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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/822,138, filed on 18 March 2020.
Specification
The first line of the specification should be amended to recite that “This application is a continuation of Serial No. 16/822,138, filed 18 March 2020, now U.S. Patent No. 12,084,631.”. The examiner notes that both the instant claims and the claims of U.S. Patent No. 12,084,631 are drawn to a dissolvable solid article, and accordingly, that the child case is not a divisional.
Claim Objections
Claim 28 is objected to because of the following informalities:
In instant claim 28, the first occurrence of “wherein ,” in line 1 should be deleted for grammatical purposes. 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 27-29 and 34 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.
Claims 27-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “essentially free of adhesives” in instant claim 27. The limitation “essentially free of adhesives” renders the claim vague and indefinite, since one of ordinary skill in the art would not be able to ascertain the metes and bounds of the limitation “essentially free of adhesives”. Furthermore, the definition that the adhesive “is at the very minimal not deliberately added to the composition” that is recited on page 8, lines 20-24 of the instant specification does not provide definitive guidelines describing what numerical values are encompassed by the limitation “essentially free of adhesives”. Claims 28 and 29 are included in this rejection for being dependent upon claim 27. Appropriate correction and/or clarification is required.
Claim 34 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 applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 34 recites the broad recitation “dissolvable solid article”, followed by the narrow recitation of “preferably each of said two or more flexible, dissolvable, porous sheets”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
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.
Claims 19-35 are rejected under 35 U.S.C. 103 as being unpatentable over Glenn, Jr. et al, US 2012/0270029.
Glenn, Jr. et al, US 2012/0270029, discloses a flexible porous dissolvable solid structure (see abstract). It is further taught by Glenn, Jr. et al that the flexible porous dissolvable solid structure includes a pre-mixture containing 1-75% by weight of surfactant, 0.1-25% by weight of a water-soluble polymer, 0.1-75% by weight of water, and optionally 0.1-25% by weight of a plasticizer (see paragraph 5), that the article contains, a top, middle, and bottom regions (see paragraph 20), that the pre-mixture has a viscosity of 1,000 cps (see paragraph 22), that the solid structure contains five layers (see paragraph 55), that suitable surfactants include 18-25% by weight of anionic surfactants, such as sodium dodecylbenzene sulfonate (see paragraphs 64-68), and 10-40% by weight of nonionic surfactants and polymeric surfactants, such as polyoxyethylenated alcohols and block copolymers of ethylene oxide and propylene oxide (see paragraphs 77-80), that suitable water-soluble polymers include polyvinyl alcohols that have a molecular weight of 40,000-500,000 in an amount of 0.1-25% by weight (see paragraphs 81-88), that suitable plasticizers include glycerin in an amount of 1-25% by weight (see paragraphs 89-97), that the solid structure contains additional ingredients, such as perfumes, thickeners and enzymes (see paragraphs 98-103), that the solid structure has a cell wall thickness of 15-55 microns (see paragraph 108), that the solid article has a Percent Open Cell Content of 80-100% (see paragraph 128), and that the average pore size of the solid structure is 200-300 microns (see paragraph 131). Although Glenn, Jr. et al is silent with respect to the Adhesion Score value, Adhesion Stability Score value, and Normalized Crystallinity value of their dissolvable solid articles, the examiner asserts that the dissolvable solid articles disclosed in Glenn, Jr. et al would inherently meet the Adhesion Score value, Adhesion Stability Score value, and Normalized Crystallinity value requirements of the instant invention, since products of identical chemical composition cannot have mutually exclusive properties. Specifically, note Examples 1-7 and Tables 1-13.
Although Glenn, Jr. et al generally discloses that the average pore size of the solid structure is 200-300 microns for the five layers, the reference does not require, with sufficient specificity, a dissolvable solid article having a ratio of the second average pore size to the first average pore size of about 0.6 to 1.5, as required in the instant claims.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have formulated a five layer dissolvable solid article, as taught by Glenn, Jr. et al, that had a ratio of the second average pore size to the first average pore size of about 0.6 to 1.5, since Glenn, Jr. et al generally discloses a five layer dissolvable solid article that has an average pore size of 200-300 microns, which would result in a ratio of a second average pore size to a first average pore size of 200/300 to 300/200 or 0.667 to 1.5. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a five layer dissolvable solid article containing a ratio of a second average pore size to a first average pore size of 0.667 to 1.5 is expressly suggested by the Glenn, Jr. et al disclosure and therefore is an obvious formulation.
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.
Claims 19-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,084,631. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,084,631 claims a similar dissolvable solid article in the form of two or more flexible and dissolvable sheets comprising 40-80% by weight of a surfactant, 15-30% by weight of a water-soluble polymer, and adjunct ingredients, wherein the porous sheets contain a top, middle and bottom regions, the ratio of the average pore size in the bottom region to the top region is 0.6-1.5, and the dissolvable solid article is characterized with a Percent Open Cell Content of 80-100%, an AdS of no less than 1, an AdSS of no less than 0.5, and a Normalized Crystallinity of not more than 5% (see claims 1-14 of U.S. Patent No. 12,084,631), as required in the instant claims. Therefore, instant claims 19-35 are an obvious formulation in view of claims 1-14 of U.S. Patent No. 12,084,631.
Claims 19-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15-17 of copending Application No. 17/368,893 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 17/368,893 claims a similar dissolvable solid article in the form of two or more flexible and dissolvable sheets comprising 30-65% by weight of a surfactant, 15-30% by weight of a water-soluble polymer, and adjunct ingredients, wherein the porous sheets contain a top, middle and bottom regions, the ratio of the average pore size in the bottom region to the middle region is 0.5-1.5, the ratio of the average pore size in the bottom region to the top region is 0.7-1.4, and the dissolvable solid article is characterized with a Percent Open Cell Content of 80-100% (see claims 1-13 and 15-17 of copending Application No. 17/368,893), as required in the instant claims. Therefore, instant claims 19-35 are an obvious formulation in view of claims 1-13 and 15-17 of copending Application No. 17/368,893.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
December 9, 2025