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 .
Election/Restrictions
Applicants’ election without traverse of Group I (i.e., claims 1-9 and 11-18, drawn to a surfactant composition), in the reply filed on 10/02/2024 is acknowledged. Additionally, Applicants’ election of Species A (i.e., A single and specific surfactant composition indicating: (1) single and specific catechol compound including a single and specific group for R1 and R2 in formula (I), claims 1-3, 10 and 12. Applicants’ Election: R1 and R2 are identical linear aliphatic hydrocarbon radical having 2 carbon atoms; (2) single and specific total amount of catechol compound, claims 14-15. Applicants’ Election: the total amount of catechol compound is 2.5 to 75 wt. %; (3) single and specific surfactant, claims 1, 5, 10 and specification [0033-0034]. Applicants’ Election: the surfactant is at least one anionic surfactant; (4) single and specific mannanase enzyme indicating ALL variables, whether the enzyme is a variant, and the bacterial strain the enzyme is derived from, claims 1, 7-10, 17-18. Applicants’ election: the mannanase enzyme contains at least one mannanase polypeptide selected from Bacillus subtilis), in the reply filed on 10/02/2024 is acknowledged.
Claims 9-10 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. Similarly claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/02/2024.
Please note Species A: (3) the bacterial strain the enzyme is derived from, has been expanded to include: Bacillus lentus, Bacillus clausii, Bacillus agaradhaerens, Bacillus brevis, Bacillus stearothermophilus, Bacillus circulans, Bacillus licheniformis, and Bacillus sp.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/27/2026 has been entered.
Status of Claims
Claims 1-19 were originally filed on 10/04/2021.
The amendment filed on 06/30/2025, cancelled claim 5 and amended claims 1, 4, 6-8, 11, 13-19.
The amendment filed on 01/27/2026, cancelled claims 2-3, 7-8, 12, 17-18; and amended claims 1, 4, 9, 14-15.
Claims 1, 4, 6, 11, 13, 15-16 are currently pending under consideration.
Priority
The present application is a CON of PCT/EP2020/055337 filed on 02/28/2020.
The present application also claims priority under 119(a)-(d) to German Application No. DE102019204792.0 filed on 04/04/2019. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) for German Application No. DE102019204792.0, which papers have been placed of record in the file. Please note that the application is in a foreign language and thus cannot be verified.
Sequence Interpretation
Regarding claim 1, please note that the Examiner is interpreting the scope of a mannanase enzyme polypeptide which comprise an amino acid sequence as open-ended requiring at least 90% identity to positions 31 to 490 of SEQ ID NO: 1 with any N-/C-terminal additions. Since SEQ ID NO: 1 from position 31 to position 490 encompasses 460 residues, a polypeptide that is at least 90% identical to the fragment of SEQ ID NO: 1 (i.e., to positions 31 to 490) would encompass up to 46 modifications including any insertions, substitutions, deletions, etc.
Response to Arguments
1. Applicants’ arguments, see Remarks, filed on 01/27/2026, with respect to the 35 U.S.C. 103 rejection, have been fully considered and are persuasive. The 35 U.S.C 103 rejection of claims 1-4, 6-8, 11-12 and 15-18 has been withdrawn.
2. Applicants’ arguments, see Remarks, filed on 01/27/2026, with respect to the nonstatutory double patenting rejection of claims 1, 4, 6, 11, 13 and 15-16 over claims 1, 2, 4, 8, 10-11 and 18 of U.S. Patent No. 11,560, 532 B2 (herein after “532”); have been fully considered but are not persuasive. The nonstatutory double patenting rejection of claims 1, 4, 6, 11, 13 and 15-16 has been maintained.
3. Applicants’ arguments, see Remarks, filed on 01/27/2026, with respect to the nonstatutory double patenting rejection of claims 1, 4, 6, 11, 13 and 15-16 over claims 1-,2, 4, 9, 14 and 17, of U.S. Patent No. 11,566,206 B2 (herein after “206”); have been fully considered but are not persuasive. The nonstatutory double patenting rejection of claims 1, 4, 6, 11, 13 and 15-16 has been maintained.
New Objection
Claim 1 is objected to because of the following informalities: incorrect abbreviation. The claim includes the abbreviations “wt%” and “wt.%” for the term “weight percent”. However the abbreviation of the term should be the same thought the claim. Appropriate correction is required.
New Rejection
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.
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.
103 - KSR Examples of 'Rationales' Supporting a Conclusion of Obviousness
(Consistent with the "Functional Approach" of Graham)
Further regarding 35 USC 103(a) rejections, the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) (KSR) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Also, a reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976).
1. Claims 1, 4, 6, 11, 13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Brooker et al., (US 2016/0177236 A1) Pub. Date: Jun. 23. 2016 (herein after “Brooker”) in view of Kropf et al., (US 2017/0240849 A1) Published on August 24th 2017 (cited in the IDS filed on 11/16/2023)(herein after “Kropf”); Siegert et al. (US 8,802,614 B2) Date of Patent: Aug. 12, 2014 (herein after “Siegert”); and Kauppinen et al., (US 7,183,093 B2) Published on February 27th 2007 (herein after “Kauppinen”), as evidenced by GenCore., Sequence Alignment Kauppinen’s SEQ ID NO:2 fragment from 32 to 490 v. Instant SEQ ID NO: 1 fragment 31 to 490, pp. 1-2 (herein after “GenCore”).
