DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of Group I, claims 1-17, and the species octanoic acid, triethanolamine octanoate, and solid graphene particles in the reply filed on 6 July 2026, is acknowledged.
Status of Claims
Claims 1-22 are pending in the instant Office Action.
Claims 18-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6 July 2026.
Claims 5 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Specifically, claims 5 and 15 recite “the water insoluble amphiphile comprises at least one additional hydroxyl group”. This limitation is interpreted to limit amphiphiles that are hydroxy-terminated to possess hydroxyl groups that are not terminal (as evidenced by para. [0029] of the instant spec.). Applicant elected the one or more water insoluble hydroxy-terminated amphiphiles to be octanoic acid, which does not possess a hydroxyl group other than the terminal hydroxyl group, therefore claims 5 and 15 do not encompass the elected species. Election was made without traverse in the reply filed on 6 July 2026.
Claims 1-4, 6-14, and 16-17 are under consideration in the instant Office Action, to the extent of the following elected species:
the specific one or more water soluble amphiphiles is the hydrotrope triethanolamine octanoate;
the specific one or more water insoluble hydroxy-terminated amphiphiles is octanoic acid; and
the specific solid particles are solid graphene particles.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 8 August 2024, and 4 September 2024, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs are being considered by the examiner.
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 2-3, 6-7, 12-13, and 16-17 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.
Claims 2 and 12 recite “the at least one water insoluble amphiphile” in line 2 of each claim, claims 3 and 6 recite “the water insoluble amphiphile” in lines 1-2 of each claim, claims 13 and 16 recite “the water insoluble amphiphile” line 1 of each claim, and claim 7 recites “water soluble amphiphile” in lines 1-2. There is insufficient antecedent basis for each of these limitations in the claims because claim 1, from which claims 2-3 and 6 depend, and claim 11, from which claims 12-13 and 16 depend, each recite “at least one water insoluble hydroxy-terminated amphiphile” (bold added for emphasis) in lines 4-5. It is unclear if claims 2-3, 6-7, 12-13, and 16 are limiting the at least one water insoluble hydroxy-terminated amphiphile or reciting an additional water insoluble amphiphile, rendering the limitations indefinite. Further, if claims 3, 6-7, 13, and 16 are intended to limit the at least one water insoluble hydroxy-terminated amphiphile recited in claims 1 or 11, it is unclear if the claims are limiting one, more than one, or all of the water insoluble hydroxy-terminated amphiphiles, which also renders the claims indefinite. Applicant may overcome this rejection by amending each phrase to refer to “the at least one water insoluble hydroxy-terminated amphiphile”.
Claim 17 recites “the solid particles” in line 1. There is insufficient antecedent basis for this limitation in the claims because claim 11, from which claim 17 depends, recites “at least one of solid, liquid, or gaseous particles”. Applicant may overcome this rejection by amending claim 17 to recite “wherein the at least one of solid, liquid, or gaseous particles suspended in the structured aqueous system are solid particles and the solid particles comprise graphene.”
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.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins (U.S. Patent No. 9,254,264 B2, priority to 6 February 2008) in view of Wärnheim et al. (Progr. Colloid Polym. Sci. 1992, 88, 18., hereafter referred to as Wärnheim) as evidenced by Luzzati et al. (Nature, 1957, 180, 600., hereafter referred to as Luzzati).
Hawkins teaches structured surfactant systems comprising water, sugar, and surfactants to form “a structure capable of suspending solids” as well as compositions comprising the structured surfactant system (Abstract). A mixture of a sugar ester with a hydrophilic-lipophilic balance (HLB) of ≥10 with a fatty acid is taught to produce “a uniquely robust, low viscosity system with suspending properties at substantially reduced surfactant levels, compared with the prior art” (col. 4, lines 20-25). The structured surfactant system is further taught by Hawkins to be capable of suspending non-colloidal, water-insoluble particles without sedimentation when stored at room temperature for six months or longer (col. 5, lines 8-25) and is suitable for use in the fields of pharmaceuticals, veterinary use, analytical use, foods, cleaning preparations, cosmetics, and agriculture (col. 1, lines 13-28).
