DETAILED ACTION
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 .
Status of the Claims
Claims 3-5 have been canceled. Claims 12-20 previously were withdrawn. Accordingly, claims 1, 2, 6, and 7-11 remain pending and under current examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/28/26 and 7/23/26 have been considered by the examiner.
Specification
The amendment to the specification as filed 7/23/2026 has been entered.
Withdrawn Objections and Rejections
All rejections of canceled claims 3-5 are withdrawn in view of Applicant’s cancelation of the claims.
The objection to claims 7 and 9 on account of minor informalities is withdrawn in view of the claim amendments filed 7/23/2026.
The rejection of claims 1-11 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
Response to Arguments
Applicant’s arguments filed 7/23/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
Applicant acknowledges that the double patenting rejections are not addressed at this time. This response does not constitute a proper reply. In the interest of compact prosecution, Applicant’s reply is entered into the record. The rejections are maintained herein as applicable to the claims as amended.
Applicant’s arguments regarding the objections and rejections under 35 U.S.C. 112(b) are persuasive and, as noted above, these rejections have been withdrawn. The examiner thanks Applicant for clarification as to the contextually correct meaning of “contiguous”; support is found in the specification as filed.
Regarding rejections under 35 U.S.C. 103, Applicant ‘s delineation of MPEP guidance and case law is noted. Applicant argues that in view of the claim amendments filed 7/23/2026, Strothoff does not specify a polyol which is a glycol or glycerin as claimed but rather teaches alternative polyol compounds which are carbohydrates; Applicant concludes that “because one skilled in the art would not find a successful example of using a glycol and/or glycerin anywhere in the Strothoff reference, there is no teaching, suggestion, or motivation to alter the compositions taught by the Strothoff reference to arrive at the present claims” (page 9 of Remarks). In reply, this argument is not persuasive (1) in view of the new grounds necessitated by amendment and (2) since disclosed examples do not constitute a teaching away from a broader disclosure considered as a whole for what it reasonably would have suggested to an ordinary artisan.
Applicant argues that Hammel’s teaching of propylene glycol as a glycol in a preferred embodiment does not teach a composition comprising glycerin as claimed. Applicant argues that glycerin is used in every example in the present application. In reply, a new reference has been applied to address this limitation, and the relevance of Hammel is maintained as previously applied.
Applicant argues on page 10 of Remarks that Lentsch does not cure the alleged deficiency of Strothoff and Hammel. In reply, this argument is not persuasive in view of the new grounds of rejection necessitated by amendment.
New Grounds of Rejection Necessitated by Amendment
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.
Claims 1, 2, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO01/05930A1 (Strothoff et al., hereafter “Strothoff”) in view of CN107106431A (Ghosh et al., hereafter “Ghosh”). It is noted that WO01/05930A1 was cited by Applicant in the IDS dated 8/12/2024 and was previously cited; Ghosh is newly cited.
The claims are drawn to a solid composition comprising an alkali metal hydroxide; a polyol; and water; wherein the solid has a weight ratio of alkali metal hydroxide to water from about 60:40 to less than about 70:30, wherein the water is from any component of the solid composition and/or water added as a raw material; and wherein the solid is a contiguous solid, powder, or granule, as further specified in dependent claims.
Strothoff teaches alkaline block-shaped cleaning agent formulations containing an acidic complexing agent and an alkalinity donor from the group of alkali metal compounds (see abstract, in particular)(“solid is a contiguous solid” as in claim 1 and “a dimensionally stable cast solid” as in claim 11). Strothoff’s products are in solid form (see Strothoff claim 1). . Strothoff’s Example 2 includes glycerine, EDTA (chelating agent as in claims 7, 9, and 10), surfactant, 44% sodium hydroxide 50% solution (an alkali metal hydroxide as in claim 1; sodium hydroxide as in claim 2), and 21.5% by weight sodium hydroxide prills (total of 43.5 wt% of sodium hydroxide and 22 wt% of water, which is a ratio of 1.98, a value within the instantly claimed range of 60:40 to 70:30 of alkali metal hydroxide to water in the solid form)(ratio range limitation of claim 1).
Strothoff’s Example 2 does not include a polyol, however Strothoff’s Example 1 along with Strothoff’s disclosure as a whole cures this deficiency. Strothoff’s Example 1 is also a solid cast block alkaline cleaning composition and comprises saccharose, which is a polyol having 12 carbon atoms, EDTA, a surfactant, sodium hydroxide, and water.
