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 .
DETAILED ACTION
Claims 1, 4, 6-10, and 12-17 are pending. Claims 2, 3, 5, and 11 have been canceled. Note that, Applicant’s arguments and amendments filed November 20, 2025, have been entered.
Applicant’s election of Group I, claims 1-12, in the reply filed on November 20, 2025, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 20, 2025.
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.
Claims 1, 4, 6-10, 12, and 17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 6 recite a broad recitation, and the claims also recite “desirably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note that, for purposes of examination, the Examiner has interpreted the phrase “desirably…” as merely exemplary and not read as a patentable limitation. Note that, instant claims 4, 7-10, 12, and 17 have also been rejected due to their dependency on claims 1 and 6.
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.
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.
Claims 1, 4, 6-10, 12, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP2011084595 (See English Language Translation provided) in view of WO2019/083643 and WO96/18711.
With respect to independent, instant claim 1, ‘595 teaches an alkaline detergent for hard surfaces containing an alkaline agent, at least one anionic surfactant, water, tetramethyl-6-dodecyne-5,8-diol, a polyoxyalkylene alkyl ether having the general formula (2), a nonionic surfactant other than the one of general formula (2), and one or more solubilizing agents such as p-toluenesulfonic acid, etc., and salts thereof. See para. 10. Suitable polyoxyalkylene alkyl ethers are those having the formula R2-O-(AO)n-H, wherein R2 is a linear or branched alkyl group having 3 to 8 carbon atoms and AO is at least one oxyalkylene group such as an oxyethylene group, and n is the number of moles of oxyalkylene groups such as from 1 to 20. See paras. 28 and 29. Suitable other nonionic surfactants are those having the general formula R3-O-(EO)m-(PO)p-H wherein R3 represents an alkyl group having 10 to 18 carbon atoms, EO is ethylene oxide and PO is propylene oxide, wherein m represents a number from 1 to 20 and p represents a number from 0 to 20. See paras. 30-33. The composition contains water such as ultrapure water, pure water, ion-exchanged water, distilled water, etc. The cleaning composition of the present invention may further contain a water-soluble organic solvent (e.g., an alcohol such as ethanol) in addition to the water as a solvent. See para. 24. The cleaning composition of the present invention may contain a water-soluble polymer (Component H), a chelating agent (Component I), a preservative, an antioxidant, and the like. See para. 44. The cleaning composition of the present invention may contain a water-soluble polymer (component H) from the viewpoint of improving the dispersibility of inorganic fine particles. As the water-soluble polymer, a carboxylic acid polymer is preferable. See para. 46. Examples of the carboxylic acid polymer include acrylic acid polymers, methacrylic acid polymers, maleic acid polymers, acrylic acid/methacrylic acid copolymers, acrylic acid/maleic acid copolymers, methacrylic acid/dimethylamino methacrylic acid copolymers, and methacrylic acid/methyl acrylate copolymers. The weight average molecular weight of the water-soluble polymer is preferably 500 to 150,000, more preferably 1000 to 100,000, and even more preferably 1000 to 50,000, from the viewpoint of preventing a decrease in fine particle removal ability due to the occurrence of coagulation and obtaining high fine particle removal ability. See para. 47.
The cleaning composition of the present invention may contain a chelating agent (component I) from the viewpoints of improving the cleaning ability of the cleaning composition against metal stains and improving the storage stability in a high concentration state. Examples of the chelating agent (component I) include aldonic acids such as gluconic acid and glucoheptonic acid; aminocarboxylic acids such as ethylenediaminetetraacetic acid; hydroxycarboxylic acids such as citric acid and malic acid; phosphonic acids such as aminotrimethylenephosphonic acid and hydroxyethylidene diphosphonic acid; and alkali metal salts, lower amine salts, ammonium salts, and alkanolamine salts thereof. Among these, from the viewpoints of improving the cleaning ability of the detergent composition against metal stains and improving the storage stability in a high concentration state, sodium gluconate, sodium hydroxyethylidene diphosphonate, and tetrasodium aminotrimethylenephosphonate, ethylenediaminetetraacetate are preferred. These chelating agents may be used alone or in combination of two or more. See para. 51.
‘595 does not teach the use of an organic solvent such as propylene glycol phenyl ether or dipropylene glycol propyl ether, a builder such as a tripolyphosphate, or a composition containing water, a source of alkalinity, a detergent builder, a chelant, nonionic surfactants, an anionic surfactant, at least one dispersant, at least one hydrotrope, an organic solvent, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
‘643 teaches a composition effective for removing soils, fluxes, polymers, or other contaminants from electronic and semiconductor surfaces. See page 1. The composition is a concentrated liquid cleaning composition which comprises butyl pyrrolidone and a sufficient amount of an alkali to result in a pH of at least about 7.1. See page 2. In another embodiment, the composition may contain at least one additional secondary solvent such as propylene glycol phenyl ether, dipropylene glycol propyl ether, etc. See page 3, lines 20-35.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a solvent such as propylene glycol phenyl ether, dipropylene glycol propyl ether in the composition taught by ‘595, with a reasonable expectation of success, because ‘643 teaches the use of a solvent such as propylene glycol phenyl ether or dipropylene glycol propyl ether in a similar composition and further, ‘595 teaches the use of organic solvents in general.
‘711 teaches a liquid hard surface cleaning composition with a pH about 6 and which comprises surfactants derived from highly ethoxylated guerbet alcohols. See Abstract. The compositions may contain up to 5% by weight of a builder such as alkali metal tripolyphosphates, etc., wherein the builders assist the surfactant cleaning by sequestering calcium and magnesium. See page 14.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a builder such as alkali metal tripolyphosphate in the composition taught by ‘595, with a reasonable expectation of success, because ‘711 teaches the use of an alkali metal tripolyphosphate as a builder in a similar composition wherein the builders assist the surfactant cleaning by sequestering calcium and magnesium and further, ‘595 teaches the use of surfactants and such enhanced surfactant cleaning and sequestering properties would be desirable in the compositions taught by ‘595.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing water, a source of alkalinity, a detergent builder, a chelant, nonionic surfactants, an anionic surfactant, at least one dispersant, at least one hydrotrope, an organic solvent, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘595 in view of ‘643 and ‘711 suggest a composition containing water, a source of alkalinity, a detergent builder, a chelant, nonionic surfactants, an anionic surfactant, at least one dispersant, at least one hydrotrope, an organic solvent, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using JP2011084595 (See English Language Translation provided) in view of WO2019/083643 and WO96/18711, Applicant states that he Office has not demonstrated that the primary reference discloses a component that is equivalent to part G (dispersant) of claim 1, or a component that is equivalent to part H (aromatic hydrotrope). Additionally, Applicant states that the evidence of record does not establish that those of ordinary skill in the art would have modified JP ‘595 in the manner that the Office has proposed using the Doyel reference since JP ‘595 is directed to compositions for cleaning glass surfaces, such as a substrate for a hard disk while Doyel is directed to compositions for removing solder flux and polymeric residue from printed circuit boards (PCBs), ceramic electronics, and silicone wafers. Also, Applicant states that the record evidence does not establish that those of ordinary skill would have believed that a component for modifying solubility parameters with respect to solder flux and polymeric residue in order to effectuate cleaning electronic components and PCBs would be relevant to the glass cleaners of JP ‘595.
In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of JP ‘595 in view of WO2019/083643 and WO96/18711 suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions". Additionally, 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 known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, ‘595 clearly teaches that the cleaning composition of the present invention may contain a water-soluble polymer (component H) from the viewpoint of improving the dispersibility of inorganic fine particles. Suitable polymers include acrylic acid polymers, methacrylic acid polymers, maleic acid polymers, acrylic acid/methacrylic acid copolymers, acrylic acid/maleic acid copolymers, methacrylic acid/dimethylamino methacrylic acid copolymers, and methacrylic acid/methyl acrylate copolymers, wherein these polymers would fall within the broad scope of “dispersant” as recited by the instant claims (See paras. 46 and 47 of ‘595). Also, ‘595 clearly teaches that the cleaning composition may contain p-toluene sulfonic acid, etc., and salts thereof which would clearly suggest sodium p-toluene sulfonate as recited by instant claim 10 (See para. 38 of ‘595).
Additionally, the Examiner asserts that ‘643 and ‘711 are analogous prior art relative to the claimed invention and ‘595 since they are drawn to the same field of endeavor, namely surfactant-based hard surface cleaning compositions, and that one of ordinary skill in the art clearly would have looked to the teachings of ‘643 and ‘711 to cure the deficiencies of ‘595. ‘643 and ‘711 are secondary references relied upon for their teaching of an organic solvent such as propylene glycol phenyl ether or dipropylene glycol propyl ether, and a builder such as a tripolyphosphate, respectively. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a solvent such as propylene glycol phenyl ether, dipropylene glycol propyl ether in the composition taught by ‘595, with a reasonable expectation of success, because ‘643 teaches the use of a solvent such as propylene glycol phenyl ether or dipropylene glycol propyl ether in a similar composition and further, ‘595 teaches the use of organic solvents in general. Additionally, the Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a builder such as alkali metal tripolyphosphate in the composition taught by ‘595, with a reasonable expectation of success, because ‘711 teaches the use of an alkali metal tripolyphosphate as a builder in a similar composition wherein the builders assist the surfactant cleaning by sequestering calcium and magnesium and further, ‘595 teaches the use of surfactants and such enhanced surfactant cleaning and sequestering properties would be desirable in the compositions taught by ‘595. Thus, the Examiner asserts that teachings of JP2011084595 (See English Language Translation provided) in view of WO2019/083643 and WO96/18711, are sufficient to render the claimed invention obvious under 35 USC 103.
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 GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/February 28, 2026