DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 and 15-20 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.
The instantly amended claim 1 states the limitation “wherein the composition has a total dissolved ionic content of less than 10 ppm.”. It should be noted that the amount of disodium tetraborate decahydrate in the solution is claimed to be 0.0001 to 0.01 wt.%. Conversion of these two numbers results in 1 ppm to 100 ppm !
The claimed amount of cationic surfactant (e.g. benzalkonium chloride) is 0.0001 to 0.01 which when converted to ppm is again 1 ppm to 100 ppm. Therefore, the range for total amount of dissolved ionic content would be 2 ppm to 200 ppm ! Consequently, the stated limitations of independent claim 1 are contradictory thus rendering the claim 1 and its dependent claims indefinite. Applicant is required to correct this issue so that the claims would be amenable for examination. Please note that both components of the instantly composition are highly water soluble. Please consult any general chemistry textbook.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Dreilinger et al. (US 2010/0234269 A1) in view of Keswani et al. (US 2015/0144502 A1).
Regarding claims 8-10, Dreilinger teaches an aqueous cleaning composition for hard surfaces such as metals, ceramics (0066) and the method of its manufacturing (abstract, 0015), comprising deionized water; [0076: table 2], disodium tetraborate decahydrate (same as borax or sodium borate decahydrate) and cationic surfactant such as benzalkonium chloride; [0076: table 2]. Composition further comprises C1-C4 alcohols such as ethanol and isopropanol as solvent; [page 5: 46].
Regarding claims 8 and 11, Dreilinger does not teach the instantly claimed resistivity of its deionized water. However, Keswani teaches a cleaning system for metal surfaces comprising deionized water with specific resistivity of 18 megaohm; [0058]. Keswani and Dreilinger are related art of cleaning systems utilizing deionized water as carrier of cleaning solution; [0060, 70-71]. At the time before the effective filing date of invention, it would have been obvious to use the deionized water, with the given resistivity, of Keswani for Dreilinger aqueous composition with the motivation of having an aqueous carrier with an intended and controlled ionic contents to prevent water hardness deposition on cleaned metal surfaces as taught by Keswani in using deionized water.
Regarding claims 8 and 12-14, Dreilinger does not, expressly, teach the details or steps of preparing the aqueous composition, such as adding sodium tetraborate decahydrate (borax) to agitated and heated (to 40-60ºC) deionized water as a first mixture and preparing the second mixture with cationic surfactant added to deionized heated water and alcohol mixture. However, these steps are actually construed as an obvious chemical dissolution steps in order to make a homogenous and well-mixed cleaning solution, which is a normal routine laboratory experimentation that does not impart patentability. This is truer, and evident, in view of the low solubility of borax in water (31.7 gr/L) wherein the agitation and heating of water would ensure its complete dissolution. In short, the order of making a solution of borax and cationic surfactant does not cause any patentable unexpected results. Note that; Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See also In re Burhan’s, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) ; In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [MPEP 2144.04 IV C]. Furthermore, regarding the process of dissolving Borax in solution in deionized water at temperature range of 40-60ºC (instant claim 12) as shown below on the table of borax water solubility (Wikipedia); the solubility of Borax at room temperature 25 ºC (5.80 gram/100ml) when compared to that of 60 ºC (30.32 gr/100 ml) is increased by about 600%. This indicates a faster rate of dissolution which also ensures a complete transition of sodium tetraborate decahydrate (borax) into its aqueous form as an important ingredient of this rinse composition. This is also true for dissolution of the other ingredients which is a motivation for a quicker preparation of claimed composition wherein all of solid components are completely dissolved in the water solvent, or carrier, and thus a high quality product.
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Regarding claim 8, and the term “making a blade rinse composition”, it is noted that; Section 2112.02 of the MPEP provides direction as to how phrases such as this are to be treated: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 11c 2 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81.
Response to Arguments
Applicant's arguments filed 2024/08/16 have been fully considered but they are not persuasive. Because’
It is noted that applicant’s only argument that; I)- ” In other words, the electrochemically-assisted megasonic cleaning method of Keswani functions retroactively rather than prospectively. In contrast, the DI-based cleaning solution of
claim 8 not only removes solid contaminants from the metal substrate, but also works to prevent the future accumulation of solid contaminants, as well as to prevent the future oxidation of the metal substrate. See Specification, [0034]. The preventative nature of the disclosed DI-based solution not only distinguishes the use of DI of Applicant's method from the Keswani method, but also provides an advantage over the Keswani method.”, it should be noted that the essence of applicant’s argument on application of de-ionized water is avoiding the unwanted ionic species on a metal surface which is an inherent property of DI water, regardless of being applied retroactively rather than prospectively. In both case DI water does what DI water is expected to do, which removing ions from a surface. II)- Furthermore, in response to applicant’s argument that “Additionally, Keswani does not discuss any application of DI for the solubilizing of
mineral deposits from hardwater. Instead, Keswani only discloses DI within the context of an electrochemical experiment, in which the use of DI having a specific resistivity value of 18 megaohm is directed at the precise and controlled formation of non-collapsing H2 bubbles at the metal-substrate surface. Keswani, [0004], [0062-0068]. In contrast, Applicant's teaching of deionized water having a resistivity value 10 to 18 megaohm sheds light on the scavenging and solubilizing ability of deionized water, in the context of chemical reactions that do not involve electrochemically-assisted megasonic bubble formation. The method of claim 8 thus relies on different chemical mechanisms than the Keswani method, suggesting that a person having ordinary skill in the art would not look to Keswani based on the teaching of Dreilinger to arrive at the method of claim 8.”, It is noted that the above assertions are related to specific steps of Keswani which are not related of even claimed in the instant application. In short; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). B- In response to applicant’s argument that; “Conversely, the method of claim 8 does not require the use of either a transducer or an electrical source in connection with DI having a resistivity of 10 to 18 megaohm. Applicant therefore submits that the teachings of Keswani undermine the notion that a person of ordinary skill would have combined the known elements of Keswani with Dreilinger, thus rendering the "inference of nonobviousness [] especially strong”, it is again noted that Kewani’s additional steps for rinsing and cleaning (electrochemically) does not negate the fact that the use of deionized water with resistivity of 10 to 18 megaohm would still render the claim 8 limitation obvious. Applicant’s argument is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 8 PM Flex..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./
Examiner, Art Unit 1767
2025/01/10
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767