Regarding claim 1, Brooker is in the field of detergent compositions and claims a detergent composition comprising a protease (see pg. 23, claim 1), at least a mannanase enzyme (see pg. 23, claim 6), an anionic surfactant (see pg. 23, claim 9) and catechols, particularly catechol sulphonate (see pg. 23, claims 11-12, and pg. 9, para[0145]). Thereby Brooker’s invention reads on the instantly claimed surfactant composition comprising a catechol, at least one anionic surfactant, at least one mannanase and other active ingredients.
Brooker also teaches examples of two compositions (solid and liquid) and depicts the specific ingredient list and the respective level (%wt.) (see pg. 14-15, para[0225-0227]). It is noted that surfactants are present in both liquid and solid compositions. For instance, solid composition 1 comprises 48 wt.% of the anionic surfactant sodium C12-14 akyl ethoxy 3 sulfate (see pg. 14, para[0225] and pg. 2, para[0028]); and liquid composition 1 comprises a mixture of non-ionic surfactants (i.e., Lutensol® TO 7 at 33 %wt. and Plurafac® SLF180 at 27 %wt.) (see pg. 14, para[0225]), thereby corresponding to at least one non-ionic surfactant from 20 wt.% to 30 wt.%, as recited in instant claim 1.
Brooker also lists water as a processing aid at a level of balance to 100% (see pg. 14-15, para[0225-0227]). The “balance to 100%” is being interpreted as the %wt. of water filling in the remaining percentage to make a total of 100%, thereby corresponding to wherein water based on the total weight of the surfactant composition is from 1 to 50 wt.% as recited in instant claim 1. Additionally, MPEP 2144.05(I) states that "[i]n the case where the claimed ranges "overlap or lie inside ranges discloses by the prior art" a prima facie case of obviousness exists. Therefore, the claimed non-ionic surfactant wt. % and the claimed water wt.% would have been obvious to one of ordinary skill in the art since the prior art teaches wt. % that lie within the claimed 20 wt.% to 30 wt.% range of non-ionic surfactant; and the claimed 1 to 50 wt. % of water.
Brooker teaches compositions comprising a non-ionic surfactant, or non-ionic surfactant system which is a mixture of two or more non-ionic surfactants (see pg. 11, para[0189]). Brooker found that non-ionic surfactants can acts as anti-redeposition agents; in other words where filming and spotting does not seem to be a problem, non-ionic surfactants can contribute to prevent redeposition of soils (see pg. 11, para[0187-0188]). Brooker adds that non-ionic surfactant systems have improved cleaning and finishing properties and stability in product than single non-ionic surfactants (see pg. 11, para[0187, 0189]). Moreover, Brooker teaches that the performance provided by the compositions is further improved by anionic surfactant, preferably an alkyl ethoxy sulfate (see pg. 2, para[0028]), thereby constituting at least one anionic surfactant as recited in instant claim 1.
However, Brooker does not expressly teach a composition comprising:
-a catechol compound of the formula (I) wherein R1 and R2 are alkyl groups having 3 carbons, and wherein the catechol compound is substantially free of metal ions;
-from 20 wt.% to 30 wt.% of at least one anionic surfactant, wherein the total amount of surfactant in the composition is from 45 to 70 wt.%;
-at least one mannanase comprising an amino acid sequence at least 90% identical to the polypeptide of the positions 31 to 490 according to SEQ ID NO: 1; as recited in instant claim 1.
Kropf’s invention relates to the use of dihydroxyterephthalic acid derivatives in washing and cleaning agents for improving the washing or cleaning performance (see pg. 1, para[0001]). Kropf found that by using dihydroxyterephthalic acid and/or dihydroxyterephthalic acid esters and/or amides, the washing or cleaning performance of washing or cleaning agents can be considerably improved in particular with respect to bleachable stains (see pg. 1, para[0009]). Kropf adds that the use of compounds of general formula (I) takes place in a washing or cleaning agent which contains no bleaching agents (see pg. 2, para[0013 and 0015]). In other words, Kropf’s compounds of general formula (I) improve the washing or cleaning performance of an agent that contains no bleaching agents (hypochlorites, hydrogen peroxide or substances yielding hydrogen peroxide; preferably, it also contains no bleach activators and/or bleach catalysts) (see pg. 2, para[0015]). Furthermore, Kropf teaches that enzymes can be used to increase the performance of the washing or cleaning agents (see Kropf, pg. 6, para[0055]), such as enzymes which are grouped under the term hemicellulases (e.g., mannanases) (see Kropf, pg. 6, para[0059]).
Kroft adds that in order to prevent undesired changes to the washing and cleaning agents and/or to the treated textiles caused by the effect of atmospheric oxygen and other oxidative processes, antioxidants such as catechols are added to the washing and cleaning agents (see Kropf, pg. 8, para[0076]).
In particular Kropf teaches the use of compounds of general formula (I), (i.e.,
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)(see Kropf, pg. 1, para[0007]); where R1 and R2 independently of one another are NR3R4 or OR5, and R3, R4, and R5 independently of one another are H or a cyclic or acyclic, straight-chain or branched-chain, aliphatic or aromatic hydrocarbon residue having 1 to 20 carbon atoms (see Kropf, pg. 1, para[0007]). Kropf adds that R3 is preferably H, and R4 and R5 independently of one another are preferably alkyl groups, such as methyl, ethyl, n-propyl or i-propyl, alkoxyalkyl groups, hydroxyalkyl groups, (N-hydroxyethyl) aminoethyl, (N-methoxyethyl)amino ethyl or (N-ethoxyethyl)aminoethyl, or aromatic groups (see Kropf, pg. 2, para[0012]), thereby corresponding to a catechol compound of formula (I) wherein R1 and R2 are alkyl groups having 3 carbons, as recited in instant claim 1.
