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 Response to Election/Restriction, filed March 23, 2026. As filed claims 1-16 are pending.
Priority
This application filed 5/26/2023 is Claims Priority from Provisional Application 63/365,493 filed 05/30/2022.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Election/Restrictions
Applicant's election of Group I, claims 1-5, drawn to a composition comprising tetrasodium salt of glutamic acid N,N-diacetic acid in the reply filed on 23 March, 2026 is acknowledged.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 1-5 will be examined on the merits herein.
Claim Objections
1.Claim 1 is objected to because of the following informalities: the recitation “measured as an about 1 wt% solution” should be rephrased to address potential indefiniteness issues.
2.In claim 1 the terminology “mPa.s” appear to have a redundant punctuation.
3.Claim 1-5 are objected for reciting the “use” or “using” language. The objected claims are not viewed as “use” claim, but proper transition wording should be present.
Appropriate correction is required.
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.
1. Claim 1 recites the limitation "the tetrasodium salt". There is insufficient antecedent basis for this limitation in the claim.
2. In claim 1 the term "at least about" is a relative term which renders the claim indefinite. The term "at least about" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
3. In claim 1 the term "greater than about" is a relative term which renders
the claim indefinite. The term "greater than about" is not defined by the claim, the
specification does not provide a standard for ascertaining the requisite degree, and one
of ordinary skill in the art would not be reasonably apprised of the scope of the
invention.
4.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.
5. 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 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 spectroscopic data. 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 and 4 “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 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 3tetrasodium 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 rads 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):
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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 are rejected. Claims 6-16 are withdrawn from further consideration.
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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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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