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 .
Response to Amendment
This action is responsive to the amendment filed on 08/07/2026.
Claims 1, 4, and 6-11 are pending. Claims 2-3, 5, 12-16 are canceled and claim 1, 6, 8, and 10 are currently amended. The Applicant’s arguments (see Remarks, page 5-6) have fully been considered.
The rejection of claims 1, 4, 6-11 under 35 U.S.C 103 as being obvious over Dkidak (US20170015946A1) are maintained for the reasons of record stated in the previous Office Action.
The rejection of claims 3, and 12-14 under 35 U.S.C 103 as being obvious over Dkidak are withdrawn because of the cancellation of claims 3, and 12-14.
The rejection of claims 15-16 under 35 U.S.C 103 as being obvious over Dkidak in view of Nagano (WO202024107A1) are withdrawn because of the cancellation of claims 15-16.
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.
Claims 1, 4, and 6-11 are rejected under 103 as being unpatentable over Dkidak et. al (US20170015946A1) hereinafter Dkidak.
Dkidak teaches a liquid cleaning composition comprising glycol ether solvents (see Abstract). With regards to claims 1 and 6, Dkidak teaches the use of diethyleneglycol n-butyl methyl ether and triethyleneglycol n-butyl methyl ether as suitable glycol ether solvents in the composition (see [0029]). Dkidak also teaches preferably 0.5-10 wt% of amphoteric, zwitterionic, or nonionic surfactant in the composition (see [0056]).
Although Dkidak does not teach a single embodiment with diethyleneglycol n-butyl methyl ether and triethyleneglycol n-butyl methyl ether solvents and a surfactant, the person with ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention by substituting any of the glycol ether solvents taught by Dkidak (see [0029]) with the 2 wt% propylene glycol n-propyl ether solvent in composition A (see [0131]). It is prima facie obvious to substitute equivalents known for the same purpose. In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) (The mere fact that components are claimed as members of a Markush group cannot be relied upon to establish the equivalency of these components. However, an applicant’s expressed recognition of an art-recognized or obvious equivalent may be used to refute an argument that such equivalency does not exist.); Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980) (The mere fact that phthalocyanine and selenium function as equivalent photoconductors in the claimed environment was not sufficient to establish that one would have been obvious over the other. However, there was evidence that both phthalocyanine and selenium were known photoconductors in the art of electrophotography. "This, in our view, presents strong evidence of obviousness in substituting one for the other in an electrophotographic environment as a photoconductor." 209 USPQ at 759.). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 21144.06 (II). Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Dkidak does not explicitly teach the ClogP value being between 1.00 and 3.00. However, it is necessarily within the recited range of the instant claim because ClogP is a property of the alkylene glycol ether. Because Dkidak recites diethylene glycol n-butyl methyl ether and triethylene glycol n-butyl methyl ether (the identical alkylene glycol ethers to claims 1 and 6), ClogP is inherent and necessarily 1.19 for diethylene glycol butyl methyl ether and 1.01 for triethylene glycol butyl methyl ether, as recited by the Table 1 of the instant specification. “Products of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. Hence, the ClogP value is inherently taught by Dkidak, absent of evidence to the contrary.
Dkidak teaches preferably 0.5-10 wt% of amphoteric, zwitterionic, or nonionic surfactant (see [0056]), and the glycol ether solvent at less than 10 wt%, preferably from 1-7 wt%, of the composition (see [0036]). Hence, the inventive composition of Dkidak can be formulated such that the ether solvent content is higher than the surfactant through routine optimization. “Where general conditions of the claims are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation.” In re Aller, 105 USPQ 233.
