DETAILED ACTION
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 .
Priority
The instant application is the national stage entry of PCT/EP2022/075802 filed 16 September 2022. Acknowledgement is made of the Applicant’s claim of foreign priority to application EP21382841.1 filed 17 September 2021.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 26 May 2026 is acknowledged. Claims 11-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Status of the Claims
Claims 1-30 are pending.
Claims 11-30 are withdrawn.
Claims 1-10 are rejected.
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 5-6 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 5 recites the limitation "NaCl." There is insufficient antecedent basis for this limitation in the claim. Claim 6 recites the limitation "carbonate ion." There is insufficient antecedent basis for this limitation in the claim.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yant et al. (US 4,740,212) in view of Rimpler et al. (US 6,103,950).
Yant teaches a process for bleaching wood pulp characterized by the use of hypochlorous acid in combination with chlorine dioxide (abstract). The solution of hypochlorous acid can have a pH ranging from 2-6 (col 2, lns 63-68). The amount of hypochlorous acid in the aqueous preparation is about 1-100 grams per liter of water (0.1-10%) and the amount of chlorine dioxide ranges from 0-95 wt% wherein an optional nitrogen-containing compound can be further included (col 3, lns 1-17; col 4, lns 42-45). The composition can also further comprise an optional halogen salt such as sodium chloride in amounts of 0-200 wt% of the acid (col 4, lns 49-53).
Regarding chlorites, by using more hypochlorous acid, in place of chlorine dioxide, the amount of chlorites, which are hazardous, is materially reduced (col 2, lns 37-45). As for chlorates which also are preferably minimized, Yant teaches that by using the solution of hypochlorous acid and chlorine dioxide as soon as possible will minimize chlorate formation and thus assure that the bleaching solution will contain an adequate amount of available chlorine (col 5, lns 3-11). In the examples, bleaching solutions are prepared wherein both the HOCl and the ClO2 range from 0-100% (col 7, lns 35-45).
Yant does not teach how to reduce chlorate formation.
Rimpler teaches that chlorate can be reduced to chlorine dioxide by chloride (col 3, lns 42-43).
It would have been prima facie obvious to prepare the bleaching composition of Yant which comprises both HOCl and ClO2, and optionally comprises sodium chloride, wherein the motivation to limit or completely eliminate chlorite and chlorate ions is provided. Based on the broad ranges of 0-100% for both of the main agents being taught, any ratio between HOCl and the ClO2 would have been obvious. 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). MPEP 2144.05 (I). The skilled artisan would have been further motived to use larger amounts of HOCl than ClO2 based on the teaching that doing so results in less formation of hazardous chlorite ions. It would have been further obvious to include sodium chloride in any amount, relative to HOCl, of 0-200% wherein the inclusion thereof would necessarily result in a reduction or elimination of undesirable chlorate ions, as taught by Rimpler. As such, a theoretical aqueous composition comprising HOCl (0.4%), ClO2 (0.04%), and sodium chloride (1.0%) at a pH of 6 would have been obvious. The composition does not intentionally comprise any of chlorite ions, chlorate ions, or carbonate ions, however the presence of any of chlorite or chlorate ions is taught as desirably being as low as possible by increasing the amount of HOCl and using the mixed composition as soon as possible after preparation. As such, a value as close to 0, if not 0, of chlorite and chlorate ions would have been obvious.
Regarding instant claim 10, the prior art teaches a broad range of HOCl which overlaps with the claimed range and makes a value of, for example, 0.4% HOCl as obvious. By implementing the claimed amount of HOCl, the skilled artisan would necessarily prepare a composition that can be classified by the conductivity formula of instant claim 10. It is noted that “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 (II)). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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