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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-29 in the reply filed on 05/15/2026 is acknowledged.
It is noted that the Group I contains claims 1-39, not 1-29.
It is reasonably believed that the applicants meant claims 1-39, not claims 1-29.
However, clarification is requested.
Claim 40 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2026.
Applicant’s election without traverse of “a water insoluble organic liquid as an emulsion aid” as a specie of the composition in the reply filed on 05/15/2026 is acknowledged.
Claims 7-14, 20-28 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected specie of the composition (an additive), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2026.
Applicant’s election without traverse of “benzyl ether” as a specie of the emulsion aid in the reply filed on 05/15/2026 is acknowledged.
Claims 3-4 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species of emulsion aid, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2026.
Applicant’s election without traverse of coconut oil as a specie of oil in the reply filed on 05/15/2026 is acknowledged.
Applicant’s election without traverse of glass beads as a specie of the agitation aid in the reply filed on 05/15/2026 is acknowledged.
Applicant’s election without traverse of the composition comprising no surfactant in the reply filed on 05/15/2026 is acknowledged.
Cancelation of claims 18-19 in the reply filed on 05/15/2026 is acknowledged.
Applicant’s election without traverse of polyvinyl alcohol as a specie of the thickener in the reply filed on 05/15/2026 is acknowledged.
Applicant’s election without traverse of glass container as a specie of the container in the reply filed on 05/15/2026 is acknowledged.
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 1-2, 5-6, 15-17, 30-31, 34-39 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 claims are indefinite and could not be properly understood because it is not clear from claim 1 how the composition, which is a water insoluble organic liquid, can form an emulsion. How can a single compound form an emulsion?
Please, not that what is recited by claim 1 as “said composition” is “a water insoluble organic liquid” (with benzyl ether been elected specie of the referenced “composition”/ “liquid”).
Claims 15-16 are further indefinite because it is not clear how the composition, which is a water insoluble organic liquid, can comprise an agitation aid. How a single compound can comprise an agitation aid?
Claims 30-31 are further indefinite because it is not clear how the composition, which is a water insoluble organic liquid, can comprise “at least one a stabilizer, a thickener, and an antioxidant”. How a single compound can comprise “at least one a stabilizer, a thickener, and an antioxidant”?
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.
Claim(s) 1, 2, 6, 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 104742556.
CN 104742556 teaches a device.
The device comprises a container (flask).
The device further comprises water, an oil and a water insoluble organic liquid.
CN 104742556 exemplifies the elected coconut oil.
CN 104742556 exemplifies the elected benzyl ether (beta-naphthyl benzyl ether).
See the attached translation of the document, especially Preferred Embodiment.
As to the ability recited by the claims:
The claims are indefinite and could not be properly understood, but since CN 104742556 teaches a composition (“a water insoluble organic liquid as an emulsion aid”) as claimed (elected benzyl ether (beta-naphthyl benzyl ether)), the ability of the compound meet what is recited by the claims, or the invention is not disclosed/claimed in the correspondence with the requirements of 35 USC 112(a).
As to claim 2:
CN 104742556 teaches the elected benzyl ether (beta-naphthyl benzyl ether).
As to claim 6:
CN 104742556 teaches the elected coconut oil.
As to claims 15-16:
CN 104742556 teaches the elected glass beads.
As to claim 17:
CN 104742556 teaches benzyl ether (beta-naphthyl benzyl ether), the elected the composition, which is inherently comprises no surfactant.
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.
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.
Claim(s) 30-31 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 104742556.
The discussion of CN 104742556 provided above is incorporated here.
As to claims 30-31:
The claims are indefinite and could not be properly understood because of the reasons provided above.
In view of the indefiniteness of the claims it is reasonable believed that what is claimed is either anticipated or obvious over the teaching of CN 104742556.
Moreover, CN 104742556 teaches the use of polyvinyl alcohol (the elected compound of claims 30-31).
Claim(s) 5 and 34-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 104742556.
The discussion of CN 104742556 provided above is incorporated here.
As to claim 5:
CN 104742556 does not specifically teach proportions of oil and water.
However, it has been held that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The applicants have not demonstrated any criticality of the concentrations recited by the claim.
It would have been obvious to an ordinary artisan at the time the invention was filed to find an optimum concentrations/proportions of water/oil in the device of CN 104742556 by routine experimentation.
As to claims 34-36:
CN 104742556 does not specifically state that the container (flask) is a glass flask.
However, glass flasks are widely and conventionally used as a laboratory equipment.
It would have been obvious to an ordinary artisan at the time the invention was filed to use a glass flask in the device of CN 104742556 in order to use a known device for its known purpose.
As to claim 35-36:
CN 104742556 teaches the use of polytetrafluoroethylene plate as cover (at least Embodiment 1 and embodiment 2. This is readable on both claimed seal and septum.
As to claims 37-39:
CN 104742556 does not specifically state that the flask is provided with indicia.
However, it is well known to provide devices, including laboratory equipment with manufacturer identifiers, such as logos and trademarks and devices identifiers, such as bar codes and QR codes to identify the devices.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The documents listed on the attached PTO 892 are cited to show the state of the art with respect to device comprising containers and mixtures of chemicals.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER MARKOFF whose telephone number is (571)272-1304. The examiner can normally be reached 9:00 am - 5:30 pm.
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, Michael Barr can be reached at 571-272-1414. 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.
/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711
Prosecution Insights