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 Objections
Claim 13 is objected to because of the following informalities: This claim is dependent on itself which is construed as a typographic error. The claim is examined as being dependent on claim 12. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 2, 8 and 9 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 2, 8 and 9 each include a limitation inside a parenthesis at the end of claim which render the claim indefinite. It is not known that the terms inside this parenthesis are part of the claim or not. Appropriate correction is required.
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 12-15 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 detergent or dishwashing: 81-82, 99) 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. Please consult any general Organic Chemistry textbook. 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 (please see a general chemistry textbook for further information). This is evidenced by the attached Google search on water solubility differences between Lambda carrageenan and other types of carrageenan which are much less soluble in cold water. 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].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 9 AM- 6 PM.
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, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.R.A./
Examiner, Art Unit 1767
2025/12/19
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights