Examiner Marc Zimmer has assumed responsibility for the prosecution of this case from Examiner Katie Hammer
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
The word “component” is misspelled in line 5 of claim 1. Also, claim 10 is objected to because the cellulose ether, once crosslinked, no longer exists in its original form thus it is more appropriate to say that the crosslinked compound is “derived from” one or more of the compounds that follow. At the same time, the irreversibly crosslinked cellulose ether is said to comprise crosslinks, which the product is not derived from but, rather, contains. Hence, one suggestion is that Applicant define the irreversibly crosslinked cellulose ether as derived from the hydroxyalkyl-substituted cellulosics but contains the crosslinks.
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.
Claim 12 is 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.
It is questioned whether the presence of D units and T units is actually required, or not, given that paragraph [0036] of the instant Specification indicates that these structural moieties may be included. The language of claim 12 seems to mandate their presence whereas the passage from which support allegedly originated instead implies that they can be incorporated, but their presence is not mandatory. Further, the concept of a “limited number” of these units is indefinite. (Whereas the Examiner believes that the word “primarily” in the context of defining the contributions of the M and Q units would be construed as meaning a preponderance, or more M and Q units than units other than these, it is not so clear that “limited number” means just the opposite, as in, for instance, less than 50 mol% of D and T units.) Clarification is required.
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.
Claims 1-6, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over L’Hostis et al., U.S. Patent # 5,486,306.
L’Hostis is directed to an anti-foam composition very similarly-constituted to the drainage aid component defined in the method of claim 1. See column 2, lines 13-40 where R” correlates with R2 and Zz-R’ with AcR3. The composition is added to a detergent formulation in a quantity corresponding to 0.02-25 wt.% of the total (column 5, lines 51-59). The anti-foams have utility in the products and manufacturing environments of column 5, lines 26-34 and, while it is conceded that the disclosure is not forthcoming as to what environs the powder-based detergent composition may be used in, the Examiner takes notice of the fact that a skilled practitioner of the prior art invention would immediately conceive of laundry detergent powders as one product to which the anti-foam may be added. One of ordinary skill would also recognize that the steps of the claimed method beginning with “dosing” are all those performed in the regular wash cycle of a laundry washing machine.
As an aside, it is appreciated that the prior art does not divulge the anti-foaming composition defined therein as being also capable or promoting dewatering of the textiles being washed but, insofar as it is compositionally practically identical to that described in column 2, the Examiner maintains that it would inherently be capable of fulfilling both roles, i.e. as an antifoaming agent and also a drainage aid.
As for claim 3, whereas it is appreciated that the composition being correlated with the claimed drainage aid is used in an amount of no less than 0.02 wt.%, this is only nominally higher than the higher endpoint of the claimed range and there is no evidence that 0.019 wt.% represents a critical value beyond which one or more properties of the detergent composition are deleteriously affected. “ a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 4, the linear organopolysiloxane depicted in column 3, with a concomitant description of variables in the passages that follow, overlaps in scope the genus of polymers embraced within the description of claim 4 where both “y” in the prior art polymer and “b” in polymer (III) of claim 4 both equal zero. Of course, in this instance, the number of repeating units on which R” is present (where Applicant is reminded that R”= ZzR’ and R’ connotes an alkyl group that may have between 10 and 20 carbon atoms, and up to 35 carbon atoms according to column 2, lines 29-30) as a substituent, would be nearly 100 mol%.
Concerning claims 12-14, column 4, lines 60-62 states that the ratio of M to Q units preferably ranges between 1:2 and 2:1. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over L’Hostis et al., U.S. Patent # 5,486,306 in view of Tan et al., U.S. Patent Application Publication No. 2016/0272926.
Whereas L’Hostis is devoid of any mention of the incorporation of a crosslinked cellulose ether, Tan advocates at [0048] formulating a cross-linked carboxyl methyl cellulose to a granular/particulate detergent composition in order to enhance the mechanical cleaning benefit of said detergent. One of ordinary skill would have a reasonable expectation that a powder detergent composition derived from the teachings of L’Hostis would be advantaged in the same way thus motivating the addition of cross-linked carboxyl methyl cellulose to it.
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.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/700,298 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Co-pending claim 1 discloses a laundry detergent composition nearly completely compositionally coincident with that recited in the combination of instant claims 1 and 8. A lone distinction is the inclusion of a proviso in the co-pending claim that attaches additional structural requirements to the crosslinked cellulose ether when the amount of drainage aid present exceeds a specified weight fraction of the total weight of the detergent. Instant claim 8 is, however, encompassing of any crosslinked cellulose without regard to the weight contribution of the drainage aid.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 7, and 9-11 are 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. As for claim 7, the composition taught by L’Hostis that is held as compositionally equivalent to the claimed drainage aid fulfills the role of an anti-foam additive in the reference consequently the requirement of this claim is not met. The Examiner had considered rejecting claims 9 and 10 citing Nad et al., WO 2022/182615, which teaches crosslinked cellulose ethers anticipatory of those disclosed in the aforementioned claims but these seem to be primarily applicable to detergents formulations provided in tablet form where a disintegrating agent is useful in facilitating the deconstruction of the tablet enabling its contents to be released into the wash water quickly. Insofar as L’Hostis only contemplates detergents in powder form, there would seem to be a lack of motivation to add a crosslinked cellulose ether per the teachings of Nad into the compositions of L’Hostis.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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September 22, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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