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 .
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.
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.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujio et al. (JPH08151391A and English machine translation thereof).
Fujio et al. teaches an aqueous composition (water as solvent) phosphate ester salts of both Formula 1 and 2 (organic phosphoric acid ester salt) (Pgs. 1-2 of JPH08151391A and [0001], [0009], and [0010] of English machine translation). Fujio et al. teaches that phosphate ester salts of Formula 1 may have an R group of an alkyl group of 8-18 carbon atoms such as hexadecyl (16 carbon atoms) (corresponding to instant (A)) and the phosphate ester salts of Formula 2 may have R groups of an alkyl group of 8-18 carbon atoms such as octyl (8 carbon atoms) (corresponding to instant (B)) ([0006]-[0007], [0011], and [0013] of English machine translation).
Fujio et al. teaches that the monoester is present in 80 wt% or more relative to the total of the monoester and the diester (claimed A and B) ([0014] of English machine translation). Fujio et al. teaches that the total amount of phosphate ester (A+B) in the composition is preferably 12-50 wt% ([0014] of English machine translation). Fujio et al. does not teach the presence of a non-ionic surfactant.
Fujio et al. does not teach a specific embodiment wherein the monoester is a hexadecyl alkyl ester and the diester is a octyl alkyl ester. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to include such compounds in the composition with a reasonable expectation of success and would be motivated to do so because Fujio et al. teaches that each compound is suitable for the invention.
Fujio et al. does not teach with sufficient specificity the claimed range of 35-55 parts by mass of phosphate ester salts. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05).
The Office recognizes that all of the claimed physical properties are not positively taught by the reference, namely the claimed acid value. However, the reference renders obvious all of the claimed ingredients, in the claimed amounts, process steps, and process conditions. Furthermore, there is nothing in Applicant’s original specification to indicate that the claimed property is the result of anything other than the claimed ingredients in the claimed amounts. Therefore, the claimed physical properties would implicitly be achieved by the composition as claimed and rendered obvious. If it is the Applicant' s position that this would not be the case: (1) evidence would need to be presented to support Applicant' s position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, in the claimed amounts, process steps, and process conditions.
Response to Arguments
Applicant's arguments filed December 3, 2025 have been fully considered but they are not persuasive.
Applicant argues that Fujio does not teach an embodiment comprising long-chain and short-chain phosphoric acid ester salts in a single composition. However, as set forth in the previous Office action, at the time of the invention a person of ordinary skill in the art would have found it obvious to include both a hexadecyl alkyl ester and a diester that is a octyl alkyl ester in the composition with a reasonable expectation of success and would be motivated to do so because Fujio et al. teaches that each compound is suitable for the invention (see MPEP 2144.06).
Furthermore, with regards to the relative amounts of (A) and (B) it is noted that Fujio already teaches that the monoester (A) is present in 80 wt% or more relative to the total of the monoester and diester (claimed (A) and (B)). Therefore, the data cited by Applicant (Comparative examples rI-15) do not compare the claimed invention to that of the prior art.
Applicant discusses supplemental experimental data, however, such data has not been submitted in the form of a declaration or affidavit. A showing of unexpected results must be based on evidence, not argument or speculation (see MPEP 2145).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F 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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 December 16, 2025
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