DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2015/0159082 A1).
Regarding claims 1-7 , Lee teaches a water soluble polymer film (for encapsulation of compounds such as laundry (79, 81-82, 99) detergent or dishwashing composition comprising carrageenan; [60, 66], and polyol plasticizers such as glycerol, ethylene glycol, triethylene glycol or propylene glycol (instant claim 6) in the amount of up to 50%; [54, 70-71], bittering agents such as denatonium benzoate and capsaicin (instant claims 2-5); [53]. Note that capsaicin and capsaicinoid are construed as being functional equivalent since; capsaicin is the pungent compound in hot peppers that causes heat, while capsinoids (like capsiate) are similar, non-pungent compounds found in sweet peppers having the same basic properties.. The water soluble film (instant 7) is devoid of chitosan and furecellan.
Regarding claim 1, the amount of plasticizer taught by Lee is not anticipatory, but it renders the instant claim obvious by sharing a major overlap of 1-50% as already is stated above. Note that, In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed Cir. 1990), [MPEP 2144.05, R5].
Regarding claims 8-10, Lee does not teach the types of carrageenan. However, it is known from the structural types of carrageenans (iota, cappa and lambda) the lambda-carrageenan in spite of having thickening properties but it does not have a gelling effects, thus favored for adjusting the required viscosity of a composition without undesired gelling activity. This would render the amounts of less than 30% (non-lambda) and at least 20% for lambda carrageenan being included in the instantly claimed film obvious. Lee teaches (instant 10) a single layer film; [33, 77].
Regarding claims 12-13, Lee teaches a water soluble pouch (i.e. capsule, compartment) comprising a water soluble film; [60, 61, 64, 66, 78], wherein the internal space contains a laundry detergent (home care composition).
Regarding claims 14-15, Lee teaches a water soluble capsule and method of making the water soluble capsule comprising a first film thermoformed recesses wherein a composition, e.g. laundry composition, is placed on the molded film (Figure 2) and the second film is superimposed to cover the composition thus forming a water soluble pouch and finally sealed (i.e. water seal), to form the capsule which is identical to what is claimed instantly; [77-79, 82]. Note that, the amount of plasticizer taught by Lee is not anticipatory, but it renders the instant claim obvious by sharing a major overlap. Note that, In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed Cir. 1990), [MPEP 2144.05, R5].
Regarding claims 16-19, The Office realizes that all the claimed effects or physical properties (reduction in dissolution time of the film) are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. “reduction in dissolution time of the film”, would expectedly be achieved by a composition with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2015/0159082 A1) as applied to claim 1, and further in view of Somerville Roberts et al. (2018/0037853 A1).
Regarding claim 11, Lee does not teach the thickness of the film. However, the analogous art of Somerville Roberts teaches a water soluble pouch (a polymer film) containing laundry detergent composition wherein the thickness of its film is 20-150 micron; [51-52, 55, 57]. At the time before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to manufacture the material of film with a thickness in the above given micron range with the motivation of adjusting its dissolution time for proper delivery of detergent material on the laundry substrates as taught by Somerville Roberts above.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
I)- Claims 1, 6 and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-3, 6 and 11-15 of copending Application No. 18/683,806 in view of Lee et al. (US 2015/0159082 A1.
Claim 1 corresponds to claim 1 of “806” in view of Lee. Claim 1 of “806” does not teach the bittering agent. However the analogous art of Lee teaches denatonium benzoate and capsaicin (bittering agents); [53], at the time before the effective filing date of invention, it would have been obvious to add the bittering agent to claim 1 of “806” with the motivation of providing a proper household product safety specially for children and pets as taught by Lee et al.
Claim 6 corresponds to either one of claims 2, 3 and 6 wherein the instant claim 6 comprises the same plasticizing agents of copending claims 2, 3 and 6 of “806”.
Claims 12-15 correspond to claim 12-15 of copending “806” correspondingly, wherein they share the same limitations and scope of the claims.
II)- Claims 1 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-15 of copending Application No. 18/683,806.
Claim 1 corresponds to claims 1 and 11 (bittering agent) of copending “806” in view of Lee et al. which renders the similar in scope.
Claims 12-15 correspond to claim 12-15 of copending “806” correspondingly, wherein they share the same limitations and scope of the claims.
This is a provisional nonstatutory double patenting rejection
III)- Claims 1, 6 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9 and 11 of copending Application No. 18/683,800 which share the same limitations of; “a water soluble film”, lambda- carrageenan, plasticizer with a major overlap (1-99% for instant vs at least 20% for copending) and bittering agent.
Response to Arguments
Applicant's arguments filed 2026/06/29 have been fully considered but they are not persuasive. Because,
In response to applicant’s argument (pages 1-2) that; “The examiner correctly recognizes that Lee does not teach the amount of plasticizer as required by claim 1. Additionally, Lee also does not disclose that the presence of the bittering agent reduces the dissolution time of the film comprising the claimed amount of plasticizer, and also improves the manual handling such that the capsule remains substantially intact during at least 30 seconds. These findings are demonstrated in the instant application, see Table 2 on page 24 of the specification, where the bittering agent Bitrex is shown to provide improved dissolution. These findings are wholly unexpected in light of the cited prior art, which do not recognize that the bittering agent can have a beneficial effect on dissolution behavior.”, it should be noted that in absence of any chemical reason to the contrary the argued properties (i.e. lesser dissolution time) in a film made of carrageenan and capsaicin or denatured benzoate or their mixture (i.e. bittering agents) could only and only be interpreted as the natural or expected property of the film’s make up, unless applicant provides an evidence for the explanation of the phenomenon. The argument is not persuasive.
In response to applicant’s argument (page 2) that; “Further, it is noted that the film thickness as recited in claim 11, is also linked to an unexpected technical effect. As explained in the example in the instant application, on page 24, lines 1-2, the film thickness is varied, and optimal results were found with a thickness of 85 µm. The inclusion of this feature provides the benefit of reducing the dissolution time but not so drastically that the film dissolves e.g. in the hand of a consumer as they put in in the washing machine. This technical effect is taught in the application on page 1, lines 22-27 and page 24, lines 21-24. Notably, the skilled person would not modify the teachings of Lee with the film thickness of Somerville Roberts expecting the improved dissolution behavior associated with the presence of the bittering agent, as demonstrated in the instant application.”, it is noted that; as applicant indicated the optimal thickness of 85 micron as another benefit in reducing dissolution time of the film, the prior art of Lee similarly teaches this range of thickness thus rendering the claim obvious. The fact of selecting a film thickness is a well-known practice in the art and there is no acceptable reason to assume the un-combinability of Lee and Somerville Roberts. It is noted that; the examiner recognizes that obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
Due to the amendments of the claims 2, 8-9 the 112(b) rejection is withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 8 PM Flex..
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/M.R.A./
Examiner, Art Unit 1767
2026/09/05
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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