Response to Amendment
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 .
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 2 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 states that the “biochelant comprises…” which does not further limit from the specific biochelant Markush group of claim 1 (i) from which claim 2 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claim(s) 1, 9, 11-14,16-17, 20-21 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Lamberti et al (5,958,867) is withdrawn.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1-6,8-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Protzko et al (2021/0062109) in view of Silvernail et al (2014/0069466) is withdrawn.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al (9347024).
Smith et al disclose compositions which are capable of sequestering calcium ions and are derived in part from renewable carbohydrate feedstocks. The calcium sequestering compositions include one or more hydroxycarboxylic acid salts including hydroxymonocarboxylic acids and hydroxydicarboxylic acids, one or more suitable oxoacid anion salts, and one or more citric acid salts (col. 1, lines 10-19). he present invention provides a calcium sequestering composition comprising a combination of at least one salt of a hydroxycarboxylic acid selected from the group consisting of at least one hydroxymonocarboxylic acid salt, at least one hydroxydicarboxylic acid salt, and a combination of at least one hydroxymonocarboxylic acid salt and at least one hydroxydicarboxylic acid salt, at least one suitable oxoacid anion salt (such as, for example, a borate salt or an aluminate salt), and at least one citric acid salt. Generally, the hydroxymonocarboxylic acid salt may include at least one salt of glycolic acid, at least one salt of gluconic acid, and at least one salt of 5-keto-gluconic acid. In one embodiment, the at least one salt of glycolic acid includes sodium glycolate, potassium glycolate, lithium glycolate, zinc glycolate, ammonium glycolate, or mixtures thereof. In another embodiment, the at least one salt of gluconic acid may include sodium gluconate, potassium gluconate, lithium gluconate, zinc gluconate, ammonium gluconate, or mixtures thereof. In a further embodiment, the at least one salt of 5-keto-gluconic acid comprises sodium 5-keto-gluconate, potassium 5-keto-gluconate, lithium 5-keto-gluconate, zinc 5-keto-gluconate, ammonium 5-keto-gluconate, or mixtures thereof. Further, the hydroxydicarboxylic acid salt may generally include at least one salt of glucaric acid, at least one salt of tartaric acid, at least one salt of tartronic acid, at least one salt of xylaric acid, at least one salt of galactaric acid, or mixtures thereof. In one embodiment, the at least one salt of glucaric acid comprises disodium glucarate, sodium potassium glucarate, dipotassium glucarate, zinc glucarate, diammonium glucarate, dilithium glucarate, lithium sodium glucarate, lithium potassium glucarate, or mixtures thereof. In one embodiment, the mixture of hydroxycarboxylic acids may include about 30% to about 75% of the at least one glucarate salt, about 0% to about 20% of the at least one gluconate salt, about 0% to about 10% of the at least one 5-keto-gluconate salt. (col. 3, lines 11-65). The calcium sequestering composition generally includes from about 25% to about 75% by weight of the at least one salt of hydroxycarboxylic acid, from about 1% to about 50% by weight of the at least one citric acid salt (col. 4, lines22-32). The calcium sequestering compositions of the current invention may be utilized in any application that requires the sequestering or capture of metal ions. Suitable examples of industrial applications that could utilize the compositions of the current invention include, but are not limited to detergent builders, scale inhibitors for industrial water treatment purposes, and use as a renewable replacement for ethylenediaminetetraacetic acid (EDTA), nitrilotriacetic acid (NTA), sodium triployphosphate (STPP), and other common sequestering agents (col. 8, lines 1-10). In addition, Smith et al includes functional materials such polyakylene glycol polymer, polyethers, amine derivatives, quaternary ammoniums, polyacrylates, cellulose ether derivatives and up to 6% of alkali metal silicates (col. 10, line 60-col. 15, line 15). Lastly, solvents such as glycols and glycol ethers up to 25% (col. 17, lines 20-42). See Table 4.
Smith teach all of the instantly required except a teaching with sufficient specificity to anticipate the claims. One skilled in the art would have been able to choose the tertiary compositions of biochelant, ring opener and solvent with the expectation of treating a surface methodology in view of the teachings and guidance of Smith et al and in the absence of a showing to the contrary.
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761