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 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.
Claim 1-2 and 10-13 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.
In claims 1 and 10, the last phrase, “at least one of one or more solvents and one or more defoaming agents” is unclear. In one interpretation, “at least one of” means that the formulation contains either solvents or defoaming agents, but not both. In another interpretation, the claim requires at least one solvent and additionally requires one or more defoaming agents. It is unclear which interpretation should be given to the claim, and therefore the metes and bounds of the claim are unclear.
Claims 2 and 11-13 fail to cure the indefiniteness of the base claim, and are therefore also rejected.
Allowable Subject Matter
Claims 1-19 are rejected under double patenting rejections, see below. However, if the 35 USC 112 rejection and the double patenting rejections are overcome, the claims would be allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose or suggest a surfactant of Formula I, in combination with solvents and defoaming agents, as in the context of claim 1, or in combination with hydrofluoric acid, as in the context of claim 3, or in combination with an alkanolamine, as in the context of claim 6.
The closest prior art, Asirvatham US 11,427,760 B2, discloses a similar surfactant to the instant Formula 1. The Asirvatham ’760 patent discloses a formulation where the terminal N has two R groups, R1 and R2, but fails to disclose a third group of R3. R3 is defined in the instant claims to comprise alkenyl, alkynyl, ester, alcohol, aryl alkyl, alkoxy alkyl ether, alkyl phosphate, C3-C8 carboxylic acid, C1-C10 alkyl benzoic acid, or a C1-C6 linker attached to a second molecule of Formula I, wherein the second molecule is the same or different. The Asirvatham ’760 patent fails to disclose this R3 group. The prior art also fails to disclose this R3 group. Accordingly, there is no motivation in Asirvatham ’760 patent or in the prior art to modify the surfactant taught by the Asirvatham ’760 patent to arrive at the surfactant of cited Formula I, as in the context of claims 1, 3, or 6.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-15 of copending Application No. 18/795,160;
claims 1-13 of copending Application No. 18/795,167;
claims 1-19 of copending Application No. 18/795,170;
claims 1-20 of copending Application No. 18/795,174;
claims 1-17 of copending Application No. 18/795,176 (reference applications).
Although the claims at issue are not identical, they are not patentably distinct from each other because the compositions are encompassed by the claims of the reference applications because the compositions or formulations include the cited surfactant, a solvent, and a defoaming agent (the surfactant itself, which has been defined in the instant specification as a defoaming agent [0053]), as required by claim 1 of the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/355,385. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositions are encompassed by the claims of the cited application because the liquid medium include the cited surfactant, a solvent (water), and a defoaming agent (the surfactant itself, which has been defined in the instant specification as a defoaming agent [0053]), as required by claim 1 of the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,466,846. Although the claims at issue are not identical, they are not patentably distinct from each other because the compound includes the cited surfactant, and a defoaming agent (the surfactant itself, which has been defined in the instant specification as a defoaming agent [0053]), as required by claim 1 of the instant invention.
The ’846 patent fails to disclose to include a solvent. Solvents are commonly used in order to place compounds into final use. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include a solvent with the compound as cited in ’846 patent because the use of solvents is well known in order to form a useful composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/ Primary Examiner, Art Unit 1713
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