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 .
This office action is in response to applicant’s amendments filed April 13, 2026. Claims 1,2,4-6,13-21,24-26 and 28-30 are pending. Claims 3,7-12,22,23 and 27 have been cancelled. Claims 1 and 14 have been amended. Claims 21,24-26 and 28-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The rejection of claims 14 and 17-19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendments to the claim.
All other 112 rejections have been withdrawn in view of applicant’s amendments to the claims.
The rejection of claims 1 and 2 under 35 U.S.C. 102(a(1)/(a)(2) as anticipated by Lemaire (US 2006/0037148) is withdrawn in view of applicant’s amendments to the claims.
All other rejections are maintained for the reasons set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,2,4-6 and 13-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites the limitation “avoid deterioration of leather quality observed at higher proportions of alkaline” lacks literal basis in the specification and claims as originally filed and is considered new matter. Claims 2,4-6 and 13-20 are also rejected for being dependent on claim 1 and inheriting the same deficiency.
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.
Claims 1,2,5,6,13,15,16 and 20 are rejected under 35 U.S.C. 103 as obvious over Lemaire (US 2006/0037148).
Lemaire teaches liming and unhairing animal hides by applying one or more of alkali metal hydroxide (alkaline) and alkali metal silicate at concentrations of 0.1-4% in the liquor wherein the composition is free of calcium hydroxide (lime free) (paragraphs 0065,0068,0079). Lemaire further teaches using less than 0.1% of sodium sulfide (Na2S) or sodium hydrosulfide (NaHS) (paragraph 0064) and surfactants (wetting agents, paragraph 0078). Lemaire further teaches first soaking the animal hides in the basic solution followed by metering in of the peptide bond hydrolyzer, wherein the process can take 5 minutes to 36 hours (paragraph 0072). Lemaire teaches filtering off removed protein (hair, paragraph 0089,0092).
Lemaire does not teach the amount of metal silicate and alkaline per kg of hide, the ratio of metal silicate and alkaline or a second step of adding water, metal silicate and alkaline.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Lemaire by applying metal silicate and alkaline in a range of about 0.5% to about 4% per kg of hide as Lemaire teaches 0.1-4% of these chemicals are effective in providing a basic solution to pretreat hides before adding a protein disulphide reducing agent such as sodium sulphide or sodium hydrosulphide to effectively lime and unhair animal hides without producing unpleasant odors. Using the claimed amounts in a ratio of 85/15 to about 80/20 metal silicate to alkaline agent is obvious as Lemaire clearly teaches any possible mixture of alkali metal silicate and alkali metal hydroxide and selecting the proportion of each component to determine the correct level of basicity is obvious. It would have been obvious to select a combination of alkali metal hydroxide (alkaline) and alkali metal silicate as Lemaire teaches the inorganic base alkali metal compounds can effectively be used in combination in calcium hydroxide free liming and unhairing of animal hides. One of ordinary skill in at the art could at once envisage using a combination of alkali metal silicate and alkali metal hydroxide as they are two of only three possibilities and a preferred embodiment.
Regarding claim 13, Lemaire clearly teaches first soaking the animal hide in the base agent (silicate and hydroxide) and after a period of time metering in the compound which catalyzes the hydrolysis of the peptide bonds (sodium sulfide or sodium hydrosulfide), wherein the entire process takes 5 min to 36 hours. Selecting a 10 minute to 1 hour time for soaking in silicate and hydroxide followed by metering in sulfide or hydrosulfite to unhair the hides is obvious to first provide a sufficient basic condition of the hide to efficiently remove the hair and horned substances from the hide. Selecting from within the disclosed times to maximize hide integrity and hair removal would be obvious to one of ordinary skill in the art through routine experimentation.
Regarding the second addition of water, metal silicate and alkaline after the 2-8 hours of sulfide treatment, no amount of metal silicate and alkaline is claimed, therefore this can be a very small amount, effectively not significantly changing the concentration overall of the composition of the original silicate, alkaline and sulfide already present. Since Lemaire teaches combining all three components in a composition for up to 36 hours, it is expected the single initial silicate and alkaline addition at the total concentration of applicant’s first and second addition is equivalent to the first and second addition steps as it is the same chemicals applied in a composition for the same amount of time to achieve thew same result of unhairing and liming. Nothing unobvious is seen in two additions of silicate and alkaline vs. a single addition for the same amount of the two additions combined. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959). Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959).
Claim 4 is rejected under 35 U.S.C. 103 as obvious over Lemaire (US 2006/0037148) in view of Palanisamy (WO 2008/0993353).
Lemaire is relied upon as set forth above.
Lemaire does not teach metasilicate or orthosilicate.
