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 .
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.
This office action is a response to applicant’s response to a restriction requirement filed October 10, 2025. Claims filed December 14, 2023 are examined herein.
Claims 1-19 are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-15 (drawn to an oil resistant agent and products) in the reply filed on October 10, 2025 is acknowledged. Thus, claims 16-19 are withdrawn due to being directed to a non-elected invention. Claims 1-15 are examined herein.
Priority
This application is a CON of PCT/JP2022/024780 filed June 21, 2022 and claims foreign priority to JP 2022-019806 filed February 10, 2022 and JP 2021-103440 filed June 22, 2021. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been received. The Examiner notes that no English translation was provided.
Specification
The disclosure is objected to because of the following informalities:
On the top of page 15, the first two structures are blurry, particularly the 8’s, rendering them illegible.
On pages 3, 7, and 62, the following structure has a blurry superscript:
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.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the following structure has a blurry superscript:
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.. Appropriate correction is required.
Claim Interpretation
Claim 1 recites an oil-resistant agent, comprising a modified natural product. The broadest reasonable interpretation of the oil-resistant agent, is the modified natural product itself. According the instant specification the oil-resistant agent exhibits oil resistance and imparts the oil resistance to a treatment target by treating the treatment target with the oil-resistant agent (pg. 4, para. 0010) That is, the phrase “oil-resistant” is merely a description of a property of the agent or a property that occurs following application. Additionally the property of a given agent cannot be separated from the product given an identical product is taught in the prior art.
With respect to instant claim 15, which is directed to an oil-resistant agent and recites the phrase “for paper”. The Examiner notes that it is well settled that “intended use” of a composition or product, e.g., “for paper”, will not further limit claims drawn to a composition, so long as the prior art discloses the same composition comprising the same ingredients in an effective amount, as the instantly claimed (See MPEP 2111.02 (II)).
Claim Rejections - 35 USC § 112 (b)
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 3-4 and 13 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.
Regarding claims 3-4: Claim 3 recites inter alia, “….wherein the biobased compound has a hydroxyl group.”. Claim 4 recites inter alia, “….wherein hydrogen of a hydroxyl group of the biobased compound….”The phrase renders the claim indefinite, because there a multiple different interpretations that could arise to a person of ordinary skill, leading to a lack of clarity in scope. The phrase could be interpreted to mean a hydroxyl group that is within the carboxyl group, a hydroxyl group that is separate from the carboxyl group, a hydroxyl group that was present in the original biobased compound that has since been modified, or a hydroxyl group that is present after modification of carboxyl groups. Thus, claims 3-4 are unclear in scope and rendered indefinite. For Examination purposes the claims will be interpreted to mean a hydroxyl group that is separate from the carboxylic acid, as described in the instant specification (pg. 8, paras. 0017-0018), such as in citric acid.
Regarding claim 13: Claim 13 recites, inter alia, “wherein the oil-resistant agent has a melting point of 25 °C or higher. Claim 14 recites inter alia, “wherein the oil-resistant agent has a contact angle of 10 °C or larger.”. However, the oil-resistant agent is understood to be a composition, based on the limitations provided in instant claims 9-12. It is unclear whether these properties are characteristic of the modified natural compound within the oil-resistant agent/composition, or the oil-resistant agent/composition itself. Thus, claim 13 is unclear and rendered indefinite.
Claim Rejections - 35 USC § 112 (d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15, which depends from claim 1, recites “The oil-resistant agent according to claim 1, wherein the oil-resistant agent is for paper”. However, instant claim 1 is directed towards an agent/composition, merely reciting an intended use does not structurally limit the agent/composition in any way, absent evidence to the contrary. Thus, claim 15 fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakagawa (CN 112779772, cited on PTO-892) as evidenced by Nouryon (Armeen 2HT Di(hydrogenated tallow) amine, 2025, cited on PTO-892). The English translation of Nakagawa has been provided by the examiner.
Regarding claims 1-3, 5-13, and 15: Nakagawa teaches a water repellent composition comprising a dehydration condensate of a 2-to-4 membered polycarboxylic acid and a hydrocarbon alcohol or amine wherein the alkyl group has 6 to 22 carbon atoms (English translation, abstract). According to the instant specification, the instant oil-resistant agent can be used as a water repellant (pg. 62, lines 1-4). Nakagawa teaches the specific preparation: citric acid monohydrate reacted with dihydrotallow amine (trade name “Armeen 2HT”) in a condensation reaction forming a diamide compound as the main component (English translation, pg. 13, second to last para., production example 1). According to Nouryon, Armeen 2HT is a dialkyl amine of formula R-NH-R wherein R is an alkyl chain mainly C16-C18 (pg. 1, para. 1). Nakagawa teaches the resulting condensate (a1) has a melting point of 52-56 °C (English translation, pg. 13, second to last para., production example 1, i.e. higher than 25 °C). The condensate (a1) is then combined with an anionic surfactant and emulsified to prepare an aqueous dispersion (English translation, pg. 13, second to last para., production example 1). Nakagawa teaches in view of emulsifiability of the product, the components are adjusted so that least 1 carboxyl group form an ester/amide, and at least 0 to 1 carboxyl group remains unreacted (English translation, pg. 5, middle of page, para. 9). Unreacted carboxyl groups can be in the form of a carboxyl group, or exist as a salt of the carboxyl group (English translation, pg. 5, para. 13). In short, a person of ordinary skill in the art would at once envisage that Nakagawa teaches the following:
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(MP =52-56 °C), prepared from bio-based ingredients (citric acid and tallow-amine) with an anionic surfactant in an aqueous dispersion (i.e. water dispersion composition), which anticipates the structural limitations of claims 1-3, 5-11, and 13. Although Nakagawa does not determine the bio-based percentage of the product, considering a majority of the carbons are from bio-based ingredients (i.e. tallow), and not petroleum sources (instant specification, pg. 5, para. 0011) it is presumed to be higher than 30% as instantly claimed, absent evidence to the contrary. Although, Nakagawa is directed towards the application of the repellent towards fibers, as discussed above in the claim interpretation, the “intended use” of a composition or product, e.g., “for paper”, will not further limit claims drawn to a composition, so long as the prior art discloses the same composition comprising the same ingredients in an effective amount, as the instantly claimed. Thus, claim 15 is also anticipated. Nakagawa teaches the composition can further include pH adjusters, including citric acid (English translation, pg. 9, second to last para., pg. 10, para. 2), thereby anticipating claim 12.
