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 .
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.
Priority
This application is a CON of 18/853,566 10/02/2024 PAT 12545830; 18/853,566 is a 371 of PCT/US2023/018792 04/17/2023; PCT/US2023/018792 has PRO 63/331,978 04/18/2022.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/08/26 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-16 and species amphodiacetate (species), specifically disodium cocoamphodiacetate (subspecies); and reaction product of a dextrin compound and a fatty acid (species), specifically reaction product of maltodextrin and lauric acid (subspecies) in the reply filed on 06/17/26 is acknowledged.
Claims 1-19 are pending. Claims 11, 17-19 have been withdrawn in an amendment filed on 06/17/26. Claims 1-10, 12-16 are examined in this Office action.
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 1-2, 4-10, 12-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10-13 of U.S. Patent No. 12,545,830 in view of Pabalan (US 2015/0183979).
Regarding claims 1-2, 4-5, 8, 12, 14-15, Patented claim 1 discloses a composition comprising: an aqueous fluid; a neutral surfactant or a reaction product form thereof; a reaction product of a saccharide polymer and a fatty acid or a fatty ester, the saccharide polymer comprising a dextran, a dextrin compound, or any combination thereof, and the reaction product of the saccharide polymer and the fatty acid or the fatty ester and the reaction product form of the neutral surfactant, if present, being formed in the presence of an aqueous hydroxide base; one or more C.sub.1-4 alkyl alcohols; and one or more zwitterionic surfactants; wherein a volume ratio of the one or more zwitterionic surfactants with respect to a combined volume of the one or more zwitterionic surfactants and the reaction product of the saccharide polymer and the fatty acid or the fatty ester is sufficient to make the composition brine-tolerant; wherein the composition is non-emulsifying toward oleaginous fluids. Patented claim 2, discloses the one or more zwitterionic surfactants comprise at least one amphoacetate, at least one amphodiacetate, or any combination thereof, but patented claims do not disclose the zwitterionic surfactants such as cocoamphodiacetate (elected species).
However, Pabalan discloses brine containing aqueous subterranean treatment fluid comprising zwitterionic surfactants such as cocoamphodiacetate (para [0094], [0641], [0705]-[0726], [0740], [0758]).
At the time of invention, it would have been obvious to one of ordinary skill in the art to have modified patented claims with the aforementioned teachings of Pabalan to provide a composition comprising zwitterionic surfactants such as cocoamphodiacetate in order to use such fluid in subterranean treatment. Since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use. See MPEP 2144.06(11) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair& Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc vAg-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988). In the instant case, zwitterionic surfactants such as amphodiacetate for the brine tolerance. Absent evidence to the contrary, one of ordinary skill would have reasonable basis to expect that the zwitterionic surfactants of Pabalan would be effective in the fluid of patented claims.
Dependent claims 6-7, 9, 10, 13 are same as patented claims 3-4, 10-13.
Regarding claim 16, since the composition is obvious over patented claims, the composition can used for any intended purpose such as a personal care product.
Claims 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10-13 of U.S. Patent No. 12,545,830 in view of Pabalan (US 2015/0183979) and further in view of Gardner (US 2021/0340429).
Regarding claim 3, patented claims are silent about maltodextrin.
However, Gardner discloses a subterranean treatment fluid composition comprising an aqueous fluid such as brine; a neutral surfactant; a reaction product of a saccharide polymer and a fatty acid or a fatty ester, the saccharide polymer comprising a dextran, a dextrin compound such as maltodextrin, or any combination thereof, and the reaction product of the saccharide polymer and the fatty acid or the fatty ester, being formed in the presence of an aqueous hydroxide base; and one or more zwitterionic surfactants, wherein a reaction product formed from maltodextrin and lauric acid may generate a less dense and more stable foam (para [0018], [0025]-]0033], [0043]-[0044]).
At the time of invention, it would have been obvious to one of ordinary skill in the art to have modified patented claims with the aforementioned teachings of Gardner to provide a composition comprising dextrin such as maltodextrin and fatty acid such as lauric acid. The rationale to do so would have been motivation provided by of Gardner that to do so would generate a less dense and more stable foam.
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 1-6, 8-9, 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Gardner (US 2021/0340429) in view of Pabalan (US 2015/0183979).
Regarding claims 1-4, 14-15, Gardner discloses a subterranean treatment fluid composition comprising an aqueous fluid such as brine; a neutral surfactant; a reaction product of a saccharide polymer and a fatty acid or a fatty ester, the saccharide polymer comprising a dextran, a dextrin compound such as maltodextrin, or any combination thereof, and the reaction product of the saccharide polymer and the fatty acid or the fatty ester, being formed in the presence of an aqueous hydroxide base; and one or more zwitterionic surfactants such as cocamidopropyl betaine (para [0025]-]0033], [0043]-[0044]).
Gardner does not disclose the zwitterionic surfactants such as amphodiacetate, e.g. cocoamphodiacetate (elected species).
However, Pabalan discloses brine containing aqueous subterranean treatment fluid comprising zwitterionic surfactants such as cocamidopropyl betaine and functionally equivalent cocoamphodiacetate (para [0094], [0641], [0705]-[0726], [0740], [0758]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the cocoamphodiacetate of the claims in the composition of Gardner because Pabalan teaches that the claimed cocoamphodiacetate and the cocamidopropyl betaine of Gardner are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
It has been noted that the aqueous carrier fluid is brine, wherein the carrier fluid contains the neutral surfactants, zwitterionic surfactants and a reaction product of a saccharide polymer and a fatty acid or a fatty ester, the saccharide polymer comprising a dextran, a dextrin compound, or any combination thereof, and the reaction product of the saccharide polymer and the fatty acid or the fatty ester. Hence, Gardner implicitly traches a volume ratio of the one or more zwitterionic surfactants with respect to a combined volume of the one or more zwitterionic surfactants and the reaction product of the saccharide polymer and the fatty acid or the fatty ester is sufficient to make the composition brine-tolerant to some degree and to some extent. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). MPEP 2111.01.
Regarding claims 5, 8, since the claimed composition is obvious over prior arts, the properties of the composition such as non-emulsifying toward oleaginous fluids (in presence of brine) would necessarily be the same as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claims 6, 9, Gardner discloses betaine surfactant (para [0031]).
Regarding claims 12, Pabalan discloses composition comprises alcohols such as methanol or ethanol which act as anti-freeze agent (para [0539], [0681]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Gardner with alcohols such as methanol or ethanol, as taught by Pabalan. The rationale to do so would have been motivation provided by of Pabalan that to do so would help to use the composition in freezing conditions.
Regarding claim 13, Gardner discloses the neutral surfactant comprises fatty acid alkanolamide (para [0018]).
Regarding claim 16, Gardner discloses the composition is used as personal care product (para [0773]).
Allowable Subject Matter
Claims 7, 10 are declared allowable over the prior art of record and if the obviousness-type double patenting present, supra, is overcome (e.g. by Applicant filing of a Terminal Disclaimer).
The following is a statement of reasons for the indication of allowable subject matter: Claims 7, 10 require a specified volume ratio of the at least one amphoacetate, the at least one amphodiacetate, or any combination thereof with respect to the combined volume of the one or more zwitterionic surfactants and the reaction product of the saccharide polymer and the fatty acid or the fatty ester. Closest prior arts Gardner and/or Pabalan do not suggest or disclose the features of claims 7, 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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