With respect to wherein R1 and R2 are alkyl groups having 3 carbons; pursuant to MPEP 2144.09, 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." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990). Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007).
Additionally, since Kropf’s formula (I) reads on the instantly claimed catechol compound, and has very close structural similarities and similar utilities; it must also follow that Kropf’s compound of formula (I) is substantially free of metal ions. As such, the combine teachings of Brooker and Kropf are suggestive of a surfactant composition comprising a catechol compound of formula (I) as recited in instant claim 1.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Brooker and substitute a catechol in particular catechol sulfonate with Kropf’s compounds of general formula (I), in order to arrive at the instantly claimed surfactant composition. One of ordinary skill in the art before the effective filing date would have been motivated to do because it was known that compounds of general formula (I) are known for improving washing or cleaning performance of washing or cleaning agents with respect to bleachable stains; and because it was also known that antioxidants such as catechols are added to washing and cleaning agents in order to prevent undesired changes to the washing and cleaning agents and/or to the treated textiles caused by the effect of atmospheric oxygen and other oxidative processes.
One of ordinary skill would have had a reasonable expectation of success given that Brooker’s detergent compositions comprise at least a mannanase enzyme, anionic and non-ionic surfactants which are known to act as anti-redeposition agents; and given that Kropf also teaches that enzymes such as mannanases (i.e., hemicellulases) can be used to increase the performance of washing and cleaning agents. Therefore, substituting catechol sulphonate with Kropf’s compounds of general formula (I) in a detergent composition of Brooker would support the instantly claimed surfactant composition by constituting a simple substitution of one known element for another to obtain predictable results, and/or the application of a known technique to a known device (method, or product) ready for improvement to yield predictable results; and/or some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
With respect to the 20-30 wt. % of anionic surfactant and the total amount of surfactant in the composition being from 45 to 70 wt. %:
Siegert’s invention pertains to a liquid surfactant preparation encompassing a hydrolytic enzyme and a component stabilizing the hydrolytic enzyme, wherein the component stabilizing the hydrolytic enzyme encompasses a multiply substituted benzenecarboxylic acid that has a carboxyl group on at least two carbon atoms of the benzene residue (see column 2, lines 13-18). Siegert claims that the liquid surfactant preparation comprises hydrolytic enzyme is a protease, amylase, cellulase, glycosidase, hemicellulase, mannanase, xylanase, xyloglucanase, xanthanase, pectinase, ß-glucosidase, carrageenase, lipase, or mixtures thereof (see column 18, claim 5). Furthermore, Siegert found that a multiply substituted benzenecarboxylic acid of this kind keeps a hydrolytic enzyme, in particular a protease, advantageously stable in a liquid surfactant preparation, for example in a liquid washing, cleaning, or disinfecting agent (see column 2, lines 18-22).
Additionally, Siegert teaches that these compounds have the advantage that they already exert their stabilizing effect at low to very low concentrations, possess good water solubility, can therefore easily be incorporated or easily utilized in liquid surfactant preparations, in particular in liquid washing, cleaning, or disinfecting agents or in a washing bath constituted by such a surfactant preparation, and that precipitation during storage is moreover decreased or entirely avoided (see column 2, last paragraph).
Siegert adds that mixtures of anionic and nonionic surfactants are preferred in terms of applications engineering (see column 9, lines 7-9). The total surfactant content of the liquid surfactant preparation is preferably below 60 wt. (see column 9, lines 10-13), thereby corresponding wherein the total amount of surfactant in the composition is from 45 to 70 wt.%, as recited in instant claim 1.
Furthermore, Siegert adds that the concentration of anionic surfactants in a surfactant preparation can be 1 to 40 wt. %, by preference 5 to 30 wt. %, and very particularly preferably 10 to 25 wt. %, based in each case on the total surfactant preparation (see column 10, lines 31-34), thereby corresponding to wherein a surfactant composition comprises from 20 wt.% to 30 wt.% of at least one anionic surfactant, as recited in instant claim 1. As previously mentioned, MPEP 2144.05(I) states that "[i]n the case where the claimed ranges "overlap or lie inside ranges discloses by the prior art" a prima facie case of obviousness exists. Therefore, the claimed anionic surfactant wt. % range and the claimed wt.% total amount of surfactant range would have been obvious to one of ordinary skill in the art since the prior art teaches wt. % that lie within the claimed 20 wt.% to 30 wt.% range of anionic surfactant; and within the claimed 45-70 wt. % of total surfactant relative to the total weight of the composition.
Additionally, with respect to the wt. % of the at least one non-ionic surfactant, the wt. % of the at least one anionic surfactant and the wt. % of the total amount of the surfactant in the composition relative to the total weight of the composition. Both Brooker and Siegert teach individual and total weight percentages for anionic and non-ionic surfactants in liquid and solid compositions. Therefore the weight percent of the individual surfactants and the total amount of surfactant relative to the total weight of the composition is clearly a result specific parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal weight percent range of both surfactants (i.e. non-ionic and anionic), and the optimal weight percent range of the total amount of surfactant in the composition, relative to the total weight of composition needed to achieve the desired surfactant wt. % in liquid or solid compositions. Thus, an ordinary skilled artisan would have been motivated to modify the level (%wt.) of surfactant as taught by Brooker, because an ordinary skilled artisan would have been able to utilize the teachings of Siegert to obtain the desired wt. % of anionic and non-ionic surfactants and the desired total amount of surfactant relative to the total weight of the liquid or solid composition with a reasonable expectation of success. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of wt.% surfactants and the total amount of surfactant relative to the total weight of the composition regardless of physical state of the composition (i.e., liquid or solid) would have been obvious at the time of Applicants' invention. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, because the combined teachings of the prior art are fairly suggestive of the claimed invention.
