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 .
DETAILED ACTION
Claim Status
Claims 21-40 are pending. Claims 21-33, 35 and 40 are under examination in their entirety. Claims 21-33, 35 and 40 are rejected. No claims allowed.
Filing Receipt
PNG
media_image1.png
114
936
media_image1.png
Greyscale
PNG
media_image2.png
42
941
media_image2.png
Greyscale
PNG
media_image3.png
81
935
media_image3.png
Greyscale
PNG
media_image4.png
93
936
media_image4.png
Greyscale
Election/Restrictions
Claims 34, and 36-39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on 06/15/2026.
Response to Traversal
Applicant's election with traverse of Group 1 claims 21-33, 35 and 40 in the reply filed on 06/15/2026 is acknowledged. The traversal is on the ground(s) that the prior art CN112,322,396 (“Shuaiyu”) does not teach an aqueous composition comprising at least aliphatic taurate amide and a C6-C24 carboxylic acid and ethyl acetate.
This is not found persuasive because unity of invention was broken citing the methyl cocoyl taurate taught by Shuaiyu. Per the restriction requirement mailed 04/14/2026, page 5, the technical feature of aliphatic taurate amide is not a special technical feature as it does not make a contribution over the prior art. As argued in the requirement, claim 34 directed to a purified product is being interpreted as aliphatic taurate amide. The methyl cocoyl taurate taught by Shuaiyu reads on the claimed aliphatic taurate amide.
The requirement is still deemed proper and is therefore made FINAL.
Specie Election
Applicant elected the below specie without traverse in the reply filed on 06/15/2026. The specie election requirement filed 04/14/2026 is withdrawn. The claims are being examined in their entirety.
PNG
media_image5.png
253
981
media_image5.png
Greyscale
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 21-33, 35 and 40 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.
Claim 21 is indefinite because it is not clear if the “an aqueous composition” in line 3 of claim 21 is the “a crude aliphatic taurate amide composition” in line 1 of claim 21. Additionally, claim 21 has two processes that are not linked. 1), a process of purifying ‘a crude aliphatic taurate amide composition”, and 2) a process proceeding with a liquid/liquid extraction … of “an aqueous composition”. It is unclear how the separate process of extracting the “an aqueous composition” with ethyl acetate purifies the “a crude aliphatic taurate amide composition”.
In other words, if two different unrelated compositions exist, extracting one does not necessarily purify the other. Without clarification, it is not understood how extracting the “an aqueous composition” allows for the purification of the “a crude aliphatic taurate amide composition”. Moreover, the water (aqueous) and C6-C24 carboxylic acid of the “an aqueous composition” is not a requirement of the “a crude aliphatic taurate amide composition”.
The above rejection and logic is being applied to claim 31.
With compact prosecution in mind, claim 21 and 31 are being interpreted as a process of purifying a crude aliphatic taurate amide composition via performing a liquid/liquid extraction with ethyl acetate on the crude aliphatic taurate amide composition, wherein the crude aliphatic taurate amide composition is an aqueous composition comprising at least the aliphatic taurate amide and a C6-C24 carboxylic acid.
Claims 26-29, 32, and 40 are directed to “the aqueous composition”. It is clear that “the aqueous composition” in claims 26-29, and 40 is referring to the “an aqueous composition” in line 3 of claim 21. However, clarification is needed to determine if there
is any relationship between the “the aqueous composition” and the “a
crude aliphatic taurate amide composition” in line 1 of claim 21 and line 1 of claim 32.
Claim 22-24, 26-27 and 32 recite the limitation “the aliphatic taurate amide”. It is unclear if the “the aliphatic taurate amide” is referring to the aliphatic taurate amide in the “a crude aliphatic taurate amide composition” in line 1 of claim 21 or line 1 of claim 32 or the aliphatic taurate amide in the “an aqueous composition” in line 3 of claim 21 or line 1 of step (i) in claim 32.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 21-25, 27, 29-30, 35 and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Llamas et al. (Towards understanding the behavior of polyelectrolyte–surfactant mixtures at the water/vapor interface closer to technologically-relevant conditions, Phys. Chem. Chem. Phys., 20 (3), pp. 1395–1407, Published 2018. Cited in the IDS filed 09/18/2023), Day (US Patent 5,496,959, Patent date 03-1996) and Abdolshahi et al. (Choice of solvent extraction technique affects fatty acid composition of pistachio (Pistacia vera L.) oil, J Food Sci Technol, 52(4) p.2422–2427, Published 04-2015.
Scope of the Prior Art
Llamas et al. teach the purification of crude aqueous lauryl methyltaurate reaction composition via extraction with the claimed ethyl acetate (claim 35) (p. 1404, left column). Lauroyl methyltaurate reads on the C12 aliphatic taurate amides of current claims 22-24 Llamas et al. teach the aqueous layer comprises the product lauroyl methyltaurate not the ethyl acetate extract (p. 1404, left column).
