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 with traverse of Group I, claims 12-16, in the reply filed on August 10, 2026 is acknowledged. The traversal is on the ground(s) that the special technical feature is not anticipated by Delbrassinne (US 2007/0276056) and there is unexpected technical effect as illustrated by Examples 3 and 4 of the present application. This is not found persuasive because while Delbrassinne does not anticipate the claims, the present elected claims are not inventive over this reference as discussed below. With respect to the unexpected technical effect, the showing is not commensurate in scope with the present claims. The showing is only true for the specific components and proportions shown in the example (i.e., Defoamer formulation A1).
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 10, 2026.
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 15 is 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.
Regarding claim 15, the phrase "such as" in line 9 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). In addition, the recitation of “as defined in claim 1” in line 10 is indefinite because claim 1 is a cancelled claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 12-16 are rejected under 35 U.S.C. 103 as being unpatentable Delbrassinne et al. (US 2007/0276056, already cited in IDS dated 08/29/2024), hereinafter “Delbrassinne.”
Regarding claims 12-16, Delbrassinne teaches a foam control composition comprising a non-silicon-containing organic liquid, a branched siloxane resin, a particulate filler which is insoluble in the organic liquid, and an additive composition of melting point 35 to 100oC. comprising a substantially non-polar organic material which is miscible with the organic liquid (see abstract, [0006] and claim 1). The non-silicon-containing organic liquid can for example be a liquid hydrocarbon oil (see [0007], which reads on the “water-insoluble organic compound component (4) of claim 12), for example mineral oil (see [0008], which is known to have a boiling point as those recited in claim 16). The branched siloxane resin ( which reads on the formula recited in claims 12 and 15; see [0010]), is preferably present at least 1% to up to 40% by weight based on the organic liquid (see [0011]), and the filler like silica is preferably 0.5-50% by weight based on the organic liquid (see [0013]). The additive composition of melting point 35 to 100oC is based on a substantially non-polar organic material which is miscible with the organic liquid (see [0014]). One preferred type of substantially non-polar organic material is a polyol ester which is a polyol substantially fully esterified by carboxylate groups each having 7 to 36 carbon atoms (see [0015]), and the polyol ester is preferably a glycerol triester (see 0016]). The additive composition comprising the substantially non-polar material of melting point 35 to 100oC is preferably present in the foam control composition at 10-200% by weight based on the organic liquid (see [0021]). Delbrassinne, however, fails to specifically disclose the foam control composition comprising triacylglyceride having C5-C13 hydrocarbon radical, filler like silica and siloxane resin in amounts as those recited in claim 12, and wherein the triglycerides comprise caprylic acid (C8:0), capric acid (C10:0) or lauric acid (C12:0) as recited in claim 13.
Considering that Delbrassinne teaches that the additive composition of melting point 35 to 100oC, like glycerol triester wherein the esterified carboxylate group each have 7 to 36 carbon atoms, is present in the foam control composition at 10-200% by weight based on the organic liquid, the siloxane resin is present at least 1% to up to 40% by weight based on the organic liquid, and the filler like silica is present from 0.5-50% by weight based on the organic liquid, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With respect to the specific triglycerides or glycerol triester, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected triglycerides or glycerol triester wherein the esterified carboxylate group each have 7 to 13 carbon atoms, for example, glycerol triester comprising caprylic acid (C8:0), capric acid (C10:0) or lauric acid (C12:0), because these are some of the selections disclosed in paragraph [0015]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references are considered cumulative to or less material than those discussed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORNA M DOUYON whose telephone number is (571)272-1313. The examiner can normally be reached Mondays-Fridays; 8:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761
