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 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 2-10, 12-13, and 15-17 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.
Regarding claims 2-10, 12-13, and 15-17, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 14 and claim 16 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.
Claim 14 and claim 16 recite a use. This is not a method and fails to recite any actionable steps of a method.
Claim Rejections - 35 USC § 103
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 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 1-2, 4, and 6-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wedler (WO 2020083680 A1).
With regard to claim 1, Wedler discloses esterified polyalkylene imine polyalkoxylates which increase the primary washing and cleaning performance of detergents and cleaning agents in respect of oil- and/or grease-containing stains when washing fabrics or cleaning hard surfaces (see Abstract). Wedler further discloses the polyalkoxylated polyalkylenemines can be obtained by reacting polyalkylenemines with alkylene oxides corresponding to the alkoxy groups, such as ethylene oxide, propylene oxide, butylene oxide or mixtures thereof (see [0007]). Wedler further teaches the polyalkoxylated polyalkylenemines may be reacted with a lactone (see [0008]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date and with a reasonable expectation of success, to utilize the polyalkoxylated polyalkylenemines, particularly those with alkoxy groups, such as ethylene oxide, propylene oxide, butylene oxide or mixtures thereof, reacted with lactone, as disclosed by Wedler, as such modified polyalkoxylated polyalkylenemines increase the primary washing and cleaning performance of detergents and cleaning agents, as disclosed by Wedler.
Note than an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
With regard to claim 2 and claim 8-9, Wedler discloses Formula I below:
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R may be linear or branched alkylene of 2-4 carbons, B is a branch point, E may also be H, x = 1-100, y = 1-200, and z = 0-100 (see [0010]-[0019]).
With regard to claim 4 and claim 6, Wedler discloses E of Formula I above may be Formula II below:
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Wedler further discloses X may be O, R1 (corresponding to R1) is linear or branched C2-C4 alkylene, R3 (corresponding to R2) is H, m = 3-60, n = 0-100, and R2 (corresponding to R5) is ethylene or a linear or branched alkylene or mono- or polyunsaturated alkenylene residue with 3 to 11 C atoms or mixtures thereof (see [0013]-[0018]).
With regard to claim 7, Wedler discloses all of the limitations of claim 1. Wedler further discloses the polyalkylene imine as having a molecular weight of 500 g/mol to 200,000 g/mol (see [0007]).
With regard to claim 10, Wedler discloses all of the limitations of claim 1. Wedler further discloses, if desired, a portion, preferably not more than 30% of their number, of the N atoms in the polyalkoxylated polyalkylenemine can be oxidized to N-oxides by known methods or quaternized by introducing alkyl groups (see [0007]).
With regard to claim 11, Wedler discloses all of the limitations of claim 1. Wedler further discloses ε-caprolactone (see [0097]).
With regard to claim 12 and claim 13, Wedler discloses all of the limitations of claim 1. Wedler further discloses 20 ethylene oxide units per N atom (see [0097]).
With regard to claim 14 and claim 15, Wedler discloses all of the limitations of claim 1. Wedler further discloses esterified polyalkylene imine polyalkoxylates as useful for enhancing the primary washing and cleaning power of detergents and cleaning agents when washing textiles or cleaning hard surfaces against oily and/or greasy soiling, and detergents and cleaning agents (see [0002]).
With regard to claim 16, Wedler discloses all of the limitations of claim 1. Wedler further discloses detergents containing the active ingredient essential to the invention (see [0025]).
With regard to claim 17, Wedler discloses all of the limitations of claim 1. Wedler further discloses detergents may contain enzymes (see [0028]). Wedler further discloses suitable enzymes as those from the classes of lipases, cutinases, amylases, mannanases, cellulases, hemicellulases, xylanases and peroxidases, as well as mixtures thereof at up to 10% by weight (see [0078]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wedler (WO 2020083680 A1), as applied to claim 1 above, and further in view of Ebert (US 20160222160 A1).
With regard to claim 3, Wedler discloses all of the limitations of claim 1.
However, Wedler fails to disclose the modified alkoxylated polyalkylene imine or modified alkoxylated polyamine according to claim 1 or 2 containing at least one residue according to general formula (Ila).
Ebert discloses water-soluble alkoxylated polyalkyleneimines, an analogous art (see Abstract and [0011]). Ebert further discloses formula II (see below), which corresponds to formula IIa of the instant claims.
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Ebert further discloses R1 as 1,2-propylene, 1,2-butylene, and/or 1,2-pentene , R2 as hydrogen and/or C.sub.1-C22-alkyl and/or C7-C22 aralkyl, R3 as C1, m = 5-18, n = 1-5, and p = 2-14 (see [0012]-[0022]). Ebert further discloses adding a middle block of propylene oxide, butylene oxide and/or pentene oxide will allow for the alkoxylated polyalkyleneimines to be a liquid at room temperature (see [0009]-[0010]). Ebert further discloses solids at room temperature cause handling difficulties (see [0008]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize formula II of Ebert in the alkoxylated polyalkyleneimine of Wedler for the purpose of forming a liquid alkoxylated polyalkyleneimine which is easier to handle, as disclosed by Ebert.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wedler (WO 2020083680 A1), as applied to claim 1 above, and further in view of Ludolph (WO 2020187648 A1).
With regard to claim 5, Wedler discloses all of the limitations of claim 1.
However, Wedler fails to disclose the modified alkoxylated polyalkylene imine or modified alkoxylated polyamine according to claim 1 or 2 containing at least one residue according to general formula (Ilc).
Ludolph discloses an alkoxylated polyalkylene (see Abstract) and further discloses an alkoxylated polyalkylene as useful in cleaning compositions (see page 2 line 6). Ludolph further discloses formula II (see below), which corresponds to formula IIc (see page 2 line 34 – page 3 line 8).
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Ludolph further discloses R1 represents 1,2-butylene and/or 1,2-isobutylene, R2 represents hydrogen and/or C C.sub.22-alkyl and/or C7-C22 aralkyl, m is an integer having a value of at least 20, and n is an integer having a value of at least 3 (see page 3 line 5-8). Ludolph further teaches alkoxylated compounds according to the present invention having such a terminal polybutylene oxide block (formula II above) show improved cleaning properties, especially in connection with the removal of stains (see page 3 line 16-18).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the formula II of Ludolph in the alkoxylated polyalkyleneimine of Wedler for the purpose of improving cleaning properties, especially in connection with the removal of stains, as disclosed by Ludolph.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4, 7-15, and 17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2, 5-6, 8-16, and 18 of copending Application No. 18/684,197 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1-2 and claims 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and claims 15-16 of copending Application No. 18/257,633 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of both applications are directed toward a polyalkylene imine. Claim 2 of both applications are directed toward the same formula, formula I. Claims 15-16 and claims 16-17 are identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and claims 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/800,265 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 and claims 5-6 of the instant application are directed toward the same subject matter as claim 1 of ‘265.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4, 6-7, 10, 12, and 14-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 10, and 12-1 of copending Application No. 18/683,827 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of ‘827 is largely identical to claim 2 of the instant application. Further, the claims are directed toward the same subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY SHARON HARRIS whose telephone number is (571)270-1390. The examiner can normally be reached 7:30-5:00.
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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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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/B.S.H./Examiner, Art Unit 1761
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