DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Note; Applicant, in total, has cancelled claims 2, 4, 6-7, 14, 16 and 18-19. Currently, claims 1, 3, 5, 8-13, 15, 17 and 20-28 remain pending in application.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 5, 8-13, 15, 17 and 20-28 are rejected under 35 U.S.C. 103 as being unpatentable over Piorkowski (US 2018/0334641 A1) in view of OH et al. (US 2016/0213597 A1), as evidenced by Chemical information of ethylene glycol monohexylether’s properties (ethylene glycol monohexyl ether properties and applications - Google Search).
Regarding claims 1, 3, 6, 10-12, 15 and 27-28, Piorkowski teaches a water soluble unit dose detergent pouch, or pack; [abstract, 2-3, 7-8], comprising; A)- 1)- a surfactant system including alcohol ethoxy sulfate (instant claim 10), AES is of formula (I), such as sodium lauryl ether sulfate containing 1-6 moles of ethylene oxide; [29, 107, 122], in amounts of 20-40%; [39], 2)- nonionic surfactant of ethoxylated alcohol (instant claim 11) in amount of 30-70%; [40], AE surfactants are C12-14 alcohols containing 3-8 moles of ethylene oxide; [128-130], and 3)- linear alkylbenzene sulfonate (claim s 11-12 in the amount of in the amounts of 10-20%; [38], B)-water in an amount as low as 5% by weight; [12], and C)- rheology control (viscosity) modifier (instant 3) as glycol ethers (instant claims 1, 27-28) characterized by reference as solvent (butyl cellosolve and butyl carbitol) in amounts of 2-10%; [92-93, 175: Tables 1], and polyoxyalkylene sorbitol fatty acid esters (instant claims 5, 17) with viscosity modifying properties; [31, 108]. Furthermore, in another embodiment it teaches other non-aqueous solvents (with rheology modifying properties) agents such as polyalkylene- glycol ethers; [81-82 and 175: Table 1].
Regarding claims 1, 13, and 15, Piorkowski does not, specifically, teach the ethylene glycol monohexyl ether rheology modifier. However, the analogous art of OH et al. teaches a treatment and cleaning composition for laundry and household comprising ethylene glycol monohexylether both as a nonionic surfactant and effective solvent in aqueous and hydrophobic solutions; [86, 49-50]. It would have been obvious, before the effective filing date, to add (or partially substitute) the ethylene glycol monohexylether of OH to Piorkowki with the motivation of enhancing the removal of both water soluble and water insoluble soil materials from fabric and household surfaces. This is further evidenced by data sheet(s) on properties of ethylene glycol monohexylether or any Textbook on Organic Chemistry.
Regarding claims 8-9 and 11-12, It should be noted that the amounts of individual surfactant (1) 20-40%, (2) 30-70%, (3) 10-20% correspondingly, and thus their ratios are not anticipatory, however there are a major overlapping ranges of condition between the prior art and the instant claims that renders them completely obvious. Please note that it would have been obvious to one of ordinary skill in the art at the time of invention (before the effective filing date of the invention) to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Regarding claims 2, 13, 21-22 and 24-25, The Office realizes that all the claimed effects or physical properties, dynamic viscosity of less than 400 cps, are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. viscosity of less than 400 cps, would expectedly be achieved by a composition with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 20, Transitional phrase “consisting essentially of” occupies a middle ground between closed claims that are written in a consisting of’ format and fully open claims that are drafted in a comprising’ format.” PPG Industries v.Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir.1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569,224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7USPQ2d 1097 (Fed. Cir. 1988). [MPEP 2111.03 R3]. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.”
Regarding claims 23 and 26, Piorkowski does not mandate any other solvent in addition to water and rheology control agent; [claim 23].
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 11,447,727 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11,447,727 B2 claims a very similar unit dose composition comprising water in an amount as low as 5% by weight, same surfactant components and the viscosity.
Claims 1-2, 13 and 20 correspond to claims 1 and 10-11 of U.S. Patent No. 11,447,727 B2 which identical in scope.
