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 05/30/2024, 08/12/2024, and 09/05/2024. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see attached USPO form.
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, are drawn to a composition, classified in C11D3/386.
II. Claims 17-20, are drawn to a method of using a solution of the composition, classified in C11D 2111/14.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, Invention I can be used in a materially different process such as invitro testing.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different
classification;
(b) the inventions have acquired a separate status in the art due to their recognized
divergent subject matter;
(c) the inventions require a different field of search (for example, searching different
classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another
invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C.
101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Jill Link on 02/18/2026 a provisional election was made without traverse to prosecute the invention of the composition (Invention I), claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-16are 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 1, the phrase “wherein the composition is a liquid or solid and has between from about 20-47% total alkalinity as measured by percent Na2O in the composition” in lines 12-13 renders the claims indefinite because the composition may comprise of a non-sodium alkali metal hydroxide as the alkalinity source, and therefore would not have Na2O in the composition. For the purpose of compact prosecution, the examiner interprets the 20-47% total alkalinity as measured by percent Na2O to be conditional if the alkali metal hydroxide is NaOH.
Claim 7 contains the trademark Esperase 6.0T in line 1. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to describe the protease enzyme and, accordingly, the description is indefinite.
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.
Claims 1, 3 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lundberg et.al (US20210095227A1) hereinafter Lundberg.
Lundberg teaches 2-in-1 cleaning compositions providing both detergency and rinseability. With respect to claim 1 and 6-7, Lundberg teaches a 2-in-1 detergent composition in Example 1 comprising 75.34 wt% sodium carbonate, 1.1 wt% potassium hydroxide, 5 wt% MGDA, 2.5 wt% sodium citrate dihydrate, 4 wt% Pluronic 25R2, 2 wt% Esperase 6.0T, among others (see Table 2). Pluronic 25R2 is taught to be an EO/PO copolymer with 20 EO wt% and is also recited as a suitable surfactant in the instant specification (see [0166]). MDGA is recited in the instant specification to be a strong chelating agent with stability constant with calcium to be at least 1x107.
With regard to claim 3, Example 1 teaches 4 wt% of Pluronic 25R2 (a reverse EO/PO block polymer surfactant) in the detergent composition.
With regard to claim 8, Lundberg teaches the use of 1-50 wt% water conditioning polymer to be present in the composition (see [0012]).
With regard to claim 9, in Example 1 Lundberg teaches 75.34 wt% sodium carbonate and 1.1 wt% potassium hydroxide, among others in Example 1 composition.
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, 3-9, 11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et. al (EP2142627B1) hereinafter Smith.
With regards to claim 1, Smith teaches a warewashing composition in Table 1 comprising 0-60 wt% alkaline source, 0-20 wt% surfactant, 0-10 wt % enzyme, 0-10 wt% anti-deposition agent, 1-60 wt% water soluble magnesium salt, 0-90 wt% water among others (see Warewashing Composition 1, [0041]). Smith additionally teaches a solid cleaning composition in Table 3 comprising 1-60 wt% water soluble magnesium salt, 0-40 wt% surfactant, 0-80 wt% solidifying agent, 0-60 wt% sodium hydroxide, 0-50 wt% alkali metal carbonate, 10-80 wt% binding agent, and 0-50 wt% water (see Solid Cleaning Composition 1, [0044]). Alkali metal carbonates and/or alkali metal hydroxides are taught to be suitable alkaline sources specifically listing sodium carbonate, potassium carbonate, lithium carbonate, sodium hydroxide, lithium hydroxide, potassium hydroxide, and combinations thereof (see [0049]). Suitable nonionic surfactants include C6-C24 alcohol ethoxylates having 1-20 ethylene oxide (EO) groups, and polyalkylene oxide block copolymers including an ethylene oxide/propylene oxide (EO/PO) block copolymer such as those commercially available under the trademark PLURONIC (BASF Wyandotte) (see [0062]-[0063]). As recited in the instant specification, PLURONIC 25R2 is a known commercial reverse EO/PO block copolymer are known in the art to comprise about 20% EO. Suitable chelating agents include EDTA, DPTA, and NTA, which are recited in the instant specification to be strong chelating agents with stability constants with calcium to be at least 1x107, and suitable enzymes include proteases and alpha-amylases (see [0013]; see also [0124]).
With regards to claim 3, Smith teaches the surfactant to be present in 0-20 wt% in the composition (see [0070]). Although breakdown is not given by first and second surfactant, a prima facie case of obviousness exists because the total surfactant composition range (0.2-25 wt%) of the instant claim "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regards to claim 4, Smith teaches suitable nonionic surfactants for solid cleaning compositions to include butyl alkyl-capped polyethylene glycol ethers which is classified as a butyl capped alcohol ethoxylate (see [0061]).
With regards to claim 5, Smith teaches the use of polyvinyl pyrrolidone (see [0083]).
With regards to claim 6, Smith teaches suitable chelating agents include EDTA, DPTA, and NTA (see [0013]).
With regard to claim 8, Smith teaches the use of hydrotropes for the solid functional materials of the composition, specifically listing xylene sulfonates and dialkyldiphenyl oxide sulfonate materials as suitable hydrotropes (see [0100]). Smith also teaches the use of polyacrylamide thickeners, which are known in the art to be water conditioning polymers (see [0128]).
