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 . Claims included in prosecution are claims 1-12 and 14-24.
Previous Rejections
Applicants' arguments, filed 6/22/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 (New)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
1. Claims 1-12 are 14-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended claims recite the limitation “wherein the composition excludes a skin conditioning agent”. “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”. See MPEP 2173.05(i). This limitation does not appear to be supported by the instant specification because there is no mention in the instant specification or originally filed claims that skin conditioning agents were contemplated. Therefore, this limitation is “New Matter”.
Claim Rejections - 35 USC § 103 (New)
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 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.
1. Claims 1-12 and 14-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sherry et al. (US 2017/0173196, Jun. 22, 2017) (hereinafter Sherry) in view of Hei et al. (US 2002/0168422, Nov. 14, 2002) (hereinafter Hei).
Sherry discloses compositions comprising hydrogen peroxide in combination with C6-10 fatty acid (Abstract). The compositions may be antimicrobial and deliver antimicrobial activity to hard surfaces (¶ [0018]). The compositions comprise from about 0.05% to about 40% of a surfactant; from about 0.01 % to about 40% of an acidifying agent; from about 0.01 % to about 30% hydrogen peroxide; from about 0.01 % to about 25% of a fatty acid; and from about 15% to about 99.95% water, where the composition has a pH of from about 1.0 to about 6.0 (¶ [0006]). Suitable surfactants include surfactants selected from the group consisting of an anionic surfactant, a cationic surfactant, a nonionic surfactant, an amphoteric surfactant, a zwitterionic surfactant, and mixtures thereof (¶ [0032]). Suitable nonionic surfactants include alcohol ethoxylate (satisfies 2nd surfactant of claim 1, 11, 17, 20, & 24) (¶ [0034]). Suitable surfactants also include amine oxides (satisfies 1st surfactant of claim 1, 11, 17, 20, & 24) (¶ [0035]). Suitable surfactants also include C8-10 amine dimethyl oxide (¶ [0037]). The acidifying agent adjusts the pH of the composition to from about 1.0 to about 6.0 or about 1.0 to about 5.0 (satisfies pH of claim 8 & 24) (¶ [0039]). The acidifying agent may comprise an organic acid, an inorganic acid, or a mixture thereof. Suitable inorganic acids include phosphoric acid and sulfuric acid (satisfies pH adjuster of claim 6, 21, & 24) (¶ [0040]). Suitable organic acid include benzoic acid (satisfies aromatic carboxylic acid of claim 1, 10, 17, 19, & 24) (¶ [0041]). The compositions may comprise the acidifying agent in an amount of from about 0.05% to about 10% (¶ [0043]). The weight ratio of surfactant to acidifying agent in the composition may be from about 3:1 to about 1:3 (¶ [0045]). The compositions may comprise from about 0.07% to about 8% hydrogen peroxide (¶ [0049]). Suitable fatty acids for use include heptanoic acid, octanoic acid, nonanoic acid, and mixtures thereof (satisfies fatty acids of claim 1, 9, & 17-18) (¶ [0057]). The compositions may comprise from about 0.01% to about 15% by weight of the fatty acid (¶ [0058]). The weight ratio of surfactant to fatty acid may be from about 0.1:1 to about 20:1 (¶ [0061]). The compositions may comprise a solvent in an amount of from about 1% to about 10% where the solvent provides additional antimicrobial potentiation (¶ [0082]). The composition can be comprised on a wipe or pad (satisfies claim 16) (¶ [0103]). The compositions may be used in a variety of applications such as disinfecting hard surfaces (satisfies nonporous surface of claim 24) (¶ [0105]).
Sherry differs from the instant claims insofar as not disclosing wherein the solvent used is benzyl alcohol.
However, Hei discloses antimicrobial compositions (Abstract). The composition includes an antimicrobial agent. In a preferred embodiment, the antimicrobial agent is hydrogen peroxide (¶ [0011]). In a preferred embodiment, the composition comprises a sufficiently high amount of antimicrobial agent and antimicrobial solvent such that the composition forms a clear single-phase solution (¶ [0014]). An antimicrobial solvent refers to a solvent that has antimicrobial effect when applied to a microorganism alone or when mixed with a diluting solvent and, optionally, an antimicrobial agent (¶ [0018]). Preferred antimicrobial solvents include benzyl alcohol and preferred diluting solvents include water (¶ [0068]). Suitable surfactants for use include amine oxides such as mono, di, and tri alkyl amine oxides (¶ [0150]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant claims, to have formulated the composition of Sherry to comprise benzyl alcohol as a solvent motivated by the desire to achieve the antimicrobial effects of benzyl alcohol as taught by Hei. One of ordinary skill in the art would have had a reasonable expectation of success since Sherry discloses wherein the composition may comprise a solvent in an amount of from about 1% to about 10% and Hei discloses that benzyl alcohol is a suitable solvent for use in combination with water in antimicrobial compositions with hydrogen peroxide as the active.
Alternatively, generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Sherry discloses wherein the compositions may comprise a solvent in an amount of from about 1% to about 10% where the solvent provides additional antimicrobial potentiation. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Sherry to comprise benzyl alcohol, since it is a known antimicrobial solvent which has a known antimicrobial effect for use in use in combination with water in antimicrobial compositions with hydrogen peroxide as the active as taught by Hei.
Regarding the fatty acids recited in instant claims 1, 9, and 17-18, the composition of Sherry in view of Hei comprises fatty acids, such as heptanoic acid, octanoic acid, nonanoic acid, and mixtures thereof. Accordingly, a composition comprising such fatty acids would have been obvious.
Regarding the aromatic carboxylic acid recited in instant claims 1, 10, 17, 19, and 24, the composition of Sherry in view of Hei comprises an acidifying agent, such as benzoic acid. Accordingly, a composition comprising such acids would have been obvious.
Regarding the amounts of organic solvent or benzyl alcohol recited in instant claims 1, 17, and 24 (i.e., 0.9 wt.% to 4 wt.% and 2 wt.% to 4 wt.%), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, the composition of Sherry in view of Hei can comprise a solvent, such as benzyl alcohol, in an amount of from about 1 to about 10%. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of 0.9 wt.% to 4 wt.% and 2 wt.% to 4 wt.%.
Regarding the amounts of hydrogen peroxide recited in instant claims 2 and 22-24 (i.e., 0.1 wt.% to 8 wt.%), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, the composition of Sherry in view of Hei can comprise hydrogen peroxide in an amount of from about 0.07% to about 8%. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of 0.1 wt.% to 8 wt.%.
Regarding the amounts of aromatic carboxylic acid recited in instant claims 3, 5, and 22-24 (i.e., 0.1 wt.% to 1 wt.% and 0.1 wt.% to 0.4 wt.%), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, the composition of Sherry in view of Hei can comprise an acidifying agent, such as benzoic acid, in an amount of from about 0.05% to about 10%. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of 0.1 wt.% to 1 wt.% and 0.1 wt.% to 0.4 wt.%.
Regarding the amounts of first surfactant recited in instant claims 4-5 and 22-24 (i.e., 0.1 wt.% to 1 wt.%), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, the composition of Sherry in view of Hei can comprise a surfactant, such as amine oxide, in an amount of from about 0.05% to about 40%. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of 0.1 wt.% to 1 wt.%.
Regarding the pH adjuster reciting instant claims 6, 21, and 24, as discussed above, the composition of Sherry in view of Hei comprises an acidifying agent, such as phosphoric acid or sulfuric acid. Accordingly, a composition comprising such acids would have been obvious.
Regarding the amounts of pH adjuster recited in instant claims 7 and 22-24 (i.e., 0.1 wt.% to 2 wt.%), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, the composition of Sherry in view of Hei can comprise an acidifying agent, such as phosphoric acid or sulfuric acid, in an amount of from about 0.05% to about 10%. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of 0.1 wt.% to 2 wt.%.
Regarding the pH recited in instant claim 8 and 24 (i.e., 1 to 3), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, the composition of Sherry in view of Hei has a pH of 1 to 6 or 1 to 5. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of 1 to 3.
Regarding claim 12, as discussed above, Sherry in view of Hei disclose wherein suitable surfactants include amine oxides. They further disclose wherein suitable amine oxides include alkyl amine oxides. Accordingly, a composition comprising alkyl amine oxides would have been obvious.
