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 .
This action is responsive to Applicant’s response to election/restriction filed 08/04/2026.
Claims 1-20 are currently pending.
The IDS statement filed 03/04/2024 has been considered. An initialed copy accompanies this action.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19, drawn to a process, in the reply filed on 08/04/2026 is acknowledged. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Some minor claim objections and a 112 rejection is set forth below. However, the elected invention to the recited process is generally allowable over the closest prior art of record. The restriction requirement between Groups I and II, as set forth in the Office action mailed on 06/04/2026, has been carefully reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is maintained because the nonelected invention/claim does not require all the limitations of an allowable claim.
As noted in the Requirement for Restriction/election mailed 06/04/2026, Group II is a product-by-process claim (“An overbased calcium carboxylate or sulfonate soap as prepared according to the process of claim 1”). Product-by-process limitations are not limited to the recited process steps except to the extent they suggest structure of the product. Here, the product claim merely requires an overbased calcium carboxylate or calcium sulfonate soap derivable from the recited concentrations and identities of the carboxylic acids and optional alkyl benzene sulfonic acids and is not limited to the recited particulars of the process steps because an overbased calcium carboxylate or calcium sulfonate soap is still an overbased calcium carboxylate or calcium sulfonate soap whether it is prepared by carbonating via an organic carbonate or inorganic carbonate. See also MPEP 2113. Therefore, even while it is dependent on claim 1, the nonelected claim does not require all the limitations of an allowable claim.
Claim Objections
Claims 17 and 18 are objected to because of the following informalities:
Claims 17 and 18 each depend on claim 1 and recite limitations beginning “wherein the polar organic solvent comprises …”. However, regarding polar organic solvents, claim 1 only recites provision of a “first polar organic solvent” in its step (a). Thus, while it is clear and definite the claims refer to and limit the first polar organic solvent recited in claim 1 as no others are mentioned/recited, the terminology is still objected to because the antecedent basis of the terms do not match. Applicant is suggested to amend claims 17 and 18 to each recite “wherein the first polar organic solvent comprises …” in order to improve clarity and antecedent basis in the claims.
Appropriate correction is required.
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.
Claim 7 depends on claim 1 and recites a further step of “over basing the fourth mixture by adding therein another calcium base dispersed in a third polar organic solvent”. However, regarding polar organic solvents, claim 1 only recites provision of a “first polar organic solvent” in its step (a). No second polar organic solvent is mentioned, which renders the claim indefinite. It is unclear how there can be, or simply is, a “third polar organic solvent” without a “second polar organic solvent”. The antecedent basis and numbering of the term renders the claim indefinite. Does the claim require two polar organic solvents or three polar organic solvents?
While it is noted claim 4 recites addition of a second polar organic solvent, it has no relationship/dependency to instant claim 7 and thus cannot be read into the antecedent basis of claim 7.
Applicant could overcome this issue by amending claim 7 to depend on claim 4. Alternatively, Applicant could overcome this issue by amending claim 7 to recite any of “… another calcium base dispersed in another polar organic solvent”, “… another calcium base dispersed in a second polar organic solvent” (so long as there is no relationship/dependency to claim 4), or even simply “… another calcium base dispersed in a polar organic solvent”.
Appropriate correction/clarification is required.
It is additionally noted that, while dependent claim 15 recites the C2 to C6 carboxylic acids comprise, inter alia, pentanoic acid or valeric acid that describe the same compound (valeric acid is pentanoic acid). Even though reciting both “pentanoic acid” and “valeric acid” is redundant, the claim is nevertheless clear and definite because double inclusion of an element by members of a Markush group is not, in itself, sufficient basis for objection to or rejection of claims. See, e.g., Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371,121 USPQ2d 1277, 1287 (Fed. Cir. 2017) where redundancy of including both "vitamin B12" and "cyanocobalamin" (which were recognized on the record as referencing the same compound) within a Markush group of methylmalonic acid lowering agents did not render the claims indefinite.
Allowable Subject Matter
Claims 1-6, 8-16, and 19 are allowed.
Claims 17 and 18 are objected to (Id.) but are otherwise allowable as well and would be allowed if/when the objection is overcome.
Claim 7 would be allowable if/when the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action is overcome.