As such, before the effective filing date of the claimed invention, an ordinary skilled artisan would have been motivated with reasonable expectation of success to incorporate the teachings of Siegert as part of the detergent compositions of Brooker, in order to arrive at the claimed surfactant composition. One of ordinary skill would have been motivated to do so because multiply substituted benzenecarboxylic acid that has a carboxyl group on at least two carbon atoms of the benzene residue were known to stabilize liquid surfactant preparations comprising a hydrolytic enzyme such as mannanase. One of ordinary skill would have had a reasonable expectation of success given that the compounds exert their stabilizing effect at low to very low concentrations and possess good water solubility which make them easy to incorporate in liquid washing, cleaning or disinfecting agents. Therefore, incorporating Siegert’s teachings as part of Brooker’s detergents would support the instantly claimed surfactant composition by constituting the application of a known technique to a known device (method, or product) ready for improvement to yield predictable results; and/or some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
With respect to wherein the composition comprises at least one mannanase comprising an amino acid sequence at least 90% identical to the polypeptide of the positions 31 to 490 according to SEQ ID NO: 1; as recited in instant claim 1:
Kauppinen’s invention relates to mannanases comprising e.g., a sequence of amino acids 32-330 of SEQ ID NO: 2 or their homologues may be derived from e.g., Bacillus sp. I633 (see Kauppinen, Abstract). Kauppinen also teaches cleaning compositions comprising surfactant systems, wherein the surfactant is typically present at a level from 0.1 % to 60% by weight (see column 29, lines 8-9). The surfactant is preferably formulated to be compatible with enzyme hybrid and enzyme components present in the composition (see column 29, lines 10-12). Additionally, that suitable systems for use according Kauppinen’s invention comprise as a surfactant one or more of the nonionic and/or anionic surfactants (see column 29, lines 15-17).
Furthermore, Kauppinen teaches that the sequence of amino acids 32-490 of SEQ ID NO:2 is a mature mannanase sequence (see Kauppinen, column 13, lines 32-33). The sequence of amino acids 1-31 of SEQ ID NO: 2 is the signal peptide and it is believed that the sequence of amino acids 32-330 of SEQ ID NO: 2 is the catalytic domain of the mannanase and that the mature enzyme additionally comprises a linker at positions 331-342 and at least one C-terminal domain of unknown function at positions 343-490 (see Kauppinen, column 13, lines 33-38). Kauppinen’s invention relates to obtaining a polypeptide which exhibits mannanase activity, comprising the sequence of amino acids 32-330 of SEQ ID NO: 2 or their homologs may be derived from e.g., Bacillus sp. I633 (see Kauppinen, Abstract). The mannanase are alkaline and are useful e.g., in cleaning compositions, for modifying plant material and for treatment of cellulosic fibers (see Kauppinen, Abstract).
As evidenced by GenCore, Kauppinen’s sequence of amino acids 32-490 of SEQ ID NO:2 is 100% identical to instant SEQ ID NO: 1 positions 31 to 490 (see GenCore, pg. 1-2), thereby constituting wherein the at least one mannanase comprises an amino acid sequence at least 90% identical to the polypeptide of the positions 31 to 490 according to SEQ ID NO: 1 as recited in instant claim 8. Therefore, the teachings of Brooker, when combined with the teachings of Kropf, Siegert and Kauppinen are suggestive of the claim limitations as recited in instant claim 1.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Brooker to include a mature mannanase sequence of amino acids 32-490 of SEQ ID NO:2 derived from Bacillus sp. I633 or homologues thereof, given that mannanase are alkaline and are useful in cleaning compositions. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because a sequence of amino acids 32-330 of SEQ ID NO: 2 or their homologues derived from e.g., Bacillus sp. I633 are known to comprise the catalytic domain of the mannanase, and because the mature enzyme additionally comprises a linker at positions 331-342 and at least one C-terminal domain of unknown function at positions 343-490 as taught by Kauppinen. One of ordinary skill in the before the effective filing date of the claimed invention would have had a reasonable expectation of success given that Brooker’s composition further comprises at least one mannanase enzyme and other components found in detergent compositions (i.e., surfactants and catechols); and given that Kauppinen teaches cleaning compositions comprising surfactant systems comprising one or more of the nonionic and/or anionic surfactants and wherein the surfactant is typically present at a level from 0.1% to 60% by weight. Therefore, incorporating Kauppinen’s mature mannanase sequence of amino acids 32-490 of SEQ ID NO:2 as a mannanase enzyme, combined with surfactants would support the instantly claimed surfactant composition comprising by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention and/or the simple substitution of one known element for another to obtain predictable results to arrive at the claimed invention; and/or applying a known technique to a known device (method, or product) ready for improvement to yield predictable results, pursuant to KSR.
Regarding claims 4 and 15, Kropf teaches that the use according to the invention of the compound of general formula (I) in washing or cleaning agents preferably takes place in such a way that they are used in an amount of from 0.001 % by weight to 20% by weight, in particular in an amount of from 0.01 % by weight to 10% by weight (see Kropf, pg. 2, para[0013] and claims 12 and 13), thereby constituting wherein the catechol compound of formula (I) is contained in a total amount of 0.2 to 90 wt. % as recited in instant claim 4; and also constituting wherein the catechol compound of formula (I) is contained in a total amount of 2.5 to 75 wt. % as recited in instant claim 15. Therefore, the claimed total amount of the catechol compound based on its total weight would have been obvious to one of ordinary skill in the art since the prior art weight range (i.e., from 0.001 % by weight to 20% by weight, in particular in an amount of from 0.01 % by weight to 10% weight) lies within the claimed total amount weight range of the catechol compounds of the formula (I) (i.e., 0.2 to 90 wt. % and 2.5 to 75 wt. %).
