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 .
Response to Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on October 19, 2025 is acknowledged. The traversal is on the ground(s) that a search for both groups would not cause a serious burden. This is not found persuasive because burden consists not only of specific searching of classes and subclasses, but also of searching multiple databases for foreign references and literature searches. Burden also resides in the examination of independent claim set for clarity, enablement and double patenting issues. Further, a reference that would anticipate the invention of one group would not necessarily anticipate or even make obvious another group. Finally, the consideration for patentability is different in each case. Thus, it would be an undue burden to examine all of the above inventions in one application and the restriction for examination purposes as indicated above is deemed proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 19, 2025.
Claims
Claim Rejections - 35 USC § 112 - Indefiniteness
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 1-18 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, the phrase "e.g." 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).
Regarding claim 5, the phrase "e.g." 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).
Regarding claim 8, the phrase "e.g." 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).
Regarding claim 12, the phrase "e.g." 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).
Regarding claim 13, the phrase "e.g." 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).
Regarding claim 15, the phrase "e.g." 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).
Regarding claim 16, the phrase "e.g." 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).
Regarding claim 17, the phrase "e.g." 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 1 recites [NaPO3]n, however “n” is not defined. Therefore it is not clear what insoluble sodium metaphosphates are encompassed by the instant claims.
Claim Rejections - 35 USC § 103 - Obviousness
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (US 2018/0133129) in view of Fei et al. (US 2017/0143599).
Yuan et al. disclose oral care composition, including from about 0.01% to about 40% peroxymonosulfate whitening agent and from about 1% to about 99% non-aqueous dispersant. Additional whitening agents may be added and include hydrogen peroxide (paragraph 0046). The composition may comprise a poloxamer dispersant. Polyethylene glycols may also be added to the compositions. Abrasives include calcium pyrophosphate and insoluble sodium polymetaphosphate. The calcium pyrophosphate comprises about 20% of the of the compositions. Commercial compositions comprise PVP-peroxide complexes. The compositions comprise poloxamers, which are triblock copolymers. The oral care composition may include additional ingredients common to oral care compositions, such as thickeners, flavoring agents, tartar control agents, surfactants, sweeteners, humectants, colorants, dyes, and pigments. The composition may comprise about 2% tetrasodium pyrophosphate as a pH modifier. A composition comprises 1% Oxone ® (0.5% potassium peroxymonosulfate), 20% insoluble phosphate abrasive, 5.75% polyvinylpyrrolidone, 1.75% thickening agent, 1.98% flavoring and sweeteners, 2% pH modifying agents, 0.03% butylated hydroxytoluene, 1.1% sodium monofluorophosphate, 6.31% polyethylene glycol 600, 15.95% propylene glycol, 7.5% polyethylene glycol/polypropylene glycol 116/66 copolymer and 2% sodium lauryl sulfate powder (see Tables, meeting instant claim 1). Another composition comprises 36% polyoxyethylene-polyoxypropylene glycol (L35).
Yuan et al. differ from the instant claims insofar as it does not disclose the amount of hydrogen peroxide that may be used in addition to the peroxymonosulfate.
Fei et al. disclose single phase whitening dentifrices with metaphosphate abrasives. The composition comprises a whitening agent, wherein the whitening agent includes hydrogen peroxide and a peroxide bound to a polyvinyl pyrrolidone polymer. The amount of whitening agent used is about 0.05% to about 6% by weight (paragraph 0051).
It would have been obvious to one of ordinary skill in the art prior to filing the instant application to have use hydrogen peroxide in an amount ranging from 0.05 to about 6% in the composition of Yuan et al. because this is an effective range for whitening the teeth.
In regards the specific amounts, the claims use e.g., making the claims indefinite. See Indefiniteness rejections above.
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 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.
1) Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-9 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 the claims are coextensive insofar as they both comprise potassium peroxymonosulfate, a poloxamer, an abrasive and PVP. Therefore the instant claims are obvious over the patented claims.
2) Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-11 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 the claims are coextensive insofar as they both comprise potassium peroxymonosulfate, an anticalculus agent, sodium metaphosphate and an ethylene oxide/propylene oxide copolymer. Therefore the instant claims are obvious over the patented claims.
3) Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 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 the claims are coextensive insofar as they both comprise potassium peroxymonosulfate, and hydrogen peroxide. The patented claims use comprising which does not limit the components. Therefore the instant claims are obvious over the patented claims.
4) Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 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 the claims are coextensive insofar as they both comprise potassium peroxymonosulfate, calcium phosphate, polyvinyl pyrrolidone, polyoxyethylene/polyoxypropylene triblock copolymer and PEG/PPG random copolymer and hydrogen peroxide. The patented claims are narrower in scope whereas the instant claims further define the composition in the dependent claims. Therefore the instant claims are obvious over the patented claims.
Claims 1-18 are rejected.
Claim 19 is withdrawn.
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612