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 .
DETAILED ACTION
This Final Office action is based on the 19/048308 application originally filed February 07, 2025 and is a Continuation of US Application number 18/084481 (abandoned) and US Application Number 16/639638 (US Patent Number 11,542,451).
Amended claim 21, filed May 11, 2026, are pending and have been fully considered.
The claim objection is withdrawn in light of applicants claimed amendments and remarks.
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 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.
Claim 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US 2013/0219772) hereinafter “Fujita” in view of Anand et al. (WO 2015/200381 A1) hereinafter “Anand”.
Regarding Claim 21
Fujita discloses in the abstract, a W/O nanoemulsion which remains stable even if stored for long periods of six months. The W/O nanoemulsion comprises (see paragraphs 0013-0017):
a) a water content of greater than 0 wt % but no greater than 30 wt %;
b) an oil content of less than 100 wt % but no less than 70 wt %;
c) 1 to 30 parts by weight of at least one nonionic surfactant for every 100 parts by weight of oil, the nonionic surfactant having an HLB value of 1 to 10; and
d) 0.1 to 30 parts by weight of at least one selected from the group consisting of an anionic surfactant, a cationic surfactant, and an amphoteric surfactant, for every 100 parts by weight of water, wherein the average particle size of 50% of the water particles in the W/O nanoemulsion is 100 nm or less.
Fujita discloses in paragraph 0078, the nonionic surfactant c) may be at least one selected from the group consisting of polyoxyethylene glycol, fatty acid sorbitan esters, alkyl polyglucosides, fatty acid diethanolamides, alkyl monoglyceryl ethers, alkyl glycosides, polyethylene glycol, and polyvinyl alcohol, preferably at least one selected from the group consisting of polyoxyethylene fatty acid sorbitan esters, and alkyl polyglucosides, more preferably polyoxyethylene glycol. The nonionic surfactant has a HLB of 1 to 10. Fujita discloses in paragraph 0019, the b) oil may be at least one selected from the group consisting of kerosene, gasoline, light oil, heavy oil (including A-type heavy oil, B-type heavy oil and C-type heavy oil), alcohol, biofuel and ethyl tert-butyl ether.
It is to be noted, Fujita discloses at least one type of nonionic surfactant present in the nanoemulsion but fails to specifically teach the claimed additional additives of the present invention.
However, it is known in the art to add various types of nonionic surfactants in nanoemulsions depending upon the desired absorption rate of the surfactants when the surfactants are present in various phases of the emulsion, as taught by Anand.
Anand discloses on page 6 lines 10-17, a method and a system to manufacture emulsions by means of condensing vapor of the primary liquid on the secondary liquid in presence of a minimum concentration of an emulsifier; specifically, by formation of droplets of the primary liquid on or within the secondary liquid through nucleation, wherein droplet nucleation occurs via contact of the vapor phase of the primary liquid with secondary liquid-emulsifier mixture in thermodynamic conditions wherein nucleation of the primary liquid is favorable. The emulsifier can include a surfactant or nanoparticles or combination of multiple surfactants/nanoparticles.
Anand discloses on page 14 lines 20-34, this method is capable of working with variety of liquids. Some examples of liquids that could be used for preparing emulsions include: water; hydrocarbon oils such as linear or branched alkanes (including but not limited to butane, pentane, hexane, heptane, octane, nonane, decane, undecane, dodecane, tridecane, tetradecane, pentadecane, hexadecane); cyclic alkanes (including but not limited to cyclobutane, cyclopentane, cyclohexane, cycloheptane); linear or branched alkenes (including but not limited to squalene); cyclic and/or aromatic compounds (including but not limited to benzene, toluene); hydrocarbon oils with hydroxyl groups and/or esters and/or ethers (including but not limited to food derivatives, such as castor oil, olive oil, sunflower seed oil); alcohols such as linear or branched alcohols (including but not limited to methanol, ethanol, propanol, butanol, pentanol, hexanol, heptanol, octanol (defoamer), nonanol, decanol, undecanol); cyclic or aromatic compounds with hydroxyl groups; silicone oils of different viscosities and with different termination groups; mineral oils ; fluorinated oils (including but not limited to perfluorinated carbon-based oils such as the FC series oils e.g. FC-40, FC-70 & fluorinated oils with ethers e.g. Krytox, Cytop).