With regard to claim 9, Smith teaches a solid cleaning composition comprising 5-50 wt% water soluble magnesium salt, 5-50 wt% surfactant, 0-60 wt% solidifying agent, 30-40 wt% sodium hydroxide, 30-55 wt% alkali metal carbonate, 0.1-30 wt% water, 1-40 wt% binding agent, among others (see Cleaning Composition 2 Table 3, [0044]). Although the total wt% range of alkali metal carbonate does not exceed the total wt % of alkali metal hydroxide, it would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to choose the upper limits of 40 wt% sodium hydroxide and 55 wt% alkali metal carbonate for the solid cleaning composition for the benefit of a more alkaline solution. With respect to optimization, it is not inventive to discover such regimens by routine experimentation when general conditions of a claim are disclosed in the prior art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and MPEP §2144.05(11).
With regards to claim 11, Smith teaches alkali metal hydroxide can be added to the composition either in the form of solid beads or in the form of a 50 wt% or 73 wt% aqueous solution (see [0049]). It would have been reasonable for one skilled in the prior art before the effective filing date to use the aqueous solution of alkali metal hydroxide instead of the solid bead form to eliminate the bead dissolution step entirely. Hence, the composition would be free of solid alkali metal hydroxide beads.
With regard to claim 13, Smith teaches the above solid cleaning composition comprising 5-50 wt% water soluble magnesium salt, 5-50 wt% surfactant, 0-60 wt% solidifying agent, 30-40 wt% sodium hydroxide, 30-55 wt% alkali metal carbonate, 0.1-30 wt% water, 1-40 wt% binding agent (see Cleaning Composition 2 Table 3). It would have been reasonable for one skilled in the prior art before the effective filing date to formulate the solid cleaning composition with about equivalent wt % of water and sodium hydroxide for the benefit of easier mixing and complete dissolution.
With regards to claim 14, Smith teaches the solid cleaning composition to be in the form of a solid such as a powder, a flake, a granule, a pellet, a tablet, a lozenge, a puck, a briquette, a brick, a solid block, a unit dose, among others (see [0029]).
Please note that claim 15 is an intended use claim and hence, is not given patentable weight. Smith teaches suitable enzymes for the composition to include proteases and alpha-amylases (see [0124]). 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.
With regard to claim 16, Smith teaches a warewashing composition in Table 1 comprising 0-60 wt% alkaline source, 0-20 wt% surfactant, 0-10 wt % enzyme, 0-10 wt% anti-deposition agent, 1-60 wt% water soluble magnesium salt, 0-90 wt% water among others (see Warewashing Composition 1, [0041]). Smith also teaches the optional addition of a chelating agent in less than 15 wt%. Although breakdown is not given by first and second surfactant, a prima facie case of obviousness exists because the total surfactant composition range (0.2-25 wt%) of the instant claim "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Lundberg (US20210095227A1) further in view of Riehm et. al (US20190284505A1) hereinafter Riehm.
The teachings of Lundberg are recited above. With regards to claim 2, Lundberg teaches the use of EO/PO block copolymer PLURONIC 25R2. However, Lundberg doesn’t explicitly teach a second reverse EO/PO block polymer to be about 40% EO.
Riehm teaches a detergent composition comprising 4 wt% TETRONIC 90R4, (see [0254]; see also Table 6). TETRONIC 90R4 is an example of a reverse EO/PO block polymer surfactant recited in the instant specification with 40% EO. It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to use a combination of PLURONIC 25R2 and TETRONIC 90R4 in Lundberg’s detergent composition in Example 1. This modification would have the benefit of improved detergency while being low foaming as TETRONIC surfactants are low-foaming non-ionic surfactants (see [0056]).
Claim 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (EP2142627B1) further in view of Hammel et. al (US20190390143A1) hereinafter Hammel.
The teachings of Smith are recited above. With regards to claim 10 however, Smith does not teach an alkalinity source comprised of alkylene carbonate.
Hammel teaches a solid alkaline cleaning composition comprising a 60-95 wt% alkali metal hydroxide alkalinity source, 10-40 wt% polycarboxylic acid polymer, and 0.1-10 wt% processing aid, including propylene carbonate (see claim 20; see also [0062]). It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to use the maximum wt % range of propylene carbonate (10 wt%) as a processing aid for the maximum wt % range of alkali metal hydroxide alkalinity source (95 wt%) for the benefit reducing aeration of cast solid compositions (see [0062]). As such, the ratio of initial alkali metal hydroxide to propylene carbonate would be about 9.5:1, falling within the range recited in the instant claim.
With regards to claim 12, Smith teaches the above solid cleaning composition comprising 5-50 wt% water soluble magnesium salt, 5-50 wt% surfactant, 0-60 wt% solidifying agent, 30-40 wt% sodium hydroxide, 30-55 wt% alkali metal carbonate, 0.1-30 wt% water, 1-40 wt% binding agent (see Cleaning Composition 2 Table 3). However, Smith does not teach the alkalinity source to comprise a polyol from the group of glycol, glycerin, or sorbitol.
Hammel teaches the use of polyols such as methylene glycol, ethylene glycol, 1,2-propylene glycol, 1,3-propylene glycol, hexylene glycol, diethyleneglycol, among others to be used as processing aids (see [0062]). It would have been reasonable for one skilled in the prior art before the effective filing date to formulate the solid cleaning composition of Smith with the maximum (50 wt%) of water, and the maximum (55 wt%) sodium hydroxide alongside the glycol processing aid taught by Hammel, for the benefit of easier mixing and producing a flowable powder composition (see [0062]).
Conclusion
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