Palanisamy teaches sodium metasilicate and sodium orthosilicates are conventionally in unhairing hides for improved dehairing and fiber opening (claims 1 and 5)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Lemaire by treating the hides in a composition comprising sodium orthosilicates and sodium metasilicates as Palanisamy teaches these compounds are effective silicates used in improved methods for unhairing hides and Lemaire invites the inclusion of sodium silicates for the same purpose of unhairing hides. Incorporating a known effective silicate salt for providing basifying to a unhairing composition is obvious.
Claims 14,15 and 17-20 are rejected under 35 U.S.C. 103 as obvious over Lemaire (US 2006/0037148) in view of Wood (WO 2018/132736)
Lemaire is relied upon as set forth above.
Lemaire further teaches the unhairing treatments comprise on weight of the hide 0.05-5% of mercaptan products (paragraph 0043), 50% water ( paragraph 0108), 0.006, 0.016, 0.008, 0.4, 1.0, 1.5 and 2% enzymes (Table 2 and paragraph 0048), less than 0.1% sulfide or hydrosulfide reducing agent (paragraph 0064). Lemaire teaches rotating the drum during treatment (stirring, paragraph 0070) and treatment temperatures of 15 to 35°C (paragraph 0071). Lemaire teaches oxidizing excess sulfide (paragraph 0009).
Lemaire does not teach probiotics and a separate step of claim 14.
Wood teaches 0.2% on weight of hide probiotics are conventionally used in combination with sodium sulfide reducing agent, enzymes and water to unhair or soak animal hides (page 6, lines 20-26, 32-33, page 21, lines 5-15; page 22, lines 12).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Lemaire by treating the hides in a composition comprising the claimed concentrations of enzymes, probiotics, reducing agents, mercaptan products and water at temperatures of 15-30°C as Lemaire teaches either separately or sequentially adding mercaptan compounds, enzymes, water, hydrosulfide to an animal hide in a rotating drum at 15-35°C to provide improved unhairing of the hide and Wood teaches probiotics at 0.2% can be added to soaking solutions before liming or during liming in combination with sodium sulfide and enzymes to provide a reduced need for toxic chemicals such as sodium sulfide, to reduce waste and be more ecofriendly by improving the quality of effluents and reducing the carbon footprint (abstract). It would be obvious to remove any residual sulfide using oxidizing agents because Lemaire teaches this is known to be a conventional method to be ecologically safe from sulfide contaminated wastewater. Regarding the concentrations of the claimed additives, using within the disclosed ranges of Lemaire is obvious to arrive at the claimed treatment composition as similar concentrations are taught as effective for hair removal. While Wood teaches 0.2% probiotic, this is only in an example and is not limiting, using amounts such as 0.1% probiotic to enhance the eco-benefits of the treatment and reduce the need for large amounts of toxic chemicals is obvious and can be determined by one of ordinary skill through routine experimentation.
Regarding the separate addition of the treatment composition or simultaneous addition with the silicate and hydroxide and sulfide, it would be obvious to perform the steps separately or simultaneously as both Lemaire and Wood teaches using components in pre-soaks or unhairing steps. Also whether subsequent additions of the water and reducing agents are performed or are included at a larger concentration initially is obvious as Lemaire teaches components can be metered into a single composition or present all at once from the beginning. Including additional meterings to replenish depleted agents or applying large concentrations at the beginning are expected to produce similar results. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959). Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959).
Response to Arguments
Applicant's arguments filed regarding Lemaire (no additional arguments on the secondary references) have been fully considered but they are not persuasive. Applicant alleges unexpected results for the claimed ratios but the data are not commensurate in scope with the claims. The data provided are for a combined 1.8% to 1.4% of sodium hydroxide and sodium metasilicate which only represents a small portion of the 0.5-4% range of amounts of claim 1. The examples contain no calcium hydroxide. Claim 1 permits less than about 0.2% calcium hydroxide, 0.5-4% combined of any strong alkaline and any metal silicate. Since claim 1 is generic to the genus or any metal silicate and any strong alkaline and not just the sodium hydroxide and sodium metasilicate the data are not commensurate in scope. Lemaire permits the use of concentration ranges 0.1 to 4% any alkali metal hydroxide and any alkali metal silicate. Applicant has only tested a narrow concentration range and single species of hydroxide and silicate. These data are not sufficient to demonstrate unexpected results over the broader ranges of the claims and teachings of the prior art. Accordingly, it the unexpected results are not sufficient to overcome the prior art rejections and it is still obvious to combine the alkali metal hydroxides and alkali metal silicates of Lemaire in concentration ranges of 0.2-4% in any ratio in the absence of lime (calcium hydroxide) to arrive at the claimed invention. Applicant should amend claim 1 to remove all calcium hydroxide, limit the metal silicate to the species listed in claim 4, limit the strong alkaline to sodium, potassium or lithium hydroxide and narrow the combined concentration of the silicate and alkali to 1-2%.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
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