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 .
Election/Restrictions
Applicant's election with traverse of Invention 1, claims 1-15, in the reply filed on 06/15/2026 is acknowledged. The traversal is on the ground(s) that “they all share the identical, novel chemical formulation at their core” (p. 2). This is not found persuasive because the examiner found the inventions to be distinct because of their materially different designs etc.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-19 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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 1-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 3, 7, 9, 11-14, the phrase “e.g.” or "for example" or “such as”, “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 13-14 contain the trademark/trade name Caroat®. 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 a brand of persulfate and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 5, 6, 11, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McLaughlin (WO 2000/16737, cited in IDS).
McLaughlin teaches a composition for whitening teeth comprising “at least 30% by weight of potassium hydrogen peroxymonopersulfate” (Abstract).
McLaughlin teaches a specific embodiment shown below:
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(see Example 1 at p. 16, lines 1-19).
Here the prior art composition comprises an inorganic salt of peroxymonosulfate, i.e. potassium peroxymonosulfate, as per claims 1-2. It comes in the form of Oxone which is a triple salt of potassium peroxymonosulfate, potassium bisulfate (aka potassium hydrogen sulfate), and potassium sulfate, as per claim 3. Oxone is the only oxidizing agent, as per claim 5. Pemulen suffices as the water-swellable polymer, as per claim 6, and the polyacrylate polymer, as per claim 11. It suffices as an aqueous slurry, as per claim 15, insofar as 6ml of water was added to activate the formulation.
The prior art is anticipatory insofar as it teaches a composition comprising an inorganic salt of peroxymonosulfate.
2) Claim(s) 1-12, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan et al., (US 2018/0133129).
Yuan et al. teaches oral care compositions comprising “from about 0.01% to about 40% peroxysulfate whitening agent and from about 1% to about 99% non-aqueous dispersant” (Abstract). Yuan et al. teaches a specific embodiment below:
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(see p. 7, para. [0086]).
Here, the embodiment includes 1% Oxone, which is a triple salt of potassium peroxymonosulfate, as per claims 1-4. It is the only oxidizing agent, as per claim 5, and further includes polyvinyl pyrrolidne, as the water-soluble polymer, as per claim 6, 11-12, PEG-600, as per claims 7-10. The compositions read on an aqueous slurry, as per claim 15, insofar as Yuan teaches that the compositions are activated by water (p. 2, para. [0023]; p. 3, [0052] teaching, “the oral composition is activated when exposed to water outside the oral cavity”), as per McLaughlin (above).
The prior art is anticipatory insofar as it teaches a composition comprising an inorganic salt of peroxymonosulfate.
Claim Rejections - 35 USC § 103
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.
1) Claim(s) 7-8, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over McLaughlin (WO 2000/16737, cited in IDS) as applied to claims 1-3, 5, 6, 11, 15 above.
McLaughlin, which is taught above, does not anticipate the inclusion of glycerin of claims 7-8, and polyvinylpyrrolidone of claim 12 in the embodiment of Example 1.
However, the body of the reference teaches adding “glycerin” as humectant (p.11, line 19) and “poly-N-vinylpyrrolidone” as texturizing agent (p. 11, line 13) to the compositions.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add glycerin and polyvinylpyrrolidone to the compositions of McLaughlin (e.g. Example 1) based on their plain enumeration in the prior art.
2) Claim(s) 9-10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over McLaughlin (WO 2000/16737, cited in IDS) as applied to claims 1-3, 5, 6, 11, 15 above, and further in view of Yuan et al., (US 2018/0133129).
McLaughlin, which is taught above, differs from claims 9-10 and 13 insofar as it does not teach polyethylene glycol
Yuan et al. teaches oral care compositions comprising peroxypersulfate whitening agent (Abstract).
The compositions include “one or more of polyethylene glycols, such as PEG400 and PEG600” (p. 3, para. [0055]).
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (see MPEP 2144.07).
Here, it would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add polyethylene glycol, e.g., PEG600, to the compositions of McLaughlin based on its suitability for its intended use in oral care formulation comprising peroxypersulfates, as taught by Yuan et al.
3) Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al., (US 2018/0133129) as applied to claims 1-12, 15 above.
Yuan et al. which is taught above, differs from claims 13-14 insofar as the formulations are not taught to “consist” of the ingredients recited therein.
As taught above, the formulations of Yuan include Oxone, which is a triple salt of peroxymonosulfate, PVP, and PEG 600. The compositions are also taught to be pH adjusted insofar as Yuan teaches, “MPS is more stable either as a solid or in an non-aqueous formulation, and it is most active as an oxidizing agent (and tooth whitening agent) in an aqueous solution at pH 5-8” (p. 3, para. [0051]). Yuan uses water to activate the formulations (see p. 3, [0052] teaching, “the oral composition is activated when exposed to water outside the oral cavity”).
pH modifying agents are specifically taught at p. 6, para. [0076].
Since the compositions only require peroxysulfate (e.g. MPS) and a nonaqueous dispersant (see abstract) it would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to provide formulations that consist of MPS, water (activating agent), PVP, PEG 600, and pH adjusting agent, as per claims 13-14.
Nonstatutory Obvious-type 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
1) Claims 1-2, 4, 5, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4-5, 7, 9-10 of U.S. Patent No. 10,299,998. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
2) Claims 1-2, 4, 5, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of U.S. Patent No. 10,709,646. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
3) Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of U.S. Patent No. 10,716,742. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
4) Claims 1-2, 4-13, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of U.S. Patent No. 10,758,462. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
5) Claims 1-2, 4, 5, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of U.S. Patent No. 10,716,741. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
6) Claims 1-2, 4, 5, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, 10-11, 15 of U.S. Patent No. 12,226,499. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
7) Claims 1-2, 4, 5, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8, 10-11 of U.S. Patent No. 12,214,063. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a composition comprising an inorganic salt of peroxymonosulfate.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612
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