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 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.
DETAILED NON-FINAL ACTION
In view of the Appeal Brief filed on January 22, 2026, PROSECUTION IS HEREBY REOPENED. New Grounds of Rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
Status of Claims
Cancelled
Currently Amended
Previously Presented/Original
Pending and Examined
5, 8, 9, 12, 15-20 and 23
1-3, 10 and 14
4, 6, 7, 11, 13, 21 and 22
1-4, 6, 7, 10, 11, 13, 14, 21 and 22
The pending claims are directed to a method.
Status of Previous Objections / Rejections
Examiner withdraws the previous Office action’s (OA) (i.e, 4/23/2025) 35 USC §103 rejections in view of Applicant’s remarks and reconsideration of the pertinent rejections. After careful reconsideration of the claims, Examiner presents new grounds of rejections, including new prior art. Additionally, Examiner introduces new 35 USC § 112(b) (or second paragraph) and obviousness-type Double Patenting rejections.
Response to Amendment
After an internal appeal conference held on March 31, 2026 and Examiner’s further review, the claims appeared to remain susceptible to rejection, although with alternate prior art and obviousness rationales. As such, Examiner called Jonathan Kennedy (Applicant representative (AR)) to discuss whether the parties could agree on allowable subject matter that would preclude another rejection, particularly in view of the extensive prosecution history of this case. Examiner mentioned that he found new prior art and discussed the essence of what it disclosed. However, the parties could not agree on any allowable subject matter. See related Interview Summary.
Applicant’s latest claim amendments dated April 3, 2025, revised the independent claims to provide a specific ratio range (i.e., 5:1 to 7:1) for the amount of short chain peracid (peracetic acid) to medium chain peracid (peroctanoic acid). In this OA, Examiner employs Oakes instead of Bolduc and Verkaar to address this limitation. Examiner maintains the Rovison and Giambrone references to address the other independent claim limitations. Therefore, Examiner applies new grounds of rejections in this OA, including a combination of prior art of record and a new reference.
Claim Interpretation
Claim 1 recites "a method for reducing and/or eliminating microbial populations in a water system..." and the claim body recites "reducing and/or eliminating both a planktonic and a sessile microbial population..." As such, Examiner interprets the preamble as referring to both a planktonic and a sessile microbial population. Additionally, Examiner interprets "reducing and/or eliminating both a planktonic and a sessile microbial population..." to include but not be limited by what is supported in the disclosure.
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 1-4, 6, 7, 10, 11, 13, 14, 21 and 22 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 pre-AIA the applicant regards as the invention.
The phrase “a water system” is repeated in claims 1 and 10, leaving doubt regarding whether the second reference to ‘a water system’ is the same or different to the first reference to “a water system.” Alternately, the second reference of the phrase lacks clear antecedent basis.
Claim 7 recites the limitation "the microorganism." There is insufficient antecedent basis for this limitation in the claim because claim 1 refers to ‘microbial population(s)’ rather than microorganisms.
Claims 2-4, 6, 7, 11, 13, 14, 21 and 22 depend on claims 1 and 10.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1-4, 6, 7, 10, 11, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Rovison Jr. et al. (US20150218437; Rovison) in view of Giambrone (US20020086903) (each of record) and Oakes et al. (US5,314,687; Oakes).
