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 .
Election/Restrictions
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/18/2026.
Accordingly, claims 1-11 are pending and under current examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 5/30/24; 8/12/24; 9/5/24; and 3/23/26 have been considered by the examiner.
Claim Objections
Claims 7 and 9 are objected to because of the following informalities: in claim 7, the grammar and/or parts of speech and modifiers are incorrect; in claim 9 “sodium gluconate” is a common chemical name which has been improperly capitalized. Please proofread the claim, and include articles as needed, and correct capitalization errors as needed. For the purpose of applying prior art, the items listed are interpreted and considered to be named in the alternative. It is awkward to recited “or combinations thereof” at the end of the claim instead of at the end of a list within the list within the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-11 are 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.
Claim 1 recites “a contiguous solid, powder, or granule”. It is unclear what requisite structure is necessary for a solid, powder, or granule to be considered contiguous, and a standard for ascertaining this characteristic may vary from one artisan to another. Claims depending from rejected claim 1 are also rejected here.
Claims 2 and 3 recited “derivatives thereof” and “derivative thereof”, respectively. What chemical compounds are included and excluded by this terminology is unclear, undefined, and subject to variable interpretation from one skilled artisan to another.
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Appropriate clarification is required.
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 1-4, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO01/05930A1 (Strothoff et al., hereafter “Strothoff”). It is noted that WO01/05930A1 was cited by Applicant in the IDS dated 8/12/2024.
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 (“a polyol” as in claim 1; a C12 alcohol as in claim 2; a polyol containing more than 3 hydroxyl groups as in claim 4), EDTA, a surfactant, sodium hydroxide, and water.
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. 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.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO01/05930A1 (Strothoff et al., hereafter “Strothoff”) as applied to claims 1-4, 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 or glycerin as in claims 5 and 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, 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”) as applied to claims 1-4, 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. Please see rejections above under 35 U.S.C. 112(b). For the purpose of searching and applying prior art, claim 8 is interpreted to require the inclusion of a surfactant or a surfactant combination, in the alternative, as further specified int eh claims, where the parenthetical expressions are optional components of the combination option rather than the selection of the first surfactant option.
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.
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 1-5 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 claims 3-5 pertaining to a polyol, copending claim 12 addresses this limitation.
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.
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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