The sugar ester is taught to be present in an amount of ≥10% of all surfactants (claim 6) and the fatty acid is taught to be present in an amount of ≥10% w/w of all surfactants (claim 9), allowing for ratios of 9:1 to 1:9. In one embodiment, the sugar ester is taught to be an octanoate (col. 6, lines 53-54) and in another embodiment the fatty acid is taught to be monosaturated, saturated, or polyunsaturated and having at least 8 carbon atoms, which includes the elected octanoic acid – a saturated, 8 carbon fatty acid (col. 7, lines 38-41).
Hawkins further teaches that compositions comprising the structured surfactant systems should comprise “sufficient total surfactant to form a stable structured surfactant system”, which is preferably more than 8% w/w of the total system, and provides a method for determining the appropriate amount of surfactant based upon the viscosity of the system (col. 5, line 43 - col. 6, line 16). The systems may also comprise hydrotropes in amounts up to 10% w/w (col. 9, lines 61-66). In the Examples, Hawkins teaches addition of the surfactants, solids to be suspended, and other components to water, demonstrating that the quantity of water sums with other components to 100% w/w of the total system. Finally, Hawkins teaches that the solid particle suspended in their compositions may be present in amounts of 10% w/w (Examples II-III and VII) or 20% w/w (Examples VIII-XI).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “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). These guidelines apply to the ranges of quantities of sugar esters, fatty acids, and water, quantities of suspended solids, and range of ratios taught by Hawkins.
Hawkins does not teach the octanoate ester to be triethanolamine octanoate. These deficiencies are offset by the teachings of Wärnheim.
Wärnheim teaches a study of the phase behavior of alkanolammonium carboxylates, including mono- and triethanolamine and triisopropanolamine salts of C8-22 fatty acids (Abstract). Cosmetic and technical fields are taught to commonly use alkanolamines together with fatty acids, but their phase behavior is not well understood (pg. 18, Introduction, para. 1-2). Unlike sodium and potassium octanoate, Wärnheim teaches that triethanolamine octanoate (TEA-octanoate) does not form a liquid crystalline phase with water (pg. 19, right col., para. 2 - pg. 20, left col., para. 1). In addition, TEA-octanoate is taught to be miscible with water at room temperature at <3% w/w and >6% w/w, the smallest immiscible region of the analyzed TEA-carboxylates (Fig. 2 and pg. 20, para. 1). Further, TEA-octanoate is the only analyzed TEA-carboxylate that demonstrated a continuous solution phase with water and no lamellar or hexagonal phases, outside of the 3% miscibility gap and at ~85% w/w and higher, which resulted in a saturated solution with solid surfactant around room temp. (Fig. 2.a.). Wärnheim theorizes that the size of the TEA counterion disrupts these phases (pg. 21, left col., para. 4 and pg. 22, left col., para. 3) and that the length of the fatty acid chain stabilizes the lamellar and hexagonal phases (Fig. 2 and pg. 21, right col., para. 2). Wärnheim concludes that the alkanolammonium carboxylates have considerably different behavior than soap-water systems that result from alkali carboxylates and highlights the destabilization of liquid crystalline phases, which are indicative of soap-like foaming as evidenced by Luzzati (pg. 22, right col., para. 2).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Wärnheim to use triethanolamine octanoate as an octanoate ester in the invention of Hawkins because simple substitution of one known element for another produces predictable results. Hawkins teaches a structured surfactant systems comprising water, octanoic acid, and an octanoate ester in amounts that render obvious the quantities and ranges recited in the instant claims. Hawkins further teachings compositions comprising the surfactant systems and their use in suspending water-insoluble solid particles.
In view of the teachings of Wärnheim, one of ordinary skill in the art would be motivated to use TEA-octanoate as the octanoate ester in the teachings of Hawkins because Wärnheim teaches the species to be miscible with water and to produce a continuous solution phase across a wide range of concentrations and temperatures, which the ordinary artisan would recognize as desirable properties in a surfactant. Further, Wärnheim teaches that TEA-octanoate does not create a liquid crystalline phase, equivalent to soap-like foaming as evidenced by Luzzati, which the ordinary artisan would not desire in their water-based structured suspension. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-4 and 6-7 in view of the teachings of Hawkins and Wärnheim as evidenced by Luzzati.
Claims 8-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins (U.S. Patent No. 9,254,264 B2, priority to 6 February 2008) in view of Wärnheim (Progr. Colloid Polym. Sci. 1992, 88, 18.) as evidenced by Luzzati (Nature, 1957, 180, 600.) as applied to claims 1-4 and 6-7 above, and further in view of Htwe et al. (J. Taiwan Inst. Chem. Eng. 2021, 125, 402., hereafter referred to as Htwe).
