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 .
Election/Restrictions
Applicant's election with traverse of Group I, currently claims 1-3, 5 and 22, in the reply filed on May 21, 2026 is acknowledged. The traversal is on the ground(s) that the Examiner has failed to show serious burden because there would be overlapping search amongst the groups and the claims of groups II-VI depend, either directly or indirectly, from independent claim 1 of group I. This is not found persuasive because Groups I-VI lack unity of invention according to PCT Rule 13.2 as stated in the previous office action and there would be a serious search and examination burden if restriction were not required because the inventions require a different field of search and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-9 and 11-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 21, 2026. It is noted that claims 4 and 10 are cancelled.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 4, the phrase “polysaccharide backbone is selected maltodextrin, starch…” is missing, presumably “ from the group consisting of” after “selected.” Appropriate correction is required.
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 1-3, 5 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hild et al. (US 2003/0097962, already cited in IDS dated 06/14/2024).
Hild teaches carboxymethylsulphoethyl starch (see [0020]), which meets the polysaccharide of the present claims. Even though Hild does not explicitly disclose the degree of functionalization as recited in claims 1, 5 and 22, the average molecular weight as recited in claim 2, the molar ratio of the carboxymethyl groups to the sulphoethyl groups as recited in claim 3, it would be inherent for the carboxymethylsulphoethyl starch of Hild to exhibit the same properties because the same compound has been utilized. “Products of identical composition can not 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.
Also, even though Hild does not teach a detergent use of his composition, rather for emulsion paints (see [0005]), the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393.
Hence, Hild anticipates the claims.
Claims 1-2, 5 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Price et al. (US 2004/0121928), hereinafter “Price.”
Regarding claims 1-2, 5 and 22, Price teaches ethoxylated/sulfated/carboxylated maltodextrin (see [0114]) for use in various compositions, such as dishwashing compositions, laundry compositions, etc. (see [0121]). Even though Price does not explicitly disclose the degree of functionalization as recited in claims 1, 5 and 22, and the average molecular weight as recited in claim 2, it would be inherent for the ethoxylated/sulfated/carboxylated maltodextrin of Price to exhibit the same properties because the same compound has been utilized. “Products of identical composition can not 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.
Hence, Price 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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Price as applied to claims 1-2, 5 and 22 above.
Regarding claim 3, Price teaches the features as discussed above. In addition, Price teaches that the molar ratio of sulfonate to carboxylate groups can be from about 1:30 to about 30:1, more preferably from about 1:10 to about 10:1. Price, however, fails to specifically disclose a molar ratio of sulfonate to carboxylate groups of between 4:1 and 1:2.
Considering that Price teaches a molar ratio of sulfonate to carboxylate groups from about 1:10 to about 10:1, as discussed above, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (e.g., 1:2 to 4:1) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Claims 1-3, 5 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lant (CN 102099456), whose English translation will used for citation purposes.
Regarding claims 1-3, 5 and 22, Lant teaches a substituted polysaccharide as one component of a laundry treatment composition (see abstract), wherein the substituted polysaccharide comprises straight chain or branched chain polysaccharide backbone (see [0019]), and wherein the polysaccharide backbone includes mannan or starch (see [0031]). Any hydroxide at a saccharide unit of the polysaccharide is substituted (see [0045]) with substituents like sulfoethyl and/or carboxymethyl (see [0071]-[0072]), among others. One example of the substituted polysaccharide is sulfoethyl carboxymethyl galactomannan (see [011]). Lant, however, fails to specifically disclose sulfoethyl carboxymethyl starch, wherein the starch backbone has a total degree of functionalization of at least about 1.4 as recited in claim 1, or at least 2.2 as recited in claim 22; degree of functionalization by sulfur-containing groups of less than about 0.4 as recited in claim 5; the average molecular weight before functionalization as recited in claim 2; and the molar ratio of the carboxymethyl with sulfoethyl as recited in claim 3.
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 polysaccharide backbone of the sulfoethyl carboxymethyl galactomannan with starch, hence, resulting in sulfoethyl carboxymethyl starch, because the substitution of art recognized equivalents as shown by Lant in [0031] is within the level of ordinary skill in the art. In addition, the substitution of one substituted polysaccharide for another is likely to be obvious when it does no more than yield predictable results.
With respect to the total degree of functionalization, the degree of functionalization by the sulfoethyl group, the average molecular weight of the starch before functionalization and the ratio of the carboxymethyl and sulfoethyl groups, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the above properties to overlap those recited because similar compounds have been utilized, hence, would behave similarly.
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
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