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 .
Claim Objections
Claim 2 is objected to because of the following informalities: the claim is an incomplete sentence, as no period appears at the end thereof. Examiner is thus without knowledge as to whether or not claim 2 continues after the phrase “and polyethylphenylsiloxanes[.]” For examination purposes, this claim has been treated as if a period appears immediately following the quoted passage. Accord, MPEP 608.01(m) (“Each claim begins with a capital letter and ends with a period.”). If a different interpretation thereof is desired, applicant is directed to explicitly so state in responding to this Office Action. Appropriate correction is required.
Claim 10 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim must refer to other claims in the alternative only (claim 10 affirmatively -not alternatively- refers not only to claim 9 as recited in the preamble thereof, but also to claim 1 as recited in the body thereof). See MPEP § 608.01(n). Save for the 35 U.S.C. 112 rejections of claim 10 below, the claim has not been further treated on the merits.
Claim Rejections - 35 USC § 101 and 112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 7-8, and 10-11 are rejected under 35 U.S.C. 112(b)/2nd par. as 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation in the same claim may be considered indefinite if the claim does not clearly set forth the metes and bounds of the patent protection desired. MPEP 2173.05(c). Here, claims 3 and 7-8 recite broad recitations, as well as preferred narrower versions/ranges thereof. The claims are considered indefinite and rejected as such under 35 U.S.C. 112(b)/2nd par. as there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claims, and therefore not required, or (b) a required feature of the claims. While interpretation (a) has been applied via the broadest reasonable interpretation standard (MPEP 2111), these rejections nevertheless need addressing.
Regarding claim 10, the phrase “the hydrogen peroxide dilution water” lacks sufficient antecedent bases, rendering the claim rejected as indefinite under 35 U.S.C. 112(b)/2nd par.
Regarding claim 11, said claim is rejected as indefinite under 35 U.S.C. 112(b)/2nd par. because it is a “use” claim, i.e. an attempt to claim a process without setting forth any steps involved therein. MPEP 2173.05(q). Note that claims 12-13 are not also so rejected since they set out a process step (“the silicone is introduced…”) therein. Id., citing Clinical Products Ltd. v. Brenner, 255 F.Supp. 131 (D.D.C. 1966).
Claim 10 is rejected under 35 U.S.C. 112(d)/4th par. because it refers back to more than one claim therein, namely claims 9 (in the preamble) and 1 (in the body), contrary to the statutory requirement that “a claim in dependent form shall contain a reference to a claim previously set forth[.]” (emphases supplied) Due to the foregoing, said claim has not been further treated on the merits (other than the objection and indefiniteness rejection thereto as detailed above).
Claims 11-13 are rejected under 35 U.S.C. 101 because a “use” is not one of the enumerated statutory classes; a “use” of a material has been held to be an improper definition of a process. MPEP 2173.05(q), citing, e.g., Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967). Due to the foregoing, said claims have not been further treated on the merits.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1-9 are rejected under AIA 35 U.S.C. 103 as being unpatentable over EP0761595A1 (1997) (see applicant’s 6/11/25 IDS) (“’595”) in view of Keil, US 3,666,681 (1972) (see applicant’s 6/11/25 IDS). Regarding claims 1-2, 4, and 8-9, ‘595 teaches a method of hydrolyzing an azine with water in a distillation column in the presence of a surface active agent (i.e. surfactant, aka an anti-foaming agent) comprising a polyoxyethylene and silica; the azine is formed by reacting NH3, H2O2 (which is also considered an activator) and a ketone such as methyl ethyl ketone (“MEK”) to form the resulting ketazine (methyl ethyl ketone azine, aka methyl ethyl ketazine, if MEK is employed). See ‘595 at, e.g., p. 2, ln. 30-33 and p. 2, ln. 44 to p. 3, ln. 37; clms. 1-4. While ‘595’s surfactant does not also comprise a silicone of the claimed list, Keil so teaches.
Keil teaches that an effective antifoaming composition for use in aq. systems (such as ‘595’s) comprises, inter alia, finely divided silica (such as ‘595’s, see above) and the organopolysiloxane hydroxyl endblocked dimethylpolysiloxane (aka polydimethylsiloxane); use of such a composition desirably suppresses undesirable foaming in various reactions. See Keil at, e.g., col. 1, ln. 1-14 and 42-70 (esp. 42-61). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘595’s overall methodology by also employing polydimethylsiloxane in its surfactant as taught by Keil, to thereby achieve Keil’s taught advantage of providing an effective antifoaming agent and thereby enhance the suppression of undesirable foaming during ‘595’s hydrolysis. MPEP 2143 I.(G). Additionally and/or alternatively, given Keil’s teaching of the appropriateness of employing finely divided silica (such as ‘595’s, see above) and polydimethylsiloxane as components of an antifoaming/surface active agent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘595’s overall methodology by employing its silica along with polydimethylsiloxane as taught by Keil; it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06.
Regarding claim 3, Keil’s polydimethylsiloxane’s viscosity is ≥35 cSt @ 25oC. See Keil at, e.g., col. 1, ln. 50-53.
Regarding claim 5, Keil’s polydimethylsiloxane (within the overall aq. mixture) is in the form of an emulsion. See id. at, e.g., col. 2, ln. 23-43. Additionally and/or alternatively, Keil teaches that emulsifiers can be added to its antifoaming composition “if desired to impart specific properties where required”, rendering it prima facie obvious to do so. See id. at, e.g., col. 3, ln. 56-64 (esp. 62-64); MPEP 2143 I.(G).
Regarding claim 6, ‘595’s surfactant is added to the top of its distillation column. See ‘595 at, e.g., Comp. Ex. 1 & Ex. 1-8. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to likewise add the silicone-comprising surfactant (i.e. ‘595’s surfactant as modified by Keil as detailed above) to the top of said column as claimed.
Regarding claim 7, ‘595 teaches that the amount of its surfactant added/employed “depends upon the kind of surface active agent or the like, but it is preferably in the range of 0.1 to 10000 ppm based on the weight of the ketazine in the distillation column.” See id. at, e.g., p. 3, ln. 41-43; MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. 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.
/DANIEL BERNS/ September 11, 2026
Primary Examiner
Art Unit 1736
Prosecution Insights