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 .
Status of Claims
A new claim set was filed on 12/30/25 with the following:
Amended claims
5, 8, 32, 34-35, 39-40, 44-45
Newly canceled claims
46-47
Newly added claims
48-51
Previously canceled claims
9-31
Previously withdrawn claims
Claims under instant examination
1-8, 32-45, 48-51
Maintained and New Claim Rejections - 35 USC § 103
Applicant' s claim amendments have necessitated the following new grounds of rejection; specifically, newly added claims 48-51 and amended claims 5, 8, 32, 34-35, 39-40 and 44-45.
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.
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.
Claims 5-8, 32-34, 36-39 and 41-44 remain rejected and claims 48-51 are newly rejected under 35 U.S.C. 103 as being unpatentable over Greboval et al. (WO 2018073616; published: 4/26/18; of record), in view of Hodge et al. (US 9,670,433; published: 6/6/17; of record).
Examiner’s note: broadest reasonable interpretation of newly amended claim 5 reciting “A sprayable composition comprising…from 0.01 to 10 wt% of one surfactant, the surfactant consisting of an alcohol ethoxylate”. The claimed composition is required to have one alcohol ethoxylate surfactant in an amount of 0.01-10 wt%; however, due to the “comprising” language after the preamble, the composition can also, contain an additional non-alcohol ethoxylate surfactant in any amount.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
With regards to instant claims 5, 32 and 38, Greboval et al. teach a disinfecting composition for killing pathogens on various surfaces comprising:
at least about 20 wt% of one or more C1-8 alcohol (e.g., methanol, ethanol, propanol, butanol, pentanol, hexanol; e.g., 20-70 wt%);
at least three surfactants comprising at least one nonionic, at least one anionic and at least one amphoteric surfactant, wherein the individual surfactants are present in an amount below about 5.0, 3.5, 2.8 or 2.0 wt%;
from 0.05 to about 5.0 wt% a pH adjuster; and
carrier (e.g., water) (See Abstract and Claims).
It is noted that all wt% ranges overlap with the claimed range; and as indicated in MPEP §2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Greboval et al. teach that generally, disinfecting and sanitizing compositions include alcohol or other antimicrobial agents which kill a wide array of microorganisms that may be present on the any number of surfaces ([0001]). Greboval et al. teach that the disinfecting composition’s pH can range from about 1.0 to about 12.0 ([00059]). Furthermore, Greboval et al. define the term “about” to mean within +/- 10% of a value ([00023]); therefore, about 1.0 to about 12.0 equates to 0.9 to 13.2 (see MPEP §2144.05(I) for overlapping ranges). Greboval et al. teach that the all the surfactants in the disinfecting composition are ethoxylated less than 8 times ([00041]). Greboval et al. teach wherein the abovementioned composition can be sprayed ([00028]). Greboval et al. teach that in exemplary embodiments, the disinfecting composition comprises a mixture of the same type of surfactants (e.g., a mixture of non-ionic surfactants) ([00035]). This embodiment contains only non-ionic surfactants and is therefore devoid of anionic surfactants and surfactants comprising a fatty acid or salt thereof.
With regards to instant claims 6-7 and 33, as mentioned above Greboval et al. teach an overlapping pH range (0.9-13.2).
With regards to instant claims 36-37 and 41-42, as mentioned above Greboval et al. teach an overlapping alcohol concentration range (at least about 20 wt%, or 20-70 wt%).
With regards to instant claims 38 and 43, as mentioned above Greboval et al. teach an overlapping pH adjusting agent concentration range (0.05-5.0 wt%). With regards to the alkaline limitation, Greboval et al. teach that the pH adjuster can be an acid or base and, in this way, can be used to adjust the pH in either direction (i.e., make the composition more acidic or more basic) ([00051]).
With regards to instant claims 39 and 41, as mentioned above Greboval et al. teach an overlapping nonionic surfactant concentration range (less than 5.0, 3.5, 2.8 or 2.0 wt%).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Greboval et al. teach that the all the surfactants (non-ionic surfactant only or mixture of surfactants) in the disinfecting composition are ethoxylated less than 8 times ([00041]), they do not specifically teach wherein the nonionic surfactant comprises or consists of an alcohol ethoxylate (e.g., a C8-C14 linear alcohol ethoxylate), as required by instant claims 5, 8, 32 and 34. However, such deficiency is cured by Hodge et al.
Hodge et al. is directed to cleaning compositions specifically for use on hard surfaces (Title and abstract). Hodge et al. teach that C9-C12 alcohol ethoxylates are suitably used as nonionic surfactants in a surface cleaner.
Greboval et al. do not specifically teach wherein the pH ranges from 13.5 to 13.9, as required by instant claims 49 and 51.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (nonionic surfactant of Greboval et al. with the C9-C12 alcohol ethoxylate nonionic surfactant taught by Hodge et al. for the purpose of providing a surface cleaner), in order to form a third composition to be used for the very same purpose (See MPEP 2144.06-I).