Regarding claims 1-4, 6, 7, 10, 11, 13 and 14, Rovison discloses a method for reducing and/or eliminating microbial populations in a water system (Abstract, [0023], [0037], [0043], [0053], where the description teaches the use of peracetic acid and other peracid biocides that “provide extremely effective control of microorganisms present in aqueous well treatment fluids. . . if not completely killing the microorganisms” ([0023], [0053]). . . “A preferred method of addition of the peracid is either to the water source used to prepare the aqueous well treatment fluid composition or to the water used” ([0037]), which implies that one can use peracids for reducing and/or eliminating microbial populations in a water system) comprising:
applying a peracid composition to a water system ([0017], [0023], [0037], [0053], [0069], where the description discusses potential application of a peracid to water sources, which is interpreted as a water system),
wherein the peracid composition is at a concentration in the water system of between about 3 ppm and about 9 ppm ([0053], where a closely encompassing potential concentration ranges of 1-10 ppm is noted as an example ([0053]: “Very dilute concentrations, e.g., 1 ppm to about 10 ppm, of the peracids of this invention provide effective anti-microbial activity in the aqueous well treatment fluids by providing, at a minimum, biostatic activity if not completely killing the microorganisms.”); within this exemplary range is the claimed “about 3 ppm and about 9 ppm” which is a concentration that one of ordinary skill in the art can choose for achieving effective antimicrobial activity),
wherein the peracid composition comprises a short chain peracid and a medium chain peracid ([0050]; examples are peracetic acid and peroctanoic acid, as noted below),
wherein the short chain peracid comprises peracetic acid ([0050]), and
reducing and/or eliminating both a planktonic and a sessile microbial population ([0034], [0045], [0046], [0051], [0056]-[0064], where “[t]he peracetic acid and other peracid biocides of this invention are noteworthy for their broad spectrum activity against many types of microorganisms” ([0051]), where the composition is useful in aqueous well fluid contaminated with microorganisms (i.e., planktonic microorganisms ([0034]), and where the composition is also useful to control sulfate-reducing bacteria, which are normally sessile bacteria (“Sulfate-reducing bacteria are normally sessile bacteria, i.e., they attach themselves to solid surfaces, as opposed to being free-floating in the aqueous fluid.” [0064]); additionally, the gram positive and gram negative bacteria mentioned in [0057] and [0058] can be both planktonic and sessile; See Conclusion),
wherein the peracid composition remains in the water system instead of being drained therefrom ([0051], where persistence in the water is mentioned; “The peracetic acid and other peracid biocides of this invention are noteworthy . . . their persistence in the aqueous systems being treated), and the water system has a pH of between about 7 and about 9 after applying the peracid composition ([0043], [0044], where a disclosed potential pH of 8.2, for example, anticipates the recited range; the noted pH of about 7 will also satisfy the range).
Also, the background section of Rovison, which refers to prior art, describes use of a synergistic antimicrobial peracid combination and its potential use in cooling tower operations ([0008]).
Therefore, Rovison discloses the claimed invention, except
wherein the peracid composition is at a concentration in the water system of between about 3 ppm and about 9 ppm;
wherein the medium chain peracid comprises peroctanoic acid;
wherein the peracid composition is an equilibrium peracid composition;
wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1; and
the water system is one or more of the following water systems: power plant cooling
towers; power plant cooling basins; ballast water tanks; and ship reservoirs.
Regarding item i) or the peracid concentration in the water system, the above-noted prior art exemplary range of 1 ppm to about 10 ppm completely encompasses the claimed range of about 3 ppm and about 9 ppm (Rovison, [0053]). Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists since the prior art overlaps the claimed range with sufficient specificity. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Additionally, Rovison experiments with different concentrations of peracetic acid (“A range of peracetic acid and glutaraldehyde concentrations were evaluated for biocidal efficacy: 5, 10, 30, 150 and 300 ppm peracetic acid and 25 and 500 ppm glutaraldehyde”([0092])). The 5 ppm concentration for peracetic acid falls within the claimed peracid range.
Therefore, when the claimed invention was effectively filed, it would have also been obvious to one of ordinary skill in the art to routinely experiment with peracids concentrations with in the claimed about 3 ppm – about 9 ppm range, as suggested by Rovison.
Regarding item ii), wherein the medium chain peracid comprises peroctanoic acid, Rovison discloses peroctanoic acid as an option and indeed the preferred option for combining with peracetic acid ([0050]). Therefore, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to employ peroctanoic acid as the medium chain peracid since that acid was shown to be an effective biocide in combination with peracetic acid.
Regarding item iii) wherein the peracid composition is an equilibrium peracid composition, Rovison discusses the known use of equilibrium peracid compositions as biocides (Rovison, [0025], [0026]). Rovison also states that “aqueous peracetic acid seeks a dynamic equilibrium with hydrogen peroxide and acetic acid, according to a given reaction ([Rovison, [0025]).
