farm product.
Allowable Subject Matter
Claim 8 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 8, although the reference teaches wax esters, the reference does not teach the wax ester having the formula III as claimed in claim 8.
There is no motivation to modify the composition of Li to obtain the composition as claimed in claim 8.
Claims 9 and 12 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.
Regarding claim 9, although the reference teaches wax esters, the reference does not teach the wax ester having the formula IV as claimed in claim 9.
There is no motivation to modify the composition of Li to obtain the composition as claimed in claim 9.
Regarding claim 12, although Li teaches monoglycerides, the reference does not teach a combination of a first compound and a second compound as claimed in claim 12.
There is no motivation in Li to modify the composition to obtain the composition as claimed in claim 12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US4590119 teaches ceryl (cetyl) montanate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE J COHEN whose telephone number is (571)270-5836. The examiner can normally be reached 10am- 6pm M-F.
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, Coris Fung can be reached at (571) 270-5713. 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.
/STEFANIE J COHEN/Examiner, Art Unit 1732 5/19/26
Prosecution Insights