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 .
Final Rejection
Claim 1-15 and 17-20 are pending. Claims 1 and 19 are independent.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/25/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The rejection of claim(s) 1-15 and 17-20 under 35 U.S.C. 102((a)(1)) as anticipated by Huang et al, WO 2018/112187 is withdrawn in light of Applicant’s amendment to the claims.
The rejection of claims 1-15 and 17-20 under 35 U.S.C. 103 as being unpatentable over of Behabtu et al. (WO2018081263 A1) in view of Huang et al. (WO 2018112187 A1) is withdrawn.
The rejection of claim(s) 1-15 and 17-20 under 35 U.S.C. 103 as obvious over Huang et al, WO 2018/112187 is maintained below.
Response to Arguments
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive. Applicants urge that Huang et al. do not teach the 1,6 glucan structure A
PNG
media_image1.png
260
532
media_image1.png
Greyscale
. In response, Applicant’s arguments are not persuasive because Huang et al. page 3, structure III copied herein below depicts a 1,6 glucan.
PNG
media_image2.png
270
436
media_image2.png
Greyscale
Accordingly the claim amendments are addressed below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-15 and 17-20 are rejected under 35 U.S.C. 103 as obvious over Huang et al, WO 2018/112187.
Huang et al. teach a laundry care or dish care composition (see page 42,ln.25-35) comprising a poly alpha-1,6-glucan ester compound, where the poly alpha-1,6-glucan ester compound has a degree of polymerization (DPn) in the range of about 5 to about 1400 (see page 20,ln.32-33)
Claim 1 (i) wherein the poly alpha-1,6-glucan comprises (i) a backbone of glucose monomer units wherein greater than or equal to 70% of the glucose monomer units are linked via alpha-1,6-glycosodic linkages is taught on page 21 teaching their poly alpha-1,6-glucan comprises a backbone of glucose monomer units wherein greater than or equal to 40%-90% of the glucose monomer units are linked via alpha-1,6-glycosodic linkage.
Claim 1 (ii) limitation to wherein the poly alpha 1,6 glucan ester comprises (ii) one or more ester groups selected from: (a) an aryl ester group; (b) a first acyl group comprising -CO-R", wherein R" comprises a chain of about 1 to about 24 carbon atoms, and (c) a second acyl group comprising -CO-Cx-COOH, wherein the -Cx-portion of the second acyl group comprises a chain of about 2 to about 24 carbon atoms is met by teach a composition comprising a poly alpha-1,6-glucan substituted with at least one ester group (see abstract and claim 11 copied herein:
PNG
media_image3.png
354
638
media_image3.png
Greyscale
. Claim 1 limitation to wherein the one or more ester groups are connected to the poly alpha-1,6-glucan backbone via a linkage according to -0-; is encompassed by Huang et al. page 3, structure III copied herein
PNG
media_image2.png
270
436
media_image2.png
Greyscale
Claim 1 limitation to wherein the degree of substitution (DoS) of ester groups is from about 0.001 to about 1.50 is met by Huang et al. teaching the polysaccharide has a degree of substitution of about 0.001 to about 3.0. See sentence linking pages 3-4.
Claim 1 limitation to further ingredients is met by Huang et al. teaching their composition further contains surfactants and amylase enzymes, (see pg. 4, lines 8-21).
Huang et al. examples 6A, 7-8 on pages 92-94 teach the poly alpha 1,6 glucan ester in a detergent in table 10 but do not explicitly exemplify the claim 1 limitation to the connection to the poly alpha 1,6-glucan backbone via a linkage according to -O- as is required by the claim 1. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the claimed composition, because Huang et al. teach the same poly alpha 1,6 glucan ester with the same DPn, DoS, and surfactant and enzyme ingredients within the claimed proportions for the same utility.
