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 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.
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 Interpretation
The term “fermented raw material includes a reducing sugar” in claim 11 is interpreted to mean that the reducing sugar meets this limitation by itself.
Claim(s) s 1-6, 8-13, 15-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (US 2020/0181542).
Regarding claims 1, 11 and 18, Wei teaches a composition which can be used as a hand soap (0121), which can comprise an anionic surfactant and a non-ionic surfactant (0125 and 0128), an amine source (0122 and 0128), a Maillard reaction inhibiting enzyme, sugar enzymes such as glucose oxidase, lactate oxidase and galactose oxidase (0061 and 0074), a primary humectant such as propylene glycol (0080) and water at a level of 60-80%. Regarding the reducing sugar, Wei teaches the use of Mannose, in a bar composition which can contain up to 30% water (0157), however not specifying use in the composition containing at least 40% water. Wei teaches that polyols such as glycerol may be used in the composition (0080) and that mannose can alternatively be used as a polyol (0157). It would be obvious to utilize mannose instead of glycerol in the hand soap composition of Wei, since Wei teaches that they are alternative glycols for use in the invention.
Regarding claims 2 and 12, Wei teaches that the composition can comprise 1 to 40% of an anionic surfactant (0125).
Regarding claims 3 and 13, Wei teaches the use of a nonionic surfactant in an amount of 1-20% (0128), overlapping and rendering the claimed 0.1 to 15% (MPEP 2144.05).
Regarding claims 4, 5 and 15, Wei teaches that the composition can contains amines (0122) and in particular alkoxylated amines at a level of 0.5 to 30%, overlapping the currently claimed amount (0128).
Regarding claims 6 and 8, Wei teaches that the composition comprises a cellulose (0004 and 0146).
Regarding claims 9 and 16, Wei teaches various sugar oxidases which are carbohydrate oxidases (0061 and 0074)
Regarding claims 10 and 17, Wei does not specify an amount of enzyme at 0.001 to 3%, but Wei teaches that enzymes are used to help in cleaning (0002). It would be obvious to one of ordinary skill in the art to vary the amount of enzyme in the composition of Wei in order to effectively clean substrates.
Regarding claim 20, the claim is not limited to the sustainable polymer, but in any case Wei teaches the use of a cellulose (0004 and 0146), which in the composition would be mixed with the reducing sugar.
Claim(s) 1, 4, 9-11, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/073901 in view of Bergeron (US 7,939,601).
Regarding claims 1, 4, WO ‘901 teaches a composition which comprises a carbohydrate oxidase, which is a Maillard inhibiting enzyme, a surfactant system and water, wherein the water is at 99% in as the composition is at 1%. (page 2, lines 1-11). The composition can comprise reducing sugars such as glucose and mannose (page 5, lines 14-24). The composition can contain an amine, such as alkoxylated amines as a surfactant (page 6, lines 19-21). With respect to claim 11, since the components are mixed together, the amine would comprise the reducing sugar. Applicants intended use as a hand soap does not distinguish. WO ‘901 differs from the present invention in not teaching the use of a humectant. However, Bergeron, in the same field of detergents which contain enzymes and surfactants, teaches that humectants are commonly used as an additive to detergents. It would be obvious to one of ordinary skill in the art to utilize humectants in the invention of WO ‘901, given the teaching of Bergeron that such as commonly used in detergents, and furthermore for the known benefit of humectants assisting in hydration.
Regarding claims 9 and 16, Bergeron teaches that the composition contains carbohydrate oxidase (page 2).
Regarding, claims 10 and 17, WO ‘901 teaches that the carbohydrate oxidase can be present at a level of 405 before being diluted into a 1% solution. Thus the oxidase would be at a level of 0.004 weight percent, thus meeting the claimed percentage.
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 claims 1-20 of copending Application No. 18/990,218 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because although 18/990218 teaches the composition as a hand soap, and fails to specifically teach a compound as a humectant, However, claim 7 of 18/990,218 teaches the use of sorbitol which is a humectant, and it would be obvious to one of ordinary skill in the art that a body wash can be used as a hand soap, thus rendering the current claims obvious to one of ordinary skill in the art
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 15, 16 and 18-20 of copending Application No. 18/926,821 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of 18/926,821 teaches the same components of a surfactant, a fermented raw material including a reducing sugar, a Maillard inhibiting enzyme and water at a level of 20 to 90% overlapping with the 40% of the current claim 11. Application 18/926,281 differs in nor specifying a compound as a humectant. However claim 19 therein teaches the use of sorbitol which is a humectant, thus rendering the use of a humectant obvious to one of ordinary skill in the art.
Claims 15 and 16 teach the same Maillard inhibiting enzyme in the same amounts as claims 16 and 17 of the current application. Claims 18-20 teach the same components as claims 18-20 of the current application.
The intended use as a hand soap does not distinguish the composition.
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 PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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