Response to Amendment
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 .
Claim Rejections - 35 USC § 112
Claims 21, 24-34, 37-40 are 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Claim Interpretation
The aforementioned claims cite “the glycerin ethoxylate-propoxylate” and a LABS. The examiner interprets the glycerin ethoxylate-propoxylate comprises 6-7 ethylene oxide or propylene oxide units attached to each branch of a glycerol backbone. As recited by applicant and stated in the specification at (0025):
“In further alternative aspects, ethoxylation may be combined with propoxylation substituting propylene oxide in lieu of ethylene oxide. That is, in certain aspects of the present disclosure, the alcohol may include one or more units of propylene oxide (-OCH₂CH₂CH₂-) instead of ethylene oxide.”
Therefore, the glycerine ethoxylate-propoxylate comprising ethylene oxide or propylene oxide is interpreted as the previous claimed “glycerin ethoxylate comprising 6-7 ethylene oxide since its optional to incorporate propoxylate units.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 21, 24-34, 37-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP (1479754) in view of Brumbaugh et al (6,423,678) and further in view of Sepulveda et al (4363756).
EP ‘754 discloses a composition containing a surfactant, which can be used to remove cosmetic materials and to wash clothes. Example C3 specifically discloses one of the compositions. A formula containing sodium laureth sulfate and glycerol polyoxyethylene glyceryl ether-7 ([0043], [0046], [0052] segment). It can be seen that, EP ‘754 uses linear alkyl benzene sulfonate instead of the sodium laureth sulfate as required in claim 1. The mass ratio of 0.5-10% glycerol ethoxylate having C4-C12 and 1- 12 moles of ethylene oxide and 3-20% linear alkyl benzene sulfonate is further limited. Ethoxy sulfate and linear alkyl benzene sulfonate are both anionic surfactants commonly used detergent compositions of EP “754 (0036-0039). Regarding the mass ratio of the two components, the anionic surfactant is from 3 to 20% by weight, the component (a) the anionic surfactant and the component (b) the weight ratio of
the glycerol ethoxylate is preferably 3:1 to 1:1 ( see paragraphs [0030] and [0036] of the specification). The amount is determined by conventional technical means to determine the mass ratio of glycerol ethoxylate and linear alkyl benzene sulfonate. Moreover, the glyceryl ether may be ethoxylated or propoxylated, when the R group is propylene oxide (see formula at 0028).
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
EP ‘754 is silent with respect to the specific C10-C12 linear alkyl benzene sulfonate as claimed.
Brumbaugh et al exemplifies anionic surfactants such as sodium lauryl ether sulfate at 38.8% and an ethoxylated glycerin (Glycereth-26) at 2.50-5.0% and water (see example 1-3). Specifically, Brumbaugh et al teach a detergent having excellent viscosity/gelling (col. 1, lines 43-50) having anionic surfactants such as LAS having C10- C16 are present at 1-90% of one or more anionic surfactants (col. 4, lines 62-67; col. 5, lines 29-32; and claim 1) and the hydrotrope, which encompass the ethoxylated glycerin component and a short chain alcohol ethoxylate, are present at 1-40% and therefore the teachings of the binary components suggest a 1:1 ratio as called out in claim 1. One skilled in the art would have been motivated to combine the components and optimize the proportions within the ratio as claimed given the teachings of Brumbaugh et al that suggest anionic surfactants such as alkyl benzene sulfonates and glyceryl ethers with overlapping percentages and therefore read on a 1:1 ratio (col. 2, lines 57-67), in the absence of a showing to the contrary commensurate in scope with the claimed invention.
It would have been obvious to the skilled artisan to include the specific linear alkyl benzene sulfonate having C10-C16 atoms in EP ‘754 given the teachings of Brumbaugh et al that utilizes anionic surfactants such a LAS in conjunction with alkoxylated glyceryl ethers to provide foaming and other qualities of viscous cleansing compositions. The equivalence suggested by Brumbaugh et al of AES and LAS would provide further motivation to the skilled artisan, in the absence of a showing to the contrary, to utilize either anionic surfactant in EP ‘754 with the expectation of similar or the same results for detergency.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established."; MPEP 2112.01 )).
