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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on April 15, 2026 is acknowledged. The traversal is on the ground(s) that the restriction is unwarranted and there is so serious burden on the Examiner. This is not found persuasive because Groups I-II lack unity of invention because the special technical feature does not make a contribution over the prior art. In addition, there would be a serious search and examination burden if restriction were not required because the inventions have different classifications and require a different field of search and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-16 are pending. Claims 10-16 are withdrawn.
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 5 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 5 recites “all amino organophosphonic acid derivatives of formula (I) having the same value of n ranges from 0.5 to 4.0 wt%”; this renders the claim indefinite because claim 1, from which claim 5 depends, requires at least two different amino organophosphonic acid derivatives that differ in the value of n”. Clarification is requested.
Claim 9 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 9 recites “there the total amount of further ingredients, which differ from the amino organophosphonic acid derivatives of formula (I), is less than 50wt% of the combined amount of ingredients consisting of the further ingredients and the amino organophosphonic acid derivatives of formula (I)”; this is unclear and renders the claim indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-7, 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuoka et al (JP07113190).
Regarding claims 1-4, 6-7, 9, Fukuoka et al teaches an aqueous solution comprising 1 or greater than or equal to 2 phosphonic acid salts/phosphonates in the amount of 0.5-10wt%, preferably 1-3wt% in a pH of 4-9 (Abstract, Paragraph 7). Fukuoka et al further teaches phosphonates selected from aminotrimethylenephosphonic acid, ethylenediamine tetramethylene phosphonic acid and diethylenetriamine pentamethylene phosphonic acid (Paragraph 7). Fukuoka et al further teaches sulfuric acid or sodium hydroxide can be used to adjust the pH of the solution (Paragraph 14). Fukuoka et al teaches 50 wt% from aminotrimethylene potassium phosphonate, 30wt% ethylenediamine tetramethylene ammonium phosphonate and 20wt% of diethylenetriamine pentamethylene phosphonate in Example 6 and from 35wt% of ethylenediamine tetramethylene ammonium phosphonate and 35 wt% of diethylenetriamine pentamethylene phosphonic acid and 35wt% of diethylenetriamine pentamethylene phosphonate in Example 7 wherein 3 wt% of the composition is added to water with a pH of 6 (Paragraph 13, Table 3).
Fukuoka et al teaches a pH of 4-9, preferably 5-8 (Paragraph 8); although, Fukuoka et al fails to teach at 55C, this is inherent in Fukuoka et al as Fukuoka et al teaches the same composition as the instant claims and teaches examples having a pH of 6 and wherein the pH of the solution can be adjusted to provide within the preferred range of 5-8. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “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).
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 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.
In the alternative, claims 1-4, 6-7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuoka et al (JP07113190).
Regarding claims 1-4, 6-7, 9, Fukuoka et al teaches an aqueous solution comprising 1 or greater than or equal to 2 phosphonic acid salts/phosphonates in the amount of 0.5-10wt%, preferably 1-3wt% in a pH of 4-9 (Abstract, Paragraph 7). Fukuoka et al further teaches phosphonates selected from aminotrimethylenephosphonic acid, ethylenediamine tetramethylene phosphonic acid and diethylenetriamine pentamethylene phosphonic acid (Paragraph 7). Fukuoka et al further teaches sulfuric acid or sodium hydroxide can be used to adjust the pH of the solution (Paragraph 14). Fukuoka et al teaches 50 wt% from aminotrimethylene potassium phosphonate, 30wt% ethylenediamine tetramethylene ammonium phosphonate and 20wt% of diethylenetriamine pentamethylene phosphonate in Example 6 and from 35wt% of ethylenediamine tetramethylene ammonium phosphonate and 35 wt% of diethylenetriamine pentamethylene phosphonic acid and 35wt% of diethylenetriamine pentamethylene phosphonate in Example 7 wherein 3 wt% of the composition is added to water with a pH of 6 (Paragraph 13, Table 3). However, Fukuoka et al fails to specifically disclose the pH at 55C.
It would have been obvious to one of ordinary sk8ill in the art before the effective filing date of the claimed invention to have provided a pH of 5-9 at 55C in Fukuoka et al as teaches a pH of 4-9, preferably 5-8 with a composition comprising the same composition as the instant claims and teaches examples having a pH of 6 and wherein the pH of the solution can be adjusted to provide within the preferred range of 5-8.
Claims 2-3, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuoka et al (JP07113190) as applied to claims 1-4, 6-7, 9 above, and in further view of Hayashida et al (US Patent Application 2006/0154838).
Regarding claims 2-3, 5, Fukuoka et al discloses the invention substantially as claimed. Fukuoka et al teaches the features above. However, Fukuoka et al fails to specifically disclose 2 or more amino organophosphonic acid derivatives having the same value of n.
In the same field of endeavor, Hayashida et al teaches a cleaner for metal substates comprising
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190
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(Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 2 or more amino organophosphonic acid derivatives having the same value in Fukuoka et al in view of Hayashida et al as Fukuoka et al teaches ≥2 phosphonic acid salts/phosphonates for cleaning metal surfaces and Hayashinda et al teaches a general formula for cleaning metal substrates. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuoka et al (JP07113190) as applied to claims 1-4, 6-7, 9 above, and in further view of Asmanidou et al (EP3263681).
Regarding claim 8, Fukuoka et al discloses the invention substantially as claimed. Fukuoka et al teaches the features above. However, Fukuoka et al fails to specifically disclose a vinyl acetate-vinyl pyrrolidone copolymer.
In the same field of endeavor, Asmanidou et al teaches cleaning composition comprising polyvinylpyrrolidone copolymers for good limescale removal from metal surfaces (Abstract). Asmanidou et al further teaches a copolymer comprising vinyl pyrrolidone and vinyl acetate (Paragraphs 12-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a vinyl acetate-vinyl pyrrolidone copolymer in Fukuoka et al in view of Asmanidou et al in order to remove limescale and clean metal surfaces. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 June 10, 2026
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