CTNF 18/682,540 CTNF 83877 DETAILED ACTION 07-03-aia AIA 15-10-aia 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 08-25 AIA Applicant's election with traverse of claims 20-25 in the reply filed on 2026/05/08 is acknowledged. The traversal is on the ground(s) that the claims are linked by special technical feature namely the graft polymer of claim 20 by being biodegradable while maintaining strong properties when used in a cleaning composition .. This is not found persuasive because any prior art teaching the very same graft polymer with its structural make-up independently would satisfy the restriction requirement for national stage prosecution. Claims 26-38 are withdrawn, and claims 20-25 are subject to examination . The requirement is still deemed proper and is therefore made FINAL. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fossum et al. (US 2019/0390142 A1) . Regarding claims 20 and 24 , Fossum teaches a fabric care composition comprising a graft copolymer (a polymer; abstract, 7, 8, 35); A)- backbone made by polymerization of two or three monomers ethylene oxide, propylene oxide, butylene oxide with no specific orders (i.e. random; “a”) ; [8, 9, 35-36], b)- wherein the molecular weight is from 1000 to 12000 D ; [9, 31], and B)- polymeric side chains are obtained (instant B1) by polymerization of vinyl ester (component “c” of Fossum) ; [318, 29, 31], and one other monomer (instant B2) such as vinylpyrrolidone (component “b” of Fossum); [32, 39], wherein ratio of (b/c) reference is the same as instant B2/B1 and is 1/01 to 1/5 ; [32], rendering the instant limitation obvious. Furthermore, the instantly claimed (25 to 85%) weight of graft polymer with respect to copolymer backbone is taught by Fossum with a major overlap; [85-86]. Regarding claims 20 and 24 , The amount of molecular weight and weight ratio of backbone to side chain graft are not quite anticipatory, however there is a considerable overlap to render the claim quite obvious. Note that; overlapping ranges have been held to be a prim a 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, 541F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruft 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir.1990). See MPEP 2144.05(1). Regarding claims 21-23 , Fossum teaches all three conditions i), ii) and iii); wherein backbone A is obtained by polymerization of EO and ButO with the amount of EO is 40-99%; [35], and ( instant claim 22; ii ) wherein backbone A is capped at one or both ends; [37], and polymeric side chains B1 and B2 are obtained by radical polymerization ( instant claim 23; ii ); [86]. Regarding claim 25 , Fossum does not, expressly, teach the biodegradability property of graft polymer. The Office realizes that all the claimed effects or physical properties (i.e. biodegradability measure of graft polymer) is 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. biodegradability, 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] . Double Patenting 08-33 AIA 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. 08-35 Claim s 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 2, 3, 5, 6, 9 and 10 of copending Application No. 18/438,576 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ; Claim 21 corresponds to claims 2-3 of reference application “576”, even though not being identical but share the very same scope and claim limitations. Claim 22 corresponds to claim 5 of reference application “576”, even though not being identical but share the very same scope and claim limitations. Claim 23 and 24 correspond to claims 6 and 9 of reference application “576”, even though not being identical but share the very same scope and claim limitations. Claim 25 corresponds to claim 10 of reference application “576”, even though not being identical but share the very same scope and overlapping (number of days) claim limitations . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. Mohammad 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 2018/05/27 /MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767 Application/Control Number: 18/682,540 Page 2 Art Unit: 1767 Application/Control Number: 18/682,540 Page 3 Art Unit: 1767 Application/Control Number: 18/682,540 Page 4 Art Unit: 1767 Application/Control Number: 18/682,540 Page 5 Art Unit: 1767 Application/Control Number: 18/682,540 Page 6 Art Unit: 1767 Application/Control Number: 18/682,540 Page 7 Art Unit: 1767
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