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
Claims 1-10, 12-18 and 20-22 of H. Tuerk, et al., US 18/556, 525 (10/20/2023) are pending. Claims 2,8-10,12-18 and 20 are withdrawn as directed to non-elected Groups. Claims 1,3-7 and 21-22 are under examination on merits and are rejected.
Election/Restrictions
Applicant elected Group (I) (claims 1,3-7 and 21-22), with traverse, in the Reply filed on 07/02/2026. Claims 2,8-10,12-18 and 20 drawn to non-elected Groups (II) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant’s Traversal
Applicant argues for the Restriction of Requirement on the grounds that (i). the Written Opinion of the International Searching Authority (PCT/EP2022/062028) does not check the Box IV (lack of unity of invention) on the Written Opinion, therefore, there is a unity of invention; (ii). The Group I-III are linked by the ether sulfates based on isomeric tridecyl alcohol mixtures; and (iii). there is no searching burden for examining all the Groups. Page 5-6 of the Remarks filed on 07/02/2026.
These arguments have been fully considered but not persuasive. As detail discussed in the previous Office action that even though the inventions of Groups I-III require a common technical feature that is an ether sulfates based on isomeric tridecyl alcohol mixtures, this common technical feature is not a special technical feature because it cannot be regarded as novel nor nonobvious in the art prior to the effective filling date as it has been disclosed by US8338348B2. Therefore, there lacks unity of invention, and the Written Opinion of the International Searching Authority for the instant application cannot be regarded as golden standard. With regards searching burden, the instant restriction was issued under the unity-of-invention rules governing restriction in international applications under 35 U.S.C. 371 (see MPEP § 802; MPEP § 1893.03(d); 37 CFR § 1.499), therefore, MPEP 803 does not apply in the instant case. Under the applicable PCT rules there is no requirement of a serious search burden. The instant Application is an international application entering the National Stage under 35 U.S.C. 371. Under the rules governing multiple inventions under 35 U.S.C. 371 (see MPEP § 1893.03(d)), an international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (Rule 13.1). International Preliminary Examination Under Chapter II Of The PCT, Chapter 10, Unity of Invention, (Oct. 3, 2011). As such, in the instant case, there is no requirement that the Examiner prove or show a serious search burden.
Overall, the Restriction Requirement is proper and is made as Final.
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.
Claims 1,3-7 and 21-22 are rejected under 35 U.S.C. 112(b) as indefinite because the term of “1-5 EO units per OH group are used on average” recited in claims 1 is not clear.
First, the instant specification does not provide any definition for the term “EO”, Examiner conducted searching of “EO” with google scholar and do not find a general accepted definition for “EO”. Second, it is not clear whether the claim term of “1-5 EO units per OH group are used on average” is means the ethoxylated product having 1-5 ethylene oxide units OR 1-5 equivalents of EO (ethoxylating agent, catalyst and/or solvent) is used for the step of (e)? If Applicant intends EO to mean ethylene oxide, then the claims should be amended to reflect this.
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.
Claims 1,3-7 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over a combination of E. Zeller, et al, US 6963014B1 (2005)(“Zeller”) and J. J. Zhao, et al, US 20180110710A1(2018)(“Zhao”).
E. Zeller, et al, US 6963014B1 (2005)(“Zeller”)
Zeller teaches that C13-alcohol mixture is useful for preparation of surfactant having functionalized groups. Zeller at col. 1, line 7-10.
Zeller teaches a process for preparing a C13-alcohol mixture, which comprises:
a) bringing a butene-containing C4-hydrocarbon stream containing less than 5% by weight, based on the butene fraction, of isobutene into contact with a nickel-containing heterogeneous catalyst at elevated temperature,
b) isolating a C12-olefin fraction from the reaction mixture,
c) hydroformylating the C12-olefin fraction by reaction with carbon monoxide and hydrogen in the presence of a cobalt catalyst and
d) hydrogenating the product from c).
Zeller at col. 2, line 24-37.
Regarding the step of hydrogenation (d), Zeller teaches that:
The C13-alcohol mixture of the present invention preferably has a mean degree of branching of from 2.1 to 2.5, in particular from 2.2 to 2.4. The degree of branching is defined as the number of methyl groups in one molecule of the alcohol minus 1. The mean degree of branching is the statistical mean of the degree of branching of the molecules of a sample. The mean number of methyl groups in the molecules of a sample can easily be determined by 1H-NMR spectroscopy.
Zeller at col. 6, line 48-57, emphasis added.
Thus, Zeller teaches a process that meeting each and limitation of the steps (a)-(d) recited by the instant claims 1 and 7.
Regarding steps (e)-(g) recited by the instant claims, Zeller further teaches a process for preparing of a functionalized alcohol mixture by subjecting an above-described C13-alcohol mixture to
(i) alkoxylation,
(ii) glycosidation,
(iii) sulfation,
(iv) phosphation,
(v) alkoxylation and subsequent sulfation, or
(vi) alkoxylation and subsequent phosphation.
