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 .
Status of Claims
Claims 1 – 20 are pending.
Claims 1 – 20 are rejected.
Specification
The disclosure is objected to because of the following informalities: page 8 paragraph [0033] references Appendix A. However, there is no Appendix attached to the disclosure.
The disclosure is objected to because of the following informalities: page 8 paragraph [0010] refers to “The Figure” as FIG 1. This objection can be overcome by amending the disclosure to “The Figure” when referencing the Drawings
Appropriate corrections are required.
Drawings
The drawings are objected to because the single Figure is not referenced according to the MPEP 1.84 (u) Numbering of Views.
1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Amending the title of the drawing to “The Figure” will overcome this objection.
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.
Claim 1 – 20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 recites the limitation "the tetrasodium salt" in lines 3 and 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites in line 2: “acidifying the first mixture via ion exchange and/or bipolar membrane electrodialysis to reduce a pH of the chelating composition to a pH of at least about 9”. However, the previous line only refences the fact that the first mixture as a pH of greater than about 10. As such, it is not clear in the claims how the pH of the chelating composition can be reduced when none has been earlier recited in the claim. For this reason the claim is indefinite and lacks clarity.
In claim 1 at lines 6 and 8, 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, andone of ordinary skill in the art would not be reasonably apprised of the scope of theinvention.
In claim 1 at lines 10 and 11, the term "less than about" is a relative term which renders the claim indefinite. The term "less 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.
In claim 1 at line 4, 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.
Claims 2 and 3 recites the limitation "the tetrasodium salt” " in line 1. There is insufficient antecedent basis for this limitation in the claim.
In claim 3 at line 2, 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.
Claim 7 recites: “The method of claim 1 that is non-corrosive as determined by …”. The claim is indefinite and lacks clarity because claim 1 is to a method of forming a chelating composition and does not claim a chelating composition. As such, is not clear from the claim what exactly is being analyzed according to the United Nations standards.
Claim 8 recites: “The method of claim 2 that is non-corrosive as determined by …”. The claim is indefinite and lacks clarity because claim 2 depends on claim 1 which is to a method of forming a chelating composition and does not claim a chelating composition. As such, is not clear from the claim what exactly is being analyzed according to the United Nations standards.
Claim 9 recites: “The method of claim 3 that is non-corrosive as determined by …”. The claim is indefinite and lacks clarity because claim 3 depends on claim 1 which is to a method of forming a chelating composition and does not claim a chelating composition. As such, is not clear from the claim what exactly is being analyzed according to the United Nations standards.
Claim 10 recites: “The method of claim 4 that is non-corrosive as determined by …”. The claim is indefinite and lacks clarity because claim 4 depends on claim 1 which is to a method of forming a chelating composition and does not claim a chelating composition. As such, is not clear from the claim what exactly is being analyzed according to the United Nations standards.
In claim 11 at line 1, the term "less than about" is a relative term which renders the claim indefinite. The term "less 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.
In claim 12 at line 1, the term "less than about" is a relative term which renders the claim indefinite. The term "less 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.
In claim 13 at line 1, the term "less than about" is a relative term which renders the claim indefinite. The term "less 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.
In claim 14 at line 1, the term "less than about" is a relative term which renders the claim indefinite. The term "less 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.
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.
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 – 6 and 11 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over Heus et al. (US 8,551,312) in view Van Lare et al. (US 2015/0321995).
The rejected claim covers, inter alia, method of forming a chelating composition, said method comprising the steps of: providing a first mixture comprising water and the tetrasodium salt of glutamic acid N,N- diacetic acid (GLDA-Na4) and having a pH of greater than about 10; and acidifying the first mixture via ion exchange and/or bipolar membrane electrodialysis to reduce a pH of the chelating composition to a pH of at least about 9; wherein the chelating composition comprises the tetrasodium salt of glutamic acid N,N- diacetic acid in an amount of at least about 45 weight percent based on a total weight of the chelating composition as determined using an Fe-Total Sequestering Value; and 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 S18 and a temperature controlled bath.
Dependent clams 2 and 3 further limit the content of the tetrasodium salt of glutamic acid N,N- diacetic acid in the chelating composition. Dependent claims 4, 5 and 6 further limit the pH of the first mixture. Dependent claims 11 – 14 further limit the viscosity of the chelating composition. Dependent claims 15 – 20 further limit the pH of the chelating composition.
However, Heus in Comparative Example 3 discloses acidification of GLDA-Na4. The electrodialysis was performed in the following manner: A total of 1.7 kg of a solution of tetrasodium glutamic acid-N,N-diacetate (tetrasodium glutamic acid-N,N-diacetate: 37.0%, pH 13.5), initially 1.5 kg (5 wt %) of a sodium hydroxide solution, and 3 kg of an electrode solution (5 wt % sodium hydroxide) were placed in individual reservoirs, and electrodialysis was performed while circulating each solution with a pump. A constant current of 15 amperes was fed for 120 minutes at a voltage between 16 and 20 volts. A total amount of 111 Wh of DC electric energy is consumed per mole of glutamic acid-N,N-diacetate. The obtained solution of glutamic acid-N,N-diacetic acid was 1.3 kg (glutamic acid-N,N-diacetic acid: 47.5%, pH 2.0).
The difference between the instantly claimed invention and Heus is as follows: the chelating composition has a pH of at least about 9; the chelating composition comprises the tetrasodium salt of glutamic acid N,N- diacetic acid in an amount of at least about 45 weight percent; the chelating composition comprises the tetrasodium salt of glutamic acid N,N- diacetic acid in an amount of about 47 to about 60 weight percent; and the chelating composition has a viscosity of less than about 1350 mPa.s.
However, with regard to the above differences the Examiner turns to the teachings of Heus and Van Lare. In Heus the generally known relationship between the concentration of the tetrasodium salt of glutamic acid N,N- diacetic acid, pH and viscosity is discussed. Further, Heus discusses the fact that a higher concentration of the tetrasodium glutamic acid N,N- diacetic acid, the higher the viscosity of the tetrasodium glutamic acid N,N- diacetic acid. (col.1, ln 29 – 33). Also, in Heus Table 1 it can be seen that when lowering the pH by exchanging the sodium ions for hydrogen, by electrodialysis, the viscosity decreases. (col. 8, ln 8 – 21 & Table 1 first two columns).
Additionally, Van Lare discloses the process for the acidification of GLDA solutions in Example 1. In the Example to produce the GLDA-H.sub.4 solution, the pH of a GLDA-Na.sub.4 Dissolvine GL-47-S solution was lowered to about 1.2, using a Bi-Polar Membranes (BPM) process. In the BPM process, a bipolar membrane electrodialysis stack was used as described in WO 2008/065109. Such a unit consists of bipolar membranes and a cation exchange membrane. The sodium cations are removed through the cationic exchange membrane, while the hydrogen is added into the product stream via an electrochemical reaction. That way the solution is gradually acidified without having residual sodium cations present. This means that a “salt-free” acidification has occurred. (pp. 4, [0056] – [0058]).
Based upon the teachings of Heus and Van Lare, the method of the instantly claimed invention is known. Specifically, the process of mixing water with tetrasodium salt of glutamic acid N,N- diacetic acid and acidifying the mixture with an ion exchange and/or bipolar membrane electrodialysis to reduce a pH to obtain a chelating composition with a lower pH and viscosity. In both Heus and Val Lare specific conditions, such as temperature and electrical current are set out. The claims of the instantly claimed invention is lacking in is such parameters. Thus, base on the teaching of Heus and Van Lare, obtaining a chelating composition at the claimed pH would be a matter of optimization via routine experimentation for one of ordinary skill in the art before the effective filing date of the instantly claimed invention. "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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1- 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9,10, 12, 13, 16 and 18 of copending Application No. 18/324,281 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 – 20 of the instantly claimed invention cover, inter alia, The rejected claim covers, inter alia, method of forming a chelating composition, said method comprising the steps of: providing a first mixture comprising water and the tetrasodium salt of glutamic acid N,N- diacetic acid (GLDA-Na4) and having a pH of greater than about 10; and acidifying the first mixture via ion exchange and/or bipolar membrane electrodialysis to reduce a pH of the chelating composition to a pH of at least about 9; wherein the chelating composition comprises the tetrasodium salt of glutamic acid N,N- diacetic acid in an amount of at least about 45 weight percent based on a total weight of the chelating composition as determined using an Fe-Total Sequestering Value; and 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 S18 and a temperature controlled bath.
