DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/16/2026 has been entered.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (WO 2017/104496). US 2018/0282513 is being used as an English equivalent to WO 2017/104496 since it is a national stage entry of the international application.
Regarding claim 1-5: Yamaguchi et al. teach a water soluble polymer composition comprising 29.94 parts by mass of polyethylene oxide (water-soluble polymer) [Example 1], 0.03 parts by mass of dibutylhydroxytoluene (BHT, phenolic antioxidant), and 970 parts of an aqueous solution comprising sodium hydrogen carbonate (sodium bicarbonate) inorganic salt [0047; Example 1]. Yamaguchi et al. also teach the inorganic salt sodium bicarbonate [0047]. Yamaguchi et al. teach that the amount of alkali in the aqueous solution is preferably 0.1 to 15% by mass [0047].
The amount of inorganic salt overlaps the ranges of claim 1 and 5. For instance, when the amount of alkali (sodium bicarbonate) is 0.1% by mass of the aqueous solution, the amount in Example 1 would be 970 parts x 0.1% = 0.97 parts sodium bicarbonate. 29.94 parts by mass of polyethylene oxide and 0.97 parts sodium bicarbonate converts to 3.24 parts by mass of sodium bicarbonate based on 100 parts by weight of polyethylene oxide.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Yamaguchi et al. teach that the composition may be in a powder or solid state as an alternative embodiment to the liquid composition [0042, 0044].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove the solvent or dispersion medium, followed by drying, in the composition of Yamaguchi et al. to produce a solid composition.
Regarding claim 6: The composition of Yamaguchi et al. is capable of functioning in the claimed capacity [0046].
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (WO 2017/104496). US 2018/0282513 is being used as an English equivalent to WO 2017/104496 since it is a national stage entry of the international application.
Regarding claim 10: Yamaguchi et al. teach a water soluble polymer composition comprising 29.94 parts by mass of polyethylene oxide (water-soluble polymer) [Example 1], 0.03 parts by mass of dibutylhydroxytoluene (BHT, phenolic antioxidant), and 970 parts of an aqueous solution comprising sodium hydrogen carbonate (sodium bicarbonate) inorganic salt [0047; Example 1]. Yamaguchi et al. also teach the inorganic salt sodium carbonate [0047]. Yamaguchi et al. teach that the amount of alkali in the aqueous solution is preferably 0.1 to 15% by mass [0047].
The amount of inorganic salt overlaps the ranges of claim 1 and 5.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
In Example 1 of Yamaguchi et al. the polyethylene oxide and BHT antioxidant are mixed together first, followed by adding water comprising the sodium hydrogen carbonate aqueous solution [Example]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a kit wherein the first agent comprises polyethylene oxide and BHT and the second agent comprises the sodium hydrogen carbonate.
Yamaguchi et al. teach that the composition may be in a powder or solid state as an alternative embodiment to the liquid composition [0042, 0044].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove the solvent or dispersion medium, followed by drying, the claimed first and second agents of Yamaguchi et al. to produce a solid composition.
Regarding claim 11: Yamaguchi et al. teach mixing sodium hydrogen carbonate with water [Example 1] prior to mixing with the polyethylene oxide and BHT [Example 1]. Therefore, this is how the kit would be utilized using the method of Yamaguchi et al. The instant specification discloses that iron ions are present dues to rust on pipes when industrial water is used. Since the composition of Yamaguchi et al. is produced in an industrial environment, the skilled artisan would immediately envisage iron atoms in the water of the aqueous solution.
Response to Arguments
Applicant's arguments filed 1/16/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that the Yamaguchi et al. are an aqueous composition and not a solid, dry composition. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “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 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).
Yamaguchi et al. teach that the composition may be in a powder or solid state as an alternative embodiment to the liquid composition [0042, 0044].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove the solvent or dispersion medium, followed by drying, in the composition of Yamaguchi et al. to produce a solid composition.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763