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 .
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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/868071 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require itaconic anhydride and may further contain hydrolysed proteins.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. A “use” claim does not recite any active, positive steps for how the use is practiced and so is indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6, 9, and 10 are rejected under 35 U.S.C. 102a1 as being anticipated by Hwang et al, US 2020/0017730.
Hwang et al teach an adhesive composition comprising the reaction product of a 1:1 lysine to itaconic acid mixture added to water with heating (¶89). The examiner maintains the reacted itaconic acid with heating is itaconic anhydride, and of course small amounts of reaction products itaconic acid and water will be present. This appears to be precisely the invention claimed and so the reference is anticipatory. An amino acid is the ultimate hydrolysed protein and so this limitation is satisfied.
Claims 1-4, 6, 9, and 10 are rejected under 35 U.S.C. 102a1 as being anticipated by Miller et al, US 2019/0023839.
Miller et al teach the preparation of 1-carboxymethyl pyrrolidone carboxylic acid by which begins by reacting 1.3:0.75 itaconic acid to glycine mixture with heating (¶168). The examiner maintains the reacted itaconic acid with heating is itaconic anhydride, and of course small amounts of reaction products itaconic acid and water will be present. This appears to be precisely the invention claimed and so the reference is anticipatory. An amino acid is the ultimate hydrolysed protein and so this limitation is satisfied.
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 1-4, 6, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tomalia et al, US 2019/0352258.
Tomalia et al teach the reaction product of itaconic acid and amino acid (¶269) with heating (¶361) where the amino acid may be glycine (¶126). Itaconic anhydride may also be used (¶124). The examiner maintains the reacted itaconic acid with heating is itaconic anhydride, and of course small amounts of reaction products itaconic acid and water will be present. It would have been obvious for one of ordinary skill in the art to react itaconic anhydride and glycine as this reaction product is contemplated by the reference.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hudson, US 2015/0105310.
Hudson teaches laundry additives from crude modified protein sources (see abstract). Suitable protein sources are vegetable protein (¶9) and suitable modifiers include anionic modifiers, such as phthalic anhydride and itaconic anhydride, both dicarboxylic acids, wherein the protein and modifier are reacted with heating (¶26). The examiner maintains the heating results in hydrolysis of the protein and of course small amounts of reaction products itaconic acid and water will be present. It would have been obvious for one of ordinary skill in the art to modify a vegetable protein with itaconic anhydride with confidence of making an effective laundry additive. This product may be added to laundry detergents and softeners (¶47) to provide antiredeposition benefits, prevent dye transfer, and provide a soil repellant surface for fabrics (¶48). The examiner maintains that laundry detergents and softeners immediately call to mind standard detergent and softener additives, such as preservatives, perfumes, and quaternary ammonium compounds. It is obvious to add standard detergent ingredients to detergents.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Krinski et al, US 5,112,520 in view of Hudson, US 2015/0105310.
Krinski et al teach a liquid laundry detergent comprising an anionic surfactant, nonionic surfactant, and an anti-redeposition agent, which is a modified vegetable protein with an anionic monomer (see abstract). The preferred anionic monomer is phthalic acid, a dicarboxylic acid, and the modification takes place with heating (col. 5, example 1 and col. 6, table 1). The examiner maintains the heating results in hydrolysis of the protein. Although the vegetable protein is modified with a dicarboxylic acid, itaconic acid is not taught by the reference.
Hudson is relied upon as set forth above. Recall that Hudson also teaches laundry additives from crude modified protein sources, wherein the protein may be modified by phthalic anhydride and itaconic anhydride. It would have been obvious for one of ordinary skill in the art to modify the protein of Krinski with itaconic anhydride as Hudson specifically teaches this as another suitable dicarboxylic acid for modifying proteins. The examiner maintains that laundry detergents and softeners immediately call to mind standard detergent and softener additives, such as preservatives, perfumes, and quaternary ammonium compounds. It is obvious to add standard detergent ingredients to detergents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES I BOYER whose telephone number is (571)272-1311. The examiner can normally be reached M-S 10-430.
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 5712722817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES I BOYER/Primary Examiner, Art Unit 1761
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