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 .
Claim Rejections - 35 USC § 103
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 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 16-32 is/are rejected under 35 U.S.C. 103 as being
unpatentable over Yang et al (2005/0245411) in view of Cabanas et al (2015/0368592)
and further in view of Liu et al (2016/0020087).
Yang et al disclose a method and composition for cleaning and passivating
metallic and non-metallic surfaces in fuel cell coolant systems (0012). The system may
be in the form of a single treatment package or in the form of two packages with one
containing the cleaner composition and the other containing the passivator composition
(0013). The composition comprises complexing agents such as HPA
(hydroxyphosphono acetic acid) (0014-0015); a surfactant such as anionic and nonionic
(0016); corrosion inhibitors (0017) and pH adjusting agents such as sodium hydroxide
(0019). Yang et al teach that said complexing agent is utilized in an amount from 0.1 to
50%, surfactants at 0.003 to 10%, corrosion inhibitors at 0.001 to 10% and pH adjusting
agents in sufficient amounts to buffer and adjust from pH of 4 to 13 (0023). Yang et al
disclose that the system of contacting the fuel cell system with the composition in either
a one part or a multiple part system as described above. Furthermore, after contacting
with the cleaner, the fuel cell is rinsed with a solvent such as water (0028).
Yang et al teach that the sodium hydroxide is exemplified in amounts from 1% to over 5% (see Tables 1 and 9). With respect to the solvent ingredient of claim 28, Yang et al teach water is included in amount from 20- 99.7% (0022-0023).
Yang et al is silent with respect to the concentrated amount of 10% (cl. 25) or 35%
(cl. 26) but stipulates a diluted amount of less than 6%.
Cabanas et al teach compositions and methods of use thereof which provide
anticorrosion and anti-staining efficacy in both liquid phase and vapor phases. Methods
of using the compositions are particularly suited for cleaning equipment such as heat
exchangers, evaporators, tanks, and other industrial equipment using CIP procedures.
See para. 26. Suitable concentrate compositions containing 50-99% alkalinity source,
0.1 to 80% of corrosion inhibitor, 0.001 to 1% of a catalyst, and O to 50% additional
functional ingredients. See paras. 39-40. The concentrate compositions are diluted with
water to form a use composition. A use solution of the cleaning composition preferably
has between about 2000 ppm alkalinity to about 4% by weight alkalinity, from 100 ppm
to about 5000 ppm of a corrosion inhibitor, and about 0.5 ppm to about 25 ppm
catalyst. See paras. 41-42. The corrosion inhibitor is provided to protect against
corrosion of ferrous metal surfaces, including, for example, steel and stainless steel. See
paras. 48 and 49. Suitable sources of alkalinity include sodium hydroxide, potassium
hydroxide, etc. In an aspect, the pH of a use solution of the alkaline cleaning
composition is at least about 10, preferably at least about 12. See paras. 58-59.
Additionally, the composition may contain a surfactant such as anionic, nonionic,
zwitterionic, etc. In some embodiments, the composition may include about 0.001% to
about 25% by weight of a surfactant. See paras. 66-91.
The compositions and use solutions can be used in a variety of applications such
as CIP cleaners, dish machine cleaners, laundry cleaners, etc., and are also suitable for
cleaning surfaces such as stainless-steel surfaces and metal surfaces. See paras. 123 and
124. CIP cleaning involves passing cleaning solutions through the system without
dismantling any system components. Often CIP processes involve a first rinse, the
application the cleaning solution, a second rinse with water, followed by resumed
operations. See paras. 126-127. In one aspect, a feed line supplies the alkaline cleaning
composition to a tank in need of cleaning and a drain line removes the solution from the
tank. Water or other diluent sources may also have feed lines and tanks for dosing the
use solutions. See para. 130. In one embodiment, the alkaline cleaning composition is
diluted at a point of use with water to provide a use solution pH of at least about 13. See
claim 17. The composition is a premix formulation requiring combination with a
commodity alkalinity source to generate a use solution having the pH of at least about
12. See claim 7. In an embodiment, the oxidizing composition is added separately from
the alkaline cleaning composition. See claim 16.
It would have been obvious to the skilled artisan to equate the diluted lower
amount of the alkalinity source of 4% with a concentrated amount ranging from 50-99%
as suggested by Cabanas et al. One skilled would readily equate the concentrated
formulas with higher amounts of the alkalinity source suggested in Cabanas against the
stated diluted amounts suggested by Yang et al. optimization is within the level of
ordinary skill and permissible as prima facie obviousness. Yang et al does not sufficiently teach a three part system to anticipate the claims, however, it would have been obvious to the skilled artisan to optimize additional packages beyond two as suggested given that optimization is within the skill of the ordinary artisan and since Yang et al envisioned a multiple part system with cleaner and passivator one skilled in the art would have optimized said package for multiple compartments for purposes of forming a more durable protective film after treatment as stated within the two packages since a better system was envisioned, absent a showing to the contrary (0013).
With further respect to claims 38-40 and the specific CIP, COP and heat processing substrates as claimed, Yang et al lack a specific teaching, however, it would have been obvious to the skilled artisan seeking to suggest within a composition claim that the compositions of Yang et al would clean said substrates given the teachings of cleaning non-metallic and stainless-steel substrates Yang et al discloses. One skilled in the art would expect similar results, given that the intended use of the claims, which are held obvious in compositions, would have been obvious to substrates used for the purpose of cleaning given the teachings of Yang et al and absence a showing to the contrary.
Yang et al does not teach, with sufficient specificity to anticipate, the separation of the hydroxyphosphono carboxylic acid and alkali metal hydroxide alkalinity source.
Liu et al teaches a post CMP removal composition and method of use on microelectronic devices comprising at least one oxidizing compound such as ammonium hydroxide (0033) and complexing agents such as hydroxyphosphono carboxylic acid (0043) and optional surfactants (0038). Furthermore, Liu et al teach multi-part formulations that are mixed at or before the point of use (0054).
It would have been obvious to the skilled artisan at the time the invention was made to include within the multi-part cleansing system, separate components of hydroxide and complexing hydroxyphosphono carboxylic compound of Yang et al because Liu et al teach various concentrations of or any combinations of ingredients are invited (0054). Accordingly, in the absence of a showing to the contrary, commensurate in scope with the claimed invention, one skilled in the art would have been motivated to combine the components in their separate compartments of a multipart system at the point of use because Liu et al teach and disclose the possibilities are well known and since applicant has not shown any criticality to the contrary.
[W]hen a patent 'simply arranges old elements with each performing the same function it had 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).]
See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.)
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 16-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10793809. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in methodology of making a hard surface cleaner.
Conclusion
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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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761
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