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 .
Claim Objections
Claims 1, 3, 12 and 15 are objected to because of the following informalities:
a) in claim 1, line 1, “1 -99%wt” should be rewritten as “1 - 99%wt” or “1-99%wt”
b) in claim 3, line 2, “40- 60%wt” should be rewritten as “40 - 60%wt” or “40-60%wt” and “of film” in line 2 should be deleted
c) in claim 12, line 2, it is suggested that “micrometres” be replaced with “micrometers”
d) in claim 15:
i) line 3, “first film of to provide” should be rewritten as “first film to provide”
ii) line 6, “sealed” before “around” should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 9-11 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.
In claims 9-11, line 2 of each claim, the phrase “the polyol plasticiser” lacks antecedent basis with respect to claim 3 to which these claims are dependent upon. Please note that claim 3 only recite “the plasticizer” and it is in claim 8 where “polyol” is recited.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 6-8 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 4594732 B2, hereinafter “JP ‘732.” Please note that the English translation will be used for citation purposes.
Regarding claims 1, 4, 6, 8 and 13-14, JP ‘732 teaches in Example 8, a water-soluble bag, i.e., water-soluble capsule, which was produced from the water-soluble film of Example 3 which was prepared from an aqueous solution which comprises 20 parts by mass pullulan, 1 part by mass kappa carrageenan, 1 part by mass kappa:lambda = 7:3 carrageenan; 1 part by mass iota carrageenan; 0.01 parts by mass sucrose stearate; 1 part by weight of sorbitol, 2 parts by mass glycerin (total weight of plasticizer is 3 parts by mass); and 72 parts by weight deionized water (total parts of solution is 98.01), and wherein the solution was dried to produce a film having a water content of about 11%, and the water-soluble bag was filled with 5g of a commercial powder detergent (see page 13 and page 15, bottom portion). The percent of total plasticizer in the total solution is 3/98.01 x 100 = 3.1%, based on the aqueous solution; and based on the dried film having 11 wt% water, the percent of total plasticizer based on the dried film is [3.1 x (20+1+1+1+0.01+1+2+11)]/100=1.1 wt% plasticizer in the dried film (which meets the plasticizer amount in instant claim 1). Please also note that the water soluble film in Example 3 above comprises lambda carrageenan and iota carrageenan (hence meets instant claims 1, 4 and 6), and the plasticizer comprises sorbitol, and glycerin or glycerol, which are both polyols (hence meets instant claim 8), and wherein the water-soluble film was used to prepare a water-soluble bag filled with a powder detergent (hence meets instant claims 13-14).
Regarding claim 7, JP ‘732 teaches another water-soluble film in Example 2 which is similar to those in Example 3, however, only iota carrageenan is used as the carrageenan component (see page 12, bottom portion), hence, this water-soluble film excludes kappa-2 carrageenan.
JP ‘732 teaches the limitations of the instant claims. Hence, JP ‘732 anticipates the claims.
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 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 2-3, 5, 9-10, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘732 as applied to claims 1, 4, 6-8 and 13-14 above.
JP ‘732 teaches the features as discussed above.
Regarding claims 2-3, 5 and 9-10, JP ‘732 as discussed above, teaches that the water soluble film comprises pullulan, carrageenan, and glycerin or glycerol (see Example 3 on page 13), a polyol and which is known to have a molecular weight of 92.09 Dalton. JP ‘732 further teaches that the water-soluble polysaccharide having a sulfate group, e.g., carrageenan is blended within a range of 15 to 150% by mass with respect to the water-soluble polysaccharide having no sulfate group, e.g., pullulan; and the hydroxy compound, e.g., glycerin, is blended within the range of 1-50 mass% with respect to the total amount of the water-soluble polysaccharides (see page 4, middle portion). JP ‘732 also teaches that any type of carrageenan can be used, like the kappa type, lambda type, or iota type carrageenan (see page 4, top portion). JP ‘732, however, fails to specifically disclose 20-80 wt% or 40-60 wt% of plasticizer or hydroxy compounds, like glycerin, based on total dry weight of the film as recited in claims 2-3, and 9-10 respectively; and more than 20wt% lambda carrageenan based on total dry weight of the film as recited in claim 5.
Considering that JP ‘732 teaches that the carrageenan, like lambda carrageenan, is blended within a range of 15 to 150% by mass with respect to the pullulan, the main component which is at least about 20% by mass as seen in Example 3, and the hydroxy compound, e.g., glycerin, is blended within the range of 1-50 mass% with respect to the total amount of the water-soluble polysaccharides, i.e., carrageenan and pullulan, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 12, JP ‘732 further teaches that the thickness of the water-soluble film is in the range of 1 µm to 100 µm (see page 5, 1st full paragraph). JP ‘732, however, fails to specifically disclose the film having a thickness from 40 to 200 micrometers.
Considering that JP ‘732 teaches a water soluble film having a thickness in the range of 1 µm to 100 µm, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (e.g., 40-100 µm) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 15, JP ‘732 also teaches in Example 8 that the water-soluble film of Example 3 was heated. i.e., thermoformed (see page 15, bottom portion). JP ‘732 further teaches that the film is formed in a bag shape by superimposing films and heat-sealing the periphery after enclosing the contents (see page 5, 3rd full paragraph), like the powder detergent in Example 8.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘732 as applied to claims 1-10 and 12-15 above, and further in view of van Doorn et al. (US 2019/0048295), hereinafter “van Doorn.”
Regarding claim 11, JP ‘732, as discussed above, teaches glycerin or glycerol as the hydroxy compound or plasticiser in the water-soluble film (see Example 3 on page 13). JP ‘732, however, fails to disclose the plasticizer comprising polyethylene glycol.
Van Doorn, an analogous art, teaches the equivalency of glycerin or glycerol with polyethylene glycol as a plasticizer in water-soluble substrate or film (see ¶ [0020]) wherein the water-soluble substrate is used for making a water soluble package for laundering textiles (see abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the glycerin or glycerol of JP ‘732 with polyethylene glycol because the substitution of art recognized equivalents as shown by van Doorn is within the level of ordinary skill in the art. In addition, the substitution of one plasticizer for another is likely to be obvious when it does no more than yield predictable results.
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, 8 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 9, 11-13 and 15 of copending Application No. 18/682,132. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to similar water soluble films having similar components and overlapping proportions, water-soluble capsule and its method of making which comprises the water soluble film, differing only in that the copending Application ‘132 further comprises a bittering agent. This component, however, is not excluded from the “comprising” language of at least the present claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/683,800. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to similar water soluble films having similar components, differing only in their respective proportions, however, the proportions overlap. Overlapping ranges have been held to be a prima facie case of obviousness
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8-10 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 7-10, 12-13 and 15 of copending Application No. 18/683,806. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to similar water soluble films having similar components and overlapping proportions, water-soluble capsule and its method of making which comprises the water soluble film, differing only in that the copending Application ‘806 recites a “film having at least one wavelength of electromagnetic radiation in the range 400 – 800 nm of greater than 20%.”
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 water soluble film of the present claims to exhibit similar properties because similar water soluble films having similar components and overlapping proportions have been utilized, hence, would behave similarly.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, 8-10 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-9, 11, 13 and 15 of copending Application No. 18/684,850. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to similar water soluble films having similar components and overlapping proportions, water-soluble capsule and its method of making which comprises the water soluble film, differing only in that the copending Application ‘850 further comprises at least one surface comprising one or more printed regions. This component, however, is not excluded from the “comprising” language of at least the present claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The reference is considered cumulative to or less material than the one discussed above.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761