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 .
Claims filed 3/15/2024 are made of record. Claims 1-20 are currently pending in the application.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-15, drawn to surfactant, classified in C08F293/00
II. Claims 16-19, drawn to compositions, classified in C11D1/721.
III. Claim 20, drawn to method of synthesizing surfactant, classified in C08F8/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are distinct because the surfactant of group I can be used in a polymerization process and has a different design, mode of operation and do not overlap in scope with the compositions of group II. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions III and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, surfactant of group I can be made by using an end-capped oxyalkylene comprising alkoxylated blocks to form a multi-arm block copolymer of group I.
Inventions II and III are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, product of group II cannot be made by the process of group III.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
This application contains claims directed to the following patentably distinct species:
Machine warewash composition.
Paper/pulp processing composition.
Decoking composition.
The species are independent or distinct because each of these compositions comprise components that are distinctly different. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 16 is generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Jonathan Kennedy on 7/17/2026 a provisional election was made with traverse to prosecute the invention of group I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 10 and 12 are objected to because of the following informalities:
Claim 10 recites “comprises TMS, TES, TIPS, TBS, TBDPS” (lines 1-2) and should be written in full form such as “trimethylsilyl” for “TMS” (see paragraph 0069 of present application).
Claim 12 recites “wherein the block copolymer the EO groups” and should be rephrased as “wherein in the block copolymer the EO groups” or alternatively “wherein the EO groups”.
Appropriate correction and/or clarification are required.
Claim Rejections - 35 USC § 112
Claim 12 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 12 recites “bout 20% and about 60%” (line 2) and “about 40% and about 80%” (line 3). It is not clear if the “%” is based on weight or volume. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claim Rejections - 35 USC § 102
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.
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 1-7 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beckett et al (WO 2004/078312 A1).
Prior to setting forth the rejection, it is noted that the recitation of "surfactant" in the preamble (cf. independent claim 1) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Beckett et al and hence the preamble fails to limit the claim. MPEP 2111.02.
Regarding claim 1, Beckett et al disclose a block copolymer having two blocks and having general formula (III):
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wherein R13 is the residue of organic initiator, R14 is one or more C-2-C4 alkylene groups, R16 is one or more C-2-C4 alkylene groups provided that R14 and R16 are different from each other, R17 is a C1-C10 alkyl group (i.e., reads on present claim 1 wherein each of the alkoxylated arm comprises a terminus and at least one of the alkoxylated arms is capped with hydrophobic group at the terminus), “j” is an integer of 5 to 80, “l’ is an integer of 1 to 80 (i.e., reads on “X” and “Y” in present claim 1), and “m” is an integer of 1 to 6 (abstract) which reads on multi-arm block copolymer comprising at least 2 alkoxylated arms as in present claim 1, when R14 and R16 are different and include C2-alkylene group (i.e., EO group of present claim 1) and C3-alkylene groups (i.e., PO group of present claim 1). The copolymer is prepared by first polymerizing an alkylene oxide using an organic initiator corresponding to the group R13 (page 3, lines 25-26). The initiator may be polyfunctional and have from 2 to 6 reactive hydrogens in the form of hydroxyl groups (page 4, 4-6) which reads on the polyfunctional moiety in present claim 1.
Regarding claims 2-3, block copolymer, of Beckett et al, has the formula:
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and m = 1 to 6 (abstract) which reads on polyfunctional moiety has 2, 3, 4, 5, or 6 alkoxylated arms as in present claim 2; and polyfunctional moiety has 2, 3, or 4 alkoxylated arms that are capped as in the present claim 3.
Regarding claims 4 to 7, block copolymer, of Beckett et al, has the formula:
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, wherein R13 is the residue of organic initiator, R14 is one or more C-2-C4 alkylene groups, R16 is one or more C-2-C4 alkylene groups provided that R14 and R16 are different from each other and R17 is a C1-C10 alkyl group, “j” is an integer of 5 to 80, “l’ is an integer of 1 to 80 (i.e., reads on “X” and “Y” in present claims 4 to 7), and “m” is an integer of 1 to 6 (abstract). When R14 is ethylene oxide (i.e., EO) and R16 is propylene oxide (i.e., PO), block copolymer reads on it comprising the alkoxylated arms of present claims 4 to 7, since “PO” is open to being n-propylene oxide or iso-propylene oxide.
Regarding claim 11, Beckett et al teach that the polymer has a molecular weight of 200 to 6000 (page 5, lines 19-20) which reads on the molecular weight in present claim 11. Preferred initiators include polyols such as trimethylol propane and pentaerythritol, diamines such as ethylene diamine (page 4, lines 8-11) which reads on polyfunctional moiety in present claim 11).
Regarding claim 12, block copolymer, of Beckett et al, has the formula:
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, wherein R13 is the residue of organic initiator, R14 is one or more C-2-C4 alkylene groups, R16 is one or more C-2-C4 alkylene groups provided that R14 and R16 are different from each other and R17 is a C1-C10 alkyl group, “j” is an integer of 5 to 80, “l’ is an integer of 1 to 80 (abstract). When R14 is ethylene oxide (i.e., EO) and R16 is propylene oxide (i.e., PO) or vice versa, it reads on EO group and PO group percentage in present claim 12.
