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 .
Specification
The first line of the specification should be updated to recite that Application No. 18/397,966, filed on December 27, 2023, has issued as U.S. Patent No. 12,091,642.
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 12, 16, 19, 22, 25, 31-35 and 45 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.
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 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 12 recites the broad recitation “substituted or unsubstituted phenanthroline or substituted or unsubstituted bipyridine”, followed by the narrow recitation of “1,10-phenanthroline or 2,2’-bipyridine”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 16 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 16 recites the broad recitation “pH of 3-7”, followed by the narrow recitation of “pH of 5-7 or pH of 5-6”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 19 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 19 recites the broad recitation “an ionic surfactant, a nonionic surfactant or an amphoteric surfactant”, followed by the narrow recitation of “primary alcohol ethoxylate, a secondary alcohol ethoxylate, sodium laureth sulfate, or cocamidopropyl hydroxysultaine” and “dodecyl benzene sulfonic acid”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 22 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 22 recites the broad recitation “polar protic solvent or aprotic polar solvent”, followed by the narrow recitation of “water, glycol ether, an alcohol, acetone”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “the dye changes a color of the composition to a color different than a color change of the chelating agent upon chelation”. This limitation renders the claim vague and indefinite, since it is unclear what the metes and bounds are for “a color different”. A change in color to one person’s eye might not be a color change to another person’s eye. Appropriate correction and/or clarification is required.
Claim 31 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “free from foul odors”. The limitation “foul odors” 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 “foul odors”. Furthermore, the examiner asserts that an odor that may be foul to one person may not be foul to another person. Appropriate correction and/or clarification is required.
Claim 32 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “does not have a strong, unpleasant, pungent odor”. The limitation “strong, unpleasant, pungent odor” 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 “strong, unpleasant, pungent odor”. Furthermore, the examiner asserts that an odor that may be strong, unpleasant or pungent to one person may not be strong, unpleasant or pungent to another person. Appropriate correction and/or clarification is required.
Claim 33 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “does not emit an odor that can be irritating to the nose and/or throat”. The limitation “an odor that can be irritating to the nose and/or throat” 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 “an odor that can be irritating to the nose and/or throat”. Furthermore, the examiner asserts that an odor that can be irritating to the nose and/or throat of one person may not be irritating to the nose and/or throat of another person. 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, for containing the limitation “rotten egg or sulfur odor”. The limitation “rotten egg or sulfur odor” 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 “rotten egg or sulfur odor”. Appropriate correction and/or clarification is required.
Claim 35 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “does not have an unpleasant mercaptan odor”. The limitation “unpleasant mercaptan odor” 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 “unpleasant mercaptan odor”. Appropriate correction and/or clarification is required.
Claim 45 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 45 recites the broad recitation “wherein the surface is a metal surface, a gel coat, a clear coat, an exterior surface of the object or an interior surface of the object”, followed by the narrow recitation of “an automobile, a motorcycle, a tool, furniture, appliances, utensils, cookware, fabric, carpet, concrete, ship, boat, watercraft, nuts & bolts, glass substrates”. See MPEP 2173.05(c). Appropriate correction and/or clarification 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.
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, 2, 7-10, 12, 14, 15, 19, 22, 24, 25, 27, 31-36, 44, 45 and 50 are 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 Reinbold et al, US 2010/0000579.
Reinbold et al, US 2010/0000579, discloses a composition for removing scale comprising an alkaline agent, a primary scale inhibitor, a secondary scale inhibitor and a solvent, wherein the pH of the composition is 11 or higher (see abstract). It is further taught by Reinbold et al that suitable alkaline agents include potassium hydroxide (see paragraph 24), that suitable secondary scale inhibitors include 2,2’-bipyridine and citric acid (see paragraphs 30-31), that suitable solvents include water and alcohols (see paragraph 23), that the composition further contains pH adjusting agents, such as acetic acid and citric acid (see paragraph 48), and wetting agents, such as nonionic surfactants (see paragraphs 49-50), per the requirements of the instant invention. Specifically, note Examples 1-9 and Tables 1-15. Therefore, instant claims 1, 2, 7-10, 12, 14, 15, 19, 22, 24, 25, 27, 31-36, 44, 45 and 50 are anticipated by Reinbold et al, US 2010/0000579.
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 within the claimed proportions for the same utility.
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, 2, 7-10, 12, 14-15, 19, 22, 24-25, 27, 31-36, 44-45 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,091,642. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,091,642 claims a similar process for removing iron particles from a surface with a composition comprising water, lactic acid, 1,10-phenanthroline, 2-butoxyethanol, sodium metasilicate, at least one preservative, at least one thickening agent, such as hydroxy ethyl cellulose, at least one dye, a surfactant, such as dodecyl benzene sulfonic acid, and adjunct ingredients, wherein the composition has a pH of 5-7 (see claims 1-6 of U.S. Patent No. 12,091,642), as required in the instant claims. Therefore, instant claims 1, 2, 7-10, 12, 14-15, 19, 22, 24-25, 27, 31-36, 44-45 and 50 are an obvious formulation in view of claims 1-6 of U.S. Patent No. 12,091,642.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
June 9, 2026
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