Llamas et al. teach the process to prepare a crude lauroyl methyltaurate via the
two step reaction of preparing lauroyl chloride from lauric acid (a C12 carboxylic acid, current claim 25) and the reaction of lauroyl chloride with sodium methyltaurate (p. 1404, left column).
Llamas et al. teach utilities of the surfactant lauroyl methyltaurate as follows. In general, polymer–surfactant mixtures in the bulk solution and upon adsorption at interfaces, both fluid and solid, has attracted considerable interest in recent years due to their importance in many technological and industrial applications, ranging from drug delivery systems to mineral processing, and from tertiary oil recovery to the development of cosmetic formulations for hair care (p. 1395, left column). Llamas et al. teach the anionic surfactant being lauroyl methyltaurate (p. 1396, right middle column).
Concerning claim 30, Llamas et al. teach “room temperature” (p. 1404, left column). Room temperature overlaps the claimed range.
Ascertain the Differences
Llamas et al. does not teach the process of purifying crude aliphatic taurate amide composition comprising at least the step of proceeding with a liquid/liquid extraction with ethyl acetate of an aqueous composition comprising at least aliphatic taurate amide and a C6-C24 carboxylic acid.
In other words there is no evidence to suggest a C6-C24 carboxylic acid existed in the product composition taught by Llamas et al.
Secondary References
Day teach a reaction composition containing a C6-C24 carboxylic acid and an
aliphatic methyltaurate. (See Day Example 1, columns 4-5). Day goes on to teach quenching reaction compositions with water up to 50% by weight (Column 4, lines 20-30).
Day teach an alternative method to prepare the aliphatic methyltaurate reaction
composition via a one-step direct amidation/condensation of fatty acids, specifically
stearic acid (a C18 carboxylic acid) with sodium N-methyl taurate (See Day Example 1, 3 and 5, columns 4-5).
Day goes on to teach separation of excess fatty acids (carboxylic acids) from fatty acid esters of hydroxyalkyl sulfonate salts via dissolution of the excess fatty acids (column 2, lines 30-50).
Day goes on to teach reaction compositions containing sodium cocoyl-N-methyltaurate and free fatty acids made by the one-step direct amidation of the fatty acids and the sodium N-methyl taurate (Example 3 and 5). Day teach the free fatty acid produced in Example 3 was removed via vacuum distillation (Example 5).
Day teach the utility of the compositions being wetting agents, cleansing agents, and dispersants and may be used in a wide variety of products for detergent and personal care uses such as shampoos, lotions, bubble baths, and toilet soaps (column 1, lines 5-15).
Day teach carboxylic acids having overlapping amounts of carbon as taught by Llamas et al. See Day, column 3 lines 30-67.
Abdolshahi et al. was brought in to teach at least myristic, palmitic and stearic acids are extracted using ethyl acetate (p. 2423, additionally, Table 1). Myristic acid being a C14 carboxylic acid and a homolog of lauric acid (a C12 carboxylic acid) taught by Llamas et al. Note: both Abdolshahi et al. and Day teach stearic acid (a C18 carboxylic acid) and overlapping fatty acids. See Day, column 3 lines 30-67.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have prepared the lauroyl methyltaurate taught by Llamas et al. and the aliphatic methyltaurates taught by Day for the utilities taught by Day and/or for the polymer–surfactant mixtures taught by Llamas et al.
Next the ordinary artisan would have prepared the lauroyl methyltaurate taught by Llamas et al. via the direct amidation/condensation method taught by Day. The ordinary artisan would have done so to substitute one known method for another to obtain predictable results. See MPEP 2141 III (B). Moreover, the ordinary artisan would have utilized the direct amidation method over the acid chloride method to reduce the number of steps from two to one.
Next it would have been obvious for the ordinary artisan to have quenched the reaction compositions arrived at by the ordinary artisan with water and thus arrive at the claimed crude aliphatic taurate amide composition comprising an aqueous composition comprising at least aliphatic taurate amide and a C6-C24 carboxylic acid. The ordinary artisan would have done so because Day teach quenching reaction compositions with water up to 50% by weight (Column 4, lines 20-30).
Next, the ordinary artisan would have used a liquid/liquid extraction, due to the ethyl acetate liquid/liquid extraction taught by Llamas et al. and/or Abdolshahi et al. on the vacuum distilled crude aqueous compositions arrived at by the ordinary artisan comprising at least aliphatic taurate amide and a C6-C24 carboxylic acid.
The ordinary artisan would have done so to remove the free fatty acids as instructed by Day (Example 5) and to achieve the aliphatic taurate amides for the utilities taught by Day and/or for the polymer–surfactant mixtures taught by Llamas et al.
A reasonable expectation of success would have been from the teaching by Abdolshahi et al. that ethyl acetate is shown to extract fatty acids that are homologs of the lauric acid taught by Llamas et al. and overlapping fatty acids taught by Day.