Anand discloses on page 15 lines 9-34, the primary purpose of the stabilizing agent is to delay the coalescence of the droplets by encapsulating the dispersed droplets. The stabilizing agent can be natural or synthetic. In one embodiment, the stabilizing agent can be a surfactant having at-least two different parts - each having a separate affinity for the dispersed phase and the continuous phase while being antagonistic towards the other phase. For example, a surfactant can have a hydrophilic part that has affinity for water phase, and is antagonistic towards oil phase; and a hydrophobic part that has affinity for oil phase, and is antagonistic towards water phase. The stabilizing agent can be non-ionic surfactant including Spans (e.g. Span 20, Span 40, Span 60, Span 65, Span 80, Span 83, Span 85), Tweens (e.g. Tween 20, Tween 21, Tween 40, Tween 60, Tween 61, Tween 65, Tween 80, Tween 85), glycerin, ethylene glycol, glyceryl laurate, dodecyidimethylamine oxide, polyethoxylated tallow amine (POEA), giucoside alky ethers; anionic surfactants including sodium tetradecyl sulfate, sodium dodecyl sulfate (SDS), sodium decyl sulfate, sodium octyl sulfate, sodium oleate, dioctyl sulfosuccinate sodium salt (AOT); cationic surfactants including hexadecyltrimethylammonium bromide, cetyltrimethylammonium bromide; zwitterionic surfactants; polymeric and/or block co-polymer surfactants including poioxamers, polyoxyethylene glycol alkyl ethers (e.g. Bri 58), polyoxyethylene glycol alkylphenol ethers (e.g. Nonoxynol-9), polyoxyethylene glycol octylphenol ethers (e.g. Triton X-100), polyoxypropylene glycol alkyl ethers, polyoxyethylene glycol alkylphenol ethers (e.g. nonoxynol-9), polyethylene glycol (PEG); ionic liquid surfactants; stimuli-responsive surfactants; gemini surfactants; Janus particles (comprising of regions of hydrophilic/hydrophobic wettabilities); or solid particles including polymer compounds (e.g. latex), inorganic compounds (e.g. silica, titania).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to use the surfactants and liquids of Anand in the nanoemulsion of Fujita. The motivation to do so is add various types of nonionic surfactants in nanoemulsions depending upon the desired absorption rate of the surfactants when the surfactants are present in various phases of the emulsion, as taught by Anand.
In the case where the claimed ranges “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).
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 art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed May 11, 2026 have been fully considered but they are not persuasive.
Applicants argued: “Applicant has canceled these claims rendering the rejections moot. Applicant has introduced new claim 21 which incorporates all of the fuel component limitations of the allowed claims in parent application U.S. App. No. 16/639,638 which issued as U.S. Patent No. 11,542,451. Applicant asserts that claim 21 should be allowable in this case for similar reasons, which at least include that the cited combination of references do not teach or suggest a clear nanoemulsion fuel comprising "a first surfactant mixture comprising, in substantially equal weight ratios, polyethylene glycol tert-octylphenyl ether, sorbitan monooleate, and polyoxyethylene (20) sorbitan monooleate" and "a second surfactant mixture comprising in substantially equal weight ratios polyoxyethylene (20) sorbitan monooleate and sorbitan monooleate" in combination with the other limitations of claim 21. Accordingly, timely allowance of claim 21 is respectfully requested.”
Applicants arguments are not deemed persuasive. As stated in the above rejection, it is maintained, Fujita modified by Anand discloses the claimed composition of a nanoemulsion comprising a base fuel, water, at least one nonionic surfactant, ethylene glycol and hexadecane. It is to be noted, applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached on Monday thru Friday 9:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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