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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 14-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 14-15 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.
Claims 14-15 provides for the use of a dishwashing detergent composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 8 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 broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “composition is essentially free” in line 3, and the claim also recites “preferably completely free” in line 3 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-5, 8, 12-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hahn et al. (US Patent No. 9,994,796), hereinafter “Hahn.”
Regarding claims 1, 4-5, 12-13, Hahn teaches, in Example 1, a composition used in an automatic dishwashing composition for the protection of non-metallic inorganic materials such as glassware, wherein the composition comprises 1.0 wt% lactose (a reducing disaccharide) and 0.2 wt% benzotriazole, among others (see col. 8, lines 40-47; Table 1 under col. 6; col. 1, lines 11-13; col. 4, lines 9-13).
Regarding claims 2 and 16, it is noted that the 0.20 wt% amount of the benzotriazole meets the definition of “essentially free of any triazole” from the specification on page 5, lines 20-25, i.e. “less than 5 wt%”.
Regarding claim 3, inasmuch as Hahn already teaches lactose, a reducing disaccharide, Hahn need not disclose the reducing monosaccharides like glucose since these components are not claimed as being present in the composition, rather, these components are cited in the alternative as recited in claim 1, lines 2-3.
Regarding claim 8, it is noted that the above composition is completely free of sucrose, which is a non-reducing disaccharide.
Hence, Hahn anticipates the claims.
Claims 1-5, 8, 12-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olson et al. (US 2012/0190607), hereinafter “Olson.”
Regarding claims 1-3, 5, 12-13 and 16, Olson teaches, in Example #2, a composition which can be used in machine or manual warewashing (see [0013]), wherein the composition comprises 3 wt% fructose (a reducing monosaccharide), among others (see [0096], Table 5). It is noted that this composition is completely free of triazole.
Regarding claim 4, inasmuch as Olson already teaches fructose, a reducing monosaccharide, Olson need not disclose the reducing disaccharides like maltose since these components are not claimed as being present in the composition, rather, these components are cited in the alternative as recited in claim 1, lines 2-3.
Regarding claim 8, it is noted that the above composition is completely free of sucrose, which is a non-reducing disaccharide.
Hence, Olson anticipates the claims.
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.
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 6-7, 9-10 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Olson as applied to claims 1-5, 8, 12-13 and 16 above.
Regarding claims 6-7 and 17, Olson teaches the features as discussed above. In addition, Olson teaches that the composition comprises at least one saccharide and suitable saccharides include mono-, di- and polysaccharides, and a combination of sucrose and fructose may be particularly suitable (see [0005]). Olson, however, fails to specifically disclose the incorporation of a non-reducing disaccharide like sucrose, say in Example #2 above.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated sucrose, say in Example #2 above, because Olson specifically desires at least one saccharide and that a combination of sucrose and fructose is suitable as disclosed in [0005]).
Regarding claims 9 and 18-20, as discussed above, Olson teaches that the composition comprises at least one saccharide and suitable saccharides include mono-, di- and polysaccharides (see [0005]). Exemplary saccharides include, but are not limited to fructose (a reducing monosaccharide), maltose (a reducing disaccharide) and cellobiose (also a reducing disaccharide), among others (see [0022]). Olson, however, fails to specifically disclose the incorporation of two reducing disaccharides like maltose and cellobiose, say in Example #2 above.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated maltose and cellobiose, say in Example #2 above which already comprises fructose, because Olson specifically desires at least one saccharide and maltose and cellobiose are some of the suitable saccharides disclosed in [0022]).
Regarding claim 10, as discussed above, Olson teaches that the composition comprises at least one saccharide and suitable saccharides include mono-, di- and polysaccharides (see [0005]). Exemplary saccharides include, maltose (a reducing disaccharide) and cellobiose (also a reducing disaccharide), among others (see [0022]). Olson, however, fails to specifically disclose only two reducing disaccharides like maltose and cellobiose and no other reducing monosaccharides.
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 composition wherein the at least one saccharide consists of maltose and cellobiose because these are two of the suitable selections of saccharide disclosed in [0022]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Olson as applied to claims 10 above, and further in view of Kiesel et al. (US 2012/0053110), hereinafter “Kiesel.”
Regarding claim 11, Olson teaches the features as discussed in claim 10 above. Olson, however, fails to disclose that the two different reducing disaccharide are cellobiose and melibiose and no other reducing monosaccharides or reducing disaccharides.
Kiesel, an analogous art, teaches the equivalency of maltose with melibiose as disaccharides (see [0017]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the maltose of Olson with melibiose because the substitution of art recognized equivalents as shown by Kiesel is within the level of ordinary skill in the art. In addition, the substitution of one disaccharide for another is likely to be obvious when it does no more than yield predictable results.
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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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.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761
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