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 Status
The Preliminary Amendment filed on 20 September 2024 has been entered; claims 1-10 remain pending.
Drawings
The drawings are objected to because Figures 1-3 contain blurry/illegible text. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 4, and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claims 3 and 4, claim 2 requires the water and/or the organic solvent; therefore, reciting "0" as the lower endpoint of the recited range "0 to 95%" broadens the scope of claim 2. Similarly, claim 8 recites "0 to 60% alkyl phenol resin ethoxylate, but claim 7 requires this component, so "0%" of it would broaden the scope of claim 7, from which claim 8 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-6, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sheridan et al. (U.S. Patent # 4233174), hereinafter "Sheridan".
With respect to claim 1, Sheridan discloses a composition comprising a fatty alcohol ethoxylate ("an alcohol polyoxyethylene ether") derived from an alcohol having from 8 to 18 carbons in the chain, meeting the formula in claim 1 when R = 8-18 (discrete range within "about 3-20"), wherein n = 2-6 (discrete range within "1-14") (Abstract; Column 1, lines 49-62). Regarding the preamble limitations "antifouling dispersant", it is submitted that these intended use limitations are not given patentable weight in composition claim 1. The composition of Sheridan is capable of acting as an antifouling dispersant.
With respect to claims 2-4, Sheridan discloses that the composition can be employed as solutions in water, with water present at from 5 to 50 percent by weight of the composition (Column 2, lines 42-46), a discrete range within ("0 to 95%"). Since organic solvents are alternatively recited by Sheridan, the composition in a water solution comprises 0% organic solvent.
Regarding claims 5 and 6, they are rejected with claims 1 and 2, as the "water" embodiment was selected and met by Sheridan; therefore, the recited organic solvents are considered to be optional.
With respect to claim 9, Sheridan discloses 5 to 50% water and 0% organic solvent as discussed above, and 0% of an alkyl phenol resin ethoxylate as claimed; however, an alternate rejection of claim 9 is set forth below under 35 USC 103, as the chemical structures are analogous.
With respect to claim 10, Sheridan does not teach the recited freezing point; however, this is considered to be met as an inherent property as the recited composition is met by Sheridan. It has been held that "Where.. the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Claims 1-6 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Driesbach et al. (U.S. Patent # 6369010), hereinafter "Dreisbach".
With respect to claims 1, 5, and 6, Dreisbach teaches a formulation comprising an alcohol ethoxylate having preferably 8-10 moles EO units per mole of alcohol, preferably tridecyl alcohol (Column 4, lines 26-36), which meets the limitations of Formula I when R = an alkyl with 13 carbon atoms (a discrete value within "about 3-20 carbon atoms" and when n = 8-10, a discrete range within "n is 1-14"), and one or more formulation solvents that are "organic solvents", including polypropylene glycol, ethylene glycol ("glycols"), propylene glycol n-butyl ethers, propylene glycol monomethyl ethers, dipropylene glycol monomethyl ethers, ethylene glycol monobutyl ethers glycol ethers ("glycol ethers"), and N-methyl pyrrolidone ("a pyrrolidone") (Column 4, lines 50-63).
Regarding the preamble limitations "antifouling dispersant', it is submitted that these intended use limitations are not given patentable weight in composition claim 1. The composition of Dreisbach is capable of acting as an antifouling dispersant.
With respect to claim 2, Driesbach teaches that the formulation comprises water (Column 4, lines 63-64).
With respect to claims 3 and 4, Dreisbach teaches that the water is present in the formulation at from 2 to 15% (discrete range within "about 0.1-95%") and the formulation solvent is present in the formation at from 2 to 12% (discrete range within "about 0.1-95%") (Column 5, lines 10-15).
With respect to claim 10, Dreisbach does not teach the recited freezing point; however, this is considered to be met as an inherent property as the recited composition is met by Dreisbach. It has been held that "Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability
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.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sheridan et al. (U.S. Patent # 4233174), hereinafter "Sheridan".
