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
The instant application is a continuation of Application No. 17/153425 (filed on 1/20/2021), which is a continuation of Application No. 16/202225 (filed on 11/28/2018), which is a continuation of Application No. 15/121936 (filed on 8/26/2016), which in turn is a national stage entry of PCT/CA2014/050140 (filed on 2/27/2014).
Information Disclosure Statement
The information disclosure statement (IDS) filed on 8/12/2024 complies with the provisions of 37 C.F.R. 1.97 and all cited references have been fully considered.
Specification
The abstract of the disclosure is objected to because (i) the Latin term “in situ” should be written in italics and (ii) the content does not accurately reflect the invention (note that claims do not require the chromogenic absorbent material to comprise an oxidizing agent). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1 and 10 are objected to because of the following informalities: “in situ” is a Latin term but is not italicized. Appropriate correction is required.
Claim 7 is also objected to since “guar” refers to the plant and not to the polysaccharide found in said plant. To rectify this minor informality, the term “gum” should be added after “guar”.
Claims 7 and 14-18 are objected to due to unnecessary use of two conjunctions. It is recommended that the first “or” be replaced with a comma and a comma be added before the second “or”.
Claim 20 is objected to because the unit of time after “30” should be in plural form. Thus, “min” should be deleted and replaced with “minutes”.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-2 recite “about”, which is a relative term and renders the claim indefinite. It cannot be determined what range is covered by said term. Does “greater than about 900%” in claim 1 include free swelling capacity values within the next whole integer (899-901%) or a certain percentage of 900%? If it is the latter, does it encompass 1% of 900% ([Symbol font/0xB1]9%) or does it extend to 10% of 900% ([Symbol font/0xB1]90%)? Similarly, does “up to about 3 wt.% of the SAP” in claim 2 cover values within the next whole integer (2-4 wt.%) or a percentage of 3% (ex. [Symbol font/0xB1]0.03 wt.%)? The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 3-20 are also considered indefinite for depending on 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 1-13 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,908,150; as well as claims 14-18 over U.S. Patent No. 10,908,150 in view of Jollez et al. (US 2012/0202236 A1).
US 10,908,150 is directed to a chromogenic absorbent material for detecting glucose in an animal excretion. The chromogenic absorbent material comprises a first catalytic compound comprising an oxidoreductase, for catalyzing, in the presence of glucose, in situ generation of an oxidizing agent responsive to peroxidatic or pseudoperoxidatic activity in the animal excretion (reads on the claimed invention’s “a first catalytic compound for in situ generation of an oxidizing agent responsive to peroxidatic/pseudoperoxidatic activity”); a second catalytic compound comprising a peroxidase, a pseudoperoxidase or a mixture thereof (reads on “a second a catalytic compound for catalyzing the oxidation of the chromogenic indicator”); a chromogenic indicator oxidizable into a colored and/or fluorescent substance in the presence of the oxidizing agent and the second catalytic compound (reads on “a chromogenic indicator being chromogenically responsive to an oxidizing activity”); and an absorptive material that is porous and comprises a water-absorbing polysaccharide, wherein said absorptive material can further comprise a superabsorbent polymer (reads on “an absorptive material” comprising “a water-absorbing polysaccharide… and a superabsorbent polymer”). The chromogenic absorbent material is specified to have a density of about 0.20 g/cm3 to about 0.39 g/cm3 and an effective porosity of about 0.5 mL/g to about 2.0 mL/g.
In some aspects, the first catalytic compound comprises glucose oxidase (GOx), the second catalytic compound comprises horseradish peroxidase (HRP), and the chromogenic indicator comprises a benzidine-type compound like 3,3′,5,5′-tetramethylbenzidine, which is known in the art to turn blue when exposed to peroxidase activity.
The water-absorbing polysaccharide can comprise a starch, a modified starch, a cellulose derivative or a gelling polysaccharide, or a mixture thereof. The absorptive material can also comprise a second polysaccharide providing structural integrity that includes a crystalline polysaccharide such as microcrystalline cellulose (MCC), nanocrystalline cellulose (NCC), or a mixture thereof.
In one embodiment, the chromogenic absorbent material has a free swelling capacity greater than about 900%.
The U.S. patent differs from the claimed invention in that it does not further comprise “a buffering agent, a stabilizer, a metal scavenger agent or a color enhancer or a combination thereof” as required in dependent claims 14-18.
Regardless, it is conventional in the art to include additives in animal litter as substantiated by Jollez et al.. Jollez et al. discloses a composite litter material comprising an absorptive polymer material forming a solid matrix, exfoliated clay embedded and dispersed within the solid matrix, a chromogenic indicator within the solid matrix, and an oxidizing agent distributed within the solid matrix (Abstract). Jollez et al. teaches that the composite litter material can also contain a surface-active agent and other auxiliary agents such as thickeners, stabilizers like polyols having polymer backbones, pigments, a buffer/buffering compound like citric acid, complex-forming agents such as EDTA, and/or a color enhancer like lepidin (par. [0033], [0082], [0093], [0140]). Accordingly, it would have been obvious for one with ordinary skill in the art to incorporate such additives to the U.S. patent’s chromogenic absorbent material. Obviousness is based on the rationale that combining prior art elements according to known methods yields predictable results.
Claims 1-13 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,167,265; as well as claims 14-18 over U.S. Patent No. 11,167,265 in view of Jollez et al. (US 2012/0202236 A1).
The U.S. patent is drawn to a process for manufacturing a chromogenic absorbent material for detecting glucose in an animal excretion. Although the claims at issue are not identical, they are not patentably distinct from each other because the process forms a product that is identical to the claimed invention.
