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
Claims 1-10 are pending.
Claim Rejections - 35 USC § 102
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.
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 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 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ehlis et al (US 6,369,268).
With respect to independent, instant claim 1, Ehlis et al teach diester amine adducts, to a process for the preparation of these compounds and to their use. See column 1, lines 1-25. Suitable compounds include those having the formula
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312
362
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and
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282
378
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wherein these compounds clearly fall within the scope of instant claim 1. See column 3 and Example 1. Owing to their complex-forming properties, the novel diester amine adducts can also be used for removing undesirable calcium depositions, boiler scale and rust. They are usually used to this purpose in alkaline derusting and decalcification baths. The novel compounds are furthermore used as additives in liquids for cooling-water circuits for preventing and dissolving calcium depositions. The novel adducts are also used in personal-care products, for example in creams, lotions, body-care products, such as deodorants, soaps or shampoos and ointments, for preventing oxidation, rancidness, turbidity and the like. The novel adducts can also be used in cleaning agents and detergents for removing metal ions and as preservatives. In liquid cleaning formulations, the novel compounds may advantageously be used in a concentration of 0.05 to 15% by weight, based on the entire weight of the formulation. See column 6, lines 10-69. A shampoo has, for example, the following composition: 0.01 to 5% by weight of the compound, 12.0% by weight of sodium-laureth-2-sulfate, 4.0% by weight of cocamidopropylbetaine, 3.0% by weight of NaCl, and water ad 100%. Ehlis et al disclose the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Ehlis anticipate the material limitations of independent, instant claim 1 and the respective dependent claims.
Claims 1, 2, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Enselberg (US2011/0271458) or Hodge et al (US2016/0289601).
With respect to independent, instant claim 1, Enselberg teaches a composition for removing stains from fabrics comprising: Phosphoric Acid; Emulsifying Wax; Triethylene Glycol; a surfactant; Lauryl Alcohol; Ethylenediaminetetraacetic Acid; Sodium Hydrochloride; and Water. See Abstract and claim 1. Note that, ethylenediaminetetraacetic acid corresponds formula (Ia) as recited by instant claim 2. Enselberg discloses the claimed invention with sufficient specificity to constitute anticipation.
With respect to independent, instant claim 1, Hodge et al teach a cleaning composition including a primarily C12 quaternary functionalized alkyl polyglucoside selected from the group consisting of stearyldimoniumhydroxypropyl laurylglucosides chloride and lauryldimoniumhydroxypropyl cocoglucosides chloride, a water conditioning agent, an acid source, a solvent, and water. See Abstract. Hodge et al teach a composition containing 5-60% of water, 4-8% of EDTA, etc. See para. 67. Note that, ethylenediaminetetraacetic acid corresponds formula (Ia) as recited by instant claim 2. Hodge et al disclose the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Enselberg or Hodge et al anticipate the material limitations of independent, instant claim 1 and the respective dependent claims.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-9 of copending Application No. 18/556145 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3-9 of 18/556145 encompass the material limitations of the instant claims. Claims 1 and 3-9 of 18/556145 disclose the claimed invention with sufficient specificity to constitute anticipation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/
February 3, 2026