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 .
Specification
The first line of the specification should be amended to recite that U.S. Serial No. 17/305,363, filed July 6, 2021, has issued as U.S. Patent No. 12,152,220.
Claim Objections
Claim 13 is objected to because of the following informalities:
In instant claim 13, the term “comprising” should be inserted after the limitation “A hard surface cleaning composition” for grammatical purposes. Appropriate correction is required.
Applicant is advised that should claims 2-11 be found allowable, claims 14-23 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-25 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 1-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “l, m and n are the same or different number of moles of an oxide selected from the group of ethylene oxide (EO), propylene oxide (PO), and butylene oxide (BO)” in claims 1 and 13 and the limitation “ethylene oxide, propylene oxide, butylene oxide” in claims 3 and 15. These limitations render the claims vague and indefinite, since the PEG modified triglyceride formula in claims 1 and 13 require ethylene oxide units for the variables l, m and n. Furthermore, this limitation contains improper Markush language, and should be amended to recite “selected from the group consisting of” in claims 1 and 13. Instant claims 2-12 and 14-25 are included in this rejection for being dependent upon claims 1 and 13. Appropriate correction and/or clarification is required.
Claims 5-7 and 17-19 recite the limitation "The co-surfactant of claim" in line 1 of each claim. There is insufficient antecedent basis for this limitation in the claim. Specifically, the examiner asserts that claims 5-7 and 17-19 should be amended to recite “The composition of claim” to provide proper antecedent basis. Appropriate correction and/or clarification is required.
Claim 7 recites the limitation "branched chain alcohol ethoxylate" in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, the examiner asserts that claim 6 does not recite the limitation “chain”. Appropriate correction and/or clarification is required.
Claim 9 recites the limitation "wherein said co-surfactant" in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, the examiner asserts that claim 1 does not recite the limitation “co-surfactant”. Appropriate correction and/or clarification is required.
Claim 13 is rejected under 35 U.S.C. 112, second paragraph, for containing the limitation “between about 0 wt.%” in line 11. This limitation renders the claims vague and indefinite, since one of ordinary skill in the art would not be able to ascertain the metes and bounds of “about 0”. It is unclear what numerical values are covered by “about 0”. The examiner suggests that the limitation should be amended to recite “between 0 wt.%”. Claim 25 is included in this rejection for being dependent upon claim 13. Appropriate correction and/or clarification is required.
Claim 19 recites the limitation "branched chain alcohol ethoxylate" in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, the examiner asserts that claim 6 does not recite the limitation “chain”. Appropriate correction and/or clarification is required.
Claim 21 recites the limitation "wherein said co-surfactant" in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, the examiner asserts that claim 1 does not recite the limitation “co-surfactant”. Appropriate correction and/or clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, the examiner asserts that claim 1 requires the triglyceride to be modified with “ethylene oxide, propylene oxide, butylene oxide”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, the examiner asserts that claim 1 requires the triglyceride to be modified with “ethylene oxide, propylene oxide, butylene oxide”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-11 and 14-24 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miller et al, WO 2019/194947.
Miller et al, WO 2019/194947, discloses an aqueous cleaning formulation for cleaning floors comprising water, an essential oil, a derivative of castor oil of formula I or formula II, an ethoxylated phenol, and a cleaning surfactant (see abstract and paragraphs 2 and 6). It is further taught by Miller et al that the aqueous composition contains 10-99% by weight of water, 0.01-25% by weight of the castor oil derivative, 0.1-15% by weight of the cleaning surfactant, 0.1-20% by weight of a chelating agent (i.e., a metal protector), 0.1-10% by weight of a hydrotrope (i.e., a threshold agent), and 0.01-10% by weight of an organic solvent (see paragraphs 7-8), that suitable castor oil derivatives include PEG-20 castor oil, PEG-40 hydrogenated castor oil, and PEG-40 castor oil (see paragraph 24), that suitable surfactants include anionic surfactants (see paragraph 27), straight and branched chain alkyl ethoxylates (see paragraphs 29-30), cationic surfactants (see paragraph 31), and amphoteric surfactants (see paragraph 33), and that the composition further contains 0.1-50% by weight of a builder, such as alkali metal carbonates (see paragraph 43), per the requirements of the instant invention. Specifically note Examples 1-5 in Tables 1-5. Therefore, instant claims 1-11 and 14-24 are anticipated by Miller et al, WO 2019/194947.
In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of U.S. Patent No. 12,152,220. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,152,220 claims a similar composition for forming a stable emulsion containing up to 80% by weight of a PEG modified triglyceride, a co-surfactant, such as alcohol ethoxylates, block copolymers, alkyl polyglycosides, and adjunct ingredients, such as builders, chelating agents, viscosity modifiers, dispersants, sources of hydrogen peroxide, peracids, threshold inhibitors, softeners, carriers, hydrotropes, processing aids, solvents, pH buffers, and additional surfactants, wherein the composition is used in a process to remove soils from a surface (see claims 1-46 of U.S. Patent No. 12,152,220), as required in the instant claims. Therefore, instant claims 1-25 are an obvious formulation in view of claims 1-46 of U.S. Patent No. 12,152,220.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
September 8, 2026
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