Hawkins and Wärnheim have been described above.
Hawkins and Wärnheim do not teach the suspended solid particles to be graphene. This deficiency is offset by the teachings of Htwe.
Htwe teaches a water-based composition that utilizes surfactants to stabilize graphene (Title and Abstract). Graphene suspensions are taught to be useful as conductive inks in printed electronics, but care must be taken when formulating the suspensions due to the importance of solution viscosity and commonly used solvents are taught to be environmentally unfriendly and/or produce an undesirable surface tension (pg. 402, Introduction, para. 1-2). Htwe teaches that eco-friendly alternative solvents are “currently being widely investigated”, with water being a preferred solvent (pg. 402, Introduction, para. 3). However, water is taught to have its own issues including high surface tension and resisting dispersion of graphene due to its hydrophobic character, necessitating the use of surfactants (pg. 402, Introduction, para. 3).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to suspend graphene in the composition rendered obvious by the teachings of Hawkins and Wärnheim because the use of an obvious invention to fill a market demand produces predictable results. The teachings of Hawkins and Wärnheim rendered obvious a composition comprising a structured aqueous system capable of suspending solid particles that comprises triethanolamine octanoate, octanoic acid, and water in the quantities and ratios recited in the instant claims. In view of the teachings of Htwe, it would have been obvious to one of ordinary skill in the art to suspend graphene particles in the composition above because Htwe teaches that suspending graphene in water is difficult, requires surfactants, and is a research area under wide investigation. The ordinary artisan would be motivated to use their composition to meet that market demand and would find it obvious to suspend graphene particles in their composition. As a result, there is a reasonable expectation of success in arriving at the invention of claims 8-14 and 16-17 in view of the teachings of Hawkins and Wärnheim as evidenced by Luzzati and further in view of the teachings of Htwe.
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 1-4, 6-14, and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-17 of copending Application No. 18/978,130 in view of Hawkins (U.S. Patent No. 9,254,264 B2, priority to 6 February 2008).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. ‘130 recites a structured aqueous system capable of suspending particles of solid, liquid, or gas comprising 2-50% w/w at least one water soluble amphiphile which is a hydrotrope comprising at least one polar head group and a lipophilic tail group with 6-11 carbon atoms per polar head group, at least one water insoluble amphiphile which contains at least one amine group, and water in an amount to total 100%w/w of the structured aqueous system (claim 1). The total amount of amphiphiles is recited to be 10-30% w/w of the structured aqueous system (claim 2) and the water insoluble amphiphile(s) are recited to have hydrophobic tails comprising 6-11 carbon atoms (claim 3). In one embodiment, the hydrotrope may be triethanolamine octanoate (claim 4) and the insoluble amphiphile may be octylamine (claim 5). Application ‘130 recites the weight ratio of the water insoluble amphiphile to the hydrotrope to be 1:1 to 4:1 (claim 6) and that, in the embodiment that the suspended particles are solid, the solid particles comprise graphene (claim 9). The solid particles are recited to comprise ≤25% w/w of the structured aqueous system (claim 10). Finally, copending Application ‘130 recites a composition comprising the structured aqueous system above (claims 11-17).
Copending Application No. ‘130 does not recite the at least one water insoluble amphiphile to be octanoic acid. This deficiency is offset by the teachings of Hawkins.
Hawkins has been described above.
Instant claims 1-4, 6-14, and 16-17 are obvious variations of copending Application No. 18/978,130 because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to modify the invention recited by Application ‘130 to select octanoic acid as the water insoluble amphiphile in view of the teachings of Hawkins. One of ordinary skill would be motivated to select octanoic acid as the water insoluble amphiphile in the invention recited in Application ‘130 because Hawkins teaches that its use in a structured surfactant system produces a “uniquely robust, low viscosity system with suspending properties at substantially reduced surfactant levels, compared with the prior art” that is capable of suspending non-colloidal, water-insoluble particles without sedimentation when stored at room temperature for six months or longer. The ordinary artisan would recognize these properties as desirable in a structured surfactant system and would be motivated to incorporate octanoic acid to impart the properties to their composition. In addition, a person of ordinary skill would recognize that octanoic acid is a precursor to the recited octanoate ester and the acid form of the recited octylamine and would subsequently have a reasonable expectation of compatibility in using octanoic acid in their composition.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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