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 .
Priority
The instant application is the national stage entry of PCT/US22/41337 filed 24 August 2022. Acknowledgement is made of the Applicant’s claim domestic priority to provisional application 63/246,035 filed 20 September 2021.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 16-25, in the reply filed on 1 July 2026 is acknowledged. Claims 1-15 and 26-117 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Status of the Claims
Claims 1-117 are pending.
Claims 1-15, 20-21, and 26-117 are withdrawn.
Claims 16-19 and 22-25 are rejected.
Claim Objections
Claim 22 is objected to because of the following informalities: The Applicant recites both rapeseed oil and canola oil, which are the same thing. 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.
Claims 18 and 25 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.
The language of claim 18 is unclear and thus indefinite. Claim 18 recites “wherein the hydrophobic moiety is a moiety selected from the group consisting of unsubstituted or substituted alkyl, cycloalkyl, alkenyl, and aryl alcohols, wherein any of the beforehand mentioned groups may be with or without C6 heteroatoms, containing from about C6 to about C36 atoms, unsubstituted or substituted alkyl, cycloalkyl, alkenyl, and aryl amines, wherein any of the beforehand mentioned groups may be with or without heteroatoms, containing from about C6 to about C36 atoms, silicon-based compounds, and combinations thereof.” The emphasized portion is unclear as to what it is modifying or if it is adding additional components to the composition. For example, it is unclear if the silicon based compounds are a separate component or if they are part of a modification to the initial alcohol.
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 16 and 22-24 are rejected under 35 U.S.C. 102a1 as being anticipated by Russell (US 4,075,145).
Russell teaches a water soluble, storage stable resin comprising a maleinised oil (interpreted as maleated) reacted with a polyol (abstract). The compositions are used as coating materials (col 1, lns 49-51). In one example dehydrated castor oil and soya oil were mixed with maleic anhydride and rosin under heat (col 4, lns 60-65). Next, to the reaction was added phthalic anhydride and glycerol for a polyesterification step (col 4, lns 65-68). The resulting compound is a reaction product of maleated soybean oil, resin and phthalic anhydride (hydrophobic moieties), and glycerol for use in a coating composition, thus anticipating instant claims 16 and 22-24.
Claims 16-18 and 22-24 are rejected under 35 U.S.C. 102a1 as being anticipated by McGuiness et al. (US 2021/0238496).
McGuiness teaches a reaction product of maleated soybean oil (MAA SYBO) and C9-11 oxo alcohol (FOH-9) (pg 6, Table 1). The malerated soybean oil is shown as inherently comprising a glycerol moiety and unreacted maleated functionalities [0031]. The composition is mixed together and heated until the reaction is complete [0045]. The end product is useful as a lubricant and corrosion protectant in metalworking operations (aka industrial composition) [0002]. As such, claims 16-18 and 22-24 are anticipated by the prior art.
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 16-17 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Russell (US 4,075,145) in view of Amos (Polymers 2021, 13, 1504, 1-22).
Russell teaches a water soluble, storage stable resin comprising a maleinised oil reacted with a polyol (abstract). The compositions are used as coating materials (col 1, lns 49-51). In one example dehydrated castor oil and soya oil were mixed with maleic anhydride and rosin under heat (col 4, lns 60-65). Next, to the reaction was added phthalic anhydride and glycerol for a polyesterification step (col 4, lns 65-68). The resulting compound is a reaction product of maleated soybean oil, resin and phthalic anhydride (hydrophobic moieties), and glycerol for use in a coating composition.
Russell does not teach wherein the reaction product comprises an unreacted maleated functionality.
Amos teaches the structure of maleated soybean oil (F) with a glycerol moiety wherein it is shown that at least one maleate unit is unreacted (Fig 2).
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It would have been prima facie obvious to prepare the coating composition of Russell, which comprises a reaction of maleated soybean oil, resin and phthalic anhydride (hydrophobic moieties), and glycerol. Based on the structure shown in Amos, it would have been obvious that at least one maleated functionality would be unreacted.
Claims 16-19 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over McGuiness et al. (US 2021/0238496).
McGuiness teaches a reaction product of maleated soybean oil (MAA SYBO) and C9-11 oxo alcohol (FOH-9) (pg 6, Table 1). In the broadest terms, the alcohol must have at least 2 carbon atoms [0015] or, more narrowly, may comprise a linear or branched C2-C18 alcohol [0034]. The malerated soybean oil is shown as inherently comprising a glycerol moiety and unreacted maleated functionalities [0031]. The composition is mixed together and heated until the reaction is complete [0045]. The end product is useful as a lubricant and corrosion protectant in metalworking operations (aka industrial composition) [0002].
McGuiness does not teach wherein the hydrophobic moiety is an alcohol as recited in claim 19.
It would have been prima facie obvious to prepare the industrial composition of McGuiness wherein the composition comprises the reaction product of a maleated soybean oil and a hydrophobic alcohol. The alcohol can be any alcohol comprising more than 2 carbons or a C2-C18 alcohol, therefore it would have been obvious to select an alcohol as recited in instant claim 19, such as heptanol. That being said, it would have been obvious to further explore alcohol selections and expand out to those with greater than 2 carbons, which would include the C20 alcohol, octyldodecanol. As such, claims 16-19 and 22-24 would have been obvious in view of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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