The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Formal Matters
Claims 1-15 and 23 are cancelled. Claim 24 is new. Claims 16-22 and 24 are pending. Claims 16-19 are withdrawn. Claims 20-22 and 24 are under examination.
Priority
The instant application is a continuation-in-part of 16/736,546 filed on 1/7/2020, which is a continuation-in-part of PCT/US18/41163 filed on 7/7/2018, which claims priority from provisional application 62/530,045 filed on 7/7/2017. The instant application claims priority from US provisional applications 63/004,858 filed on 4/3/2020 and 62/861,810 filed on 6/14/2019.
Since applicant provides how the disclosure of priority document PCT/US18/41163 filed on 7/7/2018 describes the claimed ranges, the applicant benefits to the priority date of 7/7/2018.
Information Disclosure Statements
The information disclosure statement (IDS) submitted on 12/16/2025 was filed after the mailing date of the non-final rejection on 08/12/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Rejections Withdrawn
The rejection under USC 103 over Cosentino and Reinold is withdrawn per applicant’s amendments and arguments.
The rejection under double patenting over 17/326,507 (now issued as US 12440462) is withdrawn per filing of a terminal disclaimer which has been approved.
As these rejections are withdrawn, applicant’s arguments toward these rejections are now moot. However, note the new rejection below based on the newly filed IDS with fee.
New Rejection – New IDS with Fee
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 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 20, 21, 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Pedersen US 20090061017 (in applicant’s new IDS with fee) and Cosentino US 5508046 (formerly cited).
Pedersen teaches compositions that are antimicrobial, shelf-stable, and that have less corrosion as compared to conventional peroxycarboxylic acid compositions (paragraphs 39-40 of Pedersen). Pedersen teaches a shelf-stable ready to use percarboxylic acid composition with about 0.0001 to about 0.2 wt% percarboxylic acid, about 1 to about 5 wt% hydrogen peroxide and about 0.01 to about 5 wt% carboxylic acid in a composition that is free of mineral acid (or strong acid) and ratio of hydrogen peroxide to protonated carboxylic acid of about 1:1 to about 2:1 (claim 1 of Pedersen and paragraph 41). Pedersen provides for compositions with hydrogen peroxide, peroxycarboxylic acid and carboxylic acid that does not have a substantial amount of mineral acid (paragraphs 47-48). Pedersen allows for stabilizers/stabilizing agents including phosphonic acids and phosphonate salts including 1-hydroxy ethylidene-1,1-diphosphonic acid (CH3C(PO3H2)2OH) (HEDP) (aka editronic acid); ethylenediamine tetrakis methylenephosphonic acid (EDTMP); diethylenetriamine pentakis methylenephosphonic acid (DTPMP); cyclohexane-1,2-tetramethylene phosphonic acid; amino[tri(methylene phosphonic acid)]; (ethylene diamine[tetra methylene-phosphonic acid)]; 2-phosphene butane-1,2,4-tricarboxylic acid; or salts thereof (paragraphs 99-101). The stabilizing agents are noted to stabilize the peracid and hydrogen peroxide (paragraph 97). Pedersen teaches liquid, foams, gels, aerosols, gases, wax, solid or powdered forms (paragraph 134). Pedersen teaches acetic acid and peroxyacetic acid (paragraphs 57-62). Pedersen teaches compositions with water as carrier (paragraph 54). Pedersen teaches about 0.5:1 and 1:1 weight ratios of hydrogen peroxide to protonated carboxylic acid (acetic acid is a carboxylic acid of Pedersen used in its formulations) among others (paragraphs 48-49). A 0.5:1 weight ratio would be approximately a 0.89 molar ratio and a 1:1 weight ratio would be an approximately 1.77 molar ratio of hydrogen peroxide to acetic acid. Thus, Pedersen’s teachings provide for such molar ratios of these components.
Pedersen teaches an overlapping amount of hydrogen peroxide with “about 1 to about 5 wt%” where about allows for amounts above and below the values indicated. Pedersen also allows an overlapping amount of carboxylic acid with acetic acid taught.
Pedersen does not teach an overlapping concentration of peracetic acid/peroxyacetic acid.
Cosentino teaches stable microbiocides containing hydrogen peroxide, peracetic acid, and acetic acid (table 1 and table IIA sample 17 has 2.68 wt% peracetic acid). Table IIC and abstract provide for addition of a stabilizer (also see column 2). Cosentino teaches 1.5 to 6% by wt of HOOAc (table I). Cosentino teaches water in the formulation (field of invention and examples), and thus, provides a liquid. The decontamination agents of Cosentino are the hydrogen peroxide, acetic acid and peracetic acid and the composition also can have stabilizer. Cosentino also recognizes its compositions are microbiocidal and anticorrosive (abstract).
One of ordinary skill in the art at the time of filing would have routinely optimized with near values and overlapping ranges of the prior art to produce new biocidal formulations based on the teachings of Pedersen with teachings of Cosentino that provides for compositions with hydrogen peroxide, peracetic acid, and acetic acid in claimed amounts and ratios along with stabilizer(s). Pedersen allows for overlapping molar ratios (based on presented weight ratios in its teachings). As both Pedersen and Cosentino are to stable and non-corrosive microbiocidal formulations, the amounts and ratios taught in these references are capable of providing stable formulations for antimicrobial/microbiocidal use.
Conclusion
No claims are allowed.
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 12/16/2025 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached on M-F 9:00 am to 6:00 pm EST.
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, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613