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 .
This action is responsive to Applicant’s amendment/remarks filed 09/02/2025.
Claims 1, 2, 10, and 13-28 are currently pending, of which claims 15-28 are withdrawn.
Response to Amendment
The rejection of claim 14 under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph, is withdrawn in view of the above amendment.
The rejection of claims 1, 2, 10, and 14 under 35 U.S.C. 103 as being unpatentable over GB 407691 A is withdrawn in view of the above amendment incorporating the limitations of claim 9 into claim 1.
The rejection of claims 1, 2, 10, and 14 under 35 U.S.C. 102(a)(1,2) as being anticipated by Grundel et al. (US 3,454,416 A) as previously set forth on pages 6 to 8 of the Non-Final Office action mailed 04/30/2025 is maintained.
The rejection of claims 1, 2, 10, and 14 under 35 U.S.C. 102(a)(1,2) as being anticipated by Kshirsagar et al. (“Synthesis and antimicrobial screening for rhodanine complexes of iron, copper and zinc”, Asian Journal of Chemistry, Vol. 20, No. 6, 2008, 4955-4956) and the rejection of claim 13 under 35 U.S.C. 103 over Kshirsagar et al. and further in view of Murov (“Properties of Organic Solvents” webpage, http://murov.info/orgsolvents.htm, 2016) as previously set forth on pages 8 to 10 of the Non-Final Office action mailed 04/30/2025 are maintained.
Note that the instant claims were searched and examined only to the extent they read on the elected invention and species of record. Also note the claim interpretation of record as set forth in the previous Office action.
Response to Arguments
Applicant's arguments filed 09/02/2025 have been fully considered but they are not persuasive.
Regarding the rejection over Grundel et al. (US 3,454,416 A) Applicant argues Grundel et al.’s complexing agent is a salt of an organic base or an organic base that forms complex ions with copper rather than rhodanine as claimed and Grundel et al.’s rhodanine component is a stabilizing agent not a ligand/complexing agent as claimed.
In response, this argument is not persuasive because Applicant’s arguments to Grundel et al.’s disclosure are merely a difference in terminology, and the cited teachings of Grundel et al., rather than its terminology, meets the claimed limitations. As explained in the rejection of record, while Grundel et al. fail to expressly indicate there is a “copper rhodanine complex” present in their compositions simultaneously comprising copper and rhodanine in solution, the presence of a copper rhodanine complex is nevertheless inherent in Grundel et al.’s teachings/compositions. Grundel et al. teach that, without the stabilizing agent (e.g., rhodanine), the compositions are unstable and decompose, precipitating copper spontaneously as metallic copper or a copper oxide (col. 1 lines 44-47), but provision of rhodanine stabilizes the copper solution and is capable of preventing decomposition of such solution over practically unlimited periods (col. 2 lines 36-40). This describes there is a copper rhodanine complex, as claimed. While not expressly recognized in the reference as a copper rhodanine complex, Grundel et al.’s rhodanine stabilizing agent clearly has some significant chemical/coordinating interaction with the copper ions of their solution (or else the composition would decompose/precipitate copper, Id.) such that the formation/presence of a copper rhodanine complex is inherently present or intrinsic in the reference. In any event, the structure disclosed in the reference is substantially identical to that of the claims such as the claimed function/formation of a copper rhodanine complex as a transition metal complex is presumed inherent from the reference.
Applicant’s request for documentary support for the Office allegedly taking official notice is noted. However, the Office is not required to supply additional documentary support as alleged or requested because official notice was not taken in the Office action. The rejection of record relies on an inherency rationale, not an official notice rationale relying on common knowledge in the art or well-known prior art as alleged. However, the cited general interaction in Grundel et al. that the stabilizing agent prevents a metal or compound thereof from precipitation indeed indicates formation of a complex, as claimed. As support thereof, please see:
Gunderson et al. (US 3,331,773 A) teach and evidence complexes or coordination compounds are formed when a metal ion combines with an electron donor and that this phenomena can be used to prevent precipitation of the metal ion (col. 1 lines 19-39).
Eijsbouts (US 6,989,348 B2) teach and evidence a component added to a metal component that prevents precipitation of the metal is a complexing agent and a complex is obtained when the complexing agent and the metal component interact such that the precipitation of the metal is prevented (col. 7 lines 13-17).
Bennetzen et al. (US 2016/0264846 A1) teach and evidence combining a component with a reagent preventing an insoluble precipitate from forming from the component is indicative of the formation of a complex (para. 0061).
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Applicant has the burden of showing the rhodanine stabilized copper solution where the decomposition and precipitation of the copper therein is prevented by provision of the rhodanine is not a complex of rhodanine and copper in any aspect.
Applicant further argues Grundel et al. fail to teach or suggest an ethoxylated amine as allegedly claimed.
In response, this argument is not persuasive because Applicant is arguing a claim limitation that is recited in the alternative from another component and therefore not required by the claim. Claim scope is not limited by claim language that suggests or makes optional but does not require a recited component.
Applicant further argues Grundel et al. fail to teach or suggest a C1-C6 aliphatic carboxylic acid as claimed because the cited C1-C6 aliphatic carboxylic acid relates to another complexing agent with the copper and not as an additional component in the disclosed composition as claimed.
In response, like the above argument that Grundel et al.’s rhodanine is a stabilizer rather than a complexing agent, Applicant’s arguments to Grundel et al.’s disclosure are merely a difference in terminology, and the cited teachings of Grundel et al., rather than its terminology, meets the claimed limitations. In any event, please note the open-ended “comprising” language of the claims which does not exclude additional, unrecited elements/components/interactions in the claims.
Regarding the rejections over Kshirsagar et al. (“Synthesis and antimicrobial screening for rhodanine complexes of iron, copper and zinc”, Asian Journal of Chemistry, Vol. 20, No. 6, 2008, 4955-4956) Applicant argues Kshirsagar et al. fail to teach or suggest a composition comprising a copper rhodanine complex, a solvent, and a C1-C6 aliphatic carboxylic acid because Kshirsagar et al.’s method washes a copper rhodanine complex with ethanol/acetic which would result in removal of any residual solvent and such an ethanol/acetic acid washing liquid is not part of a resulting composition.
In response, this argument is not persuasive because the cited teachings meet the claimed invention. The Office cited the very direct teachings that, in the reference, there exists a mixture comprising a copper rhodanine complex, alcohol solvent (ethanol), and a C1-C6 aliphatic carboxylic acid (acetic acid), even as an intermediate composition, which meets the claimed invention. While Applicant argues a washing liquid is not part of a resulting composition, the cited washing liquid must be mixed with the copper rhodanine complex or else the washing liquid could not wash the copper complex as required by the language of the reference; the copper rhodanine complex and washing liquid are in contact/mixture, which is precisely a composition of matter of the cited and disclosed components.
Applicant’s request for documentary support for the Office allegedly taking official notice is noted. However, the Office is not required to supply additional documentary support as alleged or requested because official notice was not taken in the Office action.
Applicant further argues Kshirsagar et al. fail to teach or suggest an ethoxylated amine as allegedly claimed.
In response, this argument is not persuasive because Applicant is arguing a claim limitation that is recited in the alternative from another component and therefore not required by the claim. Claim scope is not limited by claim language that suggests or makes optional but does not require a recited component.
Accordingly, the rejections are maintained for the reasons of record.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
December 5, 2025