Zeller at col. 6, line 61 to col. 7, line 3, emphasis added.
Regarding alkoxylation, Zeller teaches that the alkoxylation of the alcohol mixtures is carried out by reaction with at least one alkylene oxide, and the alkylene oxides are preferably selected from among ethylene oxide, propylene oxide, butylene oxide and mixtures thereof. Zeller at col. 7, line 4-23, emphasis added.
Regarding sulfation, Zeller teaches that sulfur trioxide can be a suitable sulfating agent, and when using sulfur trioxide as sulfating agent, the reaction can advantageously be carried out in a falling film evaporator. Zeller at col. 9, line 6-12, emphasis added.
Zeller also teaches that reaction mixtures obtained in the sulfation are worked up by customary methods known to those skilled in the art. These include, for example, neutralization, removal of any solvents used, etc. Zeller at col. 9, line 15-18.
Zeller teaches that the functionalized alcohol mixtures can be used as surfactants, dispersants, paper auxiliaries, detergents, corrosion inhibitors, auxiliaries for dispersions, and encrustation inhibitors. Zeller at col. 9, line 15-18. Thus Zeller fairly teaches one ordinary skill in the art that C13 fatty alcohol ethoxylate sulfate can be used as a surfactants.
Zeller teaches working examples, such as Example 4 that is preparation of C13 fatty alcohol ethoxylate containing 3 mol of ethylene oxide. Zeller Example 4 at col. 10.
Difference between Zeller and the Claims 1,3-7 and 21-22
Zeller teaches all the steps of instant claim 1, but differs in that he does not combine these steps in a single embodiment.
J. J. Zhao, et al, US 20180110710A1(2018)(“Zhao”)
Zhao teaches low viscosity hair care compositions comprising from about 20 weight % to about 45 weight % total surfactant; from about 2 weight % to about 25 weight % branched anionic surfactant with a tail having an alkyl chain with 12 to 18 carbon atoms; from about 5% weight % to about 30 weight % linear anionic surfactant with a tail having an alkyl chain with 12 to 18 carbon atom. Zhao at Abstract, emphasis added.
Zhao teaches that the suitable branched anionic surfactant can be sodium trideceth sulfate, sodium tridecyl sulfate. Zhao at page 2, [0019], line 1-4. Emphasis added. Zhao also teaches working examples comprising branched sodium trideceth 2-sulfate as surfactant. Zhao at page 15-16, [0176], Ex.1-20.
Thus, Zhao provides a motivation to motivate one ordinary skill in the art to synthesize sodium trideceth sulfate and/or sodium tridecyl sulfate as surfactant for hair care compositions.
Obviousness Rationales for Claims 1,3-7 and 21-22
Claims 1, 3, 6 and 21-22 are obvious because one ordinary skill in the art seeking sodium trideceth sulfate and/or sodium tridecyl sulfate as surfactant for hair care compositions is motivated to:
(i). conducting the Zeller Example 4 as taught by Zeller and achieved the fatty alcohol ethoxylate containing 3 mol of ethylene oxide;
(ii). sulfation of the fatty alcohol ethoxylate with SO3; and
(iii) neutralization of the reaction mixture with a aqueous solution of NaOH as taught by Zeller to achieve the desired sodium slat.
thus arrive at a process meeting each and every limitation of claim 1, 3, 6 and 21-22, therefore, claim 1, 3, 6 and 21-22 are obvious.
One ordinary skill in the art has a motivation to do so with a reasonable expectation of success because Zhao that branched sodium trideceth sulfate and/or sodium tridecyl sulfate can be used as surfactant for hair care compositions; and Zeller teaches that branched sodium trideceth sulfate and/or sodium tridecyl sulfate can be prepared through subjecting branched C13-alcohol mixture by alkoxylation with ethylene oxide and subsequent sulfation with SO3.
Claim 4 is obvious because one ordinary skill in the art is motivated to conduct the proposed sulfation in a falling film evaporator as Zeller teaches that when using sulfur trioxide as sulfating agent, the reaction can advantageously be carried out in a falling film evaporator. Zeller at col. 9, line 6-12.
Claim 5 is obvious because one ordinary skill in the art is motivated to conduct 100% degree of sulfation of the hydroxyl group of the fatty alcohol ethoxylate prepared in the Zeller Example 4 so that can make the proposed surfactant complete anionic.
Claim 7 is obvious because Zeller teaches that C13-alcohol mixture made with his method preferably has a mean degree of branching of from 2.2 to 2.4 and the mean degree of branching is the statistical mean of the degree of branching of the molecules of a sample. The mean number of methyl groups in the molecules of a sample can easily be determined by 1H-NMR spectroscopy. Zeller at col. 6, line 48-57.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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