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 .
Claims 25-31, 33-35, and 37-41 are pending. Claims 1-24, 32, and 36 have been canceled. Note that, Applicant’s amendment and Applicant’s arguments filed December 4, 2025, have been entered.
Claims 33-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 6, 2025.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 6/4/25 have been withdrawn:
None.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 25-27, 29, 30, and 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over EP703730 in view of WO2012/085577 or WO2012/085539. See English Language Machine translation of EP703730.
With respect to independent, instant claim 1, ‘730 teaches a water-in-oil emulsion containing in the water phase an enzyme which is labile together with a water activity-lowering polyol, and wherein the emulsion is stabilized using a suitable emulsifier. ‘730 also teaches stable water-in-oil emulsions comprising more than one enzyme in the water phase. ‘730 also discloses stable water-in-oil emulsions comprising an enzyme and a compound incompatible with the enzyme in the water phase. The physical separation of these incompatible compounds is advantageously accomplished by their incorporation in individual water droplets in the oil phase of the emulsion. Suitable enzymes include proteases, phytases, carbohydrases, lipases, etc., and the emulsions are especially useful to formulate mutually incompatible enzymes, e.g., enzyme mixtures in which one of the enzymes is a proteolytic enzyme, wherein ‘730 would clearly suggest the two different enzymes which are not present in the same part of the aqueous phase as recited by the instant claims. The desired enzyme can be added to the water phase in an amount of 0.01 to 30% by weight and polyols are added to the water phase in amounts from 30-70% by weight. See paras. 21-30. The droplets may have a droplet size of about 2 microns. See para. 55. To obtain stable emulsions, an emulsifier is used. See para. 30.
‘730 does not teach an emulsion containing at least 60% by weight of an aqueous phase or an enzymatic water-in-oil emulsion containing at least 60% by weight of an aqueous phase which contains two different enzymes which are not present in the same part of the aqueous phase as recited by the instant claims; or containing two different enzymes in the aqueous phase; an oil phase, an emulsifier, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
‘577 teaches a cleaning composition which contains a water-in-oil emulsion. See Abstract. Preferably, the aqueous phase contains at least 40% by weight of the composition, more preferably at least 60% or 70% by weight of the composition, etc. See page 5.
‘539 teaches a cleaning composition which contains a water-in-oil emulsion. See Abstract. Preferably, the aqueous phase contains 70-90% by weight of the composition. See page 7.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the enzymatic water-in-oil emulsion as taught by ‘730 to have an emulsion containing at least 60% by weight of an aqueous phase as recited by the instant claims, with a reasonable expectation of success, because ‘577 or ‘539 teach similar water-in-oil emulsions containing at least 60% by weight of an aqueous phase and further, ‘730 teaches water-in-oil emulsions in general.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate an enzymatic water-in-oil emulsion containing at least 60% by weight of an aqueous phase which contains two different enzymes which are not present in the same part of the aqueous phase as recited by the instant claims; or containing two different enzymes in the aqueous phase; an oil phase, an emulsifier, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘730 in view of ‘577 or ‘539 suggest an enzymatic water-in-oil emulsion containing at least 60% by weight of an aqueous phase which contains two different enzymes which are not present in the same part of the aqueous phase as recited by the instant claims; or containing two different enzymes in the aqueous phase; an oil phase, an emulsifier, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Claims 25, 27-31, and 38-41 are rejected under 35 U.S.C. 103 as being unpatentable over Kandathil (US 4,711,739) in view of WO2012/085577 or WO2012/085539.
With respect to independent, instant claim 1, Kandathil teaches a water-in-oil emulsion prespotter laundry composition. The composition contains from about 0.1 to 1% by weight of at least one enzyme; from about 5 to about 30% by weight of at least one ethoxylated nonionic surfactant; from about 0.2 to 5% by weight of at least one of a water-insoluble polyester polyol; from about 0.1 to 10% by weight of builder salt; from about 5% to about 70% by weight of at least one hydrocarbon; and the balance water, and having a pH in the range from about 5 to 9. See column 9, lines 1-69. The enzyme is selected from the group consisting proteases, lipases, amylases, and mixtures thereof. See claim 4.
Kandathil does not teach a water-in-oil emulsion containing at least 60% by weight of an aqueous phase or an enzymatic water-in-oil emulsion containing at least 60% by weight of an aqueous phase containing two different enzymes in the aqueous phase; an oil phase, an emulsifier, and the other requisite components of the composition in the specific amounts as recited by the instant claims.
‘577 and ‘539 are relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the enzymatic water-in-oil emulsion as taught by Kandathil to have an emulsion containing at least 60% by weight of an aqueous phase as recited by the instant claims, with a reasonable expectation of success, because ‘577 or ‘539 teach similar water-in-oil emulsions containing at least 60% by weight of an aqueous phase and further, Kandathil teaches water-in-oil emulsions in general.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate an enzymatic water-in-oil emulsion containing at least 60% by weight of an aqueous phase which contains two different enzymes which are not present in the same part of the aqueous phase as recited by the instant claims; or containing two different enzymes in the aqueous phase; an oil phase, an emulsifier, and the other requisite components of the composition in the specific amounts as recited by the instant claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Kandathil in view of ‘577 or ‘539 suggest an enzymatic water-in-oil emulsion containing at least 60% by weight of an aqueous phase which contains two different enzymes which are not present in the same part of the aqueous phase as recited by the instant claims; or containing two different enzymes in the aqueous phase; an oil phase, an emulsifier, and the other requisite components of the composition in the specific amounts as recited by the instant claims.