Regarding the weight ratios of the organic solvent and the fatty acid or aromatic carboxylic acid recited in instant claims 1, 17, and 24 (i.e., about 10:1 to about 30:1 and 3:1 to about 30:1), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 (A). As discussed above, the composition of Sherry in view of Hei can comprise a solvent, such as benzyl alcohol, in an amount of from about 1 to about 10% and comprises 0.01% to about 15% by weight of the fatty acid such as heptanoic acid, octanoic acid, and nonanoic acid. Accordingly, the claimed weight ratio would have been obvious for one of ordinary skill in the art selecting an amount of benzyl alcohol and an amount of heptanoic acid, octanoic acid, and/or nonanoic acid from the above ranges and the ratio thereof overlapping with the claimed ratio.
Regarding the weight ratios of the fatty acid or aromatic carboxylic acid and first surfactant recited in instant claims 1, 17, and 24 (i.e., about 0.1:1 to about 3:1), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 (A). As discussed above, the weight ratio of surfactant to fatty acid may be from about 0.1:1 to about 20:1. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of about 0.1:1 to about 3:1.
Regarding the weight ratios of the organic solvent and first surfactant recited in instant claims 1, 17, and 24 (i.e., 1:1 to about 30:1), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 (A As discussed above, the composition of Sherry in view of Hei can comprise a solvent, such as benzyl alcohol, in an amount of from about 1 to about 10% and surfactants, such as an amine oxide, in an amount of from about 0.05% to about 40%. Accordingly, the claimed weight ratio would have been obvious for one of ordinary skill in the art selecting an amount of benzyl alcohol and an amount of an amine oxide from the above ranges and the ratio thereof overlapping with the claimed ratio.
Regarding claims 1, 17, and 24, reciting wherein the acidic pH adjuster is added to lower the pH of the disinfectant composition, as discussed above, phosphoric acid is used as an acidifying agent to adjust the pH of the composition to remain acidic. As such, the phosphoric acid disclosed by Sherry in view of Hei would meet the limitation of lowering the pH of the composition.
Regarding claims 1 and 24, reciting wherein the composition excludes a skin conditioning agent, the composition of Sherry in view of Hei does not mention the use of skin conditioning agents. As such, a composition free of such agents would have been obvious.
Regarding claims 14-15 & 17, reciting wherein the composition is free of peracids, the composition of Sherry in view of Hei does not require the presence of peracids in the solution. As such, a composition free of peracids would have been obvious.
Regarding the disinfectant wipe recited in instant claim 16, this is merely a recitation of the intended use of the claimed disinfectant composition. Assuming, purely arguendo, that this were not the case, as discussed above, the composition of Sherry in view of Hei composition can be comprised on a wipe. Accordingly, a wipe comprising such a composition would have been obvious.
Regarding the consisting of language recited in instant claim 17, the composition of Sherry in view of Hei does not require components not recited by the instant claim. The composition of Sherry in view of Hei merely requires a surfactant; an acidifying agent (i.e., acidic pH adjuster); hydrogen peroxide; a fatty acid; and water (refer to (¶ [0006]) and claim 1). These are all components required by the instant claim. Accordingly, a composition consisting of the recited components would have been obvious.
Regarding the weight ratios of the benzoic acid and first surfactant recited in instant claim 24 (i.e., about 0.1:1 to about 3:1), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 (A). As discussed above, the weight ratio of surfactant to acidifying agent (i.e., benzoic acid) in the composition may be from about 3:1 to about 1:3. Accordingly, because of the overlap, the range disclosed by Sherry in view of Hei meets the instantly recited limitations of about 0.1:1 to about 3:1.
Regarding claim 24 reciting a nonporous surface disinfectant composition, this is merely a recitation of the intended use of the claimed disinfectant composition. Assuming, purely arguendo, that this were not the case, as discussed above, the composition of Sherry in view of Hei composition can be used to disinfect hard surfaces. Accordingly, such a composition “defining” a nonporous surface disinfectant composition would have been obvious.
Accordingly, the combined teachings of Sherry and Hei render obvious claims 1-12 and 14-24.
Response to Arguments
Applicant’s arguments with respect to claims 1-12 and 14-24 have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made. The teachings of Sherry in view of Hei are applied to meet the requirements of the new limitation of “wherein the composition excludes a skin conditioning agent”.
Conclusion
Claims 1-12 and 14-24 are rejected.
No claims are allowed.
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 Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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