DETAILED ACTION
1 This action is responsive to the amendment filed on June 23, 2026.
2 Claims 1-9 are rejected under 112, second paragraph for the reasons set forth in the previous Office action that mailed on 03/23/2026.
3 The rejection of claims 1-8 under 103 is withdrawn because of the applicant’s amendment of claims that recite non-aqueous solvent composition.
NEW GROUND OF REJECTION
Claim Rejections - 35 USC § 112
4 The following is a quotation of 35 U.S.C. 112(a) (Pre-AIA 35 U.S.C. 112, first paragraph):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The phrase “non-aqueous” claimed in claims 1-8, represent(s) a departure from the specification and the claims as originally filed.
Applicant’s amendment filed on 06-23-2026, points to the specification (pub.app.) for support for the newly added limitations “non-aqueous” as claimed in claims 1-8. However, the specification does not provide a clear support of “non-aqueous”. The instant claims now recite limitations which were not clearly disclosed in the specification and recited in the claims as originally filed.
Claim Rejections - 35 USC § 103
5 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.
6 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lewis et al. (US 20050245420 A1).
Lewis et al. (US’ 420 A1) teaches a cleaning composition (see abstract) comprising solvents include a mixture of dimethyl glutarate, isobutyl acetate, ethyl lactate and benzyl alcohol and wherein the solvents present in the cleaning in the amounts of 0.1 to 90% by weight which covered the claimed percentage amounts as claimed in claims 9 (see page 3, paragraphs 0035-0036).
The instant claim differs from the teaching of Lewis et al. (US’ 420 A1) by reciting a solvent composition comprising esters of dimethyl glutarate, isobutyl acetate and ethyl lactate each in percentage volumes. Lewis et al. (US’ 420 A1) also is silent as to the respective proportions amounts of each of dimethyl glutarate, isobutyl acetate and ethyl lactate when used as a mixture in the instant claims.
However, based on the following calculation, the density of dimethyl glutarate is 1.12 g/cm3 approximately (1g/cm3), the density of isobutyl acetate is 0.88 g/cm3 approximately (1g/cm3) and the density of ethyl acetate is 0.902 g/cm, approximately (1g/cm3), and accordingly, the weight percentages of the esters (dimethyl glutarate, isobutyl acetate and ethyl acetate) in Lewis et al. (US’ 420 A1) are equivalent to the percentage volumes of the instant claims, based on the above assumption, i.e., of 0.1 to 90% by weight = of 0.1 to 90% by volume.
With respect to the individual volumes of dimethyl glutarate, isobutyl acetate and ethyl acetate as a mixture, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the proportions of each of dimethyl glutarate, isobutyl acetate and ethyl acetate to be non-critical, which means that each proportion can vary in a wide range, hence, would overlap those recited. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the proportions of the dimethyl glutarate, isobutyl acetate and ethyl acetate through routine experimentation for best results, absent unexpected results.
Response to Applicant’s Arguments
7 Applicant's arguments filed on 6-23-26 have been fully considered but they are not persuasive.
The applicant’s arguments based on the rejection of the claims under 103, render moot because the rejection under 103 is withdrawn.
Regarding the rejection of the claims under 112, second paragraph, applicant argues that paints or other coatings based on polyurethane, on polyepoxides or on other types of polymers.
The examiner respectfully, disagrees with the above arguments because where possible, claims are to be complete in themselves. In this case the claimed specification defines the phrase “other coatings” as other types of polymers, which further, rendered the claims indefinite because what kind of polymers are used?.
With regards to the rejection of claim 8, under 112, second paragraph, applicant argued that the limitation “preparation or an application” is to provide solvent composition, in particular for the cleaning of the items of equipment.
The examiner respectfully, disagrees with the above arguments because the purpose of the solvent composition is to particular cleaning of the item of equipment and thus, the solvent composition is used for application to the item equipment for cleaning purpose and not for preparation of a solvent composition because the preparation process does not comprise any step in the claimed limitation. Therefore, the claim indefinites because it is unclear if the claim recites the preparation or application of the solvent composition for cleaning the item equipment.
With respect to the rejection of the claims under 103, applicant argued that Lewis et al. (US’ 420 A1) does not teach or disclose any example or embodiment wherein the alkaline cleaning composition comprises dimethyl glutarate and isobutyl acetate or dimethyl glutarate and a mixture of isobutyl acetate and ethyl lactate in the amounts provided in the claims.
The examiner respectfully, disagrees with the above arguments because the use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. “In re Heck, 699 F.2d 1331, 1332-33 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed.Cir.), cert. denied, 493 U.S. 975 (1989).
In this case Lewis et al. (US’ 420 A1) clearly teaches a cleaning composition (see abstract) comprising solvents include a mixture of dimethyl glutarate, isobutyl acetate, ethyl lactate and wherein the solvents present in the cleaning in the amounts of 0.1 to 90% by weight which covered the claimed percentage amounts as claimed. (see page 3, paragraphs 0035-0036). Therefore, reference of Lewis et al. (US’ 420 A1) clearly suggests the use of the claimed limitations in the cleaning composition, and, thus, the person of the ordinary skill would expect such a cleaning composition to have similar results to those claimed in the absence of unexpected result.
Further, applicants have not shown on record the criticality of the claimed cleaning composition.
8 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 EISA B ELHILO whose telephone number is (571)272-1315. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM.
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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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/EISA B ELHILO/Primary Examiner, Art Unit 1761
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