With respect to claim 7, Sheridan discloses one "unit" of the alkyl phenol ethoxylate (see Column 1, lines 49-53; Column 2, lines 3-5), wherein the alkyl group on the phenol ranges from 8 to 12 carbon atoms (a discrete range within "R1 is C3-C18") and the ethoxylate groups (m in Formula II) range from 4 to 8 (Column 2, lines 3-9), a discrete embodiment within "1-50". If p in Formula II is 0, then the difference between the chemical structure of the alkyl phenol ethoxylate of Sheridan and what is claimed is that there is no second alkyl phenol ethoxylate "unit".
Although Sheridan fails to incorporate additional alkyl phenol ethoxylate unit, the similarity between the chemical structures and expected properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed alkyl phenol resin ethoxylate where p = 0. In re Payne (A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.") 606 F. 2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon (discussed below and in MPEP § 2144 for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds), 919 F.2 d 688, 16 USPQ2d 1897 (Fed. Circ. 1991). See MPEP § 2144.08. Case law holds that homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by an additional alkyl phenol ethoxylate unit) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
With respect to claim 8, Sheridan discloses 45-55% of the alkyl phenol ethoxylate (a discrete range within "0-60%" (Column 2, lines 15-18).
With respect to claim 9, Sheridan discloses 5 to 50% water and 0% organic solvent as discussed above, and 45-55% of an alkyl phenol ethoxylate. If p in Formula Il is 0, then the difference between the chemical structure of the alkyl phenol ethoxylate of Sheridan and what is claimed is that there is no second alkyl phenol ethoxylate "unit".
Although Sheridan fails to incorporate additional alkyl phenol ethoxylate unit, the similarity between the chemical structures and expected properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed alkyl phenol resin ethoxylate where p = 0. In re Payne (A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.") 606 F. 2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon (discussed below and in MPEP § 2144 for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds), 919 F.2 d 688, 16 USPQ2d 1897 (Fed. Circ. 1991). See MPEP § 2144.08. Case law holds that homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by an additional alkyl phenol ethoxylate unit) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sheridan et al. (U.S. Patent # 4233174) in view of Lancaster et al. (U.S. Patent # 5272226), hereinafter "Sheridan" and "Lancaster".
Assuming the Examiner is incorrect about the above analogous chemical structure obviousness analysis set forth above, the rejection of claims 7-9 are set forth below over Sheridan in view of Lancaster.
With respect to claims 7 and 9, Sheridan discloses one "unit" of the alkyl phenol ethoxylate (see Column 1, lines 49-53; Column 2, lines 3-5), wherein the alkyl group on the phenol ranges from 8 to 12 carbon atoms (a discrete range within "R1 is C3-C18") and the ethoxylate groups (m in Formula II) range from 4 to 8 (Column 2, lines 3-9), a discrete embodiment within "1-50", but does not specifically teach the recited alkyl phenol resin ethoxylate as claimed.
Lancaster discloses an alkyl phenol resin ethoxylate, wherein the alkyl group ranges from 4-18, one or more ethoxylate groups are present, and the degree of polymerization is 4 (Column 2, lines 20-47).
It would have been obvious to modify the alkyl phenol ethoxylates of Sheridan with the alkyl phenol resin ethoxylates of Lancaster because Lancaster discloses that the disclosed alkyl phenol resin ethoxylates are useful as emulsifiers and demulsifiers (Column 1, lines 4-7), and because Sheridan discloses that the disclosed compositions are used as emulsifiers (Abstract). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
With respect to claim 8, Sheridan/Lancaster discloses 45-55% of the alkyl phenol ethoxylate (a discrete range within "0-60%" (see Sheridan: Column 2, lines 15-18). With respect to claim 9, Sheridan discloses 5 to 50% water and 0% organic solvent as discussed above, and 45-55% of an alkyl phenol ethoxylate. but does not specifically teach the recited alkyl phenol resin ethoxylate as claimed. Lancaster discloses an alkyl phenol resin ethoxylate, wherein the alkyl group ranges from 4-18, one or more ethoxylate groups are present, and the degree of polymerization is 4 (Column 2, lines 20-47).
It would have been obvious to modify the alkyl phenol ethoxylates of Sheridan with the alkyl phenol resin ethoxylates of Lancaster because Lancaster discloses that the disclosed alkyl phenol resin ethoxylates are useful as emulsifiers and demulsifiers (Column 1, lines 4-7), and because Sheridan discloses that the disclosed compositions are used as emulsifiers (Abstract). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (U.S. Patent # 9969925), hereinafter "Zhang".