The pH of the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal pH in order to best achieve the desired results as such would provide advantageous biological effect. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Greboval et al. teach that the disinfecting composition comprises a pH adjuster, wherein the pH adjuster can be an acid or a base and in this way can be used to adjust the pH in either direction (i.e., make the composition more acidic or more basic). Furthermore, Greboval et al. state that “The pH of the disinfecting composition is not particularly limited”. Such statement in addition to the wide range taught (about 1.0 to about 12.0), suggests that the pH of the composition is not particularly important. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the pH is not particularly important as Greboval states that it is not particularly limited and further teach a wide range of about 1.0 to about 12.0 and therefore pH slightly above would also provide a composition suitable for its disinfectant purpose. Therefore, the ph of the composition is an optimizable variable.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim(s) 35, 40 and 45 remain rejected under 35 U.S.C. 103 as being unpatentable over Greboval et al. (WO 2018073616; published: 4/26/18; of record), in view of Hodge et al. (US 9,670,433; published: 6/6/17; of record) as applied to claims 5-8, 32-34, 36-39, 41-44, and 48-51 above, and further in view of Effendy et al. (Contact Dermatitis, 1995, 33, 217-225; of record).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Greboval et al. and Hodge et al. teach the limitations of instant claims 5-8, 32-34, 36-39, 41-44 and 48-51 (see rejection above for details).
With regards to instant claim 45, Greboval et al. teach that in exemplary embodiments, the disinfecting composition comprises a mixture of the same type of surfactants (e.g., a mixture of non-ionic surfactants) ([00035]). This embodiment contains only non-ionic surfactants and is therefore devoid of anionic surfactants.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Greboval et al. and Hodge et al. do not teach wherein the composition consists of the abovementioned one or more C1-C6 alcohols (15-35 wt%), the one or more alkaline pH adjusting agent (0.05-5 wt%), the one or more nonionic surfactants comprising one or more alcohol ethoxylate (0.05-5 wt%) and water, as required by instant claims 35, 40 and 45. Specifically, Greboval et al. teach the incorporation of cationic and anionic surfactants in addition to the claimed nonionic surfactant. However, this deficiency is cured by Effendy et al.
Effendy et al. is directed to surfactants and experimental irritant contact dermatitis (Title). Effendy et al. teach that anionic surfactants are broadly accepted as potent irritants to human and animal skin and cationic surfactants are reputedly at east equally irritating, but more cytotoxic than anionic, while the irritation potential of non-ionic surfactants is considered the lowest (Abstract).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was filed, to modify the surface disinfectant composition of Greboval et al. by eliminating the cationic and anionic surfactants to achieve the predictable result of obtaining a composition suitable for cleaning surfaces. One of ordinary skill in the art would have been motivated to do so because Effendy et al. teach that cationic and anionic surfactants are more irritating to human and animal skin. The composition of Greboval et al. would be customarily sprayed on a surface and then wiped with a cloth by hand; hence, skin irritability would be a concern to one of ordinary skill in the art.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Response to Arguments
Applicants’ arguments have been fully considered, but are not found persuasive.
Applicants argue that in contrast to independent claim 5 limitation “from 0.01 to 10 wt% of one surfactant, the surfactant consisting of an alcohol ethoxylate, Greboval requires the inclusion of three or more surfactants to achieve the requisite efficacy for the Greboval composition (Remarks: p. 6, last ¶).
This is not found persuasive. In response, and as indicated in the above rejection, the broadest reasonable interpretation of newly amended claim 5 reciting “A sprayable composition comprising…from 0.01 to 10 wt% of one surfactant, the surfactant consisting of an alcohol ethoxylate”: the claimed composition is required to have one alcohol ethoxylate surfactant in an amount of 0.01-10 wt%; however, due to the “comprising” language after the preamble, the composition can also, contain an additional non-alcohol ethoxylate surfactant in any amount. Furthermore, Greboval et al. teach that in exemplary embodiments, the disinfecting composition comprises a mixture of the same type of surfactants (e.g., a mixture of non-ionic surfactants) ([00035]). This embodiment contains only non-ionic surfactants and is therefore devoid of anionic surfactants and surfactants comprising a fatty acid or salt thereof, which are the surfactants that are specifically excluded from the open-ended composition (open-ended due to the comprising language).
Applicants argue that Greboval teach away from any modification comprising the use of a single surfactant system, in noting that :”[M]ixing low amounts (such as those discussed above) of at least 3, or at least 4, or at least 5, or at least 6 individual surfactants helps the disinfecting composition achieve a lower/better classification for the European Classification, Labeling and Packaging (CLP) regulation than using a single surfactant at a higher concentration.” (Remarks: p. 7, last ¶).
This is not found persuasive. A teaching away is a teaching that renders prior art unsatisfactory for the intended purpose or discredits the solution claimed. However, there is no such teaching in Greboval et al. The rejection is made under 103 and does not need to exemplify all embodiments, only suggest. “Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiment.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617