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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP (3173467) in view of Lant et al (WO 91/17234).
Lant teaches an pouch made from a water- soluble polyvinyl alcohol (PVOH) film; [1.20: 50-55, [[.28], comprising water in amount of 0.5-20 % ; [9], detergent composition of anionic surfactants such as alkylbenzene sulfonate; [4, 11], cationic surfactants such as fatty quaternary ammonium compound, COCO dimethylamine oxide; [50, 81-82, 130], and betaine; [49, 51], and nonionic surfactants (instant claims 9, 17) such as fatty alcohol alkoxylate and alkyl phenol ethoxylate; [43, 45], wherein the composition is disposed inside the pouch; [162-163].
Lant does not teach the amino acid but does teach polyamino acid as a water soluble pouch or encapsulating material. However the analogous art of Siklosi teaches a laundry detergent composition (abstract) comprising amino-acid such as lysine; At the time before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to add the lysine of Siklosi to Lant's composition with the motivation of disinfection adding its disinfecting properties (damaging bacterial wall cells; please see any chemistry text-book reference) and also its chlorine scavenging properties, as taught Siklosi above.
Lant teaches the pH of composition in the range of 6- 9 with an overlapping range thus rendering the claim obvious; [129]. Furthermore, the composition comprises bases such as potassium and sodium hydroxide and carbonate; [106]. Composition comprises non-aqueous solvents such as ethylene glycol, diethylene glycol and propylene glycol; [64]. Lant teaches additives such as chelating agent; [68, 105], enzymes; [2-3, 7], water in the amount of 0.5-20%; [9], anionic surfactants such as alkylbenzene sulfonate and nonionic surfactant such as fatty alcohol alkoxylate (C8-18 and ETO=1-7) in amount of 5-60%; [abstract, 3, 4, 11, 43], non-aqueous ethylene, diethylene glycols; [64], and a chelant; [68, 105], sodium hydroxide; [106]. Please note that the amino acid it taught by Siklosi as stated above.
Lant does not teach the chlorine scavenging property of composition in a given amount of time and volume of a liter of water. The Office realizes that all the claimed effects or physical properties (chlorine scavenging rate, ppm/seconds, are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. measured chlorine scavenging rate would expectedly be achieved by a composition with all the claimed ingredients.
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/617,223 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in subject matter and proportions; the Markush of ingredients within the copending applications, amounts to 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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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 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761
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