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 Objections
Claims 8 and 20 are objected to because of the following informalities: In claim 8, it appears that “010” should be changed to “O10” (the letter O instead of zero). In line 1 of claim 20, “comprise” should be changed to “comprises.” Appropriate correction is required.
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 1-20 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 lines 3 and 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.
Regarding claims 3, 10, 14, 17 and 20, each recites both “any one or more of” and also “any combination thereof,” which is indefinite because they appear to say the same thing twice. One of these may be removed from each claim.
Claim 4 is indefinite because it appears to recite that the grease and stain removers comprise all of the listed elements, however it is assumed that “at least one” of them.
Regarding claims 7 and 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 7 is also indefinite because it is unclear what is meant by “any other chelating agent.” This can be interpreted differently depending on the reader.
Claims 8-12 contain the trademark/trade names Brij, Tween, Span, Triton and Tergitol. 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 different surfactants having unspecified chemical formulas and, accordingly, the identification/description is indefinite.
Claims 10-12 are indefinite because parent claim 8 requires Brij O10. It is unclear whether the other surfactants are required to be present along with the Brij. If a mixture is intended, “further comprises” should be used. Otherwise, claim 10 should be amended to depend from claim 1 instead.
Claims 11 and 12 are also indefinite because it is unclear whether Tween and Span surfactants are required together, or if Triton and Tergitol 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.
Claim 20 is indefinite because it is unclear whether the claim requires the EDTA from parent claim 19 in addition to the other listed chelating agents. It is assumed that this is not the case and should be amended to depend from claim 18 instead of 19. If the EDTA is intended to be used together, then “further comprises” should be used.
Any claim not specifically addressed is rejected for depending from an indefinite parent claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/653,672 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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, sodium metasilicate, potassium hydroxide, 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, 13, 14 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 Brij O10 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). 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. 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 Brij surfactant having a high HLB and a second Brij 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) 10-12 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references listed on the attached PTO-892 form disclose cleaning compositions.
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/FRANK M LAWRENCE JR/Primary Examiner, Art Unit 1776
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