DETAILED ACTION
Claims 1-13 were subject to restriction requirement mailed on 01/02/2026.
Applicant filed a response, and elected Group I, species (a) and (e), claims 1-3, 5 and 8, and withdrew claims 4, 6-7 and 9-13, without traverse on 03/02/2026.
Claims 1-13 are pending, and claims 4, 6-7 and 9-13 are withdrawn.
Claims 1-3, 5 and 8 are rejected.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in FR2000212 on 01/10/2020. It is noted, however, that applicant has not filed a certified copy of the FR2000212 application as required by 37 CFR 1.55.
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 1-2 and 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. US 12,286,607 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a composition comprising at least one acido-basic neutralising agent for decontaminating an atmosphere contaminated by a corrosive gas, said at least one acido-basic neutralising agent being an amphoteric agent selected from the group consisting of: an amino acid or a salt of an amino acid, a citric acid salt, a phosphoric acid salt, a pyrophosphoric acid salt, an ethylenediaminetetraacetic acid (EDTA) salt, complexed or free, and a carbonate, and said at least one acido-basic having at least 2 pKa’s, wherein: pKa 1 ≤ pKa 2, pKa 1 > 2, pKa 2 < 12, 4 <½* (pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s. The patent/co-pending claims meet all limitations of the present claims.
Specifically, patent recites a decontamination composition comprising at least one secondary neutralizing agent (patent, claim 1), wherein said secondary neutralizing agent is such as sodium glutamate (patent, claim 3).
Given that patent disclose an identical or essentially identical component, i.e., sodium glutamate, with that of the presently claimed (claims 1 and 6), therefore it is clear that the sodium glutamate of patent would necessarily and inherently meet the claimed limitation of said at least one acido-basic having at least 2 pKa’s, wherein:
pKa 1 ≤ pKa 2,
pKa 1 > 2,
pKa 2 < 12
4 <½*(pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s.
Further regarding claim 5, as applied to claim 1, the recitation in the claims that the composition is sprayed directly into the atmosphere contaminated by corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that patent recites sodium glutamate, as presently claimed, it is clear that the decontamination composition of patent would be capable of performing the intended use, i.e. sprayed directly into the atmosphere contaminated by corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 1-2 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. US 6,380,130 B1 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a composition comprising at least one acido-basic neutralising agent for decontaminating an atmosphere contaminated by a corrosive gas, said at least one acido-basic neutralising agent being an amphoteric agent selected from the group consisting of: an amino acid or a salt of an amino acid, a citric acid salt, a phosphoric acid salt, a pyrophosphoric acid salt, an ethylenediaminetetraacetic acid (EDTA) salt, complexed or free, and a carbonate, and said at least one acido-basic having at least 2 pKa’s, wherein: pKa 1 ≤ pKa 2, pKa 1 > 2, pKa 2 < 12, 4 <½* (pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s. The patent/co-pending claims meet all limitations of the present claims.
Specifically, patent recites A product capable of transforming a toxic, corrosive or environmentally harmful liquid product into a non-aggressive or harmless solid residue, comprising:
at least one amphoteric selected from the group consisting of L-histidylhistidine and arginylarginine, having at least two pK values, pK1 being a pK of the amphoteric when it is basic, pK2 being a pK of the amphoteric when it is acidic, said amphoteric being selected in such a way that:
the pH of the residue obtained is within the range of from 5 to 10,
the lowest of the pK2 values of the amphoteric is within the range of from 5 to 10, and the highest pK1 values of the amphoteric is within the range of from 5 to 10, and
the highest of the pK1 values of the amphoteric is lower than the lowest at the pK2 value, which overlap or encompass with the present claimed.
Further regarding claim 5, as applied to claim 1, the recitation in the claims that the composition is sprayed directly into the atmosphere contaminated by corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that patent recite the composition comprising amphoteric, as presently claimed, it is clear that the composition of patent would be capable of performing the intended use, i.e. sprayed directly into the atmosphere contaminated by corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 1-5 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. US 11,839,850 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a composition comprising at least one acido-basic neutralising agent for decontaminating an atmosphere contaminated by a corrosive gas, said at least one acido-basic neutralising agent being an amphoteric agent selected from the group consisting of: an amino acid or a salt of an amino acid, a citric acid salt, a phosphoric acid salt, a pyrophosphoric acid salt, an ethylenediaminetetraacetic acid (EDTA) salt, complexed or free, and a carbonate, and said at least one acido-basic having at least 2 pKa’s, wherein: pKa 1 ≤ pKa 2, pKa 1 > 2, pKa 2 < 12, 4 <½* (pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s. The patent/co-pending claims meet all limitations of the present claims.
Specifically, patent recites a composition comprising at least one acido-basic neutralising agent for decontaminating an atmosphere contaminated by a corrosive gas, said at least one acido-basic neutralising agent being a mixture of at least one conjugate base of an acid and of at least one conjugate acid of a base and having at least 2 pKa's, wherein: pKa 1≤pKa 2, pKa 1>2, pKa 2<12−4<½, and (pKa 1+pKa 2)<10, pKa 1 representing the smallest of the basic pKa's and pKa 2 represents the largest of the acidic pKa's, which overlap or encompass with the present claimed.
Further regarding claim 5, as applied to claim 1, the recitation in the claims that the composition is sprayed directly into the atmosphere contaminated by corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that patent recite sodium glutamate, as presently claimed, it is clear that a composition comprising at least one acido-basic neutralising agent of patent would be capable of performing the intended use, i.e. sprayed directly into the atmosphere contaminated by corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 1-2, 5-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 11,040,328 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a composition comprising at least one acido-basic neutralising agent for decontaminating an atmosphere contaminated by a corrosive gas, said at least one acido-basic neutralising agent being an amphoteric agent selected from the group consisting of: an amino acid or a salt of an amino acid, a citric acid salt, a phosphoric acid salt, a pyrophosphoric acid salt, an ethylenediaminetetraacetic acid (EDTA) salt, complexed or free, and a carbonate, and said at least one acido-basic having at least 2 pKa’s, wherein: pKa 1 ≤ pKa 2, pKa 1 > 2, pKa 2 < 12, 4 <½* (pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s. The patent/co-pending claims meet all limitations of the present claims.
Specifically, patent recites a solid composition (patent, claim 1), wherein the composition further comprising a neutralizing agent chose from among the group such as sodium bicarbonate and sodium glutamate (patent, claim 8).
Given that patent disclose an identical or essentially identical component, i.e., sodium bicarbonate and sodium glutamate, with that of the presently claimed (claims 1, 6 and 9-10), therefore it is clear that the sodium bicarbonate and sodium glutamate of patent would necessarily and inherently meet the claimed limitation of said at least one acido-basic having at least 2 pKa’s, wherein:
pKa 1 ≤ pKa 2,
pKa 1 > 2,
pKa 2 < 12
4 <½*(pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s.
Further regarding claim 5, as applied to claim 1, the recitation in the claims that the composition is sprayed directly into the atmosphere contaminated by corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that patent recite sodium bicarbonate and sodium glutamate, as presently claimed, it is clear that the solid composition of patent would be capable of performing the intended use, i.e. sprayed directly into the atmosphere contaminated by corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 1-2, 5-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 10,316,230 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a composition comprising at least one acido-basic neutralising agent for decontaminating an atmosphere contaminated by a corrosive gas, said at least one acido-basic neutralising agent being an amphoteric agent selected from the group consisting of: an amino acid or a salt of an amino acid, a citric acid salt, a phosphoric acid salt, a pyrophosphoric acid salt, an ethylenediaminetetraacetic acid (EDTA) salt, complexed or free, and a carbonate, and said at least one acido-basic having at least 2 pKa’s, wherein: pKa 1 ≤ pKa 2, pKa 1 > 2, pKa 2 < 12, 4 <½* (pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s. The patent/co-pending claims meet all limitations of the present claims.
Specifically, patent recites a pollution removal composition, comprising at least one texturing mixture which is a mixture of silica gel and of an and of an amphoteric texturing agent whose two pKa values, pKa.sub.1 and pKa.sub.2, meet the following conditions: pKa.sub.1<pKa.sub.2, pKa.sub.1>2, pKa.sub.2<12, and 5<(pKa.sub.1+pKa.sub.2)/2<10 (patent, claim 1), wherein the neutralizing agent is such as amino acids and salts thereof (patent, claim 3), wherein the amino acids and salts thereof are such as sodium glutamine (patent, claim 4); and wherein the amino acids and salts thereof are such as sodium bicarbonate (patent, claim 5).
Given that patent disclose an identical or essentially identical component, i.e., sodium bicarbonate and sodium glutamate, with that of the presently claimed (claims 1, 6 and 9-10), therefore it is clear that the sodium bicarbonate and sodium glutamate of patent would necessarily and inherently meet the claimed limitation of said at least one acido-basic having at least 2 pKa’s, wherein:
pKa 1 ≤ pKa 2,
pKa 1 > 2,
pKa 2 < 12
4 <½*(pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s.
Further regarding claim 5, as applied to claim 1, the recitation in the claims that the composition is sprayed directly into the atmosphere contaminated by corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that patent recite sodium bicarbonate and sodium glutamate, as presently claimed, it is clear that the pollution removal composition of patent would be capable of performing the intended use, i.e. sprayed directly into the atmosphere contaminated by corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Election/Restrictions
Applicant’s election without traverse of Group I, species (a) and (e), claims 1-3, 5 and 8, in the reply filed on 03/02/2026 is acknowledged.
Claims 4, 6-7 and 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/02/2026.
Claim Interpretation
Claim 8, line 2, recites a phrase “EDTA disodium”. The examiner interprets that the phrase refers to EDTA disodium, complexed or free, i.e., EDTA disodium also includes EDTA-aluminium disodium complex, according to specification [0045], [0049], Example 1, Example 3 and Example 4.
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.
Claim 1 is 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.
Claim 1, lines 10-11, recites “pKa 2<12-4<1/2, and (pKa 1+pKa 2)<10”. However, it is unclear what the phrase refers to. The examiner interprets that the phrase refers to “pKa 2<12, 4<1/2* (pKa 1+pKa 2)<10” according to specification [0033]). Interpretation is speculative. Clarification is requested.
Regarding dependent claims 2-3, 5 and 8, these claims does not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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) 1-3, 5 and 8 are rejected under 35 U.S.C. 102(a)(1) and (a)(2)as being anticipated by OH et al., US 2016/0213598A1 (OH).
Regarding claims 1-3, 5 and 8, OH discloses in Table 26, an aerosol styling mousse, comprising Disodium EDTA (reading upon at least one acido-basic neutralizing agent being an amphoteric agent) (OH, page 18, Table 26).
Given that OH disclose an identical or essentially identical component, i.e., disodium EDTA, with that of the presently claimed (claims 1 and 8; specification [0040]), therefore it is clear that the disodium EDTA of OH would necessarily and inherently meet the claimed limitation of said at least one acido-basic having at least 2 pKa’s, wherein:
pKa 1 ≤ pKa 2,
pKa 1 > 2,
pKa 2 < 12
4 <½*(pKa 1 + pKa 2) < 10, pKa 1 representing the smallest of the basic pKa’s and pKa 2 represents the largest of the acidic pKa’s.
Furthermore, the recitation in the claims that the composition is for decontaminating an atmosphere contaminated by a corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that OH discloses composition including disodium EDTA as presently claimed, it is clear that the aerosol styling mousse of OH would be capable of performing the intended use, i.e. for decontaminating an atmosphere contaminated by a corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Further regarding claim 5, as applied to claim 1, the recitation in the claims that the composition is sprayed directly into the atmosphere contaminated by corrosive gas, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that OH discloses composition including disodium EDTA as presently claimed, it is clear that the aerosol styling mousse of OH would be capable of performing the intended use, i.e. sprayed directly into the atmosphere contaminated by corrosive gas, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights