Response to Amendment
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 .
Claim(s) 1, 3-7, 9-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP (3441447) in view of Schlesiger et al (2004/0127700).
EP ‘447 disclose a hard surface cleansing composition comprising nonionic cellulose ethers in a total quantity of 0.05 to 5 wt.-%, more preferably 0.5 to 1 wt.-%, based on the total weight of the composition, whereby one or more of the specifically mentioned nonionic cellulose ethers can be present. In a further preferred embodiment one compound selected from methyl cellulose, hydroxyethyl cellulose, hydroxypropyl methyl cellulose, and hydroxyethyl methyl cellulose is present in 0.05 to 5 wt.-%, more preferably 0.5 to 1 wt.-%, based on the total weight of the composition (008-0013); anionic surfactants in amounts from 0.1-50% (0032); amphoteric surfactants in amounts from 0.1-20% (0045); 50-99% water (067); 0.001-5% of adjunct ingredients (0070-0074) and thickeners such as methyl cellulose, hydroxyethyl cellulose, hydroxypropyl methylcellulose and hydroxyethyl methylcellulose (0076).
EP ‘447 teach all of the instantly required except applicant’s crosslinked cellulose ether as claimed.
Schlesiger et al disclose a thickener such as an irreversibly crosslinked cellulose derivatives (0004; 0024) wherein said cellulose ether derivatives include The inventive cellulose derivatives are preferably cellulose ethers whose water solubility is achieved by etherification with hydroxyalkyl groups and/or with alkyl groups. Preferably, the cellulose derivatives are derivatives of hydroxyethyl cellulose (HEC) or of methyl cellulose (MC). In particular the MC is preferably used as mixed ether with hydroxyalkyl groups (methyl hydroxyalkyl celluloses). Mixed ethers of methyl cellulose which may be mentioned here are, in particular, methyl hydroxyethyl cellulose (MHEC), methyl hydroxypropyl cellulose (MHPC) and methyl hydroxyethyl hydroxypropyl cellulose (MHEНРС) (0058). Further, If an irreversibly crosslinked HEC is prepared as
cellulose derivative, preferably a degree of substitution MS (HE) of 1.5 to 4.5 is set, in particular a degree of substitution (HE) of 2.0 to 3.0.
It would have been obvious to the skilled artisan, in the absence of a showing of unexpected results to the contrary, commensurate in scope with the claimed invention to substitute the conventional cellulose ethers of EP ‘447 for the crosslinked cellulose ether of Schlesiger et al since Schlesiger et al teach the benefits of said crosslinked cellulose ether as increasing the viscosity, requirements for an optimum setting of the rheological properties of aqueous systems, by the use of cellulose derivatives, can include gel-like properties (0011) and Achieving gel-like properties by partial or-complete replacement of cellulose derivatives by other hydrocolloids which impart gel-like properties is frequently undesirable, since, as a result, certain properties of the cellulose derivatives, for example good water retention, are no longer completely available. Also, such hydrocolloids are generally not based on renewable raw materials or are not biodegradable (0013).
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
With respect the enhanced suds mileage limitation of the newly amended claims, the examiner contends that the functional language is obvious to the compositions of EP ‘477 in view of Schlesiger since the components of the invention are suggested and taught by the prior art within the same field of endeavor of cleansing compositions comprising mixed surfactants and irreversibly crosslinked cellulose ether. One skilled in the art would expect similar characteristics such as low suds mileage given the same or similar compositions used for the same purpose, absent a showing to the contrary commensurate in scope with the claimed invention.
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. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
Motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention; Cross Med. Prods.,Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
Response to Arguments
Applicant's arguments filed 02-26-2026 have been fully considered but they are not persuasive.
Applicant argues:
“There is no motivation in the art of record that it would be desirable to substitute the irreversibly crosslinked cellulose derivatives of Schlesiger for the specific select nonionic cellulose ethers taught in Abdallah. Moreover, Abdallah teaches that the select nonionic cellulose ethers it taught provide a surprising improvement in soil removal capacity. Hence, there is no teaching or suggestion in the art of record that the irreversibly crosslinked cellulose derivatives of Schlesiger would provide equivalent soil removal performance to the Abdallah select nonionic gel-like cellulose ethers”.
The examiner contends and respectfully disagrees as the Office acquiesces the argument of Abdallah teaching “irreversibly” cellulose ethers but that said ethers are well known in the art of detergents and for their rheological profiles and property advantages, which are noted by applicant. Therefore the argument of “removal performances” is unfounded since the test for obviousness doesn’t require the combination of references or references to perform or suggest the same benefits as applicants claimed invention. The test is whether the skilled artisan would be motivated and since Schlesiger teaches a motivation with analogous art of certain rheological benefits within the detergent art, in the absence of criticality to the contrary, one skilled looking to employ cellulose ethers would envision irreversible cellulose ethers of Schlesiger as an obvious to try suggestion, in order to ascertain their rheological characteristics to improve the performance of said detergent compositions with those proffered within Abdallah.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
As stated in KSR Int'l Co., v. Teleflex, Inc., 550 U.S. 398, 418 (2007):
"[A]nalysis [of whether the subject matter of a claimwould have been prima facie obvious] need not seek out preciseteachings directed to the specific subject matter of thechallenged claim, for a court can take account of the inferencesand creative steps that a person of ordinary skill in the artwould employ."
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. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
Motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention; Cross Med. Prods.,Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
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 NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761