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 .
DETAILED ACTION
Application Status
This application is a 371 of PCT/EP2022/054772, filed on 09/01/2023.
Claims 18-34 are currently pending in the instant patent application.
The preliminary amendment filed on 09/01/2023, canceling claims 1-17, and adding new claims 18-34 is acknowledged.
Election/Restriction
Applicant's election with traverse of Group I, Claims 18 (in part), 19-28, drawn to a method of improving the deposition of a fragrance onto a textile from a consumer product composition, the method comprising the step of contacting the textile with a consumer product composition comprising an enzyme having cellulase activity and a fragrance, in the response filed on 04/27/2026 is acknowledged.
The traversal is on the ground(s) that the above-captioned application was entered into the national stage under 35 U.S.C. §371, and accordingly, the determination for whether a restriction requirement should be imposed is whether unity of invention exists among the subject matter of the claims. It is the examiner’s assertion that because “37 C.F.R. §1.475 does not provide for multiple products and/or methods using patentably distinct product within a single application.
Applicants arguments have been fully considered and the linking claims election is hereby withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18-34 are present for examination.
Priority
Acknowledgement is made of applicants claim for foreign priority under 35 U.S.C. 119(a)-(d) to a foreign patent application EUROPEAN PATENT OFFICE (EPO) 21159991.3, (DENMARK), filed on 03/01/2021.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 08/31/2023, 09/01/2023, 05/29/2025, 01/23/2026, and 03/25/2026 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner. The signed copies of 1449 are enclosed herewith.
Specification Objections
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (pg 5). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code. See MPEP § 608.01.
Drawings
There are no Drawings with this application.
Claim Rejections - 35 USC § 112(b)
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.
Claim 33 is rejected under 35 U.S.C. 112(b), as being indefinite and vague for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 33 is indefinite with the recitation “particularly” (similar to preferably), which is unclear as to the scope of the claim. The phrase "particularly" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Does "particularly" mean superior to other similar parameters or something else? See MPEP § 2173.05(d). Clarification is required.
Claim Rejections – pre-AIA 35 USC § 112(b)
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 32 is rejected under the judicially approved “improper Markush grouping” doctrine. See Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. §112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011), page 7166.
Claim 32 is rejected as reciting an improper Markush group (i.e., bis(Acyloxyethyl)hydroxyethyl ----------- ester quats as the species of the recited Markush group do not all share a disclosed structural similarity essential to the common use of the species. Although both species share a common use, the species do NOT share any structural similarity at all as each compound have distinct functions. Note that the species of the Markush Group must end with “and” not “or”. Clarification is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
A. Written Description
Claims 18-21, 22-25, 29-33 and 34 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 18 is directed to a method of improving the deposition of a fragrance onto a textile from a consumer product composition, the method comprising the step of contacting the textile with a consumer product composition comprising an enzyme having cellulase activity and a fragrance.
The Court of Appeals for the Federal Circuit has held that a “written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials.” University of California v. Eli Lilly and Co., 1997 U.S. App. LEXIS 18221, at *23, quoting Fiers v. Revel, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993). To fully describe a genus of genetic material, which is a chemical compound, applicants must (1) fully describe at least one species of the claimed genus sufficient to represent said genus whereby a skilled artisan, in view of the prior art, could predict the structure of other species encompassed by the claimed genus and (2) identify the common characteristics of the claimed molecules, e.g., structure, physical and/or chemical characteristics, functional characteristics when coupled with a known or disclosed correlation between function and structure, or a combination of these (paraphrased from Enzo Biochemical).
Thus, Claim 18 is drawn to a method of improving the deposition of a fragrance onto a textile from a consumer product composition, the method comprising the step of contacting the textile with a consumer product composition comprising any enzyme derived from any sources having no structure, but having cellulase activity, or using any cellulase enzyme, which is at least 60%, sequence identity to SEQ ID NO: 1, and a fragrance, i.e., any enzyme derived from any sources having no structure, but having cellulase activity, or using any cellulase enzyme, which is at least 60% sequence identity to SEQ ID NO: 1, which is about 40% non-identity that encompasses many variant cellulase enzymes derived from many unknown sources and many mutants, variants, and fragments thereof, which can have wide variety of unknown structures, i.e. No Structure-Function correlation, which is required to fulfill the Written Description (WD) requirement.
