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 of Group 1 (claims 1-15) without traverse in the reply filed on 07/08/2026 is acknowledged.
Claims 16-19 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
The Species Election between a detergent or soap, a solvent, and an antimicrobial agent is withdrawn.
Claims 1-15 are under examination and the requirement for restriction is made final.
Claim Objections
Claims 1, 8, and 11 are objected to because of the following informalities: typo of “form the first molecule” in lines 13 should be changed to “from the first molecule”. Appropriate correction 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.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Asirvatham (US20210189292A1).
Asirvatham teaches a formulation comprising surfactants suitable for cleaning hard surfaces (see Abstract). With regards to claim 1, Asirthvatham teaches a surfactant of Formula 1 where R1, R2, R3, and n are functionally identical to the instant claim (see [0009]-[0010]). The terminal N in Formula 1 can optionally be substituted with an R3 hydroxyl group (alcohol) to overlap with the end terminal N+ group in the instant claim (see claim 1). An optional counterion, functionally identical to X in Formula 1 of claim 1, can be selected from the group consisting of chloride, bromide, and iodide (see [0010]). A detergent or soap is also required in the formulation (see claim 1).
Although Asirvatham does not explicitly disclose these limitations in a single embodiment to the point of anticipation, it would have been obvious to a person of ordinary skill in the art before the effective filing date to compose a formulation of surfactant of Formula 1, and at least one detergent or soap based on the general teachings of Asirvatham. This combination would result in the benefit of good sudsing and finish product appearance (see [0101])
With regards to claim 2, Asirvatham teaches the use of anionic, nonionic, amphoteric, and zwitterionic detergent active compounds (see [0083]).
With regards to claim 3, Asirvatham teaches the soap to be of the general formula (RCO2-)--nMn+ wherein R is an alkly group, and M is a metal, and n+ is either +1 or +2 (see [0057]).
With regards to claim 4, Asirvatham teaches commonly used builders to include sodium tripolyphosphates, nitrilloacetic acid salts, and zeolites (see [0073]).
With regards to claim 5, Asirthvatham teaches suitable peroxy bleach compounds including organic peroxides such as urea peroxide, and inorganic persalts (see [0087]). Sodium percarbonate is especially preferred.
With regards to claim 6, Asirvatham teaches the use of one or more proteases, amylases, cellulases, oxidases, mannanases, peroxidases, lipases, and other enzymes in the composition (see [0093]).
With regards to claim 7, Asirthvatham teaches the use of N, N-dialkylaminoalkyl methacrylate among other cationic polymers in the composition (see [0097]).
With regards to claim 8, Asirthvatham teaches a formulation comprising a surfactant of Formula 1 and at least one solvent (see claim 12).
With regards to claim 9, Asirvatham teaches the solvent can be selected from the group of perchloroethylene, hydrocarbons, trichloroethylene, decamethylcyclopentasiloxane, dibutoxymthane, and n-propyl bromide (see [0187]).
With regards to claim 10, Asirvatham teaches the co-solvent can be alcohols, ethers, glycol ethers, alkanes, alkenes, linear and cyclic amides, perfluorinated tertiary amines, among others (see [0189]).
With regards to claim 11, Asirvatham teaches the composition to further comprise water (see claim 6). Since the instant claim recites the antimicrobial agent to be optional, it is not required in the composition. Asirvatham does however, teach the use of antimicrobial agents as additional additives (see [0121]).
With regards to claim 12, Asirvatham fails to explicitly disclose the antimicrobial agent having a greater than 1log10 reduction in 30 seconds. However, the instant Specification notes the inventive surfactant of Formula 1 reduces the number of Chaetomium or Arthrinium or Bacillus microorganisms by greater than 5log10 in cold aseptic bottling techniques (see Instant Specification [0208]). Therefore, the inventive surfactant is noted to have antimicrobial properties and could constitute an antimicrobial agent. A person of ordinary skill in the art would reasonably expect a formulation comprising a surfactant of Formula 1 as taught by Asirvatham to necessarily have a greater than 1log10 reduction in 30 seconds. “Products of identical composition cannot 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.
With regards to claim 13, Asirvatham teaches additives, such antimicrobial agents, to be present at amounts of 0-20 wt% of the composition (see [0148]-[0149]).
With regards to claim 14-15, Asirvatham teaches the use of stabilizer, sequestrants, thickeners, colorants, antibacterial agents, perfumes, among others as suitable additional additives (see [0149]). The use of bleaches and lime soap dispersants are also taught. Asirvatham generally teaches the use of at least one soap or detergent in the composition (see claim 1).
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,525,105B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘105 teaches a substantially similar formulation for cleaning comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional detergent or soap. Although Formula 1 of ‘105 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 1). Hence, the surfactant taught by ‘105 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claims 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-17, 19-20 of U.S. Patent No. 11,571,377B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘377 teaches a substantially similar formulation for cleaning comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional fatty component and water (see claim 6). It is known in the art that soaps are comprised of fatty acids and overlap with a fatty component. Although Formula 1 of ‘377 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 6). Hence, the surfactant taught by ‘377 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,459,963B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘963 teaches a substantially similar formulation for cleaning comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) (see claim 1). It is known in the art that soaps are comprised of fatty acids and overlap with a fatty component. Although Formula 1 of ‘963 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 1). Hence, the surfactant taught by ‘963 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,427,760B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘760 teaches a substantially similar formulation for cleaning comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and a solvent and a defoaming agent (see claim 1). It is known in the art that detergents can also serve as solvents in sufficiently high quantities. Although Formula 1 of ‘760 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 1). Hence, the surfactant taught by ‘760 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,466,846B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘846 teaches a substantially similar compound comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) (see claim 1). Hence, the surfactant taught by ‘846 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,008,348B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘348 teaches a substantially similar compound comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) (see claim 1). Although Formula 1 of ‘348 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 1). Hence, the surfactant taught by ‘438 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, and 9-11 of U.S. Patent No. 12,054,663B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘663 teaches a substantially similar compound comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion), water, and a fixer agent (see claim 1). It is known in the art that detergents and fixer agents can be comprised of overlapping chemical compounds. Although Formula 1 of ‘663 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 1). Hence, the surfactant taught by ‘663 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,905,304B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘304 teaches a substantially similar compound comprising of a surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion), and a pesticide (see claim 1). It is known in the art that detergents and pesticides can be comprised of overlapping chemical compounds. Although Formula 1 of ‘304 is shown with an N terminal group distinct from Formula 1 of the instant application, it is taught to be optionally further substituted with an R3 hydroxyl group which overlaps with the R3 group requirements of the instant application (see claim 1). Hence, the surfactant taught by ‘304 is functionally identical to the surfactant of the instant claims and the inventions are not patentably distinct.
Claim 1-5, 7-11, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/795,160. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprises an identical surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional ingredient, such as a solvent, soap, foaming or defoaming agent, thickener, pesticide, among others. The additional ingredient of the co-pending application has sufficient overlap with the detergent or soap of the instant application and hence, cannot be patentably distinct.
Claim 1-5, 7-11, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/795,161. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprises an identical surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional ingredient, such as a solvent, soap, foaming or defoaming agent, thickener, pesticide, among others. The additional ingredient of the co-pending application has sufficient overlap with the detergent or soap of the instant application and hence, cannot be patentably distinct.
Claim 1-5, 7-11, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-13 of copending Application No. 18/795,165. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprises an identical surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional ingredient, such as a solvent, soap, foaming or defoaming agent, thickener, pesticide, among others. The additional ingredient of the co-pending application has sufficient overlap with the detergent or soap of the instant application and hence, cannot be patentably distinct.
Claim 1-5, 7-11, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/795,167. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprises an identical surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional ingredient, such as a solvent, soap, foaming or defoaming agent, thickener, pesticide, among others. The additional ingredient of the co-pending application has sufficient overlap with the detergent or soap of the instant application and hence, cannot be patentably distinct.
Claim 1-5, 7-11, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-19 of copending Application No. 18/795,174. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprises an identical surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional ingredient, such as a solvent, soap, foaming or defoaming agent, thickener, pesticide, among others. The additional ingredient of the co-pending application has sufficient overlap with the detergent or soap of the instant application and hence, cannot be patentably distinct.
1-5, 7-11, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/795,176. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprises an identical surfactant of Formula 1 (with overlapping R1, R2, n, R3 groups, and an X counterion) and an additional ingredient, such as a solvent, soap, foaming or defoaming agent, thickener, pesticide, among others. The additional ingredient of the co-pending application has sufficient overlap with the detergent or soap of the instant application and hence, cannot be patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA PAUL whose telephone number is (571)272-1551. The examiner can normally be reached M-F: 7:30am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SP/Patent Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Prosecution Insights