Claims 1, 3-8 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodriguez Gonzales (WO 2010/101477, cited on PTO-892), hereinafter referred to as Rodriguez, as evidenced by Jungbunzlauer (Renewable Carbon Plastics Magazine, 2025, cited on PTO-892).
Regarding claims 1, 3-8 and 15: Rodriguez teaches compounds and compositions of citric acid trialkylamides (citramides) for controlling gas hydrate formation (abstract, pg. 1, lines. 1-4). Rodriguez teaches the citric acid derivatives have the following formula:
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(pg. 6, lines 1-8). Rodriguez teaches tributyl citrate and acetyl tributyl citrate as possible compounds (pg. 10, lines 15-21, table 1). Jungbunzlauer discloses that the citrate esters referenced by Rodriguez are biobased (i.e. 100% biobased, pg. 3, para. 3, pg. 4, table 1). These compounds meet the structural limitations as recited by instant claims 1 and 3-8. Rodriguez teaches the compounds are to be dissolved in water at 1-2 wt% (pg. 18, bottom of page). Although, Rodriguez is directed towards the application of the agent for controlling gas hydrate formation as discussed above in the claim interpretation, the “intended use” of a composition or product, e.g., “for paper”, will not further limit claims drawn to a composition, so long as the prior art discloses the same composition comprising the same ingredients in an effective amount, as the instantly claimed.
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa (CN 112779772, cited on PTO-892) as evidenced by Nouryon (Armeen 2HT Di(hydrogenated tallow) amine, 2025, cited on PTO-892) as applied to claims 1-3, 5-13, and 15 above.
Regarding claim 14: As discussed above, Nagakawa teaches the agent of claim 1. Nagakawa does not describe the HD contact angle of the condensate is 10° or larger.
However, Nagakawa teaches stearyl amine can be used as an alternative to dihydrotallow amine (English translation, pg. 5, para. 4). Given that they are possible alternatives encompassed by the formula of Nagakawa, it is prima facie obvious to substitute equivalents known for the same purpose (See MPEP 2144.06 (II)).
Taken together it would have been prima facie obvious to arrive at a citric acid modified with stearyl amine as taught by Nagakawa. A person of ordinary skill in the art would have had the motivation to do so with a reasonable expectation of success as Nagakawa teaches stearyl amine as a suitable alternative and it is prima facie obvious to substitute equivalents known for the same purpose.
According to the instant specification, the HD contact angle of Example 1 is prepared from the reaction between citric acid and octadecyl amine (pgs. 49-50, para. 0125). This example results in the formation of citric acid in which carboxylic acid groups have been replaced with octadecyl amides (i.e. stearyl amine connected to a carboxyl group). The instant specification demonstrates that the contact angle of this compound is 46.5 (pg. 51, para. 0128, table 1).
Thus, wherein it would have been obvious to substitute dihydrotallow amine with stearyl amine, a person of ordinary skill in the art would be motivated to arrive at Example 1 as described in the instant specification, which necessarily has a contact angle within the claimed range, absent evidence to the contrary.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa (CN 112779772, cited on PTO-892) as evidenced by Nouryon (Armeen 2HT Di(hydrogenated tallow) amine, 2025, cited on PTO-892) as applied to claims 1-3, 5-13, and 15 above in view of Maeda (TW 201803964, cited on PTO-892). The English translation of Maeda has been provided by the Examiner.
Regarding claim 15: As discussed above, Nagakawa teaches the agent of claim 1. Although, Nakagawa is directed towards the application of the repellent towards fibers, as discussed above in the claim interpretation, the “intended use” of a composition or product, e.g., “for paper”, will not further limit claims drawn to a composition, so long as the prior art discloses the same composition comprising the same ingredients in an effective amount, as the instantly claimed. Thus, claim 15 is also anticipated.
Even if assuming for the sake of argument the claims were to be interpreted in such a way wherein the intended use “for paper” limited the claim, the claim would still have been rendered obvious over Maeda.
Nakagawa teaches the agents are a non-fluorine water repellent composition which can provide a fiber product with excellent water repellency and good texture (English translation, abstract).
Nakagawa teaches the agents can be used for paper as recited by instant claim 15.
However, Maeda comparably teaches a non-fluorine water repellent (English Translation, abstract). Maeda teaches the composition can be applied a fiber product, including paper (English translation, pg. 28, bottom of page).
Taken together, it would have been prima facie obvious to apply the composition of Nagakawa to paper as taught by Maeda. A person of ordinary skill in the art would have had a motivation to do so with a reasonable expectation of success as the art recognizes non-fluorine water repellant compositions are useful to wide range of fiber products, including paper. A person of ordinary skill in the art would have the motivation in order to impart water repellency onto the paper.
Conclusion
No claims are allowed in this action.
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/S.L.G./Examiner, Art Unit 1693
/ANDREA OLSON/Primary Examiner, Art Unit 1693