Giambrone discloses a synergistic biocidal oxidant comprising a lower organic peracid, preferably peracetic acid and chlorine dioxide, that is useful as a sanitizer and disinfectant (Giambrone, Abstract). Also, Giambrone teaches an embodiment where the invention is a kit comprising two parts (Giambrone, [0033]). The first part comprises a peracid solution, typically an aqueous solution of peracetic acid that is at or near equilibrium, typically comprising about 5% to about 35% by weight of peracid (on a 100% active basis)(Id.). Mixtures of peracids, for example a mixture of peracetic acid and peroctanoic acid, may be used (Id.). Like Rovison, Giambrone states “[a] preferred peracid for use with peracetic acid is peroctanoic acid.” ([0017]). It thus appears that Giambrone employs equilibrium peracid compositions and uses a catalyst to achieve equilibrium more quickly, or it would have been obvious to do so at the time of the effective filing of the claimed invention in view of Giambrone’s disclosure (Giambrone, [0027]-[0029], [0031]-[0033]).
Regarding item v) and the specific type of water systems in which the biocide is useful, it is known that one can use biocides, including peracids, in water sources (Rovison, [0037], [0069]). Also, Rovison’s prior art or background section mentions biocide use in industrial operations, such as power plant cooling towers (Rovison, [0008]).
Further, Giambrone relates to a synergistic biocidal oxidant. Giambrone notes that dilute, aqueous solutions of lower organic peracids, especially of peracetic acid, are effective against a wide spectrum of microorganisms (Giambrone, [0003]). These peracids leave only the corresponding lower organic acids as residues, so they are particularly suited for applications in which a non-environmentally-polluting disinfectant is required, and such an environment includes power plant cooling towers (Giambrone, [0003], [0038]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the recited biocide mixture in any desired environment, including one or more of the claimed water systems, because Giambrone states that such compositions are useful as sanitizers in these and similar environments (Giambrone, [0038]).
With respect to item iv), or the claimed 5:1 to 7:1 ratio of the short chain peracid (peracetic acid) to the medium chain peracid (peroctanoic acid), one of ordinary skill would recognize that this is a matter for routine experimentation, with the optimum ratio dependent on the intended use and the desired outcome.
Oakes, for example, discloses a peroxyacid antimicrobial concentrate and use composition comprising a C1 to C4 peroxycarboxylic acid, and a C6 to C18 peroxyacid, and notes that the combination of these acids produces a synergistic effect, and provides a much more potent biocide than one can obtain by using these components separately (Abstract). A C1 to C4 peroxycarboxylic acid is short chain peracid that may include peracetic acid (CH3CO3H), and a C6 to C18 peroxyacid is a medium chain peracid that can include peroctanoic acid (C8H16O3). An effective antimicrobial use solution is formed at low concentrations when the concentrate composition is diluted with water to a pH in the range of about 2 to 8 (Oakes, Abstract; col. 1, ln. 67 – col. 2, ln. 13). Sanitizing of substantially fixed, "in-place" processing lines in dairies, breweries, and other food processing operations is one utility of the composition (Abstract; col. 2, lines 44-53). The concentration of the blend can also be relatively low (Oakes, col. 3, lines 5-15).
Oakes also teaches a 5-log reduction with use of the peracid (Oakes, col. 2, line 62 – col. 3, ln. 4). In Oakes, the biocide is employed principally on surfaces, implying the presence and destruction of sessile bacteria, which is often more resistant to biocides than planktonic bacteria (Oakes, col. 1, lines 9-15; col. 2, lines 47-53; col. 7, lines 26-40). Also, Oakes notes that the ratio of short chain peracid to medium chain peracids is 15:1 to 3:1 (col. 4, lines 16-28; claims 7, 21), which ratio fully encompasses the claimed 5:1 to 7:1 ratio with sufficient specificity to render the claimed ratio prima facie obvious.