With regards to claim 4, Dkidak does not explicitly recite the static surface tension of the inventive composition. However, Dkidak generally teaches the glycol ether solvent to be present at less than 10 wt%, preferably 1-7 wt%, of the composition and 30-99.5 wt%, preferably 50-85 wt%, of water (see [0036]; see also [0040]). Assuming the upper limit for the solvent mass (5 wt%) and the adjusting the remainder mass (95 wt%) with water, it would be obvious for a person of ordinary skill before the effective filing date to reasonably expect the static surface tension of the liquid composition of Dkidak to fall within the range recited in the instant claims absent of evidence to the contrary. As shown in Table 2 of the instant specification, when the cleaning liquid composition comprises of 3-5 wt% glycol ether solvent and 95% water, the surface tension ranges between 28.1-39.3 mN/m (see Page 9). Optimization of components would have been prima facie obvious to the skilled artisan in order to obtain the most effective cleaning composition. “Where general conditions of the claims are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation.” In re Aller, 105 USPQ 233.
With regards to claim 6 and 8, Dkidak generally teaches the glycol ether solvent (such as diethylene glycol n-butyl methyl ether and triethylene glycol n-butyl methyl ether) to be present at less than 10 wt%, preferably 1-7 wt%, of the composition and 30-99.5 wt%, preferably 50-85 wt%, of water (see [0036]; see also [0040]). Hence, the inventive composition could be formulated with a glycol ether solvent and water only. A person of ordinary skill before the effective filing date would reasonably expect the static surface tension of the liquid composition of Dkidak to fall within 20.0 mN.m and 40.0 nM/m, absent of evidence to the contrary for the reasons stated above. Dkidak does not explicitly state the Clog P value, however the Clog P is necessarily within the recited range of the instant claim because ClogP is a property of the alkylene glycol ether a stated above.
With regards to claim 7, Dkidak teaches the glycol ether solvent is typically present at a level of less than 10%, more preferably from 1% to 7% by weight of the composition (see [0036]).
With regards to claims 9 and 10, Dkidak teaches the use of one glycol ether solvent in the composition and the optional use of “a co-solvent, such as solvents selected from the group consisting of C2-C4 alcohols, C2-C4 polyols, poly alkylene glycol and mixtures thereof” (see [0037]). The example compositions A-D only comprise of one glycol ether solvent (see [0131]). Hence, the composition could be formulated with only diethylene glycol butyl methyl ether or triethylene glycol butyl methyl ether solvent.
With regards to claims 11, Dkidak teaches the composition to comprise 30-99.5 wt%, preferably 50-85 wt%, of water (see [0040]). Hence, assuming the upper limit for the solvent mass (5 wt%) and the adjusting the remainder mass (95 wt%) with water, it would be reasonable for one of ordinary skill before the effective filing date to expect the liquid composition of Dkidak to comprise of 90% mass or greater of the alkylene glycol dialkyl ether and water. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments (see Remarks, pages 5-6) have fully been considered.
The Applicant argues the rejections of claims 1, 3-4, 6-14 under 35 U.S.C 103 as being obvious over Dkidak are overcome due to the amendments to claims 1, 6, 8, and 10. The examiner asserts the general teachings of Dkidak suggest the inventive composition of the amended claims, and maintains the rejections for the reasons cited above.
The Applicant argues the higher content of alkylene glycol ether dialkyl ether than the surfactant is not suggested by Dkidak. Dkidak teaches preferably 0.5-10 wt% of amphoteric, zwitterionic, or nonionic surfactant (see [0056]), and the glycol ether solvent at less than 10 wt%, preferably from 1-7 wt%, of the composition (see [0036]). The examiner asserts the general teachings of Dkidak suggest formulating the composition with a higher glycol ether solvent mass than surfactant through routine optimization.
The Applicant argues Dkidak does not teach the composition comprising of only alkylene diakyl ether solvent and water. Dkidak generally teaches the glycol ether solvent (such as diethylene glycol n-butyl methyl ether and triethylene glycol n-butyl methyl ether) to be present at less than 10 wt%, preferably 1-7 wt%, of the composition and 30-99.5 wt%, preferably 50-85 wt%, of water (see [0036]; see also [0040]). Hence, the examiner asserts the inventive composition could be formulated with a glycol ether solvent and water only.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA PAUL whose telephone number is (571)272-1551. The examiner can normally be reached M-F: 7:30am-5:00pm.
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/SP/Patent Examiner, Art Unit 1761
/BRIAN P MRUK/Primary Examiner, Art Unit 1761
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