Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7-13-2026 has been entered.
Claim Rejections - 35 USC § 112
Claim 2 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of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn.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 Interpretation
The most comprehensive claim 1 is interpreted as a detergent composition (additive) where the composition is a tertiary mixture of 1) a biochelant; 2) a ring opener component and 3) a solvent such water or a polyol. The composition claim, by its’ nature, is examined with expectation that the prior mixtures of the 3 ingredients satisfies the claim.
Claim(s) 1, 3-20 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). The 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).]
Response to Arguments
Applicant's arguments filed 7-13-2026 have been fully considered but they are not persuasive.
Applicant argues:
“First, alkali metal silicates of Smith would not necessarily operate as a ring-opener within the meaning of the claims.”
The examiner contends and respectfully disagrees. Because applicant’s broadest definition of a component is “a ring opener”. This broadly written component can be interpreted as a plethora of components. Smith et al teach, applicant’s preferred component according the dependent claims and applicant’s specification, a silicate salt compound. One of ordinary skill would expect a silicate to function similarly as applicant purports in his claim and specification give it’s the exact compound and further in the absence of a showing to the contrary, commensurate in scope with the claimed invention.
“Second, there would have been no motivation to include the silicates of Smith for the purpose of performing the ring-opener functionality. The functionality of the ring-opener - shifting the lactone/carboxylate equilibrium of the biochelant so as to enhance chelation activity - was entirely unrecognized by Smith. Smith fails to recognize lactone formation as a cause of reduced chelation performance, fails to recognize that a lactone/carboxylate equilibrium exists for the relevant biochelants, and nowhere suggests that driving equilibrium toward the linear carboxylate form would enhance chelation activity.”
Again, applicant is misguided in the fact that the performance of a compound, one which is readily suggested and taught by Smith, is the exact compound required, would not “operate the same”. The performance of “shifting the lactone” where no lactone is claimed or “enhancing chelating” are mere characteristics functions, where once the claimed ingredient is identified in the prior art, the prima facie case of obviousness is met. The characteristics and functions with a compositional claim are considered obvious as the same compound would have the same or similar characteristics in a composition.
“Third, to arrive at the claimed subject matter based upon Smith, one of skill in the art would need to make at least two independent selections that Smith does not direct. The skilled artisan would first need to select, from among Smith's disclosed hydroxycarboxylic acid salts, a biochelant that exists in a meaningful equilibrium between a lactone form and a linear carboxylate form and, having made that selection, select a ring opener configured to shift that equilibrium toward the linear carboxylate form.”
The tertiary composition is suggested by Smith, each of the claimed components in the requisites proportions are taught and required. The fact that applicant has characteristics of their composition is given very little patentable weight since the same components in analogous art would yield similar and predictable results.
Moreover, it has been held that products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established."; MPEP 2112.01 )).
[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).]
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
“As demonstrated in Example 1 of the present application, glucaric acid alone exhibits a calcium chelation capacity of only 13 mg Ca/g. Substitute Specification at [0075]-[0079]. However, when combined with a ring-opener (sodium silicate) configured to shift equilibrium toward the linear carboxylate form, the calcium chelation capacity dramatically increases to 465 mg Ca/g. This performance substantially exceeds conventional chelants such as EDTA (274 mg Ca/g) and MGDA (297 mg Ca/g). See Substitute Specification at [0075]-[0079], Table 1.”
Applicant’s attempt to show criticality in Example 1 or Table I show glucaric acid and sodium silicate (ring opener) show improvement. First, this showing is not commensurate in scope with the claims, since applicant does not call out what is “ring opener” encompasses. Second, Smith et al teaches both glucaric acid and sodium silicate for the similar purposes of cleaning or detergency. Applicant has not shown criticality to over come the prima facie case of obviousness.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
Conclusion
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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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761
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