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 § 112
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 1-6 and 8-14 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, line 8 teaches 1-30% of benefit agents, while line 9 teaches 1 to 20% of benefit agents. The scope of the amount of benefit agents being claimed is not clear.
In claim 1, line 11, it indicates that the water-soluble carrier is selected from carbohydrate, an inorganic alkali metal salt and mixtures, while lines 3-5 teach a broader number of carriers, the scope of the limits of the carrier is thus not clear.
In claim 1, line 16, it is not clear if “an anionic surfactant” is the same as “an anionic surfactant” in line 6. If they are the same, no more than 12% includes numbers down to zero, which would appear to contradict the 5-12% previously claimed.
Dependent claims fall herewith.
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.
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) 1-6, 8-11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sunder (US 2011/0097369).
Regarding claims 1, 6 and 9, Sunder teaches a laundry detergent in particulate form (abstract, 0002) which comprises a carrier which is water soluble such as alkali metal salts or carbohydrates comprising sugars within the scope of the present invention (see 0011 and 0012). The carrier can be present in an amount of 50-95 weight % of the particles (0016), overlapping with the 20-95% of the current claim. It has been held that such overlapping ranges render the claim range obvious to one of ordinary skill in the art (MPEP 2144.05 I). The particles of Sunder can contain a perfume, which is a benefit agent, at a level of 0.1 to 30%, the same range as being claimed (0065). Sunder does not teach that alkyl benzene sulfonates must be present.
Sunder teaches that anionic surfactants, such as alkyl sulfates and soap may be used in the particles (0102), but does not specifically teach the amount of surfactant being 5 to 12%. Sunder teaches that the anionic surfactant may be use at a preferable level of 5 to 22%, thus overlapping and rendering obvious the claimed 5 to 12%. Given the teaching of Sunder, it would be obvious to one of ordinary skill in the art to utilize the alkyl sulfates or soaps at a level of 5to 12% with a reasonable expectation of forming an effective laundry detergent.
Regarding claim 2, Sunder teaches that the perfume can be mixed in with the water-soluble carrier (0095).
Regarding claim 3, Sunder teaches that the water soluble carrier can be selected from the listed sugars (0012).
Regarding claim 4, Sunder teaches anionic sulfates within the claims scope (102).
Regarding claim 5, Sunder teaches that the alkyl sulfates are preferably in the form of their potassium or Sodium salts (0102)
Regarding claim 8, Sunder teaches that the benefit agent can be a combination of free and microencapsulated perfumes (0042).
Regarding claim 10, Sunder teaches that clays and cellulose may be used in the laundry particles 0070, 0072 and 0077).
Regarding claim 11, Sunder teaches a particle dimension of 0.2 to 7 mm (0084).
Regarding claim 13, Sunder teaches the use in a washing machine (0008).
Regarding claim 14, the perfume taught by Sunder are fragrances.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sunder (US 2011/0097369) as applied to claim 1 in view of Osler (US 2015/0225680).
Regarding claim 12, Sunder does not teach the Extruding and cutting of the claim. However, Osler teaches the extruding and cutting to form detergent particles (60, 61, 67 and 68). It would be obvious to one of ordinary skill in the art to utilize the extruding and cutting of Osler in the invention of Sunder as a known means of forming detergent particles with a reasonable expectation of success, Osler also teaches coating with sodium carbonate which is an anticaking agent (0061) One of ordinary skill in the art would understand that the particles are dried before packaging and use.
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, 3, 4, 6 and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No.19/109,402. Claim 1 of 19/109,402 teaches all the limitations of claim 1 of the present invention except for the specified anionic surfactant, however this is taught by claim 8 of 19/109,402 thus rendering claim 1 obvious. Regarding the other claims 3, 4, 6, 8 and 10-14, the claims of 19/019,402 teach all the limitations regarding, the carrier, the sugars, the perfume, the washing machine and the extruding and cutting method.
With regard to claim 9, the claims of 19/109,402 do not specify the perfume at a level of 1 to 15%, however, one of ordinary skill in the art would vary to amount of perfume in order to achieve a desired smell.
This is a provisional nonstatutory double patenting rejection.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
Prosecution Insights