Examiner also notes that Staphylococcus aureus (S. aureus) and Escherichia coli (E. coli), mentioned in Oakes (col. 10, starting at line 46 – col. 11, through Table IV), and indeed most bacteria are capable of being both planktonic and sessile (see Conclusion). The terms planktonic and sessile describe microbial or bacterial lifestyles rather than distinct bacterial species (Id.). S. aureus and E. coli, in particular, are highly adaptable bacteria that alternate between these two modes of growth, depending on environmental conditions, nutrient availability and other factors related to the particular environment (Id.). Moreover, Oakes mentions effective use of the biocide on surfaces (Oakes, col. 1, lines 9-15; col. 2, lines 44-53; col. 7, lines 34-48), which is a typical habitat for the sessile mode.
Moreover, since several references (e.g., Rovison ([0050]), Giambrone ([0017]) and Oakes (col. 2, ln. 57 – col. 3, ln. 15) mention a preference for combining peracetic acid with peroctanoic or short chain with medium chain peracids, for improved antimicrobial efficacy with potential synergistic effects, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to routinely experiment with various composition ratios for the biocide mixture, or each of these noted components, to determine an optimal mixture percentage range based on the operator’s intended use and a desired outcome, including mixing the components in Oakes suggested ratio range. Examiner further notes that Oakes suggestion encompasses the claimed range, or the limitation wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1, with sufficient specificity, and thereby renders that claim limitation prima facie obvious.
Additional Disclosures Included: Claim 10: Claim 10 is an independent method claim that includes many of the same or similar major elements as those recited in claim 1. As such, in the interest of convenience and brevity, Examiner applies portions of the claim 1 analysis and rationale herein, without repeating all text and/or claim mapping in their entirety.
Therefore, regarding claim 10, Rovison, Giambrone and Oakes together discloses or suggests a method of removing biofilm or preventing buildup of a biofilm, said biofilm being formed by at least one sessile microorganism in a water system (Rovison, Abstract, [0064], where sessile bacteria implies biofilm) comprising:
contacting a water system with an equilibrium peracid composition comprising a short chain peracid and a medium chain peracid (claim 1 analysis);
wherein the short chain peracid is peracetic acid (claim 1 analysis),
wherein the medium chain peracid is peroctanoic acid (claim 1 analysis),
wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1 (claim 1 analysis); and
wherein the concentration of peracid composition in the water system is between about 3 ppm and about 9 ppm (claim 1 analysis),
wherein the water system is one or more of the following water systems: power plant cooling towers, power plant cooling basins; ballast water tanks; and ship reservoirs (claim 1 analysis),
wherein the peracid composition remains in the water system instead of being drained therefrom (claim 1 analysis), and
wherein the water system has a pH of between about 7 and about 9 after contacting with the peracid composition (claim 1 analysis);
Claims 2 and 14: The short chain peracid and the medium chain peracid are in a ratio of 6:1 (claim 1 and 10 analyses, where during experimentation, one can readily adjust the amount of each component to meet this limitation, such as by increasing the amount of peracetic acid or reducing the amount of peroctanoic acid as necessary; this specific ratio is also fully encompassed by the Oakes range);
Claims 3 and 13: The composition further comprises a stabilizer (Rovison, [0038]);
Claim 4: The peracid composition is in the form of a water solution (Rovison, [0020], [0026], [0037], [0096]);
Claim 6: The peracid composition and/or reduction of microbial population restores or maintains proper water system processes (this is an implicit result of prior steps rather than a manipulative step per se; alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that use of a suitable biocide will restore or maintain proper water system processes by reducing excessive harmful microbial populations); and
Claims 7 and 11: The microorganism is a bacterium (Rovison, [0063]-[0065], [0092], [0096]).
Claim 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Rovison Jr. et al. (US20150218437) in view of Giambrone (US20020086903) and Oakes et al. (US5,314,687), as applied to claims 1 and 10 above, further in view of Li et al. (US20140097144; Li) (of record).
Regarding claims 21 and 22, Rovison, Giambrone and Oakes combined discloses or suggests the method of claims 1 and 10, except wherein more than one hundred gallons of peracid composition is provided to the water system.
