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 3-4 are objected to because of the following informalities:
a) claim 3 is objected to because:
i) this claim contains two sentences. Each claim should begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995), see MPEP 608.01(m)
ii) “selected from” in line 2 after “selected from the group consisting of” is a repetition and should be deleted
iii) “capsicinoids” in line 2 appears to be misspelled; it is suggested that this term be replaced with “capsaicinoids”
b) in claim 4, line 2, “capsicinoids” should be replaced with “capsaicinoids”
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 3-4, 11 and 15 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 3-4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “bittering agent is selected from . . . and mixtures thereof ” in lines 2-7, and the claim also recites “Preferred bittering agents include . . . “ in lines 7-9 (last three lines) which is the narrower statement of the range/limitation. Also claim 4 recites the broad recitation “capsicinoids (sic)” in line 2 and the claim also recites “preferably capsaicin” in line 2 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 is indefinite in the recital of “protein is present from 40% wt. of the film” in line 2 because this limitation appears to inadvertently omit the upper limit of the range. Presumably, the protein is present from 40% wt to 99% wt of the film as recited in the specification on page 13, lines 1-3. For prior art purposes for claim 11, the protein will be taken to be present from 40% wt to 99% wt of the film.
Claim 15 is indefinite in the recital of “forming a film from a forming a unit dose product from said film” in line 2 because this limitation is not understood.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 29612148, already cited in IDS dated 04/11/2024, hereinafter “DE ‘148.”
Regarding claim 1, DE ‘148 teaches a packet for water-soluble household cleaning agents having fluid soluble wrapping, i.e., film, of gelatin, i.e., a protein, containing bitter aromatic substance, i.e., bittering agent, as a safety feature (see Title of English abstract). Regarding claim 2, considering that DE ‘148 teaches that the water-soluble film comprises gelatin and bittering agent, as discussed above, it is inherent that the bittering agent is incorporated within the fluid soluble wrapping or film.
DE ‘148 teaches the limitations of the instant claims. Hence, DE ‘148 anticipates the claims.
Claims 1-3, 5-7, 10-12 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Courchay et al. (US 2021/0189303), hereinafter “Courchay.”
Regarding claim 1, Courchay teaches a water-soluble film which comprises a water-soluble polymer comprising a blend of a caseinate polymer and a polyvinyl alcohol homopolymer, wherein the caseinate polymer is preferably sodium caseinate (see [0024]), which is a protein; and preferably the water-soluble film comprises a bittering agent (see [0020]).
Regarding claim 2, considering that Courchay teaches that the water-soluble film comprises sodium caseinate and bittering agent, as discussed above, it is inherent that the bittering agent is incorporated within the water-soluble film.
Regarding claims 3, 5 and 6, Courchay teaches that the bittering agent includes denatonium benzoate (see [0020]).
Regarding claim 7, the water-soluble film of Courchay does not contain gelatine.
Regarding claim 10, Courchay teaches that the water soluble film preferably comprises a surfactant (see [0016]).
Regarding claim 11, Courchay teaches 80/20 wt-ratio of sodium caseinate/PVA (polyvinyl alcohol) homopolymer (see [0078] and Table 1).
Regarding claim 12, Courchay teaches that the water soluble film preferably comprises a non-aqueous plasticizer like polyols (see [0015]).
Regarding claim 14, Courchay teaches a water-soluble unit dose article, like a laundry unit dose article (see [0003]), comprising the above water-soluble films, wherein during manufacture, a first water-soluble film may be shaped to comprise an open compartment into which the treatment composition is added; a second water-soluble film is then laid over or superposed to the first film in such an orientation as to close the opening of the compartment; and the first and second films are then sealed together along a seal region (see [0035]-[0037] and [0043]). Courchay need not disclose a thermoformed recess because “thermoformed” is a product-by-process limitation. Burden is on applicants to show product differences in product by process claims, see In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985); In re Best, 195 USPQ 430 (CCPA 1977); In re Fessman, 180 USPQ 324 (CCPA 1974); In re Brown, 173 USPQ 685 (CCPA 1972).
Regarding claim 15, Courchay further teaches a method of making a film which comprises admixing the caseinate and polyvinyl alcohol and implicitly the bittering agent to form a film (see [0034]) and the water-soluble film is used in preparing a water-soluble unit dose article (see [0034]-[0037]).
Courchay teaches the limitations of the instant claims. Hence, Courchay 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.
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Courchay as applied to claims 1-3, 5-7, 10-12 and 14-15 above, and further in view of Souter et al. (US 2017/0067003), hereinafter “Souter.”
Regarding claim 4, Courchay, as discussed above, teaches bittering agents like denatonium benzoate (see [0020]). Courchay, however, fails to disclose a bittering agent like capsaicin.
Souter, an analogous art, teaches water soluble articles that include a water-soluble film, where the film includes an aversive agent or bittering agent (see [0001]). Souter also teaches the equivalency of denatonium benzoate with capsaicin as aversive agent or bittering agent (see [0059]).
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 denatonium benzoate of Courchay with capsaicin because the substitution of art recognized equivalents as shown by Souter is within the level of ordinary skill in the art. In addition, the substitution of one aversive or bittering agent for another is likely to be obvious when it does no more than yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Courchay as applied to claims 1-3, 5-7, 10-12 and 14-15 above, and further in view of Dreher et al. (US 2015/0072915), hereinafter “Dreher.”
Regarding claim 8, Courchay teaches the features as discussed above. Courchay, however, fails to disclose the water-soluble film comprising a plant protein.
Dreher, an analogous art, teaches water-soluble film materials, for pouches containing fabric care active agents (see abstract), like casein, polyvinyl alcohol, soy protein and mixtures thereof (see [0091]), and the films exhibit a shorter dissolution time (see [0086]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated soy protein in the water-soluble film of Courchay which comprises caseinate and polyvinyl alcohol because their mixture would provide a shorter dissolution time as taught by Dreher.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: As discussed above, DE ‘148 teaches gelatin and Courchay teaches caseinate and PVA homopolymer as components of the water-soluble films, other than the bittering agent. Hence, DE ‘148 and Courchay, the close prior art, fails to teach, disclose or suggest a water soluble film comprising pulse protein and a bittering agent.
CN 105288697, another close prior art, teaches a surgical medical film which comprises 42-54 parts by weight polyvinyl alcohol and 9-17 parts by weight mung bean, a pulse protein, among others (see English abstract). There is seen no direction, motivation or guidance in the incorporation of a bittering agent in the surgical medical film.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references are considered cumulative to or less material than those discussed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORNA M DOUYON whose telephone number is (571)272-1313. The examiner can normally be reached Mondays-Fridays; 8:00 AM-4:30 PM.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761