As discussed in the written description guidelines the Written Description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A representative number of species means that the species, which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
Furthermore, the genus of polypeptides required in the claimed invention is an extremely large structurally and functionally variable genus. While the argument can be made that the recited genus of polypeptides are adequately described by the disclosure of the structures of prior art. However, the art clearly teaches the “Practical Limits of Function Prediction”: Whisstock et al., (2003) highlight the difficulties associated with “Prediction of protein function from protein sequence and structure”; “To reason from sequence and structure to function is to step onto much shakier ground”, closely related proteins can change function, either through divergence to a related function or by recruitment for a very different function, in such cases, assignment of function on the basis of homology, in the absence of direct experimental evidence, will give the wrong answer, it is difficult to state criteria for successful prediction of function, since function is a vague concept. This finding is reinforced in the following scientific teachings for specific proteins in the art that suggest, even highly structurally homologous polypeptides do not necessarily share the same function and many functionally similar proteins will have little or no structural homology to disclosed proteins. For example, proteins having similar structure have different activities (structure does not always correlate to function); Witkowski et al., (1999) teaches that one conservative amino acid substitution transforms a -ketoacyl synthase into a malonyl decarboxylase and completely eliminates -ketoacyl synthase activity. Similarly, the art also teaches that functionally similar molecules have different structures; Kisselev L., (2002) teach that polypeptide release factors in prokaryotes and eukaryotes have same function but different structures.
Furthermore, the genus of polypeptides or variants required in the claimed invention is an extremely large structurally and functionally variable genus. While the argument can be made that the recited genus of polypeptides are adequately described by the disclosure of the structures of prior art, i.e., lipase variant enzymes. However, the art clearly teaches the “Practical Limits of Function Prediction”: Whisstock et al., (2003) highlight the difficulties associated with “Prediction of protein function from protein sequence and structure”; “To reason from sequence and structure to function is to step onto much shakier ground”, closely related proteins can change function, either through divergence to a related function or by recruitment for a very different function, in such cases, assignment of function on the basis of homology, in the absence of direct experimental evidence, will give the wrong answer, it is difficult to state criteria for successful prediction of function, since function is in principle a fuzzy concept. This finding is reinforced in the following scientific teachings for specific proteins in the art that suggest, even highly structurally homologous polypeptides do not necessarily share the same function and many functionally similar proteins will have little or no structural homology to disclosed proteins. For example, proteins having similar structure have different activities (structure does not always correlate to function); Witkowski et al., (1999) teaches that one conservative amino acid substitution transforms a -ketoacyl synthase into a malonyl decarboxylase and completely eliminates -ketoacyl synthase activity. Similarly, the art also teaches that functionally similar molecules have different structures; Kisselev L., (2002) teach that polypeptide release factors in prokaryotes and eukaryotes have same function but different structures.
Claims are drawn to very broadly any enzyme derived from any sources having no structure, but having cellulase activity, or using any cellulase enzyme, which is at least 60%, sequence identity to SEQ ID NO: 1, and a fragrance, used in the claimed method, i.e., any enzyme derived from any sources having no structure, but having cellulase activity, or using any cellulase enzyme, which is at least 60% sequence identity to SEQ ID NO: 1, which is about 40% non-identity that encompasses many variant cellulase enzymes derived from many unknown sources and many mutants, variants, and fragments thereof, which can have wide variety of unknown structures, whose structures are not fully described in the specification. No information, beyond the characterization of few cellulase enzymes has been provided, which would indicate that applicants had possession of the claimed genus. The specification does not contain sufficient disclosure of the structure with function of all the cellulase enzymes used in the claimed method, within the scope of the claimed genus. The genus of polypeptides claimed is a large variable genus including many mutants, variant and fragments thereof, which can have wide variety of structures. Therefore, many structurally unrelated enzymes (variant lipase) within the scope of these claims. The specification discloses the structure of only few representative species of the claimed genus, which is insufficient to put one of skill in the art in possession of the attributes and features of all species within the claimed genus. Therefore, one skilled in the art cannot reasonably conclude that applicant had possession of the claimed invention at the time the instant application was filed.