Li discloses stable percarboxylic acid compositions comprising, inter alia, at least two stabilizing agents, and various uses for water treatments, including water treatments in connection with oil- and gas-field operations (Li, Abstract). Li teaches that the concentrate composition can be diluted with a major proportion of water to form an antimicrobial sanitizing use solution having a pH in the range of about 2 to 8, with a C2-C4 peroxycarboxylic acid concentration of at least about 4 ppm, preferably about 10 to 75 ppm and a C5-C12, a C6-C12, or a C8-C12 peroxyacid concentration of at least about 1 ppm, preferably about 1 to 25 ppm ([0430]). However, Li suggests that the amount of peracid composition employed is a result effective variable and a suitable amount ensures a desired antimicrobial efficiency in a given system (Li, [0261]).
Therefore, one of ordinary skill at the time of the effective filing of the claimed invention would have found it obvious to optimize the amount and concentration of the treatment composition added to the water system to enable a desired antimicrobial effect.
Additional Disclosure Included: Claims 22: In the method, more than one hundred gallons of peracid composition is provided to the water system (claim 21 analysis).
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 1-4, 6, 7, 10, 11, 13, 14, 21 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 and 6-20 of copending Application No. 19/249,727 (‘727-application). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite the same or very similar limitations relating to reducing microbial populations in a water system. For example, in one or more of its independent claims, the 727-application recites only slightly different peracid composition concentrations (i.e., between about 3 and 9 ppm vs. less than about 15 ppm etc.), same pH when recited, and the number of respective carbons for the short and medium chain peracids rather than the specific peracid name, and may also note the expected reduction of the microbial population. Notably, the 727-application mentions a 4-log reduction in some independent claims. However, one can interpret the expected log reduction as implicit to the use of the specified composition. As such, and given that the general conditions for the use of the noted biocide and its effect on microbial population are already disclosed, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing of the claimed invention to routinely experiment with similar yet quite similar alternate composition concentrations, pHs and such, in an effort at optimizing the microbial reducing effect of the peracid compositions, and thus the claims of this application would have been obvious in view of the claims of the 727-application, and vice versa.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 01-22-2026 have been fully considered. Since Examiner applies a new secondary prior art reference (Oakes), Examiner views some of Applicant’s arguments as moot. In the current patentability analysis, Oakes alone plus an obviousness rationale, should suffice to address the specific ratio range for the amount of short chain peracid (peracetic acid) to medium chain peracid (peroctanoic acid).
Appellants arguments begin at item C on page 15 of Appellant’s brief. Therein Appellant states that Rovison is specifically and explicitly directed to peracetic activity against microorganisms in aqueous solutions (planktonic microorganisms), that all Examples in Rovison show biocidal activity efficacy in aqueous solutions (Rovison, Examples 1, 2), and that Examiner’s assertion that Rovison teaches reducing and/or eliminating both a planktonic and a sessile microbial population, and the Examiner's assertion that Rovison teaches a method of removing biofilm or preventing buildup of a biofilm, said biofilm being formed by at least one sessile microorganism in a water system, is a conclusory statement unsupported by the cited references. Brief, pp. 16-17.
Appellant thus admits that Rovison is at least directed to the reduction of planktonic microbial populations. Brief, p. 16. Further, in the patentability analysis above, Examiner shows that Rovison does specifically mention use of its biocides for controlling sessile microbial populations (Rovison, [0064]). Examiner observes that only claim 10 refers to biofilm, but of course biofilm is the protective, complex community that sessile microbes build. Examiner also introduces the Oakes reference which discusses the use of the same peracid concentration on surfaces, which strongly suggests the presence of sessile microorganisms. Of course, one should recognize that planktonic and sessile microorganisms are not necessarily different microorganisms but they are frequently merely different modes or states of existence of the same microorganisms, and indeed most microorganisms exist in both states (see Conclusion).
In item D, Appellant further argues that the combination of Bolduc and Verkaar do not teach or suggest the claimed ratio of short chain to medium chain peracids for reducing and/or eliminating both a planktonic and a sessile microbial population or for removing biofilm or preventing buildup of a biofilm, said biofilm being formed by at least one sessile microorganism in an industrial water system, and that the use of these references is impermissible hindsight bias. Brief, pp. 18-20.
