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 .
Election/Restrictions
Applicants elected sodium lauryl sulfate as anionic surfactant, dialkyl quaternary ammonium salt as specific quaternary ammonium compound. Claims 1, 3, 5, 9-15, 17-20 read on the elected species and are under examination; claims 4, 6-8 and 16 do not read on the elected species and are withdrawn from consideration.
Claims 1 and 3-20 are pending, claims 1, 3, 5, 9-15, 17-20 are under examination.
Priority
Acknowledge is made that this is a Divisional application of U.S. Ser. No. 17/303,189, filed May 24, 2021, which is a Continuation application of U.S. Ser. No. 16/546,567, filed Aug. 21, 2019, now U.S. Pat. No. 11,044,907, issued Jun. 29, 2021, which is a Continuation application of U.S. Ser. No. 15/444,987, filed Feb. 28, 2017, now U.S. Pat. No. 10,426,162, issued Oct. 1, 2019, which is a non-provisional application claiming priority to U.S. Provisional Application No. 62/373,772, filed Aug. 11, 2016. U.S. Provisional Application No. 62/373,772.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/16/2023, 11/13/2023, 03/19/2024, 05/12/2025 and 08/06/2025 is being considered by the examiner.
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.
Claim 17 is 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.
Claim 17 cites parenthesis, and it is unclear if the subject matter contained within the parenthesis is further limiting or not. A parenthetical expression is simply a word or string of words which contains relevant yet non-essential information and are non-restrictive which means that the phrase may be removed from the sentence without changing the meaning of the sentence. Parenthetical expressions are not permissible which do not contribute to clearness or exactness in stating Applicant’s invention (Ex parte Cahill, 1893 C. D., 78; 63 O. G., 2125).
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 of this title, 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.
Claims 1, 3, 5, 9-15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brueckner et al. (US20100062965).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Brueckner et al. teaches A cleaning agent for hard surfaces, which is made of a combination of at least one alkyl pyrrolidone, at least one glycol ether, and at least one anionic surfactant, exhibits very good cleaning power and cleaning speed for dirt of different kinds and can be utilized particularly for cleaning glass (abstract). The preparation according to the invention furthermore contains at least one anionic surfactant. Particularly preferred anionic surfactants are sodium lauryl sulfate and sodium lauryl ether sulfate with 2 EO. The preparation according to the invention contains anionic surfactants preferably in quantities of 0.01 to 30 wt. %, in particular of 0.1 to 1 wt. %. ([0017, 0022]). In addition to the above-stated ingredients, the preparation according to the invention may contain further auxiliary substances and additives. These include in particular further agents for modifying or hydrophilizing surfaces, polymers, pH adjusting agents, acids, bases, further solvents, further surfactants, preservatives, corrosion inhibitors, dyes, fragrances, bleaching agents, enzymes, thickeners, disinfectants, electrolyte salts, antimicrobial active ingredients, UV stabilizers and mixtures thereof ([0026]). In addition to the previously stated surfactants, the preparation according to the invention may furthermore also contain cationic surfactants and/or amphoteric surfactants ([0041]). Suitable cationic surfactants are inter alia the quaternary ammonium compounds of the formula (Rvi)(Rvii)(Rviii)(Rix)N+ X−, in which Rvi to Rix denote four identical or different, in particular two long-chain and two short-chain, alkyl residues and X− denotes an anion, in particular a halide ion, for example didecyldimethylammonium chloride, alkylbenzyldidecylammonium chloride and mixtures thereof. The preparations contain cationic surfactants in quantities, relative to the composition, of 0 to 10 wt. %. ([0043]). The pH value of the preparations according to the invention may be varied over a wide range, but a range from 2.5 to 12 is preferred. Glass cleaner formulations and multipurpose cleaners here in particular have a pH value of 6 to 11, extremely preferably of 7 to 10.5 while bathroom cleaners in particular have a pH value of 2 to 5, extremely preferably of 2.5 to 4.0 ([0054]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Brueckner et al. is that Brueckner et al. does not teach all limitation in one embodiment.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1, 3,5, 9-11, 14-15, 17-20, Brueckner et al. teaches a cleaner composition comprising sodium lauryl sulfate at 0.01 to 30 wt. %, didecyldimethylammonium chloride at 0 to 10 wt. % and other ingredients such as antimicrobial active and fragrances at pH 2.5-12. “For inactivating a surface active and/or antimicrobial” is intended use, not limiting. Furthermore, the clearer composition is expected to be able of inactivating a surface active and/or as antimicrobial.
Regarding the limitation of “instructions for determining and or providing a molar ratio of anionic surfactant to a quaternary ammonium compound”, it is basic chemistry knowledge to calculate the molar ratio of two components with known percentage in a composition, this, it is within skill of one artisan in the art to determine a molar ratio of anionic surfactant to a quaternary ammonium compound. Furthermore, instructions (as printed insert according to applicant’s specification) are mot limiting, Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004). "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969).
Regarding claims 12-13, Brueckner et al. teaches sodium lauryl sulfate (MW 288.372) at 0.01 to 30 wt. %, didecyldimethylammonium chloride (MW 362.08) at 0 to 10 wt. %. For a composition of 1000g, when the sodium lauryl sulfate 2.88% and didecyldimethylammonium chloride is 3.62%, the molar ratio of sodium lauryl sulfate to didecyldimethylammonium chloride is (2.88%x1000)/288 to (3.62%x1000)/362 = about 1:1, inside of claimed range.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
Claims 1, 3, 5, 9-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10426162 in view of Brueckner et al. (US20100062965). The reference patent teaches antimicrobial composition comprising quaternary ammonium salt, in view of Brueckner et al. teaching anionic surfactant sodium lauryl sulfate, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1, 3, 5, 9-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11044907 Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches antimicrobial composition comprising quaternary ammonium salt and anionic surfactant.
Claims 1, 3, 5, 9-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11406103 in view of Brueckner et al. (US20100062965). The reference patent teaches antimicrobial composition comprising quaternary ammonium salt, in view of Brueckner et al. teaching anionic surfactant sodium lauryl sulfate, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1, 3, 5, 9-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12091641. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches antimicrobial composition comprising quaternary ammonium salt (dioctyl dimethyl ammonium chloride in claim 8) and anionic surfactant (sodium lauryl sulfate in claim 5).
Claims 1, 3, 5, 9-15, 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18805875 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent application teaches antimicrobial composition comprising quaternary ammonium salt (dioctyl dimethyl ammonium chloride in claim 13) and anionic surfactant (sodium lauryl sulfate in claim 11).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613