Regarding claims 3-11, page 11,ln.20-30 teach the term "aryl" means an aromatic carbocyclic group having a single ring (e.g., phenyl), multiple rings (e.g., biphenyl), or multiple condensed rings in which at least one is aromatic, (e.g., 1,2,3,4-tetrahydronaphthyl, naphthyl, anthryl, or phenanthryl), which is optionally mono-, di-, or trisubstituted with alkyl groups. By aryl is also meant heteroaryl groups where heteroaryl is defined as 5-, 6-, or 7-membered aromatic ring 25 systems having at least one hetero atom selected from the group consisting of nitrogen, oxygen and sulfur. Examples of heteroaryl groups include pyridyl, pyrimidinyl, pyrrolyl, pyrazolyl, pyrazinyl, pyridazinyl, oxazolyl, furanyl, quinolinyl, isoquinolinyl, thiazolyl, and thienyl, which can optionally be substituted with alkyl groups. Huang et al teach suitable aryl ester groups comprise a C1-18 alkyl group and a benzylating group (see page 41, lines 5-10), meeting claim benzoyl group substitution because page 41, lines 5-10 teach a carbonyl group C=O attached to a benzyl in line 9, which meets the claim language to a benzoyl group.
Structure A of claim 19 is taught on page 17 as structure III. Huang et al. teaches the limitations that the polysaccharide has a degree of substitution of 0.001-3.0 (see page 3, line 33-page 4, line 1), meeting the claims 1, 12, 19-20.
Limitation to claim 19 wherein the poly alpha-1,6-glucan comprises a backbone of glucose monomer units wherein greater than or equal to 70% of the glucose monomer units are linked via alpha-1,6-glycosodic linkages is taught on page 21 teaching their poly alpha-1,6-glucan comprises a backbone of glucose monomer units wherein greater than or equal to 40%-90% of the glucose monomer units are linked via alpha-1,6-glycosodic linkage.
Huang et al. meets the claim 13 and 19 limitation to a degree of polymerization of at least 5 on page 18 line 14 of Huang et al. teaching DPw (weight average degree of polymerization) in the range of 5-1000.
Huang et al. teach that the composition is in the form of a liquid, gel or pouch (see page 4, lines 4-7), meeting the limitations of claims 15 and 19. See also claims 1, 4- 19 and the examples 6A, 7-8 on pages 92-94, and page 1,ln.25-30.
Huang et al. teach that the hydrophobic group is linked to the polysaccharide through an ether moiety or a carbamate moiety (see page 14, lines 10-18), and that suitable polysaccharides include dextran, which contains at least 95% of alpha-1,6 linkages with side chains of alpha 1,3-glucan (see page 20, lines 11-18), per the requirements of the instant invention. Specifically, note Examples 1A-17 and Tables 1-11. Note, Huang et al is silent with respect to the biodegradability value of their polysaccharides as required in claim14, however, Examiner asserts that the polysaccharides disclosed in Huang et al would inherently meet the biodegradability requirements of the instant invention, since products of identical chemical composition cannot have mutually exclusive properties, absent a showing otherwise.
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 1-15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15-19 of copending Application No. 17/351,616 having publication US 2021/0395655 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the cationically modified poly alpha 1,6 glucan of the copending Application No. 17/351,616 encompasses the claimed poly alpha 1,6 glucan substituted with the claimed ester. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,965,147 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of U.S. Patent No. 11,965,147 recite limitation to a product comprising the claimed poly alpha 1,6 glucan substituted with the claimed ester with the same substitution and properties of the instant claims.
Claims 1-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15-29 of U.S. Patent No. 10,822,383 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 15-29 of U.S. Patent No. 10,822,383 recite limitation to a product comprising the claimed polysaccharide with the same substitution and properties of the instant claims.
Claims 1-15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 9-21 and 24-27 of copending Application No. 18/007,583 having publication US20230212325 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the industrial product of the copending Application No. 18/007,583 encompasses the claimed laundry or dish care composition comprising the same poly alpha 1,6 glucan substituted with the claimed ester and has the same degree of polymerization and degree of substitution and enzyme. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18/008,213 having publication US20230287148A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the personal care or industrial product of the copending Application No. 18/008,213 encompasses the claimed laundry or dish care composition comprising the same poly alpha 1,6 glucan substituted with the claimed ester and has the same degree of polymerization and degree of substitution and enzyme. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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 PREETI KUMAR whose telephone number is (571)272-1320. The examiner can normally be reached Monday-Friday 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PREETI KUMAR/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761