DETAILED ACTION
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 Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (JP 2003-096260), as cited on the IDS, wherein the machine English translation is used for citation.
Regarding claims 1-5; Yamaguchi teaches a water soluble graft polymer prepared by graft polymerization of a mono-ethylenically unsaturated monomer component to a polyether compound [05], suitable examples of the mono-ethylenically unsaturated monomer include maleic anhydride [019] and suitable examples of the polyether are prepared from ethylene glycol [08-010].
Yamaguchi does not explicitly disclose wherein the ester bond-containing polycarboxylic acid or salt thereof has an acid value of 100 mg (KOH)/kg or more. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. acid value, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
In the alternative, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to optimize the acid value of the water soluble graft polymer, and would have been motivated to do so in order to improve mud/dirt cleaning power when added to a detergent composition, as demonstrated with respect to the linear polycarboxylic acid-based polymer [0146].
Regarding claims 2 and 3; Yamaguchi does not explicitly disclose wherein the ester bond-containing polycarboxylic acid or salt thereof has an alkaline degradation change rate of 10% or higher and a biodegradability of 20% or higher. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. alkaline degradation change rate and biodegradability, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Regarding claim 4; Yamaguchi teaches a detergent composition comprising the water soluble graft polymer [01-04, 06].
Regarding claim 5; Yamaguchi teaches a method for making said water soluble graft polymer by graft-polymerizing a monoethylenically unsaturated monomer component containing a monoethylenically unsaturated carboxylic acid-based monomer, such as maleic anhydride [013, 019], to a polyether compound, such as polyethylene glycol [059-060].
Claim(s) 1, 4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baur et al. (US Patent No. 6172028).
Regarding claims 1, 4, and 6; Baur et al. teaches a detergent composition [col2, line9-23] comprising a mixture of a polycarboxylate having at least three carboxyl groups, prepared from polyols such as ethylene glycol and butanetetracarobxylic acid [col3, line20-25], at least one amine, and at least one acid having two carboxyls, such as maleic acid [col7, line1-12], thus producing an ester bond-containing polycarboxylic acid having an acid in the side chain.
Baur et al. does not explicitly disclose wherein the ester bond-containing polycarboxylic acid or salt thereof has an acid value of 100 mg (KOH)/kg or more. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. acid value, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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