EP ‘754 further lacks a teaching of the claimed glycerin structure having an alkoxylated n being a minimum of 18 but instead teaches a maximum of 15.
It would have been obvious to the skilled artisan to optimize the homologs chain and extend to 18 given the teachings of Brumbaugh, which teaches an overlap of alkoxylated average value within the glycerin component being from 10-45 (col. 10, lines 15-22) within their detergent composition and one skilled in the art would have been motivated to optimize the same glycerin component of EP “754 to with the expectation of similar results of equivalency and further to provide the foaming and performance characteristics of the laundry detergent formulations as described in Brumbaugh. Accordingly, it is held that composition which are homologs are held close enough where similarities are expected.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or 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).
With further respect to the method claims of removing stains from fabrics within certain parameters of reflectance and wash steps, EP ‘754 and Brumbaugh et al are silent.
Sepulveda et al teach removal of stains from polyesters is well known in the laundering art, where the method of dosing polyester materials for under agitation for 10min before rinsing and treating is further disclosed (col. 4). EP ‘754 and Brumbaugh et al teach cleansing from hard surfaces such as fabrics, wherein Sepulveda et al teach the reflectance upon the fabric is measured after laundering (col. 4, lines 14-50). One skilled in the art would have been able to optimize this measurements, reflectance and laundering times, with the detergent ingredients of glycerin ethoxylates and anionic surfactants suggested in EP ‘754, Brumbaugh and Sepulveda, to arrive at the present invention given the test(s) is known in the prior art as a measurement of fabric polyester detergency. Absent a showing to the contrary, commensurate in scope with the claimed invention, one skilled would utilize the measurement to analyze the polyester values of detergency and adjust accordingly.
“[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).
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Response to Arguments
Applicant's arguments filed 3-16-2026 have been fully considered but they are not persuasive.
Applicant argues that EP ‘754 do not suggest the range of EO as claimed i.e. 6-7, since the minimum range of EO is 18 and the maximum range of EO is 21 as compared to the formula III of EP ‘754.
The examiner respectfully contends that applicant is reading and interjecting limitations that are not of the most comprehensive claim 21 and 29 which give not guidance as to the total of EO or PO and their respective summation as given by the comparative formulas in EP ‘754. To summarize a broad term such as EO = 6-7 and extrapolate that to require a minimum of 18 EO does not satisfy the language given in the claims. Furthermore, for arguments sake, even if the total EO on the glycerol chain are a minimum of 18 and EP ‘754 formula III selectively requires a maximum of 15, the skilled artisan, in the absence of criticality commensurate in scope with the claims, would readily optimize the homologs with the expectation that the composition would have similar characteristics as it widely held to be obvious.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or 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).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Applicant further argues that the skilled artisan would not have the expectation that one could readily optimize the homologs with the expectation that the composition would have similar characteristics as it widely held to be obvious. “It is widely known in the art of glycerin ethoxylate-propoxylates copolymers that the content of ethoxylate and propoxylate in each molecule type influences the properties of the ethoxylate-propoxylates copolymers.” Applicant’s further would like to direct the Office's attention to the document submitted herewith entitled "Ethoxylates VS Propoxylates: Technical Comparison."
The examiner contends and respectfully disagrees and contends that applicants’ assertion and suggestion of a technical comparison is given little patentable weight considering that it is not an affidavit signed and attested by applicant. Furthermore, applicant argument assumes that propoxylates are included with the copolymer of the glycerin ethoxylate-propoxylate as claimed when in fact as stated above, the propoxylate is an optional addition to the glycerin copolymer, one the examiner chooses to omit.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
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.
Claims 21, 24-28 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11535815. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlap in subject matter pertaining to glycerin ethoxylate compositions with LABS, the obvious proportions of ingredients is held as an variant indistinguishable.
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 NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761