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 § 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 1-3, 5-10, and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Piorkowski et al. (US 2019/0127669 A1).
Regarding claims 1-3, 5-6 and 19, Piorkowski teaches a single dose (i.e. unit dose) product (pouch or pack: 48) made from a water-soluble film for laundry detergent applications (abstract, 8-9, 49, 172, 175, claim 13) comprising i)- 5-20 wt.% water; [8, claim 1], ii)- a non-ionic surfactant; [13, 34, claims 1, 18], methyl ester ethoxylate (MEE) (instant claims 1, 5-6) with C8-C25 and EO=10: [22-23], in the amounts of 0-50 wt.%; [26], and; iii)- non-aqueous solvent; [7, 9, 18, 24-25]. The instantly claimed film is taught (instant 19) as polyvinyl alcohol; [57, claim 5], wherein the composition is inside a water soluble pouch or container pouch; [abstract, 8-10].
Regarding claim 1, Transitional phrase “consisting essentially of” occupies a middle ground between closed claims that are written in a consisting of’ format and fully open claims that are drafted in a comprising’ format.” PPG Industries v.Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir.1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569,224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7USPQ2d 1097 (Fed. Cir. 1988). [MPEP 2111.03 R3]. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.”
Regarding claim 1, The amount of methyl ester ethoxylate (MEE), taught by Piorkowski, is not anticipating the instant limitation. However there is a considerable overlap which renders the claim obvious. Note that, It would have been obvious to one of ordinary skill in the art at the time, before the effective filing date, of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Regarding claims 1-3, The Office realizes that all the claimed effects or physical properties (zein score, and % swelling) are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. zein score, and % swelling, would expectedly be achieved by a composition with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claims 7-10, Piorkowski teaches nonionic surfactant of alcohol ethoxylate (AE) with C12-C15 and EO- 7 in the amount of 23 wt.%; [57, 52], rendering the instant limitations (instant claims 7-8) obvious. With respect to the amounts of AE and MEE (instant claims 9-10) from the corresponding given ranges of amounts above, it is evident that the instant limitations are simply and obviously met by a large number of overlaps. Note that, It is well established in the art to optimize result effective variables, MPEP 2144(05). A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claims 13-16, Piorkowski teaches non-aqueous solvents of polyethylene glycol in amount of 8-56 wt.%, glycerol in amount of 3-56 wt.% and polyethylene glycol in amount of 0-35 wt.%; [8, 52, claim 1], thus rendering (instant 13-15) their instantly claimed ratios obvious by a considerable overlapping. Regarding the amount of monoethanol amine (instant 16) the selection of this neutralizing agent, in view of many other equivalent ones is not mandatory at in fact the suggested amount by Piorkowski is 0-2 wt.%; [42].
Regarding claims 17-18, Piorkowski teaches additives of NaOH as base, enzyme and optical brightener; [42, 52, 13, claim 10]. Note that the limitations of claim 18 are already addressed above by claims 1, 15 and 17 and thus are not repeated here.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Piorkowski et al. (US 2019/0127669 A1) as applied to claim 1 and further in view of Piorkowski (US 2019/0112563 A1).
Regarding claims 11-12, Piorkowski does not teach the pH of its composition. However; I)- Considering the overall chemical make-up of this prior art, the lack of any strong acids (see 41) and presence of a strong base (NaOH; see 42) as pH adjuster it is evident that the composition is more of an alkaline one than acidic, in absence of any teaching to the contrary. Therefore, at the time before the effective filing date of invention, it would have been obvious to adjust the pH of composition at the instantly claimed range with the motivation providing a relatively mild composition for treating fabrics by avoiding the harsh alkaline effects. II)- Furthermore, the prior art of Piorkowski teaches a similar composition (an analogous art for laundry applications 2, 95, 118) with similar components wherein the pH of composition is 7.2-8.2; [120]. At the time before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to adjust the pH of piorkowski et al. composition to pH 7.2-8.2 of Piorkowski, as a routine laboratory experimentation, and also with the motivation of providing a fabric friendly composition in laundry applications.
Response to Arguments
Applicant's arguments filed 2026/03/05 have been fully considered but they are not persuasive. Because;
In response to applicant’s argument (page 5-6) and the added Transitional phrase “consisting essentially of” limitation, please the rejection of claim 1 above. Furthermore, regarding the Zein score (pages 6 & 7) of the detergent composition, it should be noted that this value, as construed, is a property being directly dependent on the specific chemical components of the instant composition and in fact a result of their mixed chemical state in their aqueous media. Please see the action above addressing the Zein score.
In response to applicant’s argument (page 7; last paragraph) the provided discussion for comparison of primary reference “..669” and second reference ‘…563” is vague and unclear as to what points applicant is attempting to prove or convey. It appears that the argument is directed to differences between these two references wherein their combination would still not render the instant claims 11-12 obvious. It should be noted that; I)- The only reason for combination of this two references is only to provide a further evidence for the instantly claimed composition’s pH, with the corresponding motivation and no more,. II)- 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).
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
2026/06/06
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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