Claims 28, 31, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over EP703730 in view of WO2012/085577 or WO2012/085539 as applied to claims 25-27, 29, 30, and 37-40 above, and further in view of Kandathil (US 4,711,739).
‘730 is relied upon as set forth above. However, ‘730 does not teach the specific pH of the composition or the use of an amylase enzyme as recited by the instant claims.
Kandathil is relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the emulsion as taught by ‘730 to have pH of, for example, 5 or 6, with a reasonable expectation of success, because Kandathil teaches the formulation of a similar emusion at a pH, for example of 5 or 6 and further, ‘730 teaches that the amounts and types of ingredients added to the composition may be varied within wide ranges which would lead to formulation at various pH values.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use an amylase enzyme in the emulsion as taught by ‘730, with a reasonable expectation of success, because Kandathil teaches the use of an amylase enzyme in a similar water-in-oil emulsion and further, ‘730 teaches the use of enzymes in general.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kandathil (US 4,711,739) in view of WO2012/085577 or WO2012/085539 as applied to claims 25, 27-31, and 38-41 above, and further in view of EP703730 or WO94/25560.
Kandathil is relied upon as set forth above. However, Kandathil does not teach the specific droplet (i.e., particle) size as recited by the instant claims.
‘730 is relied upon as set forth above.
‘560 teaches a process for the production of novel, stable fluid enzyme dispersions having a content of at least 0.5% by weight enzyme, in which the enzyme is present in the form of anhydrous particles of diameter less than 30 microns, comprising emulsifying an enzyme composition into water immiscible liquid in the presence of a polymeric dispersion stabilizer to form a stable dispersion of aqueous enzyme particles having a dry size below 30 microns dispersed in the liquid. See Abstract. The aqueous particles containing the enzyme may have a size of 20 microns or lower. See page 6.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the emulsion as taught by Kandathil to have droplet sizes, for example, of 2, 10, 20, etc., microns, with a reasonable expectation of success, because ‘730 or ‘560 teach similar enzyme emulsions having droplet sizes of 2, 10, 20, etc., microns, and further, such droplet sizes would be effective in the composition taught by Kandathil.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using EP703730 in view of WO2012/085577 or WO2012/085539, Applicant states that ‘730 describes enzyme emulsions for feed, food and cosmetic products, while ‘577 and ‘539 each relate to and demonstrate non-enzymatic water-in-oil emulsions for cleaning compositions. Additionally, Applicant states that the water content in these emulsions and how it impacts chemical bleaching agents, activators and non-aqueous solvents, as taught by Application '577 and Application '539, would provide no insight or motivation into how it would impact an enzymatic emulsion of Patent '730. Also, Applicant states that there is no apparent reason why the skilled artisan would use the food/feed emulsions of ‘730 and then consult with the chemical emulsions of '577 and '539 to arrive at the claimed enzymatic water-in-oil emulsions for use in detergents, without using hindsight.
In response, note that, the Examiner asserts that ‘577 and ‘539 are analogous prior art relative to the claimed invention and ‘730 since they are drawn to the same field of endeavor, namely active ingredient-containing water-in-oil emulsions, and that one of ordinary skill in the art clearly would have looked to the teachings of ‘577 or ‘539 to cure the deficiencies of ‘730. Note that, ‘730 teaches the formulation of cosmetic water-in-oil emulsions in addition to food and feed water-in-oil emulsions. ‘577 and ‘539 are secondary references relied upon for their teaching of a water-in-oil emulsion containing at least 60% by weight of an aqueous phase. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to formulate the enzymatic water-in-oil emulsion as taught by ‘730 to have an emulsion containing at least 60% by weight of an aqueous phase as recited by the instant claims, with a reasonable expectation of success, because ‘577 or ‘539 teach similar water-in-oil emulsions containing at least 60% by weight of an aqueous phase and further, ‘730 teaches water-in-oil emulsions in general. Obviousness does not require certainty of success; it requires only a reasonable expectation of success. PAR Pharm., Inc. v. TWE Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) (“The reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success.”). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that 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). Thus, the Examiner asserts that the teachings of EP703730 in view of WO2012/085577 or WO2012/085539 are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of the instant claims under 35 USC 103 using Kandathil in view of WO2012/085577 or WO2012/085539, Applicant states that Kandathil discloses prespotter laundry compositions comprising enzyme, surfactant, builder, and hydrocarbon solvent and that the examples contain from 0.018% by weight of an active enzyme protein which is much less enzyme than required 0.1-30% w/w active enzyme protein of the pending claims. Additionally, Applicant states that '577 or '539 fail to describe any enzyme composition and accordingly, the combination of cited references fails to provide all the claim elements required for a prima facie case of obviousness. Also, Applicant states that even if Kandathil did disclose the requisite enzyme concentration, there still would be no motivation whatsoever to combine the emulsions of Application '577 and Application '539 to arrive at the claimed enzymatic water-in-oil emulsions, as described in detail above.
