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
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 1-20 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.
With respect to “obtainable” recited in line 2 of claim 1, it is unclear what is encompassed by “obtainable”. One does not exactly and precisely know what a given polymer is particularly considering the lack of recitation of a myriad of parameters which affect the polymer identity. See Atlantic Thermoplastics Co. Inc. v Faytex Corp. 23 USPQ 2nd 1481 (footnote 6 on page 1486), Ex parte Tanksley 26 USPQ 2nd 1389, and Purdue Research v Watson 1959 CD 124 (Dist. Ct.) affirmed by CCPA 120 USPQ 521. MPEP 2133.03 (C). Thus, the examiner suggests “obtained” instead.
The recited “residues (IIb) and (IIc)” of claim 6 would lack antecedent basis in claim 3 in which only the residue (IIa) is recited. Also, a nature of the residues (IIb) and (IIc)” would be indefinite absent any structure.
The recited “residue according to general formula (IIc)” of claim 7 would be indefinite absent any structure.
Claim 16 recites carious enzymes for proviso vi) and vii), and thus substitution of the indefinite words (i.e., “types” in each line 4 of the proviso vi) and vii)) with “enzymes” is suggested.
Deletion of indefinite word (i.e.,” preferably”) in claim 3 of claim 20 is suggested
Other claims depend from the indefinite claim 1 would be also indefinite.
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.
Claims 1, 10, 12, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hilfiger et al. (US 2015/0122742 A1).
Hilfiger et al. teach an alkoxylated polyalkyleneimine (Product A) obtained by mixing and reacting a polyethyleneimine polyol, caprolactone, propylene oxide and ethylene oxide in [0021].
Note than an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
Hilfiger et al. teach the alkoxylated polyalkyleneimine (Product A) obtained by same reactants (i.e., polyethyleneimine polyol, caprolactone, propylene oxide and ethylene oxide) recited in claim 1 and a block polymer in [0006].
Thus, it would be expected to yield the instant block alkoxylated polyalkyleneimine and a burden is on applicant to show otherwise.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of Hilfiger et al. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
The instant claim 1 recites broad ratio of the reactants and a modification to the ratio in order to change properties of the alkoxylated polyalkyleneimine (Product A) would have been obvious, especially in view of the fact that Hilfiger et al. further teach a weight average molecular weight of 2,000 to 1,500,000 g/mol in [0017].
When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize different molar ratios of the reactants in obtaining the block alkoxylated polyalkyleneimine (Product A) of Hilfiger et al. since Hilfiger et al. teach block polymer and the weight average molecular weight of 2,000 to 1,500,000 g/mol requiring different amounts of the reactants absent showing otherwise.
Regarding claim 10, the recited “up to 100%” would encompass 0%.Regarding claim 12, the above discussed weight average molecular weight of 2,000 to 1,500,000 g/mol requiring different amounts of the reactants would make the recited molar ratios obvious.
Regarding claims 13 and 15, Hilfiger et al. teach breaking emulsion in [0019].,
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hilfiger et al. (US 2015/0122742 A1). as applied to claims1, 10, 12, 13 and 15 above, and further in view of WO 95/32272 or WO 2009/060059 A2.
Regarding claims 14 and 16, WO’272 teaches cleaning and soil dispersing composition utilizing ethoxylated/propoxylated polyalkyleneneamine polymer in abstract. WO’059 teaches laundry detergents, soil releasing and whiteness maintenance by utilizing amphiphilic water soluble polyalkyleneimine polymer in abstract and lines 5-13 of page 3.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the alkoxylated polyalkyleneimine taught by Hilfiger et al. for applications taught by WO’272 or WO’059 since utilization of the alkoxylated polyalkyleneimine for various applications such as cleaning and soil dispersing composition, laundry detergents, soil releasing and whiteness maintenance is well known absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
EXAMINER’S COMMENT
The polyethyleneimine polyol taught by Hilfiger et al. would not fall within scope of the recited general formula (I) of claim 2.
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/TAE H YOON/ Primary Examiner, Art Unit 1762