Applicant is referred to the revised guidelines concerning compliance with the written description requirement of U.S.C. 112, first paragraph, published in the Official Gazette and also available at www.uspto.gov.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
MPEP-2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017]
A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is "not novel") over a disclosure that is available as prior art. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. See, e.g., MPEP § 2114, subsections II and IV.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.
MPEP-2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an "enabled disclosure;"
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
Claims 18-21, 22-25, 29-31 and 34 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention as anticipated by Suzuki et al. (A laundry powdered detergent composition having stable fragrance component. WO2017/134840, publication 08/10/2017, see IDS).
The Broadest Reasonable Interpretation (BRI) of claims 18-19, which is drawn to a method of improving the deposition of a fragrance onto a textile from a consumer product composition, the method comprising the step of contacting the textile with a consumer product composition comprising an enzyme having cellulase activity and a fragrance, wherein improving the deposition of the fragrance comprises increasing the deposition of the fragrance on the textile.
Regarding claims 18-21, 22-25, 26-28, 29-31 and 34, Suzuki et al. teach a laundry powdered detergent composition containing components of (A) to (D), comprises surfactant (A), a cleaning auxiliary compound (B), an enzyme (C), and a powdered fragrance enclosed in a trehalose-containing coating (D) to produce a favorable fragrance during washing without any degradation in the fragrance even when the laundry powdered detergent composition is stored under high temperature and high humidity. Suzuki et al. further teach the detergent composition, wherein the surfactants includes poly-oxyethylene alkyl ether, sodium alkyl benzene sulfonate, and sodium alpha-olefin sulfonate, and cationic surfactants includes alkyl trimethylamine salts, which is about 50% of the powdered composition, wherein the Cleaning aid includes Enzyme including cellulase, protease, amylase and lipase, and Powder fragrance encapsulated in a film containing trehalose and a fragrance encapsulated in an aminoplast polymer shell, according to the powdered laundry detergent composition, wherein a powdered laundry detergent composition wherein the enzyme is one or more selected from protease, lipase, amylase, and cellulase, which is 100% identical to SEQ ID NO: 1 of the instant application because Suzuki et al. clearly indicated that cellulase enzyme is the same as owned by Novozymes Cellzyme, which is about 0.05% to 5% of the total mass of powder detergent . Since, the Assignee of the instant application is also NOVOZYMES, and thus, the cellulase enzyme Cellzyme used by Suzuki et al. is inherently the same cellulase enzyme as claimed, and the amino acid sequence is also inherently would be the same (any evidence in the contrary). Therefore, the cellulase enzyme of Suzuki et al. is inherently one of the cellulase enzymes recited in claim 21 (any evidence in the contrary).
Because the powder detergent composition with cellulase enzyme and surfactants of the claimed invention and that of the powder detergent composition with cellulase enzyme, source of fragrance, and GH enzymes of the reference is one and the same, Examiner takes the position that the limitations of claims 21-26, 27-28 inherently associated with the detergent composition of Suzuki et al. Since the Office does not have the facilities for examining and comparing applicants' detergent and detergent composition by the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
Therefore, Suzuki et al. anticipate claims 18-21, 22-25, 26-28, 29-31 and 34 of the instant application as written.
Claim Rejections - 35 U.S.C. § 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.
According to MPEP 2143:
“Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield
predictable results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products)
in the same way;
(D) Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in
either the same field or a different one based on design incentives or other market
forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art
reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.”
Claims 18-21, 22-25, 27-28, 29-31, 32-33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (A laundry powdered detergent composition having stable fragrance component. WO2017/134840, publication 08/10/2017, see, Machine translated document ) as applied to claims 18-31 and 34 above, and further in view of Asano et al. (Alkoxylated cationic detergency ingredients. US 61367691 A, granted on 10/24/2000).
Suzuki et al. teach a laundry powdered detergent composition containing components of (A) to (D), comprises surfactant (A), a cleaning auxiliary compound (B), an enzyme (C), and a powdered fragrance enclosed in a trehalose-containing coating (D) to produce a favorable fragrance during washing without any degradation in the fragrance even when the laundry powdered detergent composition is stored under high temperature and high humidity. Suzuki et al. further teach the detergent composition, wherein the surfactants includes poly-oxyethylene alkyl ether, sodium alkyl benzene sulfonate, and sodium alpha-olefin sulfonate, and cationic surfactants includes alkyl trimethylamine salts, which is about 50% of the powdered composition, wherein the Cleaning aid includes Enzyme including cellulase, protease, amylase and lipase, and Powder fragrance encapsulated in a film containing trehalose and a fragrance encapsulated in an aminoplast polymer shell, according to the powdered laundry detergent composition, wherein a powdered laundry detergent composition wherein the enzyme is one or more selected from protease, lipase, amylase, and cellulase, which is 100% identical to SEQ ID NO: 1 of the instant application because Suzuki et al. clearly indicated that cellulase enzyme is the same as owned by Novozymes Cellzyme, which is about 0.05% to 5% of the total mass of powder detergent . Since, the Assignee of the instant application is also NOVOZYMES, and thus, the cellulase enzyme Cellzyme used by Suzuki et al. is inherently the same cellulase enzyme as claimed, and the amino acid sequence is also inherently would be the same (any evidence in the contrary). Therefore, the cellulase enzyme of Suzuki et al. is inherently one of the cellulase enzymes recited in claim 21 (any evidence in the contrary) (see, machine translated whole document).
Because the powder detergent composition with cellulase enzyme and surfactants of the claimed invention and that of the powder detergent composition with cellulase enzyme, source of fragrance, and GH enzymes of the reference is one and the same, Examiner takes the position that the limitations of claims 21-26 inherently associated with the detergent composition of Suzuki et al. Since the Office does not have the facilities for examining and comparing applicants' detergent and detergent composition by the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
Suzuki et al. do not teach using cationic surfactant alkoxylated quaternary ammonium (AQA) compound in the detergent composition (for claim 32) and at least 25% of the fragrance of the total fragrance (perfume) (for claim 33).
However, Asano et al. teach a detergent composition comprising, or prepared by combining, enzymes including amylase, protease, lipase, cellulase and mixture thereof, and a linear or branched chain alkyl sulfate surfactant, an alkyl benzene sulfonate surfactant and an effective amount of an alkoxylated AQA cationic surfactant, perfume ingredients, and a builder, wherein the perfume ingredients are at least 10% of the total perfume ingredients and perfumes (see, see, Col 2, lines 26-40, Col 10, lines 13-46, and claim 1-9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to arrive at the claimed invention as a whole of the invention was made by combining the teachings of Suzuki et al. and Asano et al. to use cationic surfactant alkoxylated quaternary ammonium (AQA) compound in the detergent composition, and at least 10% of the fragrance of the total fragrance (perfume) ingredients in the detergent composition as taught by Asano et al. and modify Suzuki et al. to make a detergent composition using enzyme cellulase, and cationic surfactants AQA and perfume ingredients in view of the teachings of Suzuki et al. and Asano et al. to arrive the claimed invention.
One of ordinary skilled in the art would have been motivated to use surfactant AQA in order to enhancing the cleaning efficiency of fabrics by the detergent composition, and using perfume ingredients to make the washed clothes more pleasant to wear which is commercially, industrially, and financially beneficial.
One of ordinary skilled in the art would have a reasonable expectation of success because Suzuki et al. and Asano et al. could successfully made detergent composition with fragrance.
Thus, the above references render the claims prima facie obvious to one of ordinary skill in the art.
Conclusion
Status of the claims:
Claims 18-21, 22-25, 29-31, 32-33 and 34 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IQBAL H CHOWDHURY whose telephone number is (571)272-8137. The examiner can normally be reached on M-F, at 9:00-5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached on 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Iqbal H. Chowdhury, Primary Patent Examiner
Art Unit 1656 (Recombinant Enzymes and Protein Crystallography)
US Patent and Trademark Office
Ph. (571)-272-8137 and Fax (571)-273-8137
/IQBAL H CHOWDHURY/
Primary Examiner, Art Unit 1656
Prosecution Insights