Claims 1, 8, 9,10, 12, 13, 16 and 18 of copending Application No. (‘281)
Claims 1 - 20 of the instantly claimed are to a method of forming a chelating 20. composition having a pH of at least about 9 measured as an about 1 wt.% solution and 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 S18 and a temperature controlled bath and comprising at least about 45 weight percent of the tetrasodium salt of glutamic acid N,N-diacetic acid based on a total weight of the chelating composition as determined using an Fe-Total Sequestering Value. The method is comprised of combining monosodium glutamate and/or glutamic acid with formaldehyde to form a first combination; adding hydrogen cyanide to the first combination to form a second combination comprising a monosodium salt of glutamic acid diacetonitrile, a cyclic GLMN, and a sodium salt of glutamic acid N,N'- monoacetonitrile, maintaining a temperature of the second combination at less than about 16°C and a pH of less than about 7 measured as an about 1 wt.% solution; converting nitrile groups of the monosodium salt of glutamic acid diacetonitrile to carboxylate groups thereby forming a third combination comprising water and at least about 47 weight percent of the tetrasodium salt of glutamic acid N,N-diacetic acid based on a total weight of the third combination, and wherein a reaction yield of MSG (or a mix of MSG and caustic or mix of glutamic acid and disodium salt of glutamic acid) after conversion into the nitrile groups of the monosodium salt of GLDN followed by saponification to form the tetrasodium salt of glutamic N,N-diacetic acid is at least about 91%; providing a fourth combination comprising water and the tetrasodium salt of glutamic acid N,N-diacetic acid and having a pH of less than about 7.
Specifically, claim 9 recites: the method further comprises the step of acidifying the third combination via ion exchange and/or bipolar membrane electrodialysis.
The difference between '281 and the instantly claimed invention is that it does not teach the invention with particularity so as to amount to statutory double patenting as being the "same invention". The term "same invention," in this context, means an invention drawn to identical subject matter. See Miller V. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). To be an identical invention (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the claim." Richardson V. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)). However, based on the above, the recited claims of the instant application and those of '281 are not mutually exclusive and thus not patentably distinct since the process of the instant invention encompasses the process of '285.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting
Claims 1- 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 16 of copending Application No. 18/324,271 (‘271) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 – 20 of the instantly claimed invention cover, inter alia, The rejected claim covers, inter alia, method of forming a chelating composition, said method comprising the steps of: providing a first mixture comprising water and the tetrasodium salt of glutamic acid N,N- diacetic acid (GLDA-Na4) and having a pH of greater than about 10; and acidifying the first mixture via ion exchange and/or bipolar membrane electrodialysis to reduce a pH of the chelating composition to a pH of at least about 9; wherein the chelating composition comprises the tetrasodium salt of glutamic acid N,N- diacetic acid in an amount of at least about 45 weight percent based on a total weight of the chelating composition as determined using an Fe-Total Sequestering Value; and 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 S18 and a temperature controlled bath.
Claims 1 - 5 of '271 are to a chelating composition having a pH of at least about 17. 9 measured as an about 1 wt.% solution and comprising: water; and the tetrasodium salt of glutamic acid N,N-diacetic acid present in an amount of at least about 50 weight percent based on a total weight of the chelating composition as determined using an Fe-Total Sequestering Value, 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 S18 and a temperature controlled bath. Additionally, claims 6 - 16 of '271 are to a method of forming a chelating composition, said method comprising the steps of: providing a first mixture comprising water and the tetrasodium salt of glutamic acid N,N- diacetic acid and having a pH of greater than about 10.5 measured as an about 1 wt.% solution; providing a second mixture comprising water and the tetrasodium salt of glutamic acid N,N-diacetic acid and having a pH of less than about 7; and combining the first and second mixtures to form the chelating composition comprising the tetrasodium salt of glutamic acid N,N-diacetic acid in an amount of at least about 45 weight percent based
on a total weight of the chelating composition as determined using an Fe-Total
Sequestering Value; wherein the chelating composition has a pH of at least about 9
measured as an about 1 wt.% solution and 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 Il plus viscometer with spindle S18 and a temperature controlled
bath.
The difference between '271 and the instantly claimed invention is that it does not teach the invention with particularity so as to amount to statutory double patenting as being the "same invention". The term "same invention," in this context, means an invention drawn to identical subject matter. See Miller V. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). To be an identical invention (See M.P.E.P. $2131: "[t]he identical invention must be shown in as complete detail as is contained in the claim." Richardson V. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)). However, based on the above, the recited claims of the instant application and those of '271 are not mutually exclusive and thus not patentably distinct since the process of the instant invention and the product made encompasses the process and product of '271.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692