The following is an examiner' s statement of reasons for allowance: The closest prior art of record fail to teach or suggest a process of preparing an overbased calcium carboxylate or calcium sulfonate soap comprising, inter alia, neutralizing/reacting the particular mixture of 20-90 wt.% optionally branched C7-C25 carboxylic acids, 1-20 wt.% C2-C6 carboxylic acids, and optional alkyl benzene sulfonic acids with a calcium base followed by a step of carbonating with an organic carbonate free of carbon dioxide injection.
Moustafa et al. (US 10,407,558 B2) teach and claim a process for preparing an overbased calcium carboxylate soap comprising (a) preparing a mixture of 20-90 wt.% C7-C25 carboxylic acids branched on carbon 2 and 1-20 wt.% C2-C6 carboxylic acids in a non-polar organic solvent and a polar organic solvent, (b) adding a calcium base to the mixture of step (a) in an amount sufficient to neutralize the carboxylic acids in the mixture of step (a) and form water as a neutralization product, (c) heating the product of step (b) at a temperature between about 100°C to about 150°C for a time sufficient to evaporate the water of neutralization from said product, (d) cooling the product of step (c) to a temperature between about 50°C and about 90°C, (e) over basing the product of step (d) by adding a calcium base dispersed in a polar organic solvent to said product, and (f) carbonating the product of step (e) by injecting of carbon dioxide gas into said product (claim 1). See also the abstract and col. 3 & 4. Catalysts, e.g., zinc octanoate (octoate) are also provided with the solvents in the working examples. While the process taught and patented in Moustafa et al. appears very similar to that instantly claimed, the patent’s process requires carbonating by injection of carbon dioxide gas whereas such structure is explicitly excluded from the instantly claimed process and the patent otherwise fails to teach or suggest carbonation of the neutralized carboxylic acid mixture by adding an organic carbonate as instantly claimed.
Marotel et al. (US 4,824,585 A) teach methods of making calcium superbase soaps consisting essentially of calcium dissolved in at least one oil in the form of carbonate and of salts of acids comprising reacting a calcium oxide and/or hydroxide with carbon dioxide bubbled through a reaction mixture comprising at least one C7 to C13 organic carboxylic acid in the presence of at least one carbon dioxide fixation promoter and at least one catalyst, where the water formed during the reaction is removed (abstract and the summary of invention in col. 1 & 2). However, like Moustafa et al. (Id.), Marotel et al.’s process requires carbonating by injection of carbon dioxide gas whereas such structure is explicitly excluded from the instantly claimed process and the reference otherwise fails to teach or suggest carbonation by adding an organic carbonate as instantly claimed.
Koch et al. (US 4,465,603 A) teach the production of superbasic detergents from sulfonate and/or sulfophenates and an oxide or an hydroxide of an alkali metal or an alkaline earth metal is carried out in the presence of an ester of the carbonic acid, preferably in the presence of dimethylcarbonate (abstract). The examples exemplify utilizing alkylbenzenesulfonic acid as the sulfonate and calcium hydroxide as the alkaline earth metal hydroxide (col. 3 & 4). Koch et al. teach their process utilizing an organic carbonic acid ester (i.e., organic carbonate) has benefits over prior processes of utilizing carbon dioxide such as rendering it possible to limit the quantity of the carbonic acid ester and those of the oxide or the hydroxide of the alkali metal or the alkaline earth metal to what is strictly necessary to produce the desired degree of superbasicity in the additive which also entails a drastic reduction of the inorganic solid residue needing to be removed by filtration or centrifugation from the end product and dispensing with using promoters, co-promoters, and solvents (col. 2 lines 7-28). While Koch et al. is similar to the claimed invention in that an organic carbonate (an ester of the carbonic acid, preferably dimethylcarbonate) is utilized in a carbonation step of an alkyl benzene sulfonate to obtain an overbased calcium sulfonate product, Koch et al.’s overbased (superbased) detergent is merely a benzene sulfonate and/or sulfophenate and Koch et al. fail to teach or suggest the provision of 20-90 wt.% optionally branched C7-C25 carboxylic acids and 1-20 wt.% C2-C6 carboxylic acids in mixture with the benzene sulfonate as claimed. Furthermore, a person of ordinary skill in the art would have no reasonable expectation of successfully combining Koch et al. with the other references of record such as Moustafa et al. There is no reasonable expectation of success to provide Koch et al.'s organic carbonic acid ester in place of the carbon dioxide in Moustafa et al. due to the different fields of endeavor, products, and process designs. A person of ordinary skill in the art would have no reason, motivation, or expectation of success in modifying/obtaining an overbased calcium carboxylate soap utilizing a technique specifically designed and intended for a calcium sulfonate/sulfophenate detergent. While the instant claims include processes and embodiments thereof that prepare both an overbased calcium carboxylate soap or an overbased calcium sulfonate soap (likely depending on whether the optional alkyl benzene sulfonic acid is present in the second mixture in step (b)), there is nothing in the prior art references of record fairly linking the two types of products and processes of making thereof as interchangeable (e.g., dropping in a technique for one type into the other type) with any predictability or reasonable expectation of success.
