3Notice 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 § 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) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lei et al. (US 2018/0208488A1), in view of Iwanski (US 4692335).
Regarding claim 1, Lei teaches a water treatment tablet comprising:
calcium hypochlorite (Refer paragraph [0017]); and
lime, in an amount which results in the tablet having a total lime content from about 10.0% to about 19.0% of the total weight of the tablet (paragraph [0017] discloses greater than 10% by weight, [0023] discloses 10 to 20% by weight).
Lei teaches that the tablet has a weight in a range of 1 to 500 grams (refer [0027]). The claimed weight of 200 grams to 500 grams lie inside the range disclosed by Lei. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Selecting weight of the table would have been an obvious matter of choice to one of ordinary skill in the art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Lei also teaches that the table has a slow dissolution rate such that the shaped article (e.g., a tablet) dissolves in a range of 3 to 14 days (refer [0027]).
The limitation “wherein when placed in recreational pool water conditions comprising a flow rate of about 0.5% of the total volume of the water and a temperature of from about 23.8 to about 37.8 °C, the tablet completely dissolves from 7 days to 9 days” is reciting how the water treatment tablet is used, what conditions (such as flow rate, temperature) is applied, and properties of the tablet. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Also refer "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id.
In example 2, Lei discloses tablets having density of about 1.65 g/ml (refer [0067]). Lei does not disclose that the density of the tablet is from about 1.75 g/ml to 1.85 g/ml.
Iwanski teaches a table comprising calcium hypochlorite and lime, and discloses that the tablet has a density of 1.8-2.2 g/cc. Iwanski also discloses that denser the compacted article, the slower the dissolution of the article (refer abstract, col. 2 – lines 6-32, col. 3 – lines 14-19, col. 3 – lines 51-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to provide the tablet of Lei having density in a range of 1.75 g/ml to 1.85 g/ml to provide desired dissolvability as taught by Iwanski. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, modified Lei teaches limitations of claim 1 as set forth above. Lei further teaches that the tablet comprises water content of 18% - 24% (refer [0024]), and that the composition is not a division 5.1 oxidizing solid (refer [0017]). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 3 and 4, Lei further teaches that the tablet comprises 20% to 35% hydrated magnesium sulfate (refer [0023]).
Regarding claim 5, Lei teaches that the tablet has a cylindrical shape (refer [0041]).
Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lei et al. (US 2018/0208488A1), in view of Iwanski (US 4692335), and Hani et al. (US 2016/0330972A1).
Regarding claim 1, Lei teaches a water treatment tablet comprising:
calcium hypochlorite (Refer paragraph [0017]); and
lime, in an amount which results in the tablet having a total lime content from about 10.0% to about 19.0% of the total weight of the tablet (paragraph [0017] discloses greater than 10% by weight, [0023] discloses 10 to 20% by weight).
Lei teaches that the tablet has a weight in a range of 1 to 500 grams (refer [0027]). The claimed weight of 200 grams to 500 grams lie inside the range disclosed by Lei. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Selecting weight of the table would have been an obvious matter of choice to one of ordinary skill in the art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Lei also teaches that the table has a slow dissolution rate such that the shaped article (e.g., a tablet) dissolves in a range of 3 to 14 days (refer [0027]).
The limitation “wherein when placed in recreational pool water conditions comprising a flow rate of about 0.5% of the total volume of the water and a temperature of from about 23.8 to about 37.8 °C, the tablet completely dissolves from 7 days to 9 days” is reciting how the water treatment tablet is used, what conditions (such as flow rate, temperature) is applied, and properties of the tablet. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Also refer "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id.
In example 2, Lei discloses tablets having density of about 1.65 g/ml (refer [0067]). Lei does not disclose that the density of the tablet is from about 1.75 g/ml to 1.85 g/ml.
Iwanski teaches a table comprising calcium hypochlorite and lime, and discloses that the tablet has a density of 1.8-2.2 g/cc. Iwanski also discloses that denser the compacted article, the slower the dissolution of the article (refer abstract, col. 2 – lines 6-32, col. 3 – lines 14-19, col. 3 – lines 51-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to provide the tablet of Lei having density in a range of 1.75 g/ml to 1.85 g/ml to provide desired dissolvability as taught by Iwanski. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Hani discloses that forming shaped article from a composition containing a blend containing calcium hypochlorite and greater than 10% lime, based on the total weight of the shaped article, the dissolution rate of the shaped article can be matched to that of trichloroisocyanuric acid, without the by-product cyanuric acid being released to the water being treated, and that the shaped article will also maintain structural integrity during dissolution in the use environment (refer [0008]). Hani also discloses that increasing the amount of lime in the shaped article will increase the time that shaped article will release chlorine to treat the aqueous environment (Refer [0026]). Hani further discloses that “The shaped articles of the present invention will dissolve and are typically designed to dissolve in 3 to 14 days, more typically 3-7 days, when used in swimming pools, spas and the like, but can be designed to dissolve in 28-35 day, in the case of a toilet sanitizer. It should be keep in mind that various factors affect the dissolution rate of the shaped articles, including flow rate of water over the shaped article, temperature of the water and the like. The dissolution rate may be adjusted by the amount of lime added to the calcium hypochlorite.” (Refer [0032]). Therefore, Hani establishes that amount of lime in the tablet composition is a result effective variable for dissolution of the tablet in water. It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to adjust lime content in the table of modified Lei to provide a tablet having dissolution period of 7 to 9 days to release chlorine over period of 7 to 9 days as desired.
Regarding claim 2, modified Lei teaches limitations of claim 1 as set forth above. Lei further teaches that the tablet comprises water content of 18% - 24% (refer [0024]), and that the composition is not a division 5.1 oxidizing solid (refer [0017]). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 3 and 4, Lei further teaches that the tablet comprises 20% to 35% hydrated magnesium sulfate (refer [0023]).
Regarding claim 5, Lei teaches that the tablet has a cylindrical shape (refer [0041]).
Response to Arguments
Applicant's arguments filed 11/17/2025 regarding rejection of claims 1-10 under 35 USC 103(a) as being unpatentable over Lei et al. (US 2018/0208488A1) have been fully considered but they are moot because the current office does not include the rejection.
Applicant's arguments filed 11/17/2025 regarding rejection of claims 1-10 under 35 USC 103(a) as being unpatentable over Lei et al. (US 2018/0208488A1), in view of Iwanski (US 4692335) have been fully considered but they are not found to be persuasive.
Regarding rejection of claim 1, applicant argued:
“Applicants highlight the fact that the obvious optimization standards are appropriately applied under circumstances where optimum or workable ranges are discoverable by routine experimentation. However, under the instant circumstances, Applicants note that claim 1, as amended, recites a number of factors beyond density, including mass of the claimed tablets, dissolving time, and specific conditions under which the tablets dissolve. When taken as a whole, balancing all of the claimed features of the water treatment tablet, Applicants respectfully submit that as skilled person would not reasonably have been expected to arrive at all of the features of the claimed tablet based on the vague direction provided by the combined teachings of Lei and Iwanski. In particular, by simply suggesting that increasing density can increase dissolution time, Applicants respectfully submit that a skilled person would not reasonably have been expected to exploit the teachings of Lei to develop a tablet (have the claimed low amount of lime, including calcium hypochlorite, and having the claimed weight) that completely dissolves in from 7 to 9 days.”
This is not found to be persuasive because as indicated in the claim rejection above, Lei teaches the tablet having the claimed composition except for the claimed density of 1.75 g/ml to 1.85 g/ml. Lei disclosed that when a tablet of 250 g with a density of 1.65 g/ml placed in a skimmer of a 5000 gallon pool and pump was run for 8 hours per day, the tablet was dissolved in 5 days. It should be noted that example 2 had lime content of only 3%. Iwanski discloses a table comprising calcium hypochlorite and lime, and discloses that the tablet has a density of 1.8-2.2 g/cc. Iwanski also discloses that denser the compacted article, the slower the dissolution of the article. Based on this disclosure of Iwanski, one of ordinary skill in the art would expect that a tablet with a density of 1.8 g/cc (as disclosed by Iwanski) would dissolve slower than the tablet (of Lei) having density of 1.65 g/ml.
Furthermore, applicant did not provide any data related to dissolution time of tablets having density less than 1.75 g/ml to establish criticality of the claimed range.
Applicant further argued:
“Applicants note that both Lei and Iwanski expressly teach tablet densities that are well outside of the claimed ranges”. This is not found to be persuasive because Iwanski discloses a range (1.8-2.2 g/cc) that overlaps the claimed range of 1.75 – 1.85 g/ml.
Regarding the conditions of water in which the tablet is being dissolved, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Also refer "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id.
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.
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/PRANAV N PATEL/Primary Examiner, Art Unit 1777