Regarding claims 6 and 16, Kauppinen teaches that mannanase is incorporated into the cleaning or detergent compositions in accordance with the invention preferably at a level of from 0.0001 % to 2%, more preferably from 0.0005% to 0.5%, most preferred from 0.001 % to 0.1 % pure enzyme by weight of the composition (see column 36, lines 59-63). Thereby constituting wherein, the surfactant composition contains at least one mannanase in a total amount of 0.01 to 2.5 wt. % based on the total weight of the composition as recited in instant claim 6; and also constituting wherein the surfactant composition contains at least one mannanase in a total amount of from 0.02 to 1.0 wt. % based on the total weight of the composition. Thus, the claimed total amount of mannanase enzyme would have been obvious to one of ordinary skill in the art since the prior art range (i.e., from about 0.0005 wt.% to about 0.5 wt.%, from about 0.001 wt.% to about 0.1 wt.%, or even from about 0.002 wt.% to about 0.05 wt.%) lies within the claimed 0.01 to 2.5 wt. % and 0.02 to 1.0 wt.% of mannanase enzyme based on the total weight of the composition.
Regarding claim 11, Kropf teaches a washing or cleaning agent comprising a compound of general formula (I) wherein the agent is a liquid textile washing agent or a powder or liquid color washing agent (see pg. 11, claims 12 and 19); thereby constituting wherein the surfactant composition is a textile detergent as recited in instant claim 11.
Regarding claim 13, and as previously discussed; Brooker and Siegert teach individual and total weight percentages for anionic and non-ionic surfactants in liquid and solid compositions. Therefore the weight percent of the individual surfactants and the total amount of surfactant relative to the total weight of the composition is clearly a result specific parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal weight percent range of both surfactants (i.e. non-ionic and anionic), and the optimal weight percent range of the total amount of surfactant in the composition, relative to the total weight of composition needed to achieve the desired surfactant wt. % in liquid or solid compositions. Thus, an ordinary skilled artisan would have been motivated to modify the level (%wt.) of surfactant as taught by Brooker, because an ordinary skilled artisan would have been able to utilize the teachings of Siegert to obtain the desired wt. % of anionic and non-ionic surfactants and the desired total amount of surfactant relative to the total weight of the liquid or solid composition with a reasonable expectation of success. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of wt.% surfactants and the total amount of surfactant relative to the total weight of the composition regardless of physical state of the composition (i.e., liquid or solid) would have been obvious at the time of Applicants' invention. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, because the combined teachings of the prior art are fairly suggestive of the claimed invention.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C 103. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references discussed above.
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.
2. Claims 1, 4, 6, 11, 13 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-4, 8, 10-11 and 18 of U.S. Patent No. 11,560,532 B2 (herein after “532”) in view of Barnett et al., (WO 2014/100018 A1) with International Publication Date of June 26th 2014 (herein after “Barnett”), and Kauppinen et al., (US 7,183,093 B2) Published on February 27th 2007 (herein after “Kauppinen”), as evidenced by GenCore., Sequence Alignment Kauppinen’s SEQ ID NO:2 fragment from 32 to 490 v. Instant SEQ ID NO: 1 fragment 31 to 490, pp. 1-2 (herein after “GenCore”). Although the claims at issue are not identical, they are not patentably distinct from each other.
‘532’s claims 1 and 10-11 teach a detergent containing, in each case based on the total weight of the detergent in a total amount from 0.001 to 10.0 wt. % at least one catechol metal complex compound of formula (I) where R1 and R2 independently represent a hydrocarbon group having 1 to 20 carbon atoms, which is optionally substituted by at least one group selected from hydroxy, (C1-C4) alkoxy, (C1-C4) alkoxy(CH2CH2O)n—, —NR′R″ or —N+R′R″R′″X−, where n=1 to 10, R′, R″ and R′″ independently represent H or a linear or branched aliphatic hydrocarbon group having 1 to 3 carbon atoms and X− represents an anion, Z1 and Z2 independently represent OH or O−, M represents a metal cation of a transition metal or lanthanoid, q as the charge number of the metal cation M represents a number 2, 3 or 4, as the charge number of the catechol ligand represents a number 0, 1 or 2, r represents a number 1, 2, 3 or 4, and at least one surfactant in a total amount from 2 to 70 wt. % as recited in ‘532 claim 1; wherein the detergent additionally contains at least one free catechol compound of formula (II), R3 and R4 independently represent a hydrocarbon group having 1 to 20 carbon atoms, which is optionally substituted by at least one group selected from hydroxy, (C1-C4) alkoxy, (C1-C4) alkoxy(CH2CH2O)n—, —NR′R″ or —N+R′R″R′″X−, where n=1 to 10, R′, R″ and R′″ independently represent H or a linear or branched aliphatic hydrocarbon group having 1 to 3 carbon atoms and X− represents an anion as recited in ‘532 claim 10; and wherein the detergent contains the at least one free catechol compound of formula (II) in a total amount from 0.01 to 10.0 wt. % as recited in ‘532 claim 11 . As such, claims 1 and 10-11 in ‘532 correspond to instant claims 1, 4, 13, and 15.
However, ‘532 does not teach at least one mannanase enzyme, optionally other active ingredients, and water based on the total weight of the surfactant composition from 1 to 50 wt. % as recited as recited in instant claim 1; nor wherein, based on its total weight, the mannanase enzyme is contained in a total amount of 0.01 to 2.5 wt. % as recited in instant claim 6; nor wherein the mannanase enzyme is selected from at least one representative of the group formed by polypeptides which comprise an amino acid sequence of which the sequence is at least 90% identical to the polypeptide of the positions 31 to 490 according to SEQ ID NO: 1 as recited in instant claim 1; nor wherein, based on its total weight, mannanase enzyme is contained in a total amount of 0.02 to 1.0 wt. % as recited in instant claim 16.
Barnett teaches compositions and methods that relate to a mannanase cloned from Bacillus lentus and that mannanase enzyme can be combined with other enzymes useful in detergent compositions, with bleaching agents , with other enzymes such as protease and/or amylase enzymes and with any compound generally recognized in the art as having surface active qualities and that surfactants generally include anionic, cationic, nonionic, and zwitterionic compounds (see Barnett, pg. 5, para[0023] and pg. 7, para[0036]). Thus, an ordinary skilled artisan would be motivated with reasonable expectation of success to modify the detergent claimed by ‘532 and include at least one mannanase enzyme variant because the enzyme has glycosyl hydrolase activity in the presence of detergent compositions (see Barnett, pg. 5, para[0023]) and can hydrolyze mannans in the presence of surfactants and other components found in detergent compositions (see Barnett, pg. 5, para[0023]), and because the fabric and home care product compositions of Barnett comprise at least one mannanase enzyme variant from about 0.0005 wt.% to about 0.5 wt.%, from about 0.001 wt.% to about 0.1 wt.%, or even from about 0.002 wt.% to about 0.05 wt.% of said mannanase enzyme variant, 0.05wt% to about 20 wt.% of nonionic surfactants and at least 50% water (see Barnett, pg. 7, para[0035 and pg. 34, para[00153]).
Additionally, Kauppinen teaches mannanases comprising e.g., a sequence of amino acids 32-330 of SEQ ID NO: 2 or their homologues may be derived from e.g., Bacillus sp. I633; and that the mannanase are alkaline and are useful e.g., in cleaning compositions, for modifying plant material and for treatment of cellulosic fibers (see Kauppinen, Abstract). Thus an ordinary skilled artisan would be motivated with reasonable expectation of success to modify the detergent claimed by ‘532 and include a mature mannanase sequence of amino acids 32-490 of SEQ ID NO:2 or homologs derived from e.g., Bacillus sp. I633 (see Kauppinen, Abstract), because amino acids 32-330 of SEQ ID NO: 2 encode the catalytic domain of the mannanase and the mature enzyme additionally comprises a linker at positions 331-342 and at least one C-terminal domain of unknown function at positions 343-490 (see Kauppinen, column 13, lines 33-38). Therefore, an ordinary skilled artisan would be motivated to combine the teachings of ‘532 with the teachings of Barnett and Kauppinen to arrive at the claimed limitations as recited in instant claims 1, 6-8, 16-18.
Claims 2, 4, 8, 10 and 18 in ‘532 correspond to instant claims 1, 4 and 11. Therefore the ‘532 claimed invention is not patentably distinct from the instantly claimed invention.
This is a provisional nonstatutory double patenting rejection.
3. Claims 1, 4, 6, 11 and 15-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, 14 and 17, of U.S. Patent No. 11,566,206 B2 (herein after “206”) in view of Barnett et al., (WO 2014/100018 A1) with International Publication Date of June 26th 2014 (herein after “Barnett”), and Kauppinen et al., (US 7,183,093 B2) Published on February 27th 2007 (herein after “Kauppinen”), as evidenced by GenCore., Sequence Alignment Kauppinen’s SEQ ID NO:2 fragment from 32 to 490 v. Instant SEQ ID NO: 1 fragment 31 to 490, pp. 1-2 (herein after “GenCore”). Although the claims at issue are not identical, they are not patentably distinct from each other.
‘206’s claims 1-4, 9 and 14 teach a multi-component detergent comprising at least two components, formula (I) where R1 and R2 independently represent a hydrocarbon group having 1 to 20 carbon atoms, which is optionally substituted by at least one group selected from hydroxy, (C1-C4) alkoxy, (C1-C4) alkoxy(CH2CH2O)n—, —NR′R″ or —N+R′R″R′″X−, where n=1 to 10, R′, R″ and R′″ independently represent H or a linear or branched aliphatic hydrocarbon group having 1 to 3 carbon atoms and X− represents an anion, Z1 and Z2 independently represent OH or O−, M represents a metal cation of a transition metal or lanthanoid, q represents, as a charge number of the metal cation M , the number 2, 3 or 4, p represents, as the charge number of the catechol ligand, the number 0, 1 or 2, r represents the number 1, 2, 3 or 4, and at least one free catechol compound of formula (II) or the salt thereof where R3 and R4 represent, independently of one another, a hydrocarbon group having 1 to 20 carbon atoms that is optionally substituted by at least one functional group selected from hydroxy, (C1-C4)- alkoxy, (C1-C4) alkoxy(CH2CH2O)n—, —NR′R″ or —N+R′R″R′″X−, where n=1 to 10, R′, R″ and R′″ represent, independently of one another, H or a linear or branched aliphatic hydrocarbon functional group having 1 to 3 carbon atoms and X− represents an anion with the proviso that the catechol compound of formula (II) and the salt thereof are different from the compounds of formula (I), and a second component K2 is a second liquid composition, containing at least one surfactant, and wherein the first component K1 is located in at least one chamber and the second component K2 is located in at least one different chamber as recited in ‘206 claim 1; wherein, in formula (I), the functional groups R.sup.1 and R.sup.2 represent, independently of one another, an alkyl group, an alkoxyalkyl group, a hydroxyalkyl group, a hydroxyalkyloxyalkyl group, (N-hydroxyethyl)-aminoethyl, (N-methoxyethyl)-aminoethyl or (N-ethoxyethyl)-aminoethyl, or an aromatic group as recited in ‘206 claim 2; wherein formula (I), the functional groups R1 and R2 represent, independently of one another, an alkyl group, an alkoxyalkyl group, a hydroxyalkyl group, a hydroxyalkyloxyalkyl group, (N-hydroxyethyl)-aminoethyl, (N-methoxyethyl)-aminoethyl, (N-ethoxyethyl)-aminoethyl, methyl, ethyl, n-propyl, isopropyl, n-butyl, sec-butyl, tert-butyl, iso-butyl, n-pentyl, iso-pentyl, neopentyl, hexyl, 2-hydroxyethyl, 2-hydroxypropyl, 3-hydroxypropyl, 2-methoxyethyl, 2-ethoxyethyl, 3-methoxypropyl, 3-ethoxypropyl, or phenyl, as recited in ‘206 claim 4; the functional groups R1 and R2 are identical as recited in ‘206 claim 4; wherein the detergent contains the at least one the free catechol compound of formula (II) is contained in a total amount of from 0.5 to 50 wt. % based on the total weight of the first liquid composition as recited in ‘206 claim 9; wherein the free catechol compound formula (II) is contained in a total amount of from 0.1 to 10.0 wt.% based on the total weight of the multi-component detergent as recited in ‘206 claim 14; and wherein the liquid composition of component K1 or component K2 of the multi-component detergent contains water, in an amount between 0 and 25 wt. %, based on the total weight of said liquid composition as recited in ‘206 claim 17. As such, claims 1-2, 4, 9, 14 and 17 in ‘206 correspond to instant claims 1, 4, 13 and 15.
However, ‘206 does not teach at least one mannanase enzyme, optionally other active ingredients, and water based on the total weight of the surfactant composition from 1 to 50 wt. % as recited as recited in instant claim 1; nor wherein, based on its total weight, the mannanase enzyme is contained in a total amount of 0.01 to 2.5 wt. % as recited in instant claim 6; nor wherein the mannanase enzyme is selected from at least one representative of the group formed by polypeptides which comprise an amino acid sequence of which the sequence is at least 90% identical to the polypeptide of the positions 31 to 490 according to SEQ ID NO: 1 as recited in instant claim 1; nor wherein, based on its total weight, mannanase enzyme is contained in a total amount of 0.02 to 1.0 wt. % as recited in instant claim 16.
Barnett teaches compositions and methods that relate to a mannanase cloned from Bacillus lentus and that mannanase enzyme can be combined with other enzymes useful in detergent compositions, with bleaching agents , with other enzymes such as protease and/or amylase enzymes and with any compound generally recognized in the art as having surface active qualities and that surfactants generally include anionic, cationic, nonionic, and zwitterionic compounds (see Barnett, pg. 5, para[0023] and pg. 7, para[0036]).
Thus, an ordinary skilled artisan would be motivated with reasonable expectation of success to modify the multi-component detergent claimed by ‘206 and include at least one mannanase enzyme variant because the enzyme has glycosyl hydrolase activity in the presence of detergent compositions (see Barnett, pg. 5, para[0023]), because the enzyme can hydrolyze mannans in the presence of surfactants and other components found in detergent compositions (see Barnett, pg. 5, para[0023]), and because the fabric and home care product compositions of Barnett comprise at least one mannanase enzyme variant from about 0.0005 wt.% to about 0.5 wt.%, from about 0.001 wt.% to about 0.1 wt.%, or even from about 0.002 wt.% to about 0.05 wt.% of said mannanase enzyme variant, 0.05wt% to about 20 wt.% of nonionic surfactants and at least 50% water (see Barnett, pg. 7, para[0035 and pg. 34, para[00153]).
Additionally, Kauppinen teaches mannanases comprising e.g., a sequence of amino acids 32-330 of SEQ ID NO: 2 or their homologues may be derived from e.g., Bacillus sp. I633; and that the mannanase are alkaline and are useful e.g., in cleaning compositions, for modifying plant material and for treatment of cellulosic fibers (see Kauppinen, Abstract). Thus, an ordinary skilled artisan would be motivated with reasonable expectation of success to modify the detergent claimed by ‘206 and include a mature mannanase sequence of amino acids 32-490 of SEQ ID NO:2 or homologs derived from e.g., Bacillus sp. I633 (see Kauppinen, Abstract), because amino acids 32-330 of SEQ ID NO: 2 encode the catalytic domain of the mannanase and the mature enzyme additionally comprises a linker at positions 331-342 and at least one C-terminal domain of unknown function at positions 343-490 (see Kauppinen, column 13, lines 33-38). Therefore, an ordinary skilled artisan would be motivated to combine the teachings of ‘206 with the teachings of Barnett and Kauppinen to arrive at the claimed limitations as recited in instant claims 1, 6 and 16.
Therefore the ‘206 claimed invention is not patentably distinct from the instantly claimed invention. This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed on 01/27/2026, with respect to the 35 U.S.C. 103 rejection have been fully considered and are persuasive.
However, in response to Applicants’ argument, pertaining to the teachings of Kropf and Kauppinen, more specifically that the cited references do not teach or suggest adding a catechol compound of formula (I), wherein both R1 and R2 are alkyl groups having 3 carbons, to cleaning compositions as recited in the claims (see Remarks, filed 01/27/2026, pg. 10). The argument has been considered but it is not persuasive.
As discussed in the 35 U.S.C 103 rejection above, an ordinary skilled artisan would have been motivated with reasonable expectation of success to add Kropf’s compounds of general formula (I), to a cleaning composition because the claimed catechol compound and Kropf’s compounds of general formula (I) have very close structural similarities and similar utilities. Pursuant to MPEP 2144.09, compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007). Thus, Kropf’s teachings are suggestive of the instantly claimed catechol compound of the formula (I) as recited in amended claim 1.
Similarly, Kauppinen’s teachings are equally suggestive; since Kauppinen teaches cleaning compositions comprising surfactant systems comprised by one or more of the nonionic and/or anionic surfactants at a level from 0.1% to 60% by weight and also teaches the claimed mannanase enzyme which is 100% identical to instant SEQ ID NO: 1 from positions 31 to 490. Therefore, an ordinary skilled artisan would have been motivated with reasonable expectation of success to arrive at the claimed invention after reading Kropf and Kauppinen.
Applicants’ hindsight argument (see Remarks, filed 01/27/2026, pg. 10); has been considered but it is found unpersuasive.
It is the Examiner’s understanding that Applicants are suggesting that the Examiner' s position fails to establish a prima facie case of obviousness because the prior art does not lead an artisan to the instant invention. If Applicant means to suggest that the Examiner arrived at the instantly claimed invention via the use of improper hindsight, this is not persuasive because any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, Applicants fail to identify a single aspect of the claimed invention that was not taught, disclosed, or suggested by the prior art relied upon by the Examiner.
In response to Applicants’ argument, pertaining to the claimed composition’s unexpected results (see Remarks, filed 01/27/2026, pg. 11-13), have been fully considered but are not persuasive.
Pursuant to MPEP 716.02(c)(II), expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
As discussed in the obviousness rejection above, Brooker’s invention is drawn to a detergent composition comprising all the elements of the instantly claimed invention (i.e., a catechol, nonionic and anionic surfactants, at least a mannanase enzyme, water and optionally other active ingredients). Brooker also teaches that the performance of the detergent compositions are improved by anionic surfactant, preferably an alkyl ethoxy sulfate.
Kropf’s invention relates the use of dihydroxyterephthalic acid derivatives (compound of general formula (I)) in washing and cleaning agents for improving the washing or cleaning performance with respect to bleachable stains.
Kauppinen’s invention relates to mannanases useful in cleaning compositions for modifying (fracturing) plant material, and for treatment of cellulosic fibers.
Siegert’s invention relates to liquid enzyme containing Surfactant preparations such as those utilized, for example, for washing, cleaning, or disinfecting, and more particularly relates to a liquid Surfactant preparation of this kind in which a hydrolytic enzyme is stabilized.
Because the prior art (i.e., Brooker, Kropf, Kauppinen and Siegert) has already demonstrated expected beneficial results of compositions comprising the instantly claimed components recited in claim 1, the results obtained by Applicants are expected and obvious.
Accordingly, the 35 U.S.C 103 rejection is maintained.
In response to Applicant’s arguments regarding the nonstatutory double patenting rejections (see Remarks, filed 01/27/2026, pp. 15-17), have been fully considered but are not persuasive.
Applicant contends that the instant claims (i.e., 1, 4, 8, 11, 13 and 15-16) are not obvious over ‘532 patent claims in combination with Barnett and Kauppinen. Applicant attests that the cited prior art prior art does not teach or suggest removing the metal complex element of ‘532 patent to prepare the surfactant composition of the instantly claimed invention. However, since the scope of instant claim 1 encompasses a surfactant composition comprising a catechol compound of the formula (I), wherein the catechol compound is substantially free of metal ions; it is not necessary for the cited prior art to teach removing the metal complex element of ‘532 patent. The instantly claimed surfactant composition encompasses unrecited components and a catechol compound that is not totally free of metal ions (i.e., the metal complex). Therefore, a catechol metal complex compound is encompassed by the scope of instant claim 1. As such, an ordinary skilled artisan would have been motivated to combine claims 1-2, 4, 8, 10-11 and 18 of the ‘532 patent with the teachings of Barnett and Kauppinen to arrive at the instantly claimed invention.
The same is true for the nonstatutory double patenting rejection of instant claims (i.e., 1, 4, 6, 11, 13 and 15-16) over claims 1-2, 4, 9, 14 and 17 of the ‘206 patent in view of Barnett and Kauppinen. Applicant argues that nothing in the ‘206 patent, nor Barnett and Kauppinen, teaches or suggests removing the metal cation of a transition metal or lanthanoid (i.e., a metal complex). However, since the scope of instant claim 1 encompasses a surfactant composition comprising a catechol compounds of the formula (I), wherein the catechol compound is substantially free of metal ions; it is not necessary for the cited prior art to teach removing the metal complex element of ‘206 patent. The instantly claimed surfactant composition encompasses unrecited components and a catechol compound that is not totally free of metal ions (i.e., the metal complex). Therefore, a catechol metal complex compound is encompassed by the scope of instant claim 1. As such, an ordinary skilled artisan would have been motivated to combine claims 1-2, 4, 9, 14 and 17 of the ‘206 patent with the teachings of Barnett and Kauppinen to arrive at the instantly claimed invention.
Accordingly, the nonstatutory double patenting rejections are maintained.
Conclusion
No claims are allowed.
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/CLAUDIA ESPINOSA/Patent Examiner, Art Unit 1654
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654
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