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 1-4, 6, 8-16, 18-20, 22, 24, 26 are pending.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 8-9, 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yin et al (Synthesis of a Micro-Crosslinked Polyacrylamide Flocculant and Its Application in Treatment of Oily Produced Water).
Regarding claims 1-4, 8-9, 11-12, Yin et al teaches a cationic polyacrylamide (PADO) by emulsion polymerization of acrylamide benzyldiemthyl[2-[(1-oxoallyl)oxy]-ethyl]ammonium chloride (DBC) and vinyl siloxanes (VTEO) (Abstract). Yin et al further teaches acrylamide (AM), benzyldiemthyl[2-[(1-oxoallyl)oxy]-ethyl]ammonium chloride (DBC) and siloxanes: ethenylethoxydimethylsilane, vinylmethyldiethoxysilane and triethoxyvinylsilane as monomers (Pg. 18397, 2.1, Figure 1). Yin et al further teaches the synthesized PADO cationic copolymer in water (Pg. 18397, 2.4).
Yin et al teaches the limitations of the instant claims; hence, Yin et al anticipates the claims. With regard to the claimed firefighting composition, Yin et al inherently teaches the claimed firefighting composition as the composition comprises the same components in the instantly claimed composition. Furthermore, “Products of identical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (fed. Cir. 1990). See MPEP 2112.01 II.
Claims 1, 18-20, 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamei et al (US Patent 4,536,298).
Regarding claims 1, 18-20, 24, Kamei et al teaches an aqueous foam fire extinguisher comprising (A) a surface-active agent (Abstract) such as A-4-d, ethylene glycol and butyl carbitol (Col. 8; Table 4, Example 184). Kamei et al further teaches additives including rust inhibitors, pH adjusting agents and stabilizers (Col. 12, Lines 51-65). Kamei et al further teaches
PNG
media_image1.png
100
508
media_image1.png
Greyscale
(Col. 8).
Kamei et al teaches the limitations of the instant claims; hence, Kamei et al anticipates the claims.
Claims 1, 18-20, 22, 24, 26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Banerjee et al (US Patent Application 2024/0278055).
Regarding claims 1, 18-20, 22, 24, 26, Banerjee et al teaches a foam stabilizing composition including a) colloidal silica and b) a siloxane cationic surfactant. A firefighting composition includes the foam stabilizing composition and water (Abstract). Banerjee et al further teaches
PNG
media_image2.png
108
550
media_image2.png
Greyscale
PNG
media_image3.png
199
544
media_image3.png
Greyscale
PNG
media_image4.png
615
707
media_image4.png
Greyscale
PNG
media_image5.png
690
697
media_image5.png
Greyscale
(Pages 8-10).
Banerjee et al further teaches ethylene glycol, propylene glycol and alkylene glycol ether solvents (Paragraphs 130-131). Banerjee et al further teaches additives such as a pH control agent such as a triethanolamine (Paragraph 136). Banerjee et al further teaches rheology modifiers including starches and cellulose (Paragraphs 144). Banerjee et al further teaches a foam enhancer including sugar (Paragraphs 151-152). Banerjee et al further teaches a stabilizer and corrosion inhibitor (Paragraphs 143, 154).
Banerjee et al teaches the limitations of the instant claims; hence, Banerjee et al anticipates the claims.
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.
Claims 2-4, 6, 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kamei et al (US Patent 4,536,298) as applied to claims 1, 18-20, 24 above.
Regarding claims 2-4, 6, 8-16, Kamei et al discloses the invention substantially as claimed. Kamei et al teaches the features above. However, Kamei et al fails to specifically disclose the monomers as claimed in the dependent claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the monomers in the dependent claims in Kamei et al as Kamei et al teaches the non-fluorinated copolymer having quaternary ammonium groups and siloxane moieties with a net cationic charge. Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show the same process of making, see In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
Claims 2-4, 6, 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee et al (US Patent Application 2024/0278055) as applied to claims 1, 18-20, 22, 24, 26 above.
Regarding claims 2-4, 6, 8-16, Banerjee et al discloses the invention substantially as claimed. Banerjee et al teaches the features above. However, Banerjee et al fails to specifically disclose the monomers as claimed in the dependent claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the monomers in the dependent claims in Banerjee et al as Banerjee et al teaches the non-fluorinated copolymer having quaternary ammonium groups and siloxane moieties with a net cationic charge. Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show the same process of making, see In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
Claims 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kamei et al (US Patent 4,536,298) as applied to claims 1-4, 6, 8-20, 24 above, and in further view of Banerjee et al (US Patent Application 2024/0278055).
Regarding claims 22 and 26, Kamei et al discloses the invention substantially as claimed. Kamei et al teaches the features above. However, Kamei et al fails to specifically disclose triethanolamine and starch/cellulose.
In the same field of endeavor, Banerjee et al teaches a firefighting composition comprising a foam stabilizing composition (Abstract). Banerjee et al further teaches additives such as a pH control agent such as a triethanolamine (Paragraph 136). Banerjee et al further teaches rheology modifiers including starches and cellulose (Paragraphs 144). Banerjee et al further teaches a foam enhancer including sugar (Paragraphs 151-152).
With regard to triethanolamine, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided triethanolamine in Kamei et al in view of Banerjee et al in order to control the pH of the composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
With regard to starch or cellulose, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided starch or cellulose in Kamei et al in view of Banerjee et al in order to control the rheology properties of the composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. 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.
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 1, 2026
Prosecution Insights