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
This Office action is responsive to Applicant's Remarks and Amendment after Non-Final Rejection, filed July 28, 2026. As filed, Claims 1-17 are pending are pending of which claim 1 is amended. Claims 6-16 are withdrawn from consideration. Claim 17 is newly added.
Response to Remarks
Applicant’s amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1.The rejection of claims 1-5 under 35 U.S.C. § 112 second paragraph is maintained for claims 1 and 4. Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Contrary to Applicant’s assertion, as noted before and reiterated herein, where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
2.The rejection of claims 1-5 under 35 U.S.C. § 102(a)(1) over Nouryon – technical brochure Dissolvine, 2018 is maintained. Applicants’ arguments have been fully considered but they are not persuasive.
Applicant's argue that ” the claimed viscosity limitations set forth in claim 1 are
not inherent.”(Remarks page 9) and cites additional reference “Dissolvine 2” and argues that “shows that the viscosities of the Dissolvine: GL-38, GL-47-S, and GL Premium
products vary and are not "necessarily" or always one value, which directly cuts against the inherency argument itself. This is clear evidence, produced by the Applicant, that refutes the Office's assertion of inherency thereby satisfying the burden shifting pursuant to MPEP 2112.01 and rebutting any sort of prima facie case showing that the missing descriptive matter is not necessarily present in the reference and would not be so recognized by persons of ordinary skill”. (Remarks page 10).
In response it is noted that per MPEP 716.02 guidance:” Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).”
In the instant case, the prior art by Nouryon specifically teaches water-soluble Dissolvine chelates aqueous composition comprising 55 wt% Glutamic acid, N,N-diacetic tetrasodium salt Na4-GLDA (GL premium)- which concentration is withing the claimed range of about 52-60wt% of claims, having pH of 10.2- which is withing the claimed range of about 9-10.5 of instant claims. Therefore, the composition comprising water/tetrasodium salt of glutamic acid N,N-diacetic acid of at least about 50wt% corresponds to composition as required by instant claims.
Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also MPEP § 2112.01.
Given that the prior art teaches the limitations of instant claims regarding chemical composition of pH at least 9, the missing descriptive matter - wherein the chelating composition has a viscosity of less than about 1350 mPa.s measured at about 5°C or less than about 350 mPa.s measured at about 20°C, each using a Brookfield DV II plus viscometer with spindle S 18 and a temperature controlled bath”, would be recognized by one of ordinary skill in the art as inherent property derived from the chemical makeup of instantly claimed composition as such the prior art teaches the limitations of instant claims.
The Applicant has not shown evidence of substantially improved and unexpected results or properties between the instantly claimed composition comprising water/tetrasodium salt of glutamic acid N,N-diacetic acid of at least about 50wt%.
This rejection is still deemed proper, and is therefore maintained/modified to include claim 17.
3. The rejection of claims 1-5 under 35 U.S.C. § 103 over 8,551,312 by Heus et al. Oct 2015 is maintained/modified to include new claim 17.
Applicant's arguments that “without offering proof of (1) why the skilled person would pick the '312 patent in the first place; and (2) how the skilled person would actually modify that compound based on the teachings in the '312 patent to arrive at the claimed invention, the Office cannot support a conclusion of prima facie obviousness. (Remarks page 12-17) have been fully considered but they are not persuasive.
In response it is noted that The prior art by the ‘312 patent specifically teaches composition comprising tetrasodium glutamic acid-N,N-diacetate referred to as GLDA-Na4 in 37.0%, pH 13.5, which corresponds to the claimed aqueous chelating composition- therefore an analoguous prior art. Example 1 and Table 1 on col 7-8 shows the physical properties of (partially acidified 40% in water) GLDA-N4: including viscosity of 51.5 MPas which reads on the limitation “the chelating composition has a viscosity of less than about 1350 mPa.s measured at about 5°C or less than about 350 mPa.s measured at about 20°C, each using a Brookfield DV II plus viscometer with spindle S 18 and a temperature controlled bath, corrosivity.
Furthermore, the ‘312 patent shows the correlation of a higher concentration of the tetrasodium glutamic acid N,N- diacetic acid and the higher the viscosity of the tetrasodium glutamic acid N,N- diacetic acid. (col.1, lines 29 – 33) while on Table 1 it shows that when lowering the pH by exchanging the sodium ions for hydrogen, by electrodialysis, the viscosity decreases (col. 8). Therefore, the prior art relied upon, and knowledge generally available in the art before the effective filing date provide the suggestion that would have motivated the skilled artisan to obtaining a chelating composition at the claimed concentration and pH by optimization via routine experimentation. Regarding the concentration generally, differences such parameters will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical.” In re Aller See MPEP 2144.5.
Therefore, the instant chelating composition comprising tetrasodium salt of glutamic acid N,N- diacetic acid are found to be prima facie obvious over the composition comprising the same compound of the prior art.
Absent clear, convincing, side-by-side data demonstrating unobviousness vis-a-vis the prior art commensurate with the scope of protection sought and showing that the claimed process and process disclosed by prior art are distinct, the claims are considered prima facie obvious.
This rejection is still deemed proper, and is therefore maintained/modified to include claim 17.
4.The objection to claims has been addressed by claim amendment.
The following are modified or new grounds of rejections necessitated by Applicants’ amendment, filed on 7/18/2026 to address newly added claim 17..
