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 .
This communication responds to the application and amended claim set filed June 08/2023. Claims 1-17 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 and 16 in the reply filed on 06/25/2026 is acknowledged.
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 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 pre-AIA the applicant regards as the invention.
Regarding claims 1-3 and 5-7, the term “about” is a relative term which renders the claim indefinite. The term “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. Therefore, the claims are rendered indefinite. Claim 4 depend from claim 1 and do not correct claim 1's deficiencies. Therefore, they are indefinite for the reason claim 1 is indefinite. Examiner is interpreting “about” is meant to encompass variations of 10% of the specified amount.
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.
Claims 1-3, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Brocklehurst et al. (US 4,643,840).
Regarding claims 1 and 5, Brocklehurst et al. teach an aqueous paint stripper composition comprising an alkaline material including sodium hydroxide (col.3:61-66), a gelling agent including starch, xanthan gum, clay, among others (col.4: 14-16, claim 12), and water, wherein the content of the gelling agent is about 0.1% to about 10% (col.4:36-39)(claims 1, 19), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Brocklehurst et al.
It is noted that the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. MPEP 2111.03 [R-3], In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). Case law holds that “[i]f an applicant contends that additional steps or material in the prior art are excluded by the recitation of ‘consisting essentially of,' applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant' s invention.” In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964).
Regarding claims 2-3, the present claims are product by process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) If the prior art teaches the same product as the product formed by the process recited in the claims at issue, the claims are unpatentable. However, if the process of the claims at issue results in a product that is different from the product taught by the prior art, then the prior art does not teach the invention recited in the claims at issue.
Regarding claim 7, Brocklehurst et al. exemplify compositions having a pH of for example, of 11.8 o 12.7 (example 12-13), as required by the instant claim.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable Brocklehurst et al. (US 4,643,840) in view of Germino et al. (U.S. Patent 3,607,394 A).
Regarding claim 4, Brocklehurst et al. teach the paint remover composition of claim 1 as set forth above and it is incorporated herein by reference. Brocklehurst et al. tech the use of starch as a gelling agent for thickening the composition (col. 3:21-24; col.4:28-31)
Brocklehurst et al. are silent on the pre-gelatinized starch.
However, Germino et al. teach pregelatinized starches are prepared by pasting an aqueous slurry of a starch which contains at least 50 percent amylopectin at a temperature of at least 300.° F, and then rapidly, preferably instantaneously, removing the water therefrom as by roll or spray drying (abstract). Germino et al. further teach the pregelatinized starch rapidly disperse in water to form smooth pastes (abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the pre-gelatinized starch of Germino et al. with the predictable result of providing immediate thickening upon contact with water (abstract), thereby facilitating the manufacturing process of the paint stripping composition.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Brocklehurst et al. (US 4,643,840) in view of Rink (US 4,135,947).
Regarding claim 6, Brocklehurst et al. teach the paint remover composition of claim 1 as set forth above and it is incorporated herein by reference. Brocklehurst et al. tech the use of a generic starch as a gelling agent for thickening the composition (col. 3:21-24; col.4:28-31), wherein the gelling agent can be selected from the group of starch, hydroxyethyl cellulose, xanthan gums (claim 12).
Brocklehurst et al. are silent on the type of starch as recited on the instant claim.
However, Rink teaches aqueous compositions for removing coatings, organic paint and varnish from surfaces, wherein the composition comprises thickening agents to render the composition more viscous and help them to stick to the surface being cleaned (abstract, col1: 6-16), wherein the thickening agent includes hydroxyethyl cellulose, amylopectin starch, xanthan gums (col.6: 2-10). Therefore the use of amylopectin starch being equivalent to and interchangeable with hydroxyethyl cellulose, xanthan gums. Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the generic starch, xanthan gum or the hydroxyethyl cellulose of Brocklehurst et al. with the amylopectin starch of Rink.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Brocklehurst et al. (US 4,643,840) in view of Fluegel (US 1,676,642 A) as evidenced by Kesselmans et al. (EP1148067 A1)
Regarding claim 16, Brocklehurst et al. teach the paint remover composition of claim 1 as set forth above and it is incorporated herein by reference. Brocklehurst et al. teach the composition comprises an alkaline material, water and starch as a gelling agent for thickening the composition (col. 3:21-24; col.4:28-31) and the composition being used to remove paint from vertical surfaces or uneven surfaces (col.1:59-61).
Brocklehurst et al. are silent on the cooking step of the aqueous solution as recited in the instant claim.
Fluegel teaches an aqueous paint remover composition that replaces conventional wax binders with starch, wherein the starch is gelatinized (col.1:32-49) by the following process: dispersing starch in water to form a thick cream, followed by the addition of a boiling aqueous solution of caustic alkali while stirring the whole mixture (claims 1-2). Fluegel further teaches that the intense heat generated by the caustic alkali attacks and changes the properties of the starch (gelatinized starch), resulting in a composition that will adhere to a painted vertical surfaces (col.2, 85-95). It would have been obvious to one of ordinary skill in the art to have prepared the paint remover composition of Brocklehurst et al. according to the gelatinization method of Fluegel because both references teach aqueous alkaline paint removers that require a viscous composition for vertical surfaces. In addition one of ordinary skill in the art would expect to improve adhesion of the composition to the surface while performing the thickening function as taught by Brocklehurst et al. Although Fluegel is silent on the temperature, the gelatinization temperature of starch is usually about 55-70°C, as evidenced by Kesselmans et al (EP 1148067 A1), therefore the gelatinization method of Fluegel is considered to be performed at these temperature range, as required by the instant claim.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-16 of U.S. Patent No. 11,572,530 B2
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US Patent ‘530 anticipates pending claims.
Claims 1-12 and 14-16 of US Patent ‘520 recite all the limitations of the instant claims including the paint remover composition consisting essentially of water, 3-13 wt.% of starch, optionally a pH modifier; and a paint remover composition wherein the starch is pre-gelatinized or the starch is at least about 50% amylopectin or at least about 50% amylose, which anticipates all the elements from the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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