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 .
Drawings
The drawings are objected to because in Figures 1 and 2, the texts are not legible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 5 (counting the formula as one line), “Where” should be replaced with “where.” 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 9-10 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.
In claim 9, the term “substantially free” in line 2 is a relative term which renders the claim indefinite. The term “substantially free” 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.
Claim 10, being dependent from claim 9, inherit the same rejection as in claim 9 above.
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.
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.
Claims 1 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al. (US 2011/0224126, already cited in IDS dated 10/10/2024), hereinafter “Miyake.”
Regarding claims 1, 4-5 and 11, Miyake teaches a liquid detergent composition for use in clothes (see [0001]) (which also reads on ultra-concentrated liquid laundry detergent composition) containing the following components (a) to (c), wherein the total sum of the contents of the components (a) and (b) is from 50 to 90% by mass in terms of [(a)+(b)], and a mass ratio of component (a) to component (b) is from 25/75 to 90/10 in terms of (a)/(b) (see [0009] and [0025]), wherein component (a) is from 15 to 75% by mass of a nonionic surfactant represented by the formula (I)
RO(EO)p1(AO)q1(EO)p2H (I)
where R represents an alkyl group or an alkenyl group with from 8 to 18 carbon atoms; EO represents an oxyethylene group; AO represents an oxyalkylene group with from 3 to 5 carbon atoms; p1 represents a number of from 3 to 30; and q1 represents a number of from 1 to 5; and (p1 + p2) is from 14 to 50 (see [0026]); and the AO group is common in having a branched alkyl group (see [0032]); and wherein component (b) is an anionic surfactant (see [0027]). Miyake, however, fails to specifically disclose a liquid detergent composition comprising: (1) an anionic surfactant and a nonionic surfactant having the formula as recited in claim 1 wherein the AO portion has 3 carbon atoms and is branched, i.e., -CH2-CH(CH3)O-; (2) p1 in -EOp1- (wherein p1 reads on x in instant claim 1) is 2 to 4; and (3) wherein the anionic surfactant is in an amount of at least 50% by weight of the sum of components (a) and (b) as recited in claim 1; or at least 60% by weight as recited in claim 5.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have prepared a liquid detergent composition comprising an anionic surfactant and a nonionic surfactant wherein the “AO” portion in the formula (1) is
-CH2-CH(CH3)O- because Miyake teaches that the AO can be 3 or 5 carbon atoms as disclosed in [0026]) and can be branched as disclosed in [0032]).
With respect to p1 (which reads on x), considering that Miyake teaches p1 from 3-30, 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. 3-4) 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).
With respect to the amount of anionic surfactant, considering that Miyake teaches a mass ratio of nonionic surfactant to anionic surfactant of 25/75 to 90/10 in terms of the nonionic surfactant and anionic surfactant, 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. 50-75wt%) 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).
Regarding claims 6-7, Miyake further teaches that component (c) is from 5 to 40% by mass of water-miscible organic solvent (see [0028]). Miyake, however, fails to specifically disclose less than 20 wt% of the organic solvent.
Considering that Miyake teaches from 5 to 40% by mass of water-miscible organic solvent, 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. 5 to less than 20 wt%) 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).
Regarding claims 8-10, Miyake further teaches that the anionic surfactant includes alkyl ether sulfuric ester salts, alkyl sulfuric acid ester salts or fatty acid salts (see [0044]-[0046]), hence the above anionic surfactants are free of any intermediate polarity spacers like propylene oxide or butylene oxide.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (US Patent No. 6,048,831), hereinafter “Mori” in view of Miyake.
Regarding claims 1-11, Mori teaches a low-viscosity surfactant composition, useful as a liquid detergent for clothes (see col. 1, lines 4-10), which is excellent in handleability even in a high surfactant concentration range and is easily handleable at room temperature, and which comprises (a) a nonionic surfactant represented by the general formula (I) and (b) an anionic surfactant at an (a)/(b) weight ratio ranging from 99/1 to 10/90:
RO-(EO)x-(PO)y-(EO)x'-H (I)
wherein R represents C8-C20 alkyl or the like; EO represents oxyethylene; PO represents oxypropylene; x and x' are each 1 or above; and y is more than 0 but below the sum of x and x', provided (EO)x, (PO)y and (EO)x', are bonded to each other in block in this order (see abstract). In Example 6, Mori teaches a surfactant composition (which reads on an ultra-concentrated liquid surfactant composition) which comprises 70 wt% of a 50/50 weight ratio of nonionic surfactant of the formula C12H25O-(EO)7-(PO)3-(EO)3-H and sodium dialkyl sulfosuccinate anionic surfactant (which is free of any intermediate polarity spacers like propylene oxide or butylene oxide) and 30 wt% water (see Table under cols. 5-6), wherein the total EO is 10. The surfactant composition may also contain from 0.1 to 10 wt% viscosity modifiers like the organic solvents ethanol, isopropyl alcohol or propylene glycol (see col. 4, lines 14-18). Mori, however, fails to specifically disclose the PO portion of the nonionic surfactant being branched, i.e., -CH2-CH(CH3)O- and x in (EO)x is 2 to 4; and y in (PO)y is from 8 to 25 or 8 to 16 as recited in claims 2-3.
Miyake, an analogous art, teaches the features as discussed above. In particular, Miyake teaches a nonionic surfactant represented by the formula (I)
RO(EO)p1(AO)q1(EO)p2H (I)
as discussed above, wherein the AO represents an oxyalkylene group with from 3 to 5 carbon atoms (see [0026]); and wherein oxyalkylene with 3 carbon atoms is oxypropylene group, referred to as PO group, and wherein the AO group is common in having a branched alkyl group (see [0032]).
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 nonionic surfactant of Mori, in particular the “PO” portion in the formula (1) to be branched, i.e., -CH2-CH(CH3)O- because it is known from Miyake that it is common for AO or PO group to be branched as disclosed in para. [0032]).
With respect to the values of x in (EO)x and the values of y in the (PO)y portions of the nonionic surfactant of Mori in view of Miyake, considering that Mori teaches y is more than 0 but below the sum of x and x', and x and x' are each 1 or 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., x is 2-4 and y is 8 to 25, or 8 to 16) 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).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/850,252. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to similar detergent compositions comprising (a) at least one anionic surfactant and (b) at least one nonionic surfactant having the same amounts of (a) and (b) and the same amount of (a) with respect to both (a) and (b) components, and wherein the nonionic surfactants have a formula with overlapping R’, R”, x, y and z groups. Overlapping ranges, however, have been held to be a prima facie case of obviousness.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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