Moreover, the ordinary artisan would have performed the ethyl acetate extraction on the arrived at aqueous compositions comprising at least aliphatic taurate amide and a C6-C24 carboxylic acid with a reasonable expectation of success because of: Day taught removal of excess fatty acids via dissolution; Llamas et al. taught ethyl acetate does not dissolve the aliphatic taurate amide; and Abdolshahi et al. taught homologs of fatty acids and/or overlapping fatty acids taught by Day and/or Llamas et al. are extracted by ethyl acetate.
Concerning claim 27, the ordinary artisan taught to add up to 50 weight percent of water to the product would have added water to the arrived at product compositions to quench the product and would have found the workable ranges via routine experimentation. In doing so the ordinary artisan would have arrived at the overall weight percent of the aliphatic taurate amide in the aqueous composition. Too little water, the product would not be quenched. Too much, diminishing returns.
Concerning claim 29 and 40 and the claimed weight percent of ethyl acetate, the ordinary artisan would have arrived at the overall weight percent via routine experimentation. Too little amount of extractant would not allow for dissolution and extraction. Too much diminishing returns.
MPEP 2144.05 II. A. and B. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Concerning claim 30, MPEP 2144.05 I.: “In the case where the claimed ranges “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).”
Claim(s) 26, 28 and 31-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Llamas et al. (Towards understanding the behavior of polyelectrolyte–surfactant mixtures at the water/vapor interface closer to technologically-relevant conditions, Phys. Chem. Chem. Phys., 20 (3), pp. 1395–1407, Published 2018. Cited in the IDS filed 09/18/2023), Day (US Patent 5,496,959, Patent date 03-1996) and Abdolshahi et al. (Choice of solvent extraction technique affects fatty acid composition of pistachio (Pistacia vera L.) oil, J Food Sci Technol, 52(4) p.2422–2427, Published 04-2015 as applied to claims 21-25, 27, 29-30, 35 and 40 and in further view of ‘LLE (Liquid Liquid Extraction, pp. 30-35, Published 10-2003).
Scope of the Prior Art
The combinational teachings of Llamas et al., Day and Abdolshahi et al. are in the above 103 rejection and are incorporated by reference.
Additional teachings of Llamas et al. are as follows. Concerning claim 32 step (ii), Llamas et al. teach depositing the aqueous layer in an Erlenmeyer flask (p. 1404, left column). This teaching is the claimed collection of the aqueous phase.
Additional teachings of Abdolshahi et al. are as follows. Concerning removal of the extraction solvent, Abdolshahi et al. teach evaporation under vacuum (p. 2424, left column).
Additional teachings of Day are as follows. Concerning claim 33, Day teach an alternative method to prepare the aliphatic methyltaurate reaction composition via a one-step direct amidation/condensation of fatty acids, specifically stearic acid (a C18 carboxylic acid) with sodium N-methyl taurate (See Day Example 1, 3 and 5, columns 4-5).
Ascertain the Differences
Llamas et al., Day and Abdolshahi et al. do not teach the removal of the ethyl acetate via distillation in claim 31, removing the ethyl acetate from the aqueous phase in step (iii) of claim 32, ensuring the aqueous composition is a solution nor the solubilization of the carboxylic acid in the aqueous composition.
Secondary References
‘LLE teach the use of pH when solubilizing carboxylic acids/amines in systems that involve aqueous and/or organic solutions when performing extractions and/or liquid/liquid extractions (LLE) (p. 30-31). Concerning the removal of the ethyl acetate from either the aqueous or organic phase via distillation, ‘LLE teach the use of distillation to remove the solvent (pp. 30-31, and 33).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized pH as taught by ‘LLE to ensure separatable molecules are first in solution. The ordinary artisan would have ensured solutions were made so that the extractions/LLE would proceed.
Upon ensuring the dissolution of molecules for purposes of LLE, the ordinary artisan would have arrived at the solutions of claims 26 and 28. The reasonable expectation of success from the fact that pH was taught by ‘LLE to place molecules (e.g. carboxylic acids) into solution.
Concerning the aqueous phase and the organic phase both containing ethyl acetate and the respective molecules to be separated and/or any molecules being claimed as in claim 32 step (i)-(iii), this is a property of ethyl acetate and/or water and the molecules to be separated. See ‘LLE miscibility with water when discussing the organic phase (p. 31). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01 II.
Concerning step (ii) in claim 32 and collecting the aqueous phase, after the arrived at extraction was performed of the ethyl acetate (organic phase) and the aqueous phase, the aqueous phase would have been collected per the teachings of Llamas et al.
Next, the ordinary artisan would have removed ethyl acetate from either the organic and/or the aqueous phase via distillation with a reasonable expectation of success because ‘LLE teach the use of distillation to remove the solvent. Thus, the ordinary artisan would have arrived at step (iii) of claim 32 and 31.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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, Scarlett Goon can be reached at (571)270-5241. 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.
/B.G.D/ Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights