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 7-12, 14, 16, 18-23, and 25 are pending. Claims 1-6, 13, 15, 17, 24, and 26 have been canceled. Note that, Applicant’s amendment and arguments filed May 27, 2026, have been entered.
Claims 7-12, 14, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 17, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 3, 2026, has been entered.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 2/220/26 have been withdrawn:
The objection to claims 18-25 due to minor informalities has been withdrawn.
The rejection of claim 21 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inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
The rejection of Claims 18-22, 24, and 25 under 35 U.S.C. 103 as being unpatentable over Shah et al (US 7,462,587) in view of Vlasblom (US 6,369,016), has been withdrawn.
The rejection of claim 23 under 35 U.S.C. 103 as being unpatentable over Shah et al (US 7,462,587) in view of Vlasblom (US 6,369,016) as applied to claims 18-22 and 25 above, and further in view of Garner et al (US 2013/0217610) or Tomaszewski (US 5,372,741), has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18-23 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to instant claim 18, the specification, as originally filed, provides no basis for broadly stating “a biodegradable lactam”. The Examiner would like to point out that the fact that NMP is biodegradable (i.e., a physical property of NMP) does not provide support for all biodegradable lactams or for broadly stating "biodegradable lactam". The Examiner asserts that Applicant was not in possession of all “biodegradable lactams”, despite the fact of describing NMP as a “biodegradable lactam”. Note that, this limitation (i.e., “lactam”) was present in the preliminary amendment filed April 23, 2025, while the instant application has a filing date of July 10, 2023, and a preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. Further, matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. See MPEP 608.04(a) and (b). Thus, this is deemed new matter. Note that, instant claims 19-23 and 25 have also been rejected due their dependency on claim 18.
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.
Claims 18-22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al (US 7,462,587).
With respect to independent, instant claim 18, Shah et al teach a composition for removing a film from a substrate. The composition comprises a mixture comprising a water-soluble biodegradable alkyl ester, and a water-insoluble biodegradable alkyl ester. See Abstract. Additionally, the composition contains an activated alcohol, a peroxide, a terpene, and at least one member selected from the group consisting of surfactants, chelating agents, cosolvents, peroxide stabilizers, activators, etc., and mixtures thereof. See column 3, lines 1-40. The mixture of the water-soluble and water-insoluble biodegradable alkyl esters may generally comprise from 99 to 1% by weight of the water-insoluble biodegradable alkyl ester and from 1 to 99% by weight of the water-soluble biodegradable alkyl ester, based on the total weight of the mixture. The film removing composition will generally comprise the mixture of the two biodegradable alkyl esters in an amount of at least 1% by weight to no more than 99% by weight. Suitable water-insoluble biodegradable alkyl esters include methyl soyate, methyl ester of corn oil, methyl ester of lard oil, etc. See column 6, lines 1-65.
Activated alcohols are present in amounts from 0 to 60% by weight an include benzyl alcohol, etc. See column 7, lines 1-35. Suitable cosolvents include N-methylpyrrolidone, ethylene glycol, propylene glycol, water, etc., and mixtures thereof, which may be used in amounts from about 1% to 70% by weight. See column 8, lines 1-35. Surfactants may be used in amounts from about 0.01 to about 10% by weight and include nonionic, anionic, cationic, etc., surfactants. See column 9, lines 1-55. In one embodiment, the composition may be formed as a water-in-oil emulsion. See column 12, lines 1-25.
Shah et al do not teach, with sufficient specificity, a composition containing methyl soyate, a lactam, a third (i.e., additional solvent), a cationic surfactant, a diluent such as water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 18 and the respective dependent claims.
Nonetheless 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 methyl soyate, a lactam, a third (i.e., additional solvent), a cationic surfactant, a diluent such as water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 18 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 Shah et al suggest a composition containing methyl soyate, a lactam, a third (i.e., additional solvent), a cationic surfactant, a diluent such as water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 18 and the respective dependent claims.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Shah et al (US 7,462,587) as applied to claims 18-22 and 25 above, and further in view of Garner et al (US 2013/0217610) or Tomaszewski (US 5,372,741).
Shah et al are relied upon as set forth above. However, Shah et al do not teach the use of a sulfonated-formaldehyde-based dispersant in addition to the other requisite components of the composition as recited by the instant claims.
Tomaszewski teaches an aqueous degreasing composition which is free from silicates, chelates, and inorganic phosphates and a method for degreasing metal substrates which are sensitive to these types of compositions. See Abstract. A polymer such as a low molecular weight naphthalene sulfonate formaldehyde condensate may be used in the composition as a dispersant which is critical to provide proper desoiling and degreasing in the aqueous compositions that is effective in preventing redeposition of soils onto substrates. See column 3, lines 1-45.
Garner et al teach hypohalite-based cleaners for use of hard, soft, animal and human surfaces. See para. 3. The compositions can be further improved using relatively low molecular weight water-soluble polymers, wherein such polymers aid dispersion, but usually do not decrease interfacial tensions as well as surfactants. Suitable dispersant polymers include naphthalene sulfonate formaldehyde copolymers, etc. See para. 97.
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 naphthalene sulfonate formaldehyde copolymer as a dispersant in the composition taught by Shah et al, with a reasonable expectation of success, because Tomaszewski or Garner et al teach that the use of naphthalene sulfonate formaldehyde copolymers as dispersants provide desoiling and degreasing and allowing better cleaning properties in similar compositions and further, such properties would be desirable in the compositions taught by Shah et al.
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 18-23 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11,697,788 or claim 1 of US Pat. No. 11,053,464. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 of U.S. Patent No. US 11,697,788 or claim 1 of US Pat. No. 11,053,464 disclose the claimed invention with sufficient specificity to constitute anticipation.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 112(a), first paragraph, Applicant states that the specification, as originally filed, explicitly describes N-methylpyrrolidinone (NMP) as a biodegradable lactam, thereby demonstrating that one of ordinary skill in the art would appreciate that Applicant was in possession of the claimed subject matter, particularly, the recitation that the second solvent comprises a lactam. In response, note that, the Examiner asserts that while N-methylpyrrolidone (NMP) is an example or a species of a biodegraeable lactam, NMP does not provide basis for, or that Applicant was in possession of, the broad genus of biodegradable lactam as recited by the instant claims. In other words, the disclosure of one species of a biodegradable lactam (i.e., NMP) or the fact that NMP is a biodegradable lactam does not provide basis for the entire genus of biodegradable lactams (i.e., lactam). Thus, the Examiner asserts the rejection of claims 18-23 and 25 under 35 USC 112(a), first paragraph, has been maintained.
With respect to the rejection of the instant claims under 35 USC 103 using Shah et al in view of in view of Vlasblom, Applicant states that Vlasblom does not teach a use of a passive diluent and Vlasblom does not utilize diesel fuel as a diluent and as such, a skilled artisan reading Vlasblom would not be directed toward modifying Shah et al to add a hydrocarbon solvent such as diesel fuel as a diluent.
In response, note that, the Examiner asserts that instant claim 18 does not require the use of diesel fuel as a diluent; instant claim 18 recites that the diluent may comprise water, and Shah et al clearly teaches the use of water as cosolvent (See column 8, lines 1-30 of Shah et al). Thus, the Examiner asserts that the teachings of Shah et al are sufficient to render the claimed invention obvious under 35 USC 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
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/June 20, 2026
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