Wollenberg et al. (US 7,256,161 B2) teach a process for making a Group II metal carbonated, overbased Mannich condensation products of alkylphenols, such as a reaction product of an alkylphenol, an aldehyde and N-phenyl-1,4-phenylene diamine utilizing an alkylene carbonate selected from ethylene carbonate or a mono-alkyl or di-alkyl substituted ethylene carbonate (abstract and col. 4 lines 14-48). In organic chemistry, a standard Mannich reaction is a multi-component condensation of a nonenolizable aldehyde, a primary or secondary amine, and an enolyzible carbonyl compound to afford aminomethylated products, and here an alkylphenol Mannich reaction is a multi-component condensation of an alkylphenol, an aldehyde, and an amine (Id. and col. 6 lines 11-14). The ethylene carbonate compound is used as a source of carbon dioxide and ethylene glycol to rapidly carbonate the Mannich condensation product (abstract, col. 6 lines 6-38, and col. 10 lines 33-45). A possible chemical structure of Wollenberg et al.’s Group II metal carbonated-overbased product of the carbonation step is:
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where R is alkyl and A is an amine or a polyamine (col. 10). While Wollenberg et al. is similar to the claimed invention in that an organic carbonate (ethylene carbonate and substituted derivatives thereof) is utilized in a carbonation step to obtain an overbased product, that is where the similarities end. Wollenberg et al. is in a different field of endeavor than the claimed invention as it is drawn to a distinct process and distinct end product compared to that claimed (alkylphenol Mannich reaction products vs. carboxylate/sulfonate soaps) and fails to teach or suggest provision, reaction, or overbasing of a calcium carboxylate or sulfonate soap. Furthermore, a person of ordinary skill in the art would similarly have little to no reasonable expectation of successfully combining Wollenberg et al. with the other references of record such as Moustafa et al. There is no reasonable expectation of success to provide Wollenberg et al.'s ethylene carbonate in place of carbon dioxide in Moustafa et al. due to the different fields of endeavor, products, and process designs. A person of ordinary skill in the art would have no reason, motivation, or expectation of success in modifying/obtaining an overbased calcium carboxylate soap utilizing a technique specifically designed and intended for an alkylphenol Mannich condensation product.
Wollenberg et al. (US 7,506,185 B2) similarly teach a process for making Group II metal overbased sulfurized alkylphenols using alkylene carbonate selected from ethylene carbonate or a mono-alkyl or di-alkyl substituted ethylene carbonate as a source of carbon dioxide and alkylene glycol to rapidly carbonate (abstract, col. 4 lines 44-66, and col. 12 lines 55-65). A chemical structure and mechanism of the Group II metal overbased sulfurized alkylphenol is shown at col. 15 lines 35-67, showing the sulfurized alkylphenol (or alkylphenate thereof) comprises the sulfur as a sulfide bridge crosslinking two alkylphenol aromatic rings. However, this Wollenberg et al. reference suffers from similar deficiencies as the previous Wollenberg et al. reference. The reference is in a different field of endeavor than the claimed invention as it is drawn to a distinct process and distinct end product compared to that claimed (sulfurized alkylphenols vs. carboxylate/sulfonate soaps) and fails to teach or suggest provision, reaction, or overbasing of a calcium carboxylate or sulfonate soap. There is no reasonable expectation of success to provide Wollenberg et al.'s ethylene carbonate in place of carbon dioxide in Moustafa et al. due to the different fields of endeavor, products, and process designs as a person of ordinary skill in the art would have no reason, motivation, or expectation of success in modifying/obtaining an overbased calcium carboxylate and/or sulfonate soap utilizing a technique specifically designed and intended for a sulfurized alkylphenol.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 18, 2026
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