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 7-14 and 16-25 are pending. Claims 1-6, 15, and 26 have been canceled. Note that, Applicant’s amendment and arguments filed November 17, 2025, have been entered.
Applicant’s election without traverse of Group II, claims 18-26, in the reply filed on November 17, 2025, is acknowledged.
Claims 7-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 7/25/25 have been withdrawn:
The rejection of claims 18-22, 24, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al (US 7,462,587), has been withdrawn.
Claim Objections
Claims 18-25 are objected to because of the following informalities:
With respect to instant claim 18, line 7, it is suggested that Applicant delete “simple a” and insert “a simple”. Note that, instant claims 19-25 have also been objected to due to their dependency on claim 18.
Appropriate correction is required.
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 18-25 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 claims 18 and 24, the specification, as originally filed, provides no basis for broadly stating “a lactam”. Note that, this limitation 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.
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 21 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 21 recites the limitation "additional" in line 2. There is insufficient antecedent basis for this limitation in the claim. Clarification is required. Note that, for purposes of examination, the Examiner has interpreted “additional” solvent as the third solvent.
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, 24, and 25 are rejected 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).
With respect to independent, instant claim 1, 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, 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 the use of diesel fuel or a composition containing methyl soyate, a lactam, a third (i.e., additional solvent), a cationic surfactant, diesel fuel, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Vlasblom teaches a heavy oil remover formulation which is useful for removing heavy oil and oily sludges from process equipment such as storage tanks, transfer piping, and pumping facilities. More specifically, Vlasblom teaches from 3 to about 96 weight percent; from about 1 to about 94 weight percent dipropylene glycol monobutyl ether, etc. See column 1, lines 1-60. Suitable hydrocarbon solvents include terpenes, diesel fuel, jet fuel, gasoline, heating oil, etc. See column 2, lines 1-55.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use diesel fuel in the composition taught by Shah et al, with a reasonable expectation of success, because Vlasblom teaches the use of diesel fuel as a well-known solvent in a similar composition and further, Shah et al teach the use of cosolvents in general.
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, diesel fuel, 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 Shah et al suggest a composition containing methyl soyate, a lactam, a third (i.e., additional solvent), a cationic surfactant, diesel fuel, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 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) in view of Vlasblom (US 6,369,016) as applied to claims 18-22, 24, 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 18-25 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 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 lactam, NMP does not provide basis for, or that Applicant was in possession of, the broad genus of lactam as recited by the instant claims. In other words, the disclosure of one species (i.e., NMP) does not provide basis for the entire genus (i.e., lactam). Thus, the Examiner asserts the rejection of claims 18-25 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 diesel fuel "in a similar composition" to Shah since the respective compositions of Shah and Vlasblom are distinct formulations premised upon different mechanisms of action. Additionally, Applicant states that Vlasblom does not utilize diesel fuel as a diluent; rather, Vlasblom employs diesel as an active "hydrocarbon solvent" component; this is fundamentally different from a "diluent” as will be appreciated by those of skill in the art, because a diluent "may decrease the potency of the solvent composition, but not otherwise affect the efficacy." (See para. 17 of the instant application). Also, Applicant states that both Shah et al and Vlasblom employ solvents and cosolvents that function as active components and not diluents.
In response, note that, the Examiner asserts that Shah et al and Vlasblom and are analogous prior art relative to the claimed invention and to each other since they are drawn to the same field of endeavor, namely solvent-based cleaning and/or removal compositions. Additionally, the Examiner asserts that Vlasblom is a secondary reference relied upon for its teaching of diesel fuel. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use diesel fuel in the composition taught by Shah et al, with a reasonable expectation of success, because Vlasblom teaches the use of diesel fuel as a well-known solvent in a similar composition and further, Shah et al teach the use of cosolvents in general. Note that, while Vlasblom teaches the use of diesel fuel as a solvent and not a “diluent”, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Note that, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). See MPEP 2144. To render an invention obvious, the prior art does not have to address the same problem addressed by a patent applicant. KSR Int’l Co. v. Teleflex Inc., 550, U.S. 398, 420 (2007); see also, In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.”). Applicant’s argument is not persuasive because the Examiner’s reason for combining the teachings of the references does not need to be the same as Applicant’s reason (i.e., to prevent a greasy feeling on items or hands). See e.g., In re Khan, 441 F.3d 977, 987 (Fed. Cir. 2006). Thus, the Examiner asserts that the teachings of Shah et al in view of Vlasblom 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.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/February 17, 2026