The product formed by the disclosed manufacturing process comprises an oxido-reductase (reads on “a first catalytic compound for in situ generation of an oxidizing agent responsive to peroxidatic/pseudoperoxidatic activity”), a peroxidase or pseudoperoxidase (reads on “a second a catalytic compound for catalyzing the oxidation of the chromogenic indicator”), a chromogenic indicator oxidizable into a colored and/or fluorescent substance in the presence of the oxido-reductase, the peroxidase or pseudoperoxidase, and glucose (reads on “a chromogenic indicator being chromogenically responsive to an oxidizing activity”), and an absorptive powder comprising a water-absorbing polysaccharide, which can be a cellulose derivative, an alginate, an alginate derivative, and/or a gelling polysaccharide. The absorptive powder can further include a second polysaccharide comprising microcrystalline cellulose (MCC), nanocrystalline cellulose (NCC), or a mixture thereof (reads on “an absorptive material” comprising “a water-absorbing polysaccharide… and a superabsorbent polymer”).
In an embodiment, the oxido-reductase comprises glucose oxidase, the peroxidase or pseudoperoxidase comprises horseradish peroxidase; and the chromogenic indicator comprises a benzidine-type compound, which is known to turn blue in the presence of a peroxidase and hydrogen peroxide.
One embodiment of the chromogenic absorbent material is that it has a free swelling capacity greater than about 900%.
The product formed by the U.S. patent’s process does not comprise “a buffering agent, a stabilizer, a metal scavenger agent or a color enhancer or a combination thereof” as required in some dependent claims.
But as discussed above, additives are conventionally incorporated in animal litter. Jollez et al., for instance discloses a composite litter material comprising an absorptive polymer material, a chromogenic indicator, and an oxidizing agent (Abstract), wherein the composite litter material can further comprise stabilizers like polyols having polymer backbones, a buffer/buffering compound like citric acid, complex-forming agents such as EDTA, and/or a color enhancer like lepidin (par. [0033], [0082], [0093], [0140]). A person with ordinary skill in the art would have added these additives during the manufacturing process and expect that the product would have properties conferred by the additives (ex. stabilized, buffered, etc.). Combining prior art elements according to known methods yields nothing more than predictable results.
Claims 1-13 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,072,331; as well as claims 14-18 over U.S. Patent No. 12,072,331 in view of Jollez et al. (US 2012/0202236 A1).
US 12,072,331 provides a chromogenic absorbent material for detecting a detectable substance in an animal excretion. The chromogenic absorbent material comprises: a trigger agent; a chromogenic indicator oxidizable into a colored and/or fluorescent substance in the presence of the trigger agent and the detectable substance (reads on “a chromogenic indicator being chromogenically responsive to an oxidizing activity”); and a porous absorptive material containing a water-absorbing polysaccharide and can further comprise a superabsorbent polymer (reads on “an absorptive material which is porous” comprising “a water-absorbing polysaccharide… and a superabsorbent polymer”). The absorptive material can be a starch, a modified starch, a cellulose derivative, a gelling polysaccharide, or a mixture thereof.
In an embodiment, the trigger agent is a catalytic system comprising a first enzyme which is an oxido-reductase and a second enzyme which is a peroxidase or a pseudoperoxidase. The first enzyme can be glucose oxidase and the second enzyme can be horseradish peroxidase (corresponds to the “first catalytic compound for in situ generation of an oxidizing agent responsive to peroxidatic/pseudoperoxidatic activity” and “second catalytic compound for catalyzing the oxidation of the chromogenic indicator”, respectively).
Like the applicant’s invention, the chromogenic absorptive material has a free swelling capacity greater than about 900%.
What differentiates the U.S. patent from some dependent claims of the instant application is that the disclosed chromogenic absorbent material does not have “a buffering agent, a stabilizer, a metal scavenger agent or a color enhancer or a combination thereof”.
Additives, however, are conventionally included in animal litter as shown by Jollez et al.. Jollez et al. teaches a composite litter material comprising an absorptive polymer material, a chromogenic indicator, and an oxidizing agent (Abstract). It can further comprise stabilizers like polyols having polymer backbones, a buffer/buffering compound like citric acid, complex-forming agents such as EDTA, and/or a color enhancer like lepidin (par. [0033], [0082], [0093], [0140]). As explained previously, a person with ordinary skill in the art before the effective filing date of the claimed addition would have added a buffer, stabilizer, metal scavenger, and/or color enhancer with reasonable expectation that the resulting composite litter material would be buffered, stabilized, metal-scavenged, and/or color enhanced. Combining prior art elements according to known methods yields nothing more than predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Jollez et al. (US 2012/0202236 A1).
Jollez et al. discloses a composite litter material comprising: (i) an absorptive polymer material forming a solid matrix such as a polysaccharide; (ii) exfoliated clay embedded within the solid matrix; (iii) a chromogenic indicator responsive to hydrogen peroxide and peroxidase such as 3,3’5,5’-tetramethylbenzidine; and (iv) an oxidizing agent responsive to peroxidase or pseudoperoxidase activity in urine to activate the chromogenic indicator such as cumene hydroperoxide (par. [0027]-[0032]). Jollez et al. is different from the claimed invention in that the composite litter material does not contain a first catalytic compound that generates an oxidizing agent in situ (i.e., the oxidizing agent is already present in said litter material) and a second catalytic compound that catalyzes oxidation of the chromogenic indicator. Moreover, it does not teach that the absorptive polymer material specifically comprises a superabsorbent polymer and that disclosed composite litter material has a free swelling capacity of 900%.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE F PAGUIO FRISING whose telephone number is (571)272-6224. The examiner can normally be reached Monday-Friday, 8:00 a.m. - 4:00 p.m..
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, Melenie L. Gordon can be reached at (571) 272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michelle F. Paguio Frising/Primary Examiner, Art Unit 1651
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