As noted in the above patentability analysis, Examiner now applies the analogous Oakes reference for the recited ratio of short chain and medium chain peracid of 5:1 to 7:1. Examiner does not employ the Bolduc and Verkaar references in this OA. Therefore, with respect to Appellant’s argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, there is no hindsight because the recited ratio is suggested by Oakes.
With respect to item E and the argued synergy as presented in Appellant’s examples for the claimed ratio of short chain and medium chain peracids of 5:1 to 7:1, as noted above, Oakes already discloses or suggests the recited ratio. Since the claimed invention and the combined prior art compositions are similar or the same, one would expect similar synergies in Oakes and the combined references. Also, each of the employed references discuss expected synergies with the use of peracid combinations (Rovison, [0008]{which refers to prior art}, Giambrone, [0002] and Oakes, col. 2, ln 57 – col. 3, ln. 15). Indeed, Oakes specifically mentions the synergistic combination of short and medium chain peracids (Oakes, col. 3, lines 5-15 and col. 9, lines 11-37, including Table II).
With further respect to Appellant’s item E argument, Examiner notes that the argued feature of “synergy” due to the specifically recited ratio is not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). However, the Oakes reference in particular does discuss and appreciate the concept of synergy with the recited ratio of short to medium chain peracids.
Therefore, in view of the above responses and the patentability analysis, Examiner believes all claim limitations as well as each of Applicant’s relevant arguments are fully and properly addressed either in this section or in the modified patentability analysis above.
Conclusion
In view of Appellant’s Appeal Brief, Examiner has issued this non-final action with new grounds of rejection. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For this OA, Examiner views these references as evidentiary in nature.
Mirghani et al. (Biofilms: Formation, drug resistance and alternatives to conventional approaches, Microbiology, (8)3: 239-2777, 07-04-2022; Mirghani) discusses biofilm formation where the planktonic phenotype of a microorganism, which appears during initial colonization on a new surface, is considered as the floating or the drifting type of microorganism that can be moved to new habitats at various depths (p. 240, section 2). It can adhere to the surface, populate and become a sessile biofilm, depending on the environmental factors (Id.). Mirghani notes that the biological and environmental factors in biofilms for microorganisms are substantially different from those in a planktonic environment (p. 240).
Guillin et al. (Comparative metabolic study of planktonic and sessile cells in Salmonella Enteritidis ATCC 13076: Elucidating metabolic pathways driving biofilm formation, PLoS ONE, 1-24-2025, 14 pp) states that most bacteria alternate between two modes of microbial growth: a planktonic state, where cells are free-swimming (planktonic), or a sessile state, where bacteria live attached to inert or organic surfaces, surrounded by a self-produced matrix known as a biofilm (pp. 1 and 2 of 14). The mechanism of biofilm formation enables colonization of a wide range of environments and surfaces and confers to microorganisms an increased resistance to the immune system and conventional drugs, becoming one of the most relevant challenges of current antimicrobial therapy (p. 2).
Todoric et al. (Comparison of the Efficiency of Selected Disinfectants against Planktonic and Biofilm Populations of Escherichia coli and Staphylococcus aureus, Microorganisms, 6-15-2023, 15 pp) compares the efficacy of selected food disinfectants, including peracids, on planktonic populations of Staphylococcus aureus and Escherichia coli and on the same microorganisms (MOs) incorporated in a biofilm (Abstract). Both E. coli and S. aureus showed strong biofilm production at 25 °C with E. coli showing significantly higher adherence capacity (Id.).
Spoering et al. (Biofilms and Planktonic Cells of Pseudomonas aeruginosa Have Similar Resistance to Killing by Antimicrobials, J. of Bacteriology, (183) 23: 6746-6751, 12-2001) notes that it is assumed that biofilms (sessile microbes) are significantly more tolerant than stationary-phase planktonic cells but this is not always true (Abstract).
Examiner recommends that Applicant carefully review each identified reference and all rejections before responding to this office action to properly advance the case in light of the pertinent rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571)270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (EFS-Web)). Otherwise, a handwritten signature is required. In addition to EFS-web, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via 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) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach supervisor Bobby Ramdhanie at 571-270-3240. The central 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.
/HAYDEN BREWSTER/Examiner, 1779
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