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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 3/17/2025, 3/30/2025, 6/19/2025, 2/3/2026. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form 1449.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 is rejected under 35 U.S.C. 101 because the claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is a “use” claim. “Use” claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961). MPEP 2173.05(q).
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, 6, 7, 9, 10, and 15 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.
Claim 1 is a “use” claim. The claim is indefinite because it recites a use but failed to recite steps. See MPEP 2173.05(q).
Regarding claims 6, 7, and 8, the phrase "preferably" 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).
Regarding claims 3, 6, 7, 9, 10, and 15, the claims contain improper Markush language. Claim language defined by a Markush grouping requires selection from a closed group "consisting of" the alternative members. MPEP 2117 (I). The instant claims only recite “independently selected from” or “selected from” and does not make clear if the language is open or closed. The claims are missing the closed language. Applicant is advised to amend the claims to “selected from a group consisting of”
Claim Rejections - 35 USC § 102
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 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 and 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xue et al (US2020/0199492).
Xue et al teach a cleaning composition comprising one or more biosurfactants and other surfactants [0001]. The composition is applied to offshore tanks and vessels in order to remove heavy oils [0059]. Xue teaches an exemplary composition containing 4% sophorolipid biosurfactants sodium lauryl ether sulfate (anionic surfactant) for use on a metal surface [0120].
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 Xue et al (US2020/0199492) in view of Silva et al (Int. J. Mol. Sci. 2014, 15, 12523-12542).
The teachings of Xue et al are discussed above. Xue et al does not teach the lipopeptide and phospholipid biosurfactants.
Silva et al teaches the use of biosurfactants in oil tank cleaning (p.12532, 5.3). Silva teaches microbial biosurfactants is an alternative cleaning procedure to decrease the viscosity of sludge and oil deposits which allows the recovery of crude oil. Silva teaches lipopeptides and polymeric biosurfactant are used in oil recovery, oil removal and bioremediation of oil contaminated sites (Table 4). Silva teaches commonly used lipopeptides include surfactin and commonly used polymeric surfactants include liposan (Table 3).
It would have been obvious to the person of ordinary skill in the art to make the claimed invention before the effective filing date of the claimed invention for the following reasons. One of ordinary skill in the art would add the phospholipids and polymeric surfactants to the composition of Xue et al in order to enhance the cleaning properties and further remove the oil. Both references shows that all biosurfactant have use in cleaning, removing, recovering oil. Therefore, the invention as a whole would be obvious to the person of ordinary skill in the art.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Xue et al (US2020/0199492) in view of Mahmoudkhani et al (US20230086243).
The teachings of Xue et al are discussed above. Xue et al further teaches the composition comprising chelating agents such as ethylenediaminedisuccinic acid and iminodisuccinic acid [0054]. Xue et al does not teach the composition comprising terpenes.
Mahmoudkhani et al teaches the use of a composition comprising biosurfactant, such as sophorolipids [0017, 0020]. The composition is used for oil recovery and cleaning storage tanks [0030]. Mahmoudkhani et al teaches when the composition contains solvents it has enhanced properties [0025]. Mahmoudkhani et al further teaches terpenes can be the solvent in the composition [0073].
It would have been obvious to the person of ordinary skill in the art to make the claimed invention before the effective filing date of the claimed invention for the following reasons. The person of ordinary skill in the art would have been motivated to add the terpene to the composition of Xue et al in order to enhance the properties of oil cleaning and recovery. Therefore, the invention as a whole would be obvious to the person of ordinary skill in the art.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C BROWN-PETTIGREW whose telephone number is (571)272-2817. The examiner can normally be reached Mon - Fri, 8-5.
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/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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