Regarding claim 13, given that limitations of multi-arm block copolymer of present claims are taught in Beckett et al, it is the Office’s position that block copolymer, of Beckett et al, inherently has a surface tension of less than about 35 dynes/cm when measured under ambient conditions as in present claim 13.
Regarding claim 14, Beckett et al teach that block copolymer may be used as foam control agent (abstract) which reads on present claim 14.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otten et al (US 5,073,286).
Regarding claims 1-3 and 8-10, Otten et al disclose an alkyl or aryl silyl ether capped polyether surfactant (abstract) which reads on surfactant in present claim 1. A preferred compound has the formula:
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(i.e., reads on multi-arm block copolymer comprising a polyfunctional moiety in present claim 1; polyfunctional arm has 4 alkoxylated arms in present claim 2) wherein n has a value such that molecular weight of all polyoxypropylene hydrophobic groups is about 300 to 23,750 and m has a value such that the oxyethylene content of the molecule is from 5 to 35 wt% (col. 8, lines 16-29) which reads on “X” is about 1 to about 100 and “Y” is about 1 to about 100 in present claim 1. The polyethers are capped with alkyl silyl groups such as trimethylsilyl (col. 8, lines 41-54) which reads on each of the alkoxylated arms comprise a terminus and at least one of the alkoxylated arms is capped with a hydrophobic group in present claim 1; 4 alkoxylated arms are capped as in present claim 3, hydrophobic group comprises a substituted silyl group wherein R1, R2 and R3 comprises an alkyl group as in present claim 9; and hydrophobic group comprises TMS (i.e., TMS, see paragraph 0069 of present application) in present claim 10. It is noted that OC2H4 reads on “EO” and C3H6O reads on “PO” of present claim 1.
Regarding claims 4-7, Otten et al teach that preferred compound has the formula: .
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(col. 8, lines17-24). The polyethers are capped with alkyl silyl groups such as trimethylsilyl (col. 8, lines 41-54) which reads on “R” is hydrophobic group in present claims 4-7. The “n” has a value such that molecular weight of all polyoxypropylene hydrophobic groups is about 300 to 23,750 and m has a value such that oxyethylene content of the molecule is from 5 to 35 wt% (col. 8, lines 17-29) which reads on “X” is about 1 to about 50 and “Y” is about 1 to about 50 in present claim 1. It is the Office’s position that C3H6O (i.e., PO) is open to being n-propylene oxide or iso-propylene oxide.
Regarding claim 11, polyoxyalkylene polyols capped with oxypropylene have the general formula:
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, wherein A is an oxyethylene; m and n are whole numbers to give an overall molecular weight of 500 to 25,000 (col. 7, lines 36-49) which reads on the molecular weight of block copolymer in present claim 11. The polyethers are capped with alkyl silyl groups such as trimethylsilyl (col. 8, lines 41-54). A preferred compound is one where Y is ethylene diamine (col. 8, lines 16-18) which reads on polyfunctional moiety is ethylene diamine of present claim 11.
Regarding claim 12, in addition to 25 c above, Otten et al teach that m has a value such that oxyethylene content (i.e., EO) of the molecule is form 5 to 35 wt% and “PO” content of 65 to 95 wt% is implicit in “EO” content of 5 to 35 wt%.
Regarding claim 13, given that surfactant of present claims is known based on the teachings in Otten et al, one skilled in art prior to the filing of present application would have a reasonable basis to expect the block copolymer, of Otten et al, to exhibit a surface tension of less than 35 dynes/cm when measured at ambient conditions as in present claim 13.
Regarding claim 14, Otten et al teach that silyl capped polyethers allow formulations to retain their defoaming properties (col. 1, lines 53-60).
Claim Rejections - 35 USC § 103
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.
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.
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Beckett et al (WO 2004/078312 A1) in view of Rue et al (US 3,444,242).
The discussion with respect to Beckett e al in paragraph 25 above is incorporated here by reference.
Beckett et al differ with respect to the species of hydrophobic group at the terminus.
However, Rue et al in the same field of endeavor teach surface active agents having a combination of desirable properties including defoaming, good sheeting action, low foaming, caustic stability and biodegradability, which agents are prepared by ethoxylating a long chain alcohol with the chain being terminated with benzyl group (col. 1, lines 15-20). Therefore, in light of the teachings in same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to terminate the alkoxylate arms of the block copolymer, of Beckett al, with a known group such as benzyl, for above mentioned advantages. Additionally, given that copolymer of present claims is obvious based on the disclosure in Beckett et al combined with the teachings in Rue et al, one skilled in art prior to the filing of present application would have a reasonable basis to expect the surfactant to have increased viscoelasticity and improved thermal stability, absent evidence to the contrary.
Information Disclosure Statement
The information disclosure statement filed 9/15/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, while a copy of Edens (NPL no. 2) is provided, it provides only a copy of the cover page and not the pages listed in IDS filed 9/15/2025.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM 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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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