With respect to claims 1 and 4, Zhang teaches a composition comprising a first non-ionic surfactant embodied as C12-C14 alcohol ethoxylates 4.5 mol (discrete embodiment within "R is an alkyl with about 12-16 carbon atoms" and "EO number 3-7") or two different C12-C14 alcohol ethoxylates 5 mol (discrete embodiments within "R is an alkyl with about 12-16 carbon atoms" and "EO number 3-7") (Claim 1, Table 1) and 5-60% (discrete range within "about 0.1 to 95% organic solvent") of a mutual solvent embodied as glycol ether solvents including ethylene glycol monobutyl ether, diethylene glycol monobutyl ether, and diethylene glycol monoethyl ether ("organic solvents" that are "glycol ethers") (Claim 1, Column 3, lines 34-48; Column 4, lines 1-4).
The Examiner acknowledges that the ordinary artisan would have to select the above 3 first non-ionic surfactants from the 12 listed in Table 1; however, one of ordinary skill in the art at the time of the claimed invention would have found it "obvious to try" C12-C14 alcohol ethoxylates 4.5 mol or C12-C14 alcohol ethoxylates 5 mol, as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding the preamble limitations "antifouling dispersant. for reducing organic fouling in an olefin production system", it is submitted that these intended use limitations are not given patentable weight in composition claim 1. The composition of Zhang is capable of acting as an antifouling dispersant as claimed.
With respect to claim 2, Zhang teaches that the composition also comprises water (Column 4, lines 5-11; Claim 7).
With respect to claim 3, Zhang teaches that the composition also comprises water (Column 4, lines 5-11; Claim 7), but does not specifically teach an amount of water; however, the ordinary artisan would have found it obvious that the composition contains at least "about 0.1%" water from the description in Column 3, line 65 through Column 4, line 11, as the composition is described as an aqueous fluid comprising 20-60% of the composition (implied balance being water). It is further noted that there does not appear to be any criticality associated with the recited water content (see Paragraph [0029], which teaches that 0% water could be included). Where 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claims 5 and 6, the Examiner acknowledges that the ordinary artisan would have to select ethylene glycol monobutyl ether, diethylene glycol monobutyl ether, and diethylene glycol monoethyl ether from the 9 listed in Claim 1 and Column 3, lines 40-47); however, one of ordinary skill in the art at the time of the claimed invention would have found it "obvious to try" the glycol ether solvents indicated above, as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398 (2007).
With respect to claims 7 and 8, Zhang teaches that the composition comprises a second non-ionic surfactant embodied as nonylphenol ethoxylate 9 mol (Table 2; claim 4), wherein "nonyl" or C9 is a discrete embodiment within "R1 is C3 to C18 alkyl" and 9 mol ethoxylate is a discrete embodiment within "(EO) number m is at a range of 1-50", and wherein the second surfactant is present at about 10 to 50% (see Claim 6), a discrete range within "about 0.1-60%" as recited in claim 8.
Although Zhang fails to incorporate additional alkyl phenol ethoxylate unit, the similarity between the chemical structures and expected properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed alkyl phenol resin ethoxylate where p = 0. In re Payne (A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.") 606 F.2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon (discussed below and in MPEP § 2144 for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds), 919 F.2d688, 16 USPQ2d 1897 (Fed. Circ. 1991). See MPEP § 2144.08. Case law holds that homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by an additional alkyl phenol ethoxylate unit) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
With respect to claim 9, Zhang teaches that the composition can comprise water within the recited range (see rejection of claim 3 above), nonylphenol ethoxylate 9 mol within "about 0.1-60%" (see rejection of claims 7 and 8 above), and 5-60% (discrete range within "about 0.1 to 95% organic solvent") of a glycol ether solvents (see rejection of claims 1 and 4 above).
With respect to claim 10, Zhang does not teach the recited freezing point; however, this is considered to be met as an inherent property as the recited composition is rendered obvious by Zhang. "Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Conclusion
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/ Primary Examiner, Art Unit 1779 13 October 2026
