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 .
Claim Objections
Claim 10 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim has not been further treated on the merits.
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 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sonthalia et al. (US PG Pub 2011/0117751 A1 as listed on the IDS dated 4/17/2024).
Regarding claims 1 and 8, Sonthalia et al. teach a composition comprising a glycol and at least one chelating agent (claims 1-2), wherein the chelating agent can be ethylenediaminetetraacetic acid (EDTA) (claim 8), and wherein in a preferred embodiment the amount of glycol is 99.56 wt% and the chelating agent is 0.15 wt% (Example 1) thereby falling within the claimed range of 50 to 99.999 wt% of glycol and 0.001 to 5 wt% of a chelant.
Regarding claim 2, Sonthalia et al. teach the amount of glycol is 99.56 wt% (Example 1) thereby falling within the claimed range of 80 to 99.999 wt% of glycol.
Regarding claim 9, the preferred embodiments of Sonthalia et al. do not disclose an antioxidant, therefore the composition is considered to be free of an antioxidant.
Regarding claim 10, Sonthalia et al. teach the composition as set forth above and further teach the composition is “substantially” devoid of water (claim 2), wherein the “substantially devoid” corresponds to less than about 2 wt% [0022]. As such, the ”less than 2 wt%” encompasses ranges of greater than 0 to 2 wt% which reads on the water as required by the instant claim.
Claim Rejections - 35 USC § 102/103
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.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sonthalia et al. (US PG Pub 2011/0117751 A1; as listed on the IDS dated 4/17/2024).
Regarding claim 11, Sonthalia et al. teach a method of adding the chelant to the glycol (Examples) as set forth above and incorporated herein by reference.
Sonthalia et al. are silent regarding the reduction of formation of formaldehyde by at least 75% relative to a glycol composition without the chelant.
The reduction of formaldehyde relative to the glycol composition without the chelant is a function of the glycol composition. Sonthalia et al. teach the same glycol composition comprising a chelant as required by the instant claim as set forth in the rejection above. Therefore, the reduction of formaldehyde in the glycol composition of Sonthalia et al. will be the same reduction of formaldehyde as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (glycol and EDTA) within the claimed proportions.
Claim Rejections - 35 USC § 103
Claims 3-5 is rejected under 35 U.S.C. 103 as being unpatentable over Sonthalia et al. (US PG Pub 2011/0117751 A1) in view of Potocnik et al. (US Patent 10,711,224) as listed on the IDS dated 4/17/2024.
Regarding claims 3-5, Sonthalia et al. teach the composition of claim 1 as set forth above and incorporated here by reference.
Sonthalia et al. do not teach the molecular weight of the glycol and further silent on the glycol being polyethylene glycol.
Potocnik et al., from the same field of endeavor, namely cleaning compositions, teach compositions comprising a glycol ether, an EDTA chelating agent, and polyethylene glycol (claims 1 and 14), wherein the polyethylene has an average molecular weight in the range of from about 4,000 to 12,000 g/mol (col. 7 line 23) thereby reading on the claimed range of 400 to 10,000,000 g/mol of claim 3 and overlapping with the claimed range of 2,000 to 5,000 g/mol of claim 4. Potocnik et al. offer the motivation of using the polyethylene glycol with this molecular weight due to its ability to function as a surfactant in the cleaning composition (col. 7 lines 10-15). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the polyethylene glycol with a molecular weight from 4,000 to 12,000 g/mol in the cleaning composition of Sonthalia, thereby arriving at the claimed invention.
Regarding the ranges taught by Potocnik et al. (4,000 to 12,000 g/mol), case law has held that it would have been obvious to one of ordinary skill in the art to select a portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference. In re Geisler 43 USPQ2d 1365 (fed. Cir. 1997) and MPEP 2144.05.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sonthalia et al. (US PG Pub 2011/0117751 A1; as listed on the IDS dated 4/17/2024).
Regarding claim 6, Sonthalia et al. teach the chelating agent is 0.15 wt% (Example 1).
Sonthalia et al. do not teach the particular claimed range of 0.001 to 0.1 wt% of a chelant.
However, the amount of the chelating agent taught by Sonthalia et al. is 0.15 wt% which is substantially close to the claimed range of 0.001 to 0.1 wt%. Case law has held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). It would have been obvious to one of ordinary skill in the art to choose the claimed amount for the chelating agent due to the close proximity of the amount taught by Sonthalia (0.15 wt% vs. 0.1 wt%), thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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