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 .
Claim Interpretation
Because of the amendment, claim 1 is interpreted as requiring (1) a solvent, (2) a grease and stain remover, AND/OR surfactants, AND/OR caustic cleaners including protease and/or lipase enzymes, and (3) dispersants AND/OR emulsifiers, AND a chelating agent. Note that the amendment to line 4 in claim 1 is in response to the indefiniteness rejection of the previous office action (paragraph 5) to clarify that one or more of the following group of recited components is required (not one or more of EACH of them). The previous anticipation rejections are maintained because the protease and lipase enzymes are an optional part of the second portion.
It is also noted that claims 13 and 14 specifically limit the caustic cleaners (protease and lipase enzymes) and are taken to positively recite their presence in the composition.
Similarly, claim 11 is understood to require the presence of either one of polysorbate or sorbitan surfactants because it was not amended in response to the rejection of paragraph 12 of the non-final office action.
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, 11 and 18 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 claim 1, it is unclear whether “one or more” in line 5 is used to indicate one or more of each of the following components, or one or more of all of the following components. If this is the latter, “of” should be inserted after “more.” Alternatively, the phrase “one or more selected from the group of” can be used if only one of the components is required. This is repeated from the previous office action because only line 3 was amended while line 5 was not amended or addressed.
Claim 7 is indefinite because it is unclear what is meant by “any other chelating agent.” This can be interpreted differently depending on the reader.
Claim 11 is indefinite because it is unclear whether polysorbate and sorbitan surfactants are required together. Typically when a claim further limits one element from a list in the parent claim, it is assumed that the element is being positively required as part of the composition even though it is optional in the parent claim. Here however, two different types are limited so it is unclear whether they are required. To overcome this rejection, claim 11 can be amended to clarify exactly which surfactants are intended to be included in the composition.
Regarding claim 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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, 4 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Silvernail et al. (8,216,989).
Silvernail et al. ‘989 teach a cleaning composition including sodium bicarbonate (grease/stain remover), sodium metasilicate (grease/stain remover), potassium hydroxide (caustic cleaner), water, and sodium citrate dehydrate (see Table 5, abstract). The sodium citrate satisfies the dispersant and chelating agent limitations of the claims. One skilled in the art will understand that the cleaning solution can be used to clean filter oil.
Claim(s) 1, 4, 15 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tyerech et al. (5,712,240).
Tyerech et al. ‘240 teach a cleaning composition comprising a surfactant, water, citric acid and tetrasodium EDTA (see abstract, Table 1). One skilled in the art will understand that the cleaning solution can be used to clean filter oil.
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.
Claim(s) 2, 3, 5, 7, 16-17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyerech et al. ‘240.
Tyerech et al. ‘240 disclose all of the limitations of the claims except that preferred volume percentages of components are used. Absent a proper showing of criticality or unexpected results, the amount of each component present in the composition is considered to be a parameter that would have been routinely optimized by one having ordinary skill in the art in order to provide a cleaner that has adequate cleaning and durability properties.
Claim(s) 2, 3, 5-7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvernail et al. ‘989.
Silvernail et al. ‘989 disclose all of the limitations of the claims except that preferred volume percentages of components are used. Absent a proper showing of criticality or unexpected results, the amount of each component present in the composition is considered to be a parameter that would have been routinely optimized by one having ordinary skill in the art in order to provide a cleaner that has adequate cleaning and durability properties.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over any one of Silvernail et al. ‘989 or Tyerech et al. ‘240 in view of Menard et al. (2010/0256033 A1).
Any one of Silvernail et al. ‘989 or Tyerech et al. ‘240 discloses all of the limitations of the claim except that the surfactant is used at a preferred concentration. Menard et al. ‘033 discloses the use of non-ionic surfactants such as polyoyethylene-10 oleyl ether (Brij O10) in a cleaning solution (see abstract, paragraph 19). Absent a proper showing of criticality or unexpected results, the amount of each component present in the composition is considered to be a parameter that would have been routinely optimized by one having ordinary skill in the art in order to provide a cleaner that has adequate cleaning and durability properties.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over any one of Silvernail et al. ‘989 or Tyerech et al. ‘240 in view of Menard ‘033 as applied to claim 8 above, and further in view of CN ‘667.
Any one of Silvernail et al. ‘989 or Tyerech et al. ‘240 in view of Menard ‘033 discloses all of the limitations of the claim except that the surfactant includes a mixture of a first surfactant having a high HLB and a second surfactant having a low HLB. CN ‘667 discloses a cleaning composition having a mixture of low HLB and high HLB surfactants (see page 4 of the machine-generated English translation). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the surfactant of the primary references by using a mixture of low HLB and high HLB surfactants in order to provide a cleaner that has a broader spectrum of properties and effectiveness for both oil and water environments.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over any one of Silvernail et al. ‘989 or Tyerech et al. ‘240 in view of Menard ‘033 as applied to claim 8 above, and further in view of Ellis et al. (2001/0030000 A1).
Any one of Silvernail et al. ‘989 or Tyerech et al. ‘240 in view of Menard ‘033 discloses all of the limitations of the claims except that specific surfactants are used. Ellis et al. ‘000 disclose surfactants for cleaning solutions including Triton X-100 and Tween 20 (see abstract, Table 1). It would have been obvious to one having ordinary skill in the art at the time of the invention to select a surfactant that is known to be effective in a cleaning composition.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvernail et al. ‘989 in view of Daute et al. (2010/0294501 A1).
SIlvernail et al. ‘989 disclose all of the limitations of the claim except that caustic cleaning agent includes protease or lipase enzyme at a concentration of about 2.6 vol%. Daute et al. ‘501 disclose that lipases can be employed to remove fat grime and can assist the cleaning action of surfactants (see paragraph 69). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the cleaning solution of Silvernail et al. ‘989 to include lipase in order to improve the cleaning action of surfactants.
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive. Regarding the prior art rejections, applicant argues that the cited references fail to disclose caustic cleaners including one or more of protease enzymes and lipase enzymes. As discussed in paragraph 2 above, these specific enzymes are not positively required in the claim because of the wording used, which was clarified by the amendment to line 5 of claim 1 in response to the examiner’s previous indefiniteness rejection (paragraph 5 of the non-final office action mailed March 10, 2026). The prior art rejections are maintained because the references disclose grease and stain removers or surfactants to anticipate the claim requirements.
The outstanding double patenting rejection has been overcome by amendments in each of the applications. Some of the indefiniteness rejections have been maintained because they were not addressed in applicant’s response filed July 21, 2026.
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 FRANK LAWRENCE whose telephone number is (571)272-1161. The examiner can normally be reached Mon-Fri 8:30am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK M LAWRENCE JR/Primary Examiner, Art Unit 1776
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