Ghosh cures Strothoff’s deficiency. Ghosh teaches glycerol (another name for glycerin) and saccharose alike as water-miscible polyols which are desirably used in the alternative or in mixture thereof in a solid cleaning product; Ghosh subsequently specifies glycerol is a preferred embodiment from among the acceptable water-miscible polyols (see “Polyhydric alcohols” section, first five paragraphs).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to combine components from Strothoff’s Example 1 and Example 2 into a single embodiment, with a reasonable expectation of success, and, subsequently, to substitute one known and preferred water-miscible polyol for another water-miscible polyol known to be desirably beneficial in a solid cleaning formulation. One would have been motivated to do so to provide the desired functional properties and/or benefits as well as the desired physical stability and character as a solid form, as taught by Strothoff and as suggested by Ghosh.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO01/05930A1 (Strothoff et al., hereafter “Strothoff”) in view of CN107106431A (Ghosh et al., hereafter “Ghosh”) as applied to claims 1, 2, 7, and 9-11 above, and further in view of US 11,441,107 (Hammel et al., “Hammel”).
The teachings of Strothoff have been delineated above. Strothoff does not specify a polyol which is a glycol as in claim 6.
Hammel cures this deficiency. Hammel teaches solid alkaline cleaning compositions (see title, in particular) wherein said compositions comprise propylene glycol, sodium hydroxide, and water.
Strothoff and Hammel both pertain to solid cleaning formulations comprising sodium hydroxide and water, as well as additional functional formulation components. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to add propylene glycol as taught by Hammel to the formulations of Strothoff, and Ghosh, with a reasonable expectation of success. One would have been motivated to do so since Hammel specifies propylene glycol to be a preferred processing aid for powder solid compositions (see column 11, lines 22 and lines 32-33). Hammel teaches that such suitable processing aids desirably provide flowable powder compositions and/or reduced aeration of cast solid compositions (column 11, lines 15-20).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WO01/05930A1 (Strothoff et al., hereafter “Strothoff”) in view of CN107106431A (Ghosh et al., hereafter “Ghosh”) as applied to claims 1, 2, 7, and 9-11 above, and further in view of US 2005/0003979A1 (Lentsch et al., “Lentsch”).
The teachings of Strothoff have been delineated above. Strothoff does not specify a specific surfactant as in claim 8.
Lentsch cures this deficiency. Lentsch teaches detergent compositions including a cleaning agent, an alkaline source, and a corrosion inhibitor (see abstract, in particular). Lentsch’s formulations include alkali metal hydroxide and water (see examples, claims and [0006]-[0009] and [0024] in particular). Non ionic surfactants including polyalkylene oxide block copolymers including an ethylene oxide/propylene oxide block polymer such as those commonly available under the trademark PLURONIC TM and similar may be desirably included (see [0031]). It is noted that the instant specification at paragraph [0170] defines Pluronic 25R2 as a long chain EO/PO block copolymer which appears to be the support for the surfactant of claim 8; see also Table 17 and Formula 5 in the instant specification as filed. Pluronic surfactants as taught by Lentsch appear to read on the broadest reasonable interpretation of claim 8.
Both Strothoff and Lentsch pertain to cleaning formulations which include for instance sodium hydroxide and water and which may include a surfactant component. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to include a specific surfactant of Lentsch such as those ethylene oxide/propylene oxide block polymers such as those commonly available under the trademark PLURONIC TM as suggested by Lentsch in the formulations of Strothoff, with a reasonable expectation of success. One would have been motivated to do so to provide known benefits of these particular surfactants and copolymers including defoamer and surfactant effects in aqueous and/or emulsion formulations. As to the claim language describing intended uses of components, “for protein soil defoaming” and “for protein soil removal from wares”, it is the examiner’s position that these effects would naturally follow from the aforementioned substitution of Lentsch’s specific surfactant suggestion for Strothoff’s generic surfactant suggestion in a formulation comprising sodium hydroxide and water.
Maintained Rejections
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, 2, and 7-11 provisionally are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 7-9, 12, 13, and 14 of copending Application No. 18605918 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a solid composition comprising an alkali metal hydroxide and water in a range of ratios overlapping one another. Regarding claim 1, the claims differ in that the copending claims further require a protease enzyme, while the instant claims further require a polyol which is only further mentioned in claim 12 of the copending claims.
As to instant claim 2, from the recitation “alkali metal hydroxide” as addressed above in regard to claim 1, the ordinary artisan would have immediately envisaged the alkali metal hydroxides recited in instant claim 2 based on the recitation in claim 1 of the copending application.
As to instant claim 7, at least issued claims 6 and 8 recite the requisite components instantly claimed.
As to instant claim 8, copending claims 1-5 describe the same features instantly claimed.
As to instant claims 9 and 10, copending claim 6 teaches the claimed chelating agents.
As to instant claim 11, the issued claims encompass solid form also at least at claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
Prosecution Insights