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 in the reply filed on 4/03/2026 is acknowledged.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/03/2026.
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.
Claim(s) 1-2, 10, and 13-17 are rejected under 35 U.S.C. 102a1 as being anticipated by Ahrens US Patent Publication 2014/0345495.
Regarding claim 1, Ahrens teaches a composition (see abstract), comprising:
a polysaccharide (component D is a further additive with starch and cellulose derivatives [0067-0073]; and
an alkyl alcohol alkoxylate [0064] having a formula of RO[(CH₂CHCH3O)ₙ(CH₂CH₂O)₂]M wherein R is a C4-C40 alkyl, X is 1 to 50, y is 0 to 100, and M is H or an alkali metal (see abstract).
Regarding claim 2, Ahrens further teaches water (component E see abstract).
Regarding claim 10, Ahrens further teaches wherein the polysaccharide comprises a starch [0073].
Regarding claim 13, Ahrens further teaches wherein R is a C₈-C₂₂ alkyl, X is 1 to 20 [0050-0052], y is 20 to 80 (20 [0052]), and M is H or K (H 0048]).
Regarding claim 14, Ahrens further teaches wherein M is H and R is a C₁₄-C₁₈ alkyl [0048-0052].
Regarding claim 15, Ahrens further teaches wherein M is K and R is a C14-C18 alkyl [0064].
Regarding claim 16, Ahrens further teaches wherein the alkyl alcohol alkoxylate is a block polymer [0064].
Regarding claim 17, Ahrens further teaches wherein the alky alcohol alkoxylate is a hetero polymer (copolymer [0004, 0007, and 0070].
Claim(s) 1-2 and 18 are rejected under 35 U.S.C. 102a1 as being anticipated by Duggirala et al, US Patent Publication 2008/0105392.
Regarding claims 1 and 2, Duggirala teaches a composition (see abstract), comprising:
a polysaccharide (pulp fibers [0099]); and
an alkyl alcohol alkoxylate [0064] having a formula of RO[(CH₂CHCH3O)ₙ(CH₂CH₂O)₂]M wherein R is a C4-C40 alkyl, X is 1 to 50, y is 0 to 100, and M is H or an alkali metal and water [0083].
Regarding claim 18, Duggirala further teaches wherein the alkyl alcohol alkoxylate comprises hexadecan-1-ol; 2-methyloxirane; oxirane [0084 and 0091].
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.
Claim(s) 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ahrens US Patent Publication 2014/0345495
Regarding claim 3, Ahrens remains as applied above and further teaches that the component D can make up up to 30% by weight of the composition (see claim 12) and the alkoxylate is preferably 1-10% (see claim 5).
There is not a stated ratio but one can be inferred with these numbers to be from 3:1 – 30:1 (using the preferred range of 1-10 as given in claim 5). It is the Examiners stance that this will constitute an overlapping of ranges with enough specificity to read on the 3.5:1-70:1 as claimed. It is further noted that starch and modified cellulose are one example of many options for component D, which is why this overlapping of ranges is presented as an obviousness rejection and not an anticipation over the overlapping ranges.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the starch or cellulose derivative as stated in [0073] as the “up to 30% amount of the composition of component D as given in claim 12 as all of the teachings are present just without a single embodiment with all of the elements taught. The act of teaching each element individually and listed as alternatives to each other within the same reference is motivation enough for the average artisan to utilize the claimed range without undue experimentation.
Regarding claim 4, Ahrens remains as applied above and further teaches ranges that encompass of each of the claimed components (see claim 1). The act of routine optimization to determine the optimal values of the encompassing range are within the ability of the average artisan. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05
Claim(s) 5-6, 8-9, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ahrens US Patent Publication 2014/0345495 in view of Dihora et al, US Patent Publication 2023/0060181.
Regarding claims 5 and 8, Ahrens further teaches a base composition that is made up of sodium hydroxide [0075], but is silent on the use of a boron-containing compound.
In the same field of endeavor of providing a modified starch (see abstract and [0027]) with an alkyl alcohol alkoxylates [0147] composition, Dihora teaches the addition of boron additive to act as an inorganic biocide for the benefit of avoiding mold and unwanted bacteria out of the composition [0131].
It would have been obvious to one of ordinary skill in the art at the time of the invention to include the boron additive to act as a biocide as an additional additive in the pigment that is designed to be added to paints or paper products [0001] for the benefit of having a biocide component to the final product.
Regarding claim 6, Dihora teaches that the starches make up the starting biopolymer [0109] which can be made up of up to 80% of the total weight [0120] and the alkyl alcohol additive can make up as little as 0.1 wt% [0155], which at its extremes would constitute a ratio of 800:1. The act of routine optimization to determine the optimal values of the encompassing range are within the ability of the average artisan. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding claim 9 Dihora further teaches the use of boric acid (see tables 18 in examples.
Regarding claim 11 Dihora further teaches wherein the polysaccharide comprises a modified starch or a modified dextrin, wherein the modified starch or the modified dextrin is modified with octenyl succinic anhydride, dodecenyl succinic anhydride, or a mixture thereof [0107].
Regarding claim 12 Dihora further teaches wherein the polysaccharide comprises corn starch, wheat starch, barley starch, tapioca starch, potato starch, sorghum starch, rice starch, sago starch, waxy maze starch, high amylose starch, or a mixture thereof [0107].
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 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, Abbas Rashid can be reached at 5712707475. 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.
JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
Prosecution Insights