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 .
Specification
The disclosure is objected to because of the following informalities:
In [0001], the Cross Reference to Related Application Data is not correct/current. Application 17/152,452 has been issued as US Pat. 11,560,536.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 contains the limitation “a high output wasp and hornet type spray can”. It is noted that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite because it cannot be clearly ascertained what the word “type” encompasses in addition to the definite portion of the expression. See MPEP 2173.05(b).
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (US 2003/0224956 A1) as evidenced by Fitzgerald (US 2003/0220218 A1).
Regarding claims 1 and 10: Miller et al. teaches an aerosol cleaning composition comprising: a fluorinated saturated or unsaturated ether having the formula CaHbOcFd (ie. a hydrofluoroether) (abstract, [0009]-[0010], [0019]-[0020]); trans 1,2-dichloroethylene ([0013]); 1,1,1,3,3-pentafluoropropane ([0013]); and propellants including carbon dioxide ([0024]) and HCF-134a (ie. 1,1,1,2-tetrafluoroethane) ([0025], claims 10 and 13).
Miller et al. also teaches that propellants are generally in the amount of 3-8% of the composition. Miller et al. further notes that liquefied gases such as HFC-134a may have an undesirable effect on cleaning compositions by causing a chilling effect ([0025]), yet also directly teaches they may be used (claims 10 and 13). Additionally, Fitzgerald provides evidence that it is known in that art that a freezing/chilling effect may be reduced by a low amount of HFC-134a, such as less than about 5%, and can be assisted by carbon dioxide ([0026]). As such, at the time of filing, one of ordinary skill in the art would have found it obvious to have optimized the amounts and ratio of HFC-143a and carbon dioxide propellants in order to mitigate a chilling/freezing effect to the degree necessary to provide an acceptable cleaning performance (see MPEP 2144.05, II).
Regarding claims 2, 6 and 7: Miller et al. further teaches: a fluorinated saturated or unsaturated ether in the amount of greater than 0 to about 20% ([0019]); halogenated saturated or unsaturated hydrocarbons, preferably trans 1,2-dichloroethylene, in the amount of 40-70% ([0017]); and preferred fluorinated hydrocarbons including 1,1,1,3,3-pentafluoropropane in the amount of about 20-55% ([0018]).
Regarding claim 3: Miller et al. further teaches a preferred composition comprising methyl nonafluorobutyl ether ([0020]).
Regarding claims 4-5: Miller et al. teaches a fluorinated saturated or unsaturated ether having the formula CaHbOcFd where 3 ≤ a ≤ 6, 0 ≤ b ≤ 9, c is ≥ 1 and d is at least 5 ([0020]) wherein monoethers are preferred. It is submitted that fluorinated monoethers such as 1,1,1,3,3,3-hexafluoro-2-methoxypropane (HFE-356mmz) and 1,1,1,2-tetrafluoro-2-(2,2,2-trifluoroethoxy)ethane (HFE347pcf2) would be readily envisioned and therefore obvious to one of ordinary skill in the art.
Regarding claim 8: Miller et al. further teaches preferred fluorinated hydrocarbons including 1,1,1,3,3-pentafluoropropane in the amount of about 20% ([0018]). While the exact range disclosed does not overlap, the amounts are merely close and therefore a prima facie case of obviousness exists because one of ordinary skill in the art would have expected such amount would have a substantially similar cleaning effect (see MPEP 2144.05, I).
Regarding claims 11-12: Miller et al. teaches the amounts of the ingredients as set forth above in the discussion of claims 1-8.
Regarding claims 13, 15, and 16: Miller et al. teaches the claimed composition as set forth regarding claim 1. Claims 13, 15, and 16 recite a limitation of “is configured for” without setting forth any meaningful structural difference in the composition other than that recited by the limitations of claim 1. As such, the composition as taught by Miller et al. would obviously be capable of being “configured for” as recited by instant claims 13, 15, and 16.
Regarding claim 14: Miller et al. further teaches that their cleaning compositions do no exhibit a flash point ([0049]).
Double Patenting
The prior nonstatutory double patenting rejections over US Pat. 10,920,181 and US Pat. 11,560,536 are maintained. The details of these prior rejections are set forth in the Office action mailed 20-MAR-2025.
Response to Arguments
Applicant's arguments filed 19-SEP-2025 have been fully considered but they are not persuasive. The following remarks apply:
Applicants’ amendments to correct the objections to the claims set forth in the previous Office action have sufficiently overcome the objections.
Applicants’ argument regarding the rejection under 35 USC 112(b) is not persuasive. Specifically, the term “type”, even as explained in the original specification does not clearly set forth the metes and bounds of what is and is not a structure that would meet this limitation. The term “type” implies additional structures beyond the portion having a definite expression (ie. that without “type”). These additional structures render the claim indefinite. Accordingly, the rejection under 35 USC 112(b) is maintained.
Applicants’ argument regarding the rejection under 35 USC 103 is not persuasive.
Applicants’ argument that Miller et al. that teaches that HFC-134a is “less desirable” has been fully considered, but does not overcome the rejection. While Miller does appear to suggest that in some instances HFC-134a may cause chilling of the surface to be cleaned, applicant’s argument ignores that Miller et al. also shows that the presence of HFC-134a seems to allow the cleaning of plastics whereas others fail (see Table 1). Miller et al. also teaches that the choice of propellant is determined by its components as well as its use ([0024], [0032]). As such, even though Millet al. suggests that liquefied gases may be less desirable, presumably in some instance, it does not suggest that it’s composition would be inoperable. Lastly, applicant’s argument fails to address that Miller et al. specifically teaches a use of HFC-143a (claim 10 and 13) despite mentioning it’s less desirable attributes. This specific inclusion of liquified gas propellants, such as HFC-143a, highly suggest that Miller et al. understood that the chilling effect they mention would need to be addressed for certain cleaning compositions and their uses. It other words, Miller et al. would have readily understood that optimalization or the relative amounts of propellants is required in certain instances. Accordingly, Fitzgerald has added to the above rejection as evidence that such optimization was known in the art if not explicitly discussed by Miller et al.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK EASHOO whose telephone number is (571)272-1197. The examiner can normally be reached M-F, 7am - 4pm.
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MARK EASHOO, Ph.D.
Supervisory Patent Examiner
Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767