In response, note that, the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of Kandathil in view of ‘577 or ‘539 suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions". Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, Kandathil clearly teaches that the compositions contain from about 0.1 toa 1% by weight which would clearly suggest, for example, 0.5% or 1% by weight of enzyme, and would fall within the scope of the instant claims (See column 2, lines 30-50. Additionally, the Examiner asserts that ‘577 and ‘539 are analogous prior art relative to the claimed invention and Kandathil since they are drawn to the same field of endeavor, namely active ingredient-containing, cleaning water-in-oil emulsions, and that one of ordinary skill in the art clearly would have looked to the teachings of ‘577 or ‘539 to cure the deficiencies of Kandathil. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to formulate the enzymatic water-in-oil emulsion as taught by Kandathil to have an emulsion containing at least 60% by weight of an aqueous phase as recited by the instant claims, with a reasonable expectation of success, because ‘577 or ‘539 teach similar water-in-oil emulsions containing at least 60% by weight of an aqueous phase and further, Kandathil teaches water-in-oil emulsions in general. Obviousness does not require certainty of success; it requires only a reasonable expectation of success. PAR Pharm., Inc. v. TWE Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) (“The reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success.”). Thus, the Examiner asserts that the teachings of Kandathil in view of WO2012/085577 or WO2012/085539 are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of instant claims 28, 31, and 41 under 35 U.S.C. 103 as being unpatentable over EP703730 in view of WO2012/085577 or WO2012/085539, further in view of Kandathil (US 4,711,739), Applicant states that the teachings of ‘730 in view of ‘577 or ‘539 are not sufficient to suggest the claimed invention and that the teachings of Kandathil are not sufficient to remedy the deficiencies of ‘730 in view of ‘577 or ‘539. In response, note that, the Examiner asserts that the teachings of ‘730 in view of ‘577 or ‘539 are sufficient to suggest the claimed invention for the reasons set forth above. Additionally, the Examiner asserts that Kandathil is analogous prior art relative to the claimed invention and ‘730 and that one of ordinary skill in the art clearly would have looked to the teachings of Kandathil to cure the deficiencies of ‘730 in view of ‘577 or ‘539 with respect to instant claims 28, 31, and 41. Kandathil is a secondary reference relied upon for its teaching of the specific pH of the composition or the use of an amylase enzyme. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to formulate the emulsion as taught by ‘730 to have pH of, for example, 5 or 6, with a reasonable expectation of success, because Kandathil teaches the formulation of a similar emusion at a pH, for example of 5 or 6 and further, ‘730 teaches that the amounts and types of ingredients added to the composition may be varied within wide ranges which would lead to formulation at various pH values. Further, the Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use an amylase enzyme in the emulsion as taught by ‘730, with a reasonable expectation of success, because Kandathil teaches the use of an amylase enzyme in a similar water-in-oil emulsion and further, ‘730 teaches the use of enzymes in general. Thus, the Examiner asserts that the teachings of EP703730 in view of WO2012/085577 or WO2012/085539, further in view of Kandathil (US 4,711,739), are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of instant claim 26 under 35 U.S.C. 103 as being unpatentable over Kandathil (US 4,711,739) in view of WO2012/085577 or WO2012/085539, further in view of EP703730 or WO94/25560, Applicant states that the teachings of Kandathil in view of ‘577 or ‘539 are not sufficient to suggest the claimed invention and that the teachings of ‘730 or ‘560 are not sufficient to remedy the deficiencies of Kandathil in view of ‘577 or ‘539. In response, note that, the Examiner asserts that the teachings of Kandathil in view of ‘577 or ‘539 are sufficient to suggest the claimed invention for the reasons set forth above. Additionally, the Examiner asserts that ‘730 and ‘560 are analogous prior art relative to the claimed invention and Kandathil and that one of ordinary skill in the art clearly would have looked to the teachings of ‘730 or ‘560 to cure the deficiencies of Kandathil in view of ‘577 or ‘539 with respect to instant claim 26. ‘730 or ‘560 are secondary references relied upon for its teaching of the specific pH of the composition or the use of an amylase enzyme. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to formulate the emulsion as taught by Kandathil to have droplet sizes, for example, of 2, 10, 20, etc., microns, with a reasonable expectation of success, because ‘730 or ‘560 teach similar enzyme emulsions having droplet sizes of 2, 10, 20, etc., microns, and further, such droplet sizes would be effective in the composition taught by Kandathil. Thus, the Examiner asserts that the teachings of Kandathil (US 4,711,739) in view of WO2012/085577 or WO2012/085539, further in view of EP703730 or WO94/25560, are sufficient to render the claimed invention obvious under 35 USC 103.
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 GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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 on (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/March 10, 2026