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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statements filed on 12/20/2023 and 03/20/2024. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see attached USPO form.
Restriction Election
Applicant's election with traverse of Group I (claims 1-3, 5-10, 17-21) in the reply filed on 01/15/2026 is acknowledged.
Applicant traverses on the grounds that no prior art has been asserted by the examiner.
However, the examiner cited Charles (US3158635A) as prior art (see Page 3 of Restriction Requirement) Examiner finds the applicant’s argument unpersuasive and maintains the restriction due to the lack of unity of invention between Groups I and II.
Applicant is reminded that the application is National Stage application submitted under 35 U.S.C. 371. Therefore, when the application lacks unity of invention, i.e. there is not special technical feature linking the different groups, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. See MPEP §1893.03(d).
Restriction for examination purposes as indicated is proper thereby the restriction requirement is still deemed proper and is therefore made FINAL.
Claims 4, 10-12, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claim 10 was erroneously included in Group I and is withdrawn because it depends on claim 4. Claims under consideration in the current office action are claims 1-3, 5-9, 13-15, and 17-21.
Claim Objections
Claims 2, 6, and 14 objected to because of the following informalities: missing a comma after stating the claim from which it depends in line 1. Appropriate correction is required.
Claim 3 objected to because of the following informalities: incorrect range of mol% in line 3. The claim should state “5 to 40 mol% of the carboxylic acid groups present in the adduct are provided by the further polycarboxylic acid.” Appropriate correction is required.
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.
Claim 20 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.
Regarding claim 20, the parenetical list of examples in line 2 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 18, 20, and 21 are 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.
Claim 18 states the use of the adduct in an environment with transitional metals, claim 20 states the use in different types of cleaning, personal care, bleaching, and medical applications, and claim 21 further specifies different application uses for the adduct uses. These claims are intended use claims and as such, fail to further limit the independent claim they depend on. 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 § 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.
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, 5-6, 7, 13-15, 17, 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et. al (EP0850293B1) hereinafter Wilson.
With regards to claim 1-2, and 13-15, Wilson teaches a composition comprising of 1.44 mols ethylenediamine-N-N'-disuccinic acid (EDDS), 0.34 mols of (EDMS), and 0.27 fumaric acid in Example 4, Sample A relating to chelants (see also Table 4, Page 9). With regard to claim 14, the composition may be formulated in granular or in tablet form comprising of flakes or powders (see [0059]). Wilson further teaches a laundry detergent composition comprising of 0.1-15 wt% of at least one polyaminodisuccinic acid chelant (such as EDDS), and chelants such as the water-soluble salts of hydroxycarboxylic acids (such as malic acid, citric acid, and tartaric acid) (see [0011]; see also [0039]-[0041]).
Wilson does not explicitly teach that the composition in Example 4 is in the form of a free-flowing particulate solid. However, this limitation would be obvious because Sample A was not diluted with a solvent in its preparation process before the OECD 301B Modified Sturm Test unlike Examples 1-2 where solutions were prepared with EDDS. Wilson also teaches that the compositions of his invention may be formulated in granular or powder tablet form (see [0059]). Hence, it would be reasonable for someone with ordinary skill in the art before the effective filing date to make Sample A in Example 4 as a solid form in the absence of a solvent in the preparation process.
With regard to claim 3, Wilson does not specifically disclose an embodiment where 60-95 mol% of the carboxylic acid groups in the adduct are provided by the ethylenediamine disuccinic acid and 5-40 mol% of the carboxylic acid are provided by the polycarboxylic acid. However, Example 4 Sample A is comprised of 1.44 mols (70.24 mol%) EDDS, 0.34 mols (16.59 mol%) EDMS, and 0.27 mols (13.17 mol%) fumaric acid. It would have been reasonable for someone with ordinary skill in the art before the effective filing date to expect the 70.24 mol% of the carboxylic acid groups present in Sample A to be provided by the EDDS, and 13.17 mol% of the carboxylic acid groups present in Sample A to be provided by the fumaric acid
With regards to claim 5, Wilson also teaches the source of succinic acid compounds to be alkali metal salts, preferably potassium or sodium salts (see [0026]).
With regard to claim 7, Wilson specifies the use of hydroxypolycarboxylic acids such as citric acid among others as an organic acid chelant in the detergent formula (see [0041]).
With regard to claim 17, Wilson teaches his invention to be a chelating agent which degrades faster than ethylenediamine tetraacetic acid (EDTA) or other commonly used chelants (see [0014]). Wilson also teaches the preparation or chelate solutions with mixtures of EDDS and EDMS in Examples 1-3. Please note that claim 17 is an intended use claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2112.
With regards to claims 20-21, Wilson teaches a laundry detergent composition comprising of 0.1-15 wt% of at least one polyaminodisuccinic acid chelant (such as EDDS), among other surfactants and co-builders such as the water-soluble salts of polymeric carboxylic acids (see [0011]; see able [0026]). Therefore, it is obvious that the invention can be used in cleaning applications. Please note that claims 20-21 are intended use claims. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2112.
Claims 6, 8-9, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson (EP0850293B1) further in view of Giles et. al (US2010/0191012A1) hereinafter Giles.
The teachings of Wilson are discussed above. With regard to claim 6, Wilson does not specifically disclose a trisodium ethylenediamine disuccinate salt as the source of EDDS of claim 6.
Giles, however, teaches the use of solid trisodium EDDS as a hygroscopic, commercially available material in laundry and automatic dishwashing formulations (see [0006]-[0009]).
It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to use the solid trisodium EDDS taught by Giles in Wilson’s Sample A for the benefit of trisodium EDDS being an effective chelating agent for heavy metals and transition metals (see [0008]).
With regard to claims 8-9, Wilson does not specifically teach the adduct being non-hygroscopic. Giles, however, teaches a solid detergent composition comprising magnesium containing salt of ethylenediamine disuccinic acid (MgEDDS preferably Mg2EDDS) which is in the form of a water-soluble, non-hygroscopic solid (see [0013]).
It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to substitute Mg2EDDS into Wilson’s Sample A embodiment for the benefit of the free-flowing solid composition being easily granulated (see [0012]).
With regards to claim 18, please note, the intended use of the above claimed composition (in an environment with transition and alkaline earth metals) does not patentably distinguish the composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. See MPEP 2112.
Wilson does not specifically teach the use of the adduct in an environment in which alkaline earth metals and transition metals are present. Giles however, teaches the MgEDDS salt to optionally further comprise of a second alkaline earth metal such as calcium (CaMgEDDS) (see [0017]). It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to use the alkaline earth metal EDDS salt such as CaMgEDDS for the benefit of increasing effectiveness in a biocide potentiator (see [0048]).
With regards to claim 19, Wilson does not specifically teach the adduct as an antiscalant. Giles however, teaches the use of the EDDS salt as an antiscalant material to sequestrate calcium and magnesium salts (see [0050]). EDDS chelating agents are known in the art to have antiscaling properties. It would have been obvious for someone having ordinary skill in the art before the effective filing of the claimed invention to use the EDDS taught by Giles in Wilson’s Sample A, for the benefit of enhancing metal cleaning (see [0052]).
Please also note that claim 18 is an intended use claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2112.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA PAUL whose telephone number is (571)272-1551. The examiner can normally be reached M-F: 7:30am-5:00pm.
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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) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SP/Patent Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761