Response to Arguments
Applicant's arguments filed 2026/07/01 have been fully considered but they are not persuasive. Because,
In response to applicant’s main argument on rheology (i.e. Viscosity) control agent vis (pages 8-10) that: “The cited passage at paragraph [0031] describes classes of nonionic surfactants and does not ascribe any rheology-modifying function to those materials. Similarly, while Piorkowski discloses that certain non-aqueous solvents, including glycol ethers, may be present, it does not attribute any viscosity or rheological function to such solvents. therefore, one of skill in the art would not be motivated to select or use these materials for rheology control based on Piorkowski because Piorkowski does not contemplate theses uses.”, it is noted that any chemical compound(s) rarely have only one chemical property. This is to indicate that chemicals aside from their known properties also show additional characteristics depending on their chemical environment. Furthermore, Priorkowki’s lack of express teaching that glycol ethers not having any rheology modifying properties, is not an evidence for their lack of rheology modifying effect in fact. It should be noted that; “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
In response to applicant’s argument (page 9) that; I)- “Piorkowski's disclosure of broad upper limits on solvent content (e.g., no more than about 20-30 wt.% for any individual solvent) does not teach or suggest the claimed range. These disclosures concern total solvent content and provide no guidance regarding the selection, concentration, or functional role of ethylene glycol monohexyl ether or any rheology control agent.”, it is noted that this solvent amounts are much lower amounts, 2-10%, in another embodiment as explained on the action above; [92-93]. II)- Applicant would note that the transitional phrase “comprising” allows presence of any other similar ingredients to be present in reference as long as it does not adversely affect the overall composition as far as the instantly claimed composition is concerned.
In response to applicant’s argument (page 9-10) that; “Oh does not remedy these deficiencies. The Office Action acknowledges that Oh teaches ethylene glycol monohexyl ether as a "nonionic surfactant and effective solvent." Action, p. 3. However, Oh is directed to amino silicone nanoemulsions and does not address viscosity control in detergent compositions, particularly highly concentrated surfactant systems. Ethylene glycol monohexyl ether is disclosed in Oh solely in the context of a solvent system and without any suggestion that it may function as a rheology control agent. See paragraphs [0045]-[0050]. One of ordinary skill in the art would not look to solvents used in amino silicone nanoemulsions to modify the rheology of detergent compositions. Nor would Oh provide any motivation to do so.”, it is noted that; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
D- In response to applicant’s argument (page 10) that; “Even assuming arguendo that Piorkowski discloses glycol ethers as optional solvents and that Oh teaches ethylene glycol monohexyl ether as a solvent in an unrelated composition, the Action does not articulate a reason why a person of ordinary skill in the art would have selected ethylene glycol monohexyl ether specifically for use as a rheology control agent in the claimed compositions. Piorkowski already provides a complete solvent system and does not identify any problem with viscosity requiring modification. Meanwhile, Oh is silent as to rheology control in detergent systems. The asserted combination therefore relies on impermissible hindsight reconstruction using Applicant's disclosure as a blueprint.”, note that; 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).
In response to applicant’s argument (page 10) that; “ Finally, disclosure of a compound for one purpose does not render its use for a different, undisclosed functional purpose obvious. Neither Piorkowski nor Oh attributes any rheology-controlling function to ethylene glycol monohexyl ether or suggests that this material would reduce viscosity in the claimed detergent systems. For at least the reasons detailed above, the claims are not obvious over Piorkowski in view of Oh.”, It is noted that the overall purpose of the claimed composition (as disclosed by Specification) is for laundry application, which on the other hand the primary reference is for laundry purposes; [2, 67, 149-150,171]. Since the prior art(s) of record share the fundamental active ingredients of instantly claimed composition with a clear obviousness, it is respectfully suggested that perhaps a more concise and distinct amendment of instant claim(s) would, probably, be more effective in further distinguishing the claims from the teaching of the combination of prior arts of record.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 8 PM Flex..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./
Examiner, Art Unit 1767
2026/09/08
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights