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 Objections
Claims 20-21 are objected to because of the following informalities: claim 21 is embedded in claim 20. It is suggested that claim 21 be separated from claim 20.
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 1 and 4-21 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.
Claim 1 is indefinite for failing to recite the unit of measurement of the proportions of the mid-chain 1,2-alkanediol in lines 7-9. Presumably, the unit of measurement is “% by weight of the liquid hand dishwashing detergent composition” as recited in claims 2-3.
Claims 4-21, being dependent from claim 1, inherit the same rejection as in claim 1 above.
In addition, claim 14 lacks support for “the alkyl sulfate anionic surfactant” in line 1 with respect to claim 1 to which this claim is dependent upon. Please note that “alkyl sulfated anionic surfactant” is recited in claim 12, not claim 1.
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 1-2, 4-5 and 7-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Duval et al. (WO 98/02513), hereinafter “Duval.”
Regarding claims 1-2, 4-5 and 7-21, Duval teaches, in Example 6, a liquid detergent composition which comprises 22.0 wt% sodium C12-14 alcohol ethoxylate E2.2 sulfate (an alkyl sulfated anionic surfactant with 2.2 ethoxylate groups), 2.30 wt% C12-14 alkyl dimethyl amine oxide (an amphoteric surfactant which meets the formula in claim 1, i.e., R1 is C12-14, R2 and R3 are both C1 alkyl groups), 2.30 wt% C12-14 alkyl dimethyl betaine (also an amphoteric surfactant), 6.70 wt% C9-11 E8 alkyl ethoxylate (an alkoxylated nonionic surfactant), 0.40 wt% C12-14 glucose amide (also a nonionic surfactant) (a total of 33.7 wt% surfactant system), 5.00 wt% polyhydroxyl solvent, i.e., the substantially odor-free 1,2-hexanediol (see Example 1), water and minors like CaCO3 (calcium carbonate salt) (see entire page 79). In this example, the sodium C12-14 alcohol ethoxylate E2.2 sulfate is about 65 wt% (22/33.7 x 100) of the surfactant system; the weight ratio of the anionic surfactant to the amphoteric surfactants is 22:(2.3 +2.3) or 22:4.6 or 4.8:1; and the weight ratio of the 1,2-hexanediol to the surfactant system is 5:33.7 or 1:6.7. Duval also teaches that the liquid detergent composition can be used as dish washing liquid detergent composition (see page 35, lines 19-25), wherein it is understood that when used as a dishwashing liquid detergent composition, the dishware is contacted with the composition.
Duval teaches the limitations of the instant claims. Hence, Duval 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 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Duval as applied to claims 1-2, 4-5 and 7-21 above.
Regarding claims 3 and 6, Duval teaches the features as discussed above. In addition, Duval teaches that the polyhydroxyl solvent, like the 1,2-hexanediol, is used in amounts of less than about 40% by weight of the composition (see page 24, lines 13-16). Duval, however, fails to specifically disclose from about 0.5% to about 2.0% by weight of the 1,2-alkanediol as recited in claim 3; and 1,2-octanediol as recited in claim 6.
Considering that Duval teaches less than about 40% by weight of the composition of a polyhydroxyl solvent like 1,2-hexanediol, 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., 0.5-2 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).
It would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the 1,2-hexanediol with its homologues like 1,2 octanediol because characteristics normally possessed by members of homologous series are principally the same, and vary but gradually from member to member; chemists knowing properties of one member of series would in general know what to expect in adjacent member, see In re Henze, 85 USPQ 261. Also, it is well settled that homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP 2144.09 II.
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 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 18/906,213. 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 liquid hand dishwashing detergent compositions comprising similar surfactant systems, i.e., anionic surfactant and amine oxide amphoteric co-surfactant, and similar mid-chain 1,2-alkanediols, both having the same proportions differing only in the R1 alkyl groups of the amine oxides. The R1 alkyl groups, however, overlap, and overlapping ranges 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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 18/906,215. 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 liquid hand dishwashing detergent compositions comprising similar surfactant systems, i.e., anionic surfactant and amine oxide amphoteric co-surfactant, and similar mid-chain 1,2-alkanediols, both having the same proportions differing only in the R1 alkyl groups of the amine oxides. The alkyl groups of the amine oxide in copending ‘215 is generic, which is presumed to include a wide range of alkyl groups, hence, would overlap those recited.
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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