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 1-5 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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.
Claims 1 and 4 contain the trademark/trade name” Brookfield”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe pressure measurement and, accordingly, the identification/description is indefinite.
Similar issues are raised by the recitation of claims 3 and 4” United Nations Standard Recommendations on the transport of the dangerous goods, Manual of tests and criteria; ST/SO/ AC. I 0/11/Rev 4”.
Claim Rejections - 35 USC § 102
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 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(s) 1-5, 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nouryon – technical brochure Dissolvine, 2018 (cited by Applicants in IDS 01/26/204 as NPL2).
Regarding instant claim 1, 3, 5, the brochure discloses water-soluble Dissolvine chelates aqueous composition comprising 55 wt% Glutamic acid, N,N-diacetic tetrasodium salt Na4-GLDA (GL premium)- which concentration is withing the claimed range of about 52-60wt% co claim 2, having pH of 10.2- which is withing the claimed range of about 9-10.5 of instant claim 5 Table on page extras reproduced below:
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The composition comprising disclosed by the prior art corresponds to the claimed chelating composition comprising water and tetrasodium salt of glutamic acid N,N-diacetic acid present in an amount of at least about 50%.
Therefore, the remaining subject matter of claim 1 remains:
Claim 1 recites, “…wherein the chelating composition has a viscosity of less than about 1350 mPa.s measured at about 5°C or less than about 350 mPa.s measured at about 20°C, each using a Brookfield DV II plus viscometer with spindle S 18 and a temperature controlled bath”.
Said recitation represents spectroscopic data that is an inherent property of the compounds (compositions), and there is no evidence stating that the compound according to Suzuki et al., if at a sufficient concentration, would not produce the same viscosity. The 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), see MPEP 2112. Thus, the claiming of an unknown property 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).
Similar rational is applicable for the recitation in claims 1 and 2 “as determined using an Fe-Total Sequestering Value” pertaining to the concentration of tetrasodium salt of glutamic acid N,N-diacetic acid and in claims 3, 4 and 17 “that is non-corrosive as determined by United Nations Standard Recommendations on the transport of the dangerous goods, Manual of tests and criteria; ST/SO/ AC. I 0/11/Rev 4.”
The missing descriptive matter (viscosity, non-corrosive properties) would be recognized by persons of ordinary skill in the art as inherent from the chemical makeup of chelating composition with at least about 50% tetrasodium salt of glutamic acid N,N-diacetic acid. Based on the overlapping chemical makeup of the composition comprising tetrasodium salt of glutamic acid N,N-diacetic acid taught in the cited reference shown above and the claimed composition as claimed, one of skill in the art would recognize that the viscosity, non-corrosive properties are the same since the compound of the prior art contains the structural limitations of composition comprising water and at least 50% tetrasodium salt of glutamic acid N,N-diacetic acid as claimed.
Therefore, the prior art teaches the limitations of instant claims.
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.
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.
Claim(s) 1-5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,551,312 by Heus et al. Oct 2015 (the ‘312 patent; cited by Applicants in IDS).
The ‘312 patent discloses on col 9 lines 59-67, at the comparative Example 3 tetrasodium glutamic acid-N,N-diacetate referred to as GLDA-Na4 in 37.0%, pH 13.5, which corresponds to the claimed aqueous chelating composition. Example 1 and Table 1 on col 7-8 shows the physical properties of (partially acidified 40% in water) GLDA-N4: including viscosity of 51.5 MPas which reads on the limitation “the chelating composition has a viscosity of less than about 1350 mPa.s measured at about 5°C or less than about 350 mPa.s measured at about 20°C, each using a Brookfield DV II plus viscometer with spindle S 18 and a temperature controlled bath, corrosivity (instant claims 1-5, 17):
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The difference between the instantly claimed invention and ‘312 patent is that the chelating composition of the prior art comprises the tetrasodium salt of glutamic acid N,N- diacetic acid in an amount of 40 weight percent instead of at least about 50% as required by instant claims.
However, the ‘312 patent shows the correlation of a higher concentration of the tetrasodium glutamic acid N,N- diacetic acid and the higher the viscosity of the tetrasodium glutamic acid N,N- diacetic acid. (col.1, lines 29 – 33) while on Table 1 it shows that when lowering the pH by exchanging the sodium ions for hydrogen, by electrodialysis, the viscosity decreases (col. 8).
Therefore, the prior art relied upon, and knowledge generally available in the art before the effective filing date provide the suggestion that would have motivated the skilled artisan to obtaining a chelating composition at the claimed concentration and pH by optimization via routine experimentation. The motivation stems from the fact that a person having ordinary skill in the art would expect that the chelating compositions comprising the same compound tetrasodium glutamic acid N,N- diacetic acid could be prepared by the same method as taught by the prior art and adjusting concentration of the components and have the same utility as the compounds taught by the prior art. "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." (In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929).
Regarding the concentration generally, differences such parameters will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical.” In re Aller See MPEP 2144.5.
Therefore, the instant chelating composition comprising tetrasodium salt of glutamic acid N,N- diacetic acid are found to be prima facie obvious over the composition comprising the same compound of the prior art.
Conclusion
Claims 1-5, 17 are rejected. Claims 6-16 are withdrawn from further consideration.
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
