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 .
Claim Status
Claims 1-20 are pending.
Priority
The instant application was filed on 12/19/2022 and claims the following priority:
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See filing receipt dated 8/31/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The limitation “crumbly phase” is described as follows on p. 5-6 of the specification as filed:
“The present invention aims to provide an improved process to prepare solid
crystalline co granules of crystalline MGDA-Nax that does not have the above
disadvantages. The invention is based on a special form of MGDA-Nax, called
the crumbly phase, in which there is limited water and the MGDA-Nax is present
in a crystalline state for the major part so that a non-pasty, crumble like texture is
obtained. When such crumbly phase is used as a feed for a drying process, one
obtains an efficient process characterized by a high yield of high-quality product,
in which circulating water can be limited, and waste streams can be avoided. The
co granules as obtained by the process are characterized as very easy to dry,
and have a good porosity and improved bulk density, storage stability, and
hygroscopicity (reduced moisture sensitivity),
…
The crumbly phase is a phase comprising weakly agglomerated particulate solids
covered with a thin layer of an aqueous composition, such as of a MGDA-Nax
composition, showing a rheological behavior that resembles or at least
approaches the behavior of dry particulate material. The thin layer of the MGDANax
composition is preferably a (saturated) aqueous solution of MGDA-Nax.
It should be noted that though the crumbly phase product is defined as having an
organic compounds and salts content and a water content, this is not intended to
mean that the water is fully present as a separate liquid water phase. Part of the
water can be present as crystal water and thereby can be seen as solid-state
water. In the crumbly phase composition as covered by the present invention the
water is defined to cover both free water and crystal water. The amount of water
can be determined by Karl-Fischer titration.
Crumbly phase behavior has the advantage compared to a thixotropic paste of
much easier handling and was found to be much easier dried into free-flowing
granules.”
The limitations “crystal type I” and/or “crystal type III” in claims 5, 15, 19, and 20 are defined on p. 2 of the specification as filed.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claims 1 and 14 are objected to because they should begin with the indefinite article “A”.
Claims 2-13 and 15-20 are objected to because they should begin with the definite article “The”.
In claims 1, 14, 15, the limitation “co granule” should be amended to recite “co-granule”.
Claims 1, 2, 4, 5, 9, 11, 13-15, 19 and 20 are objected to because the limitations “MGDA-Nax” and “MGDA-Na3” should contain subscripts to read “MGDA-Nax” and “MGDA-Na3” respectively.
Line 3 of claim 1 should be amended to recite “composition comprising, based on the total weight of the crumbly phase composition,” or “composition comprising, on the basis of the total weight of the crumbly phase composition,”.
In line 5 of claim 1, the phrase “on total organic compounds” should be amended to recite “based on the total wt% of the organic compounds” or “on the basis of the total weight of the organic compounds”.
The same changes should be made in lines 2 and 4 of claim 2.
In the final line of claim 4, the phrase “of total organic” should be amended to recite –of the total weight of the organic”.
In line 2 of claim 14, the phrase “comprises on total co granule weight” should be amended to recite “comprises, based on the total co-granule weigh” or “comprises, on the basis of the total weight of the co-granule”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 15-18 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.
Claim 15 recites the limitation "A co granule MGDA-Nax product of claim 13" in line 1. There is insufficient antecedent basis for this limitation in the claim because claim 13 is not directed toward a co-granule MGDA-Nax product. In the interests of compact prosecution, the claim will interpreted to be dependent on product claim 14.
Claim 16 recites “the process of claim 1, wherein the second composition is a saturated or supersaturated aqueous composition such that the obtained product mixture before the drying step remains in the crumble state” (emphasis added). Claim 1 recites “a step of drying a MGDA-Nax-containing crumbly phase composition …in the presence of a second composition”. It is not clear how the limitations that are italicized further limit this process step. The second composition is not required to be in the “crumble state” and there is no requirement for the two compositions to be mixed together before drying, presumably to form a “product mixture”. Therefore, it is not if the italicized limitations are intended to be interpreted as an actively required order of addition limitation to produce a “product mixture” in a “crumble state” before the drying occurs. The same issue occurs in claims 17 and 18.
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.
Claims 1-20 is/are rejected under 35 U.S.C. 103 as being obvious over Schomaker (US 2022/0073842, published on 3/10/2022, claiming the benefit of priority to EP 18215420.3, filed 12/21/2018) in view of De Boer (EP 2392638 A1, published on 12/7/2011, of record in the IDS filed on 12/19/2022).
The applied reference (Schomaker) has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Applicant Claims
Applicant claims a process to prepare solid crystalline co granules of MGDA-Nax, wherein x is 2.5 to 3, comprising a step of drying a MGDA-Nax-containing crumbly phase composition comprising on total weight of the crumbly phase composition:
70-87 wt% of organic compounds and salts thereof, comprising 85-100 wt% of MGDA Na3, wherein 60 wt% of the MGDA-Na3 is crystalline, and
13-30 wt% of water
in the presence of a second composition that comprises at least one second component chose from scale inhibitors, crystal inhibitors, film or spot preventing polymers, glass-corrosion inhibiting agents, pH modifiers, chelating agents, builders, bleaching agents, and surfactants.
Determining the Scope and Content of the Prior Art (MPEP §2141.01)
Schomaker discloses a crumbly phase composition comprising, based on the total weight of the composition,
70-87 wt% of organic compounds and salts thereof, comprising 85 to 100 wt%, based on the total weight of organic compounds and salts thereof, of MGDA-Na3, wherein at least 60 wt% of the MGDA-Na3 is crystalline, and
13-30 wt% water.
See abstract and claims. Thus, Schomaker teaches an identical “MGDA-Nax containing crumbly phase composition” to that claimed. Schomaker further teaches a process for preparing crystals of MGDA-Na3 by drying the above composition. See abstract and claims.
Schomaker further teaches that the crumbly phase composition to be dried can comprise “compounds that are purposively added as an additive and include compounds such as citric acid or citrate salts, glycolic acid or glycolate salts, nitrilotriacetic acid trisodium salt (NTA-Na3), and formic acid or formate salts, which are chelating agents. See [0039]. Schomaker teaches that the additives are included with the organic compounds and salts thereof in the crumbly phase MGDA-Nax crumbly phase.
Schomaker also teaches that the invention is directed toward an improved process to prepare solid crystalline MGDA-Na3 that does not include the disadvantages of the prior art, which include high hygroscopicity of MGDA-Na3. The hygroscopicity is known to cause issues in the storage and transportation of the MGDA-Na3. See [0003-0004]. Schomaker teaches that “when such crumbly phase is used as a feed for a drying process one obtains an efficient process characterized by a high yield of high-quality product in which circulating water can be limited and waste streams can be avoided. See [0017].
De Boer teaches a low-hydroscopic particulate composition comprising:
An aminopolycarboxylate chelating compound A; and
A further aminopolycarboxylate chelating compound B; a silicate; or a mixture of B and a silicate. See abstract and claims.
De Boer teaches that the aminopolycarboxylate chelating compound includes MGDA and salts thereof, preferably sodium (Na) salts. See [0024] and claim 3. De Boer teaches that the silicate is a builder. See [0045-0051]. De Boer teaches that the composition can further include surfactants, organic polymers (see claim 9), and the ingredients set forth in claim 14.
Like Schomaker, De Boer, teaches that it is known in the art that particulate compositions of aminopolycarboxylates can be hygroscopic, which is detrimental to making, storing, and transferring the product, as well as ensuring a constant water level in the final product. See [0004]. De Boer teaches that it was known in the art to coat the hygroscopic substance on a non-hygroscopic substance or spraying the hygroscopic substance on carrier particles. De Boer teaches that the coating method is expensive and that the incorporation of hygroscopic substance in the spraying amount does not exceed about 5 wt%. See [0005-0006]. De Boer teaches that “for these reasons, a solid particular composition comprising a rather high amount of one or more aminopolycarboxylate chelating compounds would be desirable i.e. comprising a high amount of ingredients having a complexing ability for divalent cations, wherein the aminopolycarboxylate chelating compounds are formulated in such a way that the particulate composition has a relative slow moisture uptake or a relative low maximum moister uptake or both during packing, storage, and/or dosing in order to avoid caking of the particulate substance and ensure the flowability of the particulate substance over a long time.” See [0007]. This object is obtained through the process of De Boer.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims (MPEP §2141.02-03)
Schomaker does not explicitly teach that the MGDA-Nax containing crumbly phase composition is dried in the presence of a second composition comprising at least one second component chosen from scale inhibitors, crystal inhibitors, film or spot preventing polymers, glass-corrosion inhibiting agents, pH modifiers, chelating agents, builders, bleaching agents, and surfactants.
Finding of Prima Facie Obviousness Rationale and Motivation (MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of Schomaker and De Boer to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to include a second component in the MGDA-Na3 particles of Schomaker because De Boer teaches the inclusion of additional components, including builder silicates and additional chelators, can further improve the hygroscopicity properties of the MGDA-Na3 granules such that the co-granules produced will have a relative slow moisture uptake or a relative low maximum moisture uptake in order to avoid caking during packing, storage, and dosing to ensure flowability of the particulate substance over a long time. De Boer further teaches that co-granules are superior to coated or sprayed particles because they can incorporate a higher concentration of aminocarboxylate chelating compounds as compared to sprayed particles and the process is less expensive than coating. Additionally, Schomaker suggests that additional chelating agents can be present in the crumbly phase composition prior to be dried. Therefore, the introduction of the second ingredients of De Boer into the drying process of Schomaker will predictably produce non-caking free flowing co-granules of the second ingredient and MGDA-Na3 with a reasonable expectation of success. See MPEP 2143(I)(A).
Instant claims 2-6 are identical to claims 2-6 of Schomaker. Further see [0008] regarding the definitions of the crystal types I, II, and III in Schomaker. These crystals are identical to those described in the specification as filed.
Regarding claims 7-9 and 16-18, De Boer teaches that at least aminocarboxylate compounds A and B are present at least temporarily in a liquid form during the mixing procedures, more preferably in the form of an aqueous solution. See claim 10 and [0100]. De Boer teaches that the ingredients may also be in solid form and a solvent is added thereto to form a solution or suspension. See [0031-0035]. De Boer does not explicitly teach that the second composition is dosed in more than one step or continuously or that the second composition is dosed during the formation of the crumbly phase composition of MGDA-Nax. However, changes in the order of performing process steps and/or adding ingredients is prima facie obvious. See MPEP 2144(IV)(C).
Nor does De Boer explicitly teach that the second composition is a saturated or supersaturated aqueous composition such that the MGDA-Nax and second composition remains in a crumbly state before drying. However, Schomaker emphasizes the criticality of maintaining the crumbly state before drying to produce the free-flowing MGDA-Na3 product. See examples in [0064-0076]. Therefore, the skilled artisan would have been motivated to maintain a crumbly phase consistency during and after addition of the second composition in order to achieve the full benefits of the process of Schomaker.
Regarding claims 10-12, see claims 11-13 of Schomaker.
Regarding claim 13, though the process limitations are only included with a product-by-process limitation for defining the structure of the MGDA-Nax crumbly phase composition, Schomaker explicitly teaches this method of preparation. See claims 7 and 8 and examples. Also see MPEP 2113.
Regarding claims 14 and 15, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. See MPEP 2113.
Regardless, when the combination of the processes of Schomaker and De Boer are combined to arrive at the instantly claimed process then the process should also produce similar if not identical products. Further, De Boer teaches that if the second composition is an aminocarboxylate B, then the particles will comprise from 5 to 50 wt% of A (corresponding to MGDA-Nax) and from 40-80 wt% of B (second component). See claim 5. This range overlaps with the upper limit of the claimed range. De Boer further teaches that when silicate is the second component it is present >0 to 25 wt% and the total amount of aminocarboxylate compounds (A and optionally B) is 5 to 200 wt%. This range also overlaps with the ranges of claim 14. Also see MPEP 2144.05. Further regarding claim 15, see claim 14 of Schomaker.
Regarding claims 19 and 20, see claim 10 of Schomaker.
Claim 14 is/are rejected under 35 U.S.C. 103 as being obvious over De Boer (EP 2392638 A1, published on 12/7/2011, of record in the IDS filed on 12/19/2022).
Applicant Claims
Applicant claims a solid crystalline co-granule MGDA-Nax product obtained by the process of claim 1 (emphasis added) that comprises, based on the total co-granule weight, 40-89 wt% MGDA-Nax and 0.5-40 wt% of the at least one second component.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. See MPEP 2113.
The only structural limitations for the product which are explicitly recited in claim 1 are that the product is a solid crystalline co-granule of MGDA-Nax, wherein x is 2.5 to 3. There is no indication that the product retains any of the other properties of the starting crumbly phase after the drying.
Determining the Scope and Content of the Prior Art (MPEP §2141.01)
De Boer teaches a low-hydroscopic particulate composition comprising:
An aminopolycarboxylate chelating compound A; and
A further aminopolycarboxylate chelating compound B; a silicate; or a mixture of B and a silicate. See abstract and claims.
De Boer teaches that the aminopolycarboxylate chelating compound includes MGDA and salts thereof, preferably sodium (Na) salts. See [0024] and claim 3. De Boer teaches that the silicate is a builder. See [0045-0051]. De Boer teaches that the composition can further include surfactants, organic polymers (see claim 9), and the ingredients set forth in claim 14.
De Boer teaches that it is known in the art that particulate compositions of aminopolycarboxylates can be hygroscopic, which is detrimental to making, storing, and transferring the product, as well as ensuring a constant water level in the final product. See [0004]. De Boer teaches that it was known in the art to coat the hygroscopic substance on a non-hygroscopic substance or spraying the hygroscopic substance on carrier particles. De Boer teaches that the coating method is expensive and that the incorporation of hygroscopic substance in the spraying amount does not exceed about 5 wt%. See [0005-0006]. De Boer teaches that “for these reasons, a solid particular composition comprising a rather high amount of one or more aminopolycarboxylate chelating compounds would be desirable i.e. comprising a high amount of ingredients having a complexing ability for divalent cations, wherein the aminopolycarboxylate chelating compounds are formulated in such a way that the particulate composition has a relative slow moisture uptake or a relative low maximum moister uptake or both during packing, storage, and/or dosing in order to avoid caking of the particulate substance and ensure the flowability of the particulate substance over a long time.” See [0007]. This object is obtained through the process of De Boer.
De Boer teaches that if the second composition is an aminocarboxylate B, then the particles will comprise from 5 to 50 wt% of A (corresponding to MGDA-Nax) and from 40-80 wt% of B (second component). See claim 5. This range overlaps with the upper limit of the claimed range. De Boer further teaches that when silicate is the second component it is present >0 to 25 wt% and the total amount of aminocarboxylate compounds (A and optionally B) is 5 to 200 wt%. This range also overlaps with the ranges of claim 14. Also see MPEP 2144.05.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims (MPEP §2141.02-03)
De Boer does not explicitly teach an anticipatory example of the claimed co-granule, which includes MGDA-Nax, wherein x is 2.5 to 3, in 40-89 wt% and the second component in 0.5 to 40 wt%.
Finding of Prima Facie Obviousness Rationale and Motivation (MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art to arrive at the instantly claimed product based on the teachings of De Boer with a reasonable expectation of success before the effective filing date of the claimed invention. The skilled artisan would have been motivated to prepare other co-granules than those explicitly recited in the examples of De Boer because De Boer teaches that said co-granules should have similar beneficial hydroscopic properties. De Boer exemplifies eight preferred aminocarboxylate chelators for compounds A and optionally B, including MGDA, and salts thereof, preferably Na. Therefore, there is a reasonable expectation that the skilled artisan would arrive at a sodium salt of MGDA to include in the co-granule and optimize. De Boer further teaches concentration ranges for the co-granule which overlap with those claimed. Therefore, the teachings of De Boer would lead the skilled artisan to the claimed co-granule with a reasonable expectation of success. Also see MPEP 2144.08 and MPEP 2144.05.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12258541 (‘541) in view of De Boer (EP 2392638 A1, published on 12/7/2011, of record in the IDS filed on 12/19/2022), wherein ‘541 is the US patent of Schomaker (US 2022/0073842),
Claim 1 of ‘541 discloses a crumbly phase composition comprising, based on the total weight of the composition,
70-87 wt% of organic compounds and salts thereof, comprising 85 to 100 wt%, based on the total weight of organic compounds and salts thereof, of MGDA-Na3, wherein at least 60 wt% of the MGDA-Na3 is crystalline, wherein the MGDA-Na3 that is crystalline is at least 75% of crystal type I, and
20-30 wt% water.
Thus, ‘541 claims a species of the “MGDA-Nax containing crumbly phase composition” claimed which reads on instant claims 1, 2, and 5. ‘541 further teaches a process for preparing crystals of MGDA-Na3 by drying the above composition. See claim 8.
De Boer teaches a low-hydroscopic particulate composition comprising:
An aminopolycarboxylate chelating compound A; and
A further aminopolycarboxylate chelating compound B; a silicate; or a mixture of B and a silicate. See abstract and claims.
De Boer teaches that the aminopolycarboxylate chelating compound includes MGDA and salts thereof, preferably sodium (Na) salts. See [0024] and claim 3. De Boer teaches that the silicate is a builder. See [0045-0051]. De Boer teaches that the composition can further include surfactants, organic polymers (see claim 9), and the ingredients set forth in claim 14.
Like Schomaker, De Boer, teaches that it is known in the art that particulate compositions of aminopolycarboxylates can be hygroscopic, which is detrimental to making, storing, and transferring the product, as well as ensuring a constant water level in the final product. See [0004]. De Boer teaches that it was known in the art to coat the hygroscopic substance on a non-hygroscopic substance or spraying the hygroscopic substance on carrier particles. De Boer teaches that the coating method is expensive and that the incorporation of hygroscopic substance in the spraying amount does not exceed about 5 wt%. See [0005-0006]. De Boer teaches that “for these reasons, a solid particular composition comprising a rather high amount of one or more aminopolycarboxylate chelating compounds would be desirable i.e. comprising a high amount of ingredients having a complexing ability for divalent cations, wherein the aminopolycarboxylate chelating compounds are formulated in such a way that the particulate composition has a relative slow moisture uptake or a relative low maximum moister uptake or both during packing, storage, and/or dosing in order to avoid caking of the particulate substance and ensure the flowability of the particulate substance over a long time.” See [0007]. This object is obtained through the process of De Boer.
‘541 does not explicitly teach that the MGDA-Nax containing crumbly phase composition is dried in the presence of a second composition comprising at least one second component chosen from scale inhibitors, crystal inhibitors, film or spot preventing polymers, glass-corrosion inhibiting agents, pH modifiers, chelating agents, builders, bleaching agents, and surfactants.
It would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of of the claims of ‘541 and De Boer to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to include a second component in the MGDA-Na3 particles of ‘541 because De Boer teaches the inclusion of additional components, including builder silicates and additional chelators, can further improve the hygroscopicity properties of the MGDA-Na3 granules such that the co-granules produced will have a relative slow moisture uptake or a relative low maximum moisture uptake in order to avoid caking during packing, storage, and dosing to ensure flowability of the particulate substance over a long time. De Boer further teaches that co-granules are superior to coated or sprayed particles because they can incorporate a higher concentration of aminocarboxylate chelating compounds as compared to sprayed particles and the process is less expensive than coating. Therefore, the introduction of the second ingredients of De Boer into the drying process of ‘541will predictably produce non-caking free flowing co-granules of the second ingredient and MGDA-Na3 with a reasonable expectation of success. See MPEP 2143(I)(A).
Regarding claims 2-6, see claims 1-5 of ‘541. Further see Table 1 in col. 1-2 regarding the definitions of the crystal types I, II, and III in ‘541. These crystals are identical to those described in the specification as filed.
Regarding claims 7-9 and 16-18, De Boer teaches that at least aminocarboxylate compounds A and B are present at least temporarily in a liquid form during the mixing procedures, more preferably in the form of an aqueous solution. See claim 10 and [0100]. De Boer teaches that the ingredients may also be in solid form and a solvent is added thereto to form a solution or suspension. See [0031-0035]. De Boer does not explicitly teach that the second composition is dosed in more than one step or continuously or that the second composition is dosed during the formation of the crumbly phase composition of MGDA-Nax. However, changes in the order of performing process steps and/or adding ingredients is prima facie obvious. See MPEP 2144(IV)(C).
Nor does De Boer explicitly teach that the second composition is a saturated or supersaturated aqueous composition such that the MGDA-Nax and second composition remains in a crumbly state before drying. However, ‘541 emphasizes that the mixture to be dried is in the crumbly phase in claims 8-12. Therefore, the skilled artisan would have been motivated to maintain a crumbly phase consistency during and after addition of the second composition in order to achieve the full benefits of the process of ‘541.
Regarding claims 10-12, see claims 8-12 of ‘541.
Regarding claim 13, though the process limitations are only included with a product-by-process limitation for defining the structure of the MGDA-Nax crumbly phase composition, ‘541 explicitly teaches this method of preparation. See claims 6-7 s. Also see MPEP 2113.
Regarding claims 14 and 15, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. See MPEP 2113.
Regardless, when the combination of the processes of ‘541 and De Boer are combined to arrive at the instantly claimed process then the process should also produce similar if not identical products. Further, De Boer teaches that if the second composition is an aminocarboxylate B, then the particles will comprise from 5 to 50 wt% of A (corresponding to MGDA-Nax) and from 40-80 wt% of B (second component). See claim 5. This range overlaps with the upper limit of the claimed range. De Boer further teaches that when silicate is the second component it is present >0 to 25 wt% and the total amount of aminocarboxylate compounds (A and optionally B) is 5 to 200 wt%. This range also overlaps with the ranges of claim 14. Also see MPEP 2144.05. Further regarding claim 15, see claims 9 and 14-16 of ‘541.
Regarding claims 19 and 20, see claim 9 of ‘541.
Conclusion
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692