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 .
DETAILED ACTION
This Office action is responsive to Applicant's Remarks and Amendment after Non-Final Rejection, filed June 17, 2025. As filed, Claims 1-6 are pending are pending of which claim 1 is amended. Claims 7-15 are cancelled.
Response to Remarks
Applicant’s amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
The rejection of claims 1-6 under 35 U.S.C. § 112(a) first paragraph, as failing to comply with the written description requirements is maintained. Applicant's arguments filed 6/17/2025 have been fully considered but they are not persuasive.
Applicant's argue that”
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” It response it is noted that the instant specification does not show preparative example of the claimed genus of compounds of formula in claim 1 in a manner that would indicate they were in possession of the scope of this genus. The specification, then, is considered absent of sufficiently detailed, relevant, identifying characteristics demonstrating that Applicant was in possession of the genus now claimed, i.e., additional complete or partial structures, other physical and/or chemical properties, functional characteristics coupled with a known or disclosed correlation between function and structure.
2.The rejection of claims 1-6 under 35 U.S.C. § 112(b) second paragraph is maintained. Applicant did not amend the claims to specify the chemical structure of the counterion of the salt. Regarding the claim 3, the Applicants dis not address the issue raised by the definition of variable “R is such that the amide is formed from coconut fatty acid or oil”.
3.The objection to abstract as not descriptive of the disclosure is maintained. The Applicant did not submit replacement of the abstract.
4.The objections to claims is maintained for the issues not addressed by amendment.
Claim Objections
1. Claim 1 is objected to because of the following informalities: claim 1
should be amended to commence with article “A” instead of “The”.
2.Claim 1 is objected for inconsistency in nomenclature variable n is recited as “n is” and “n=”.
3.For more appropriate format, claim 1 should be amended to recite instead of : disinfectant and its relevant salts of the following structure:” to recite “disinfectant of structure:
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and its relevant salts.
Appropriate correction is required.
Specification
1.The abstract of the disclosure is objected to because is not descriptive of the disclosure. Specifically, the recitation: “Ethylbenzyl chloride quats (EB quats) and their related salts. The synthesis of EB quats requires minimal capital requirements, produces products in good yields, without difficult to dispose of waste and in a cost-effective manner. The preferred embodiment of the invention is to perform a condensation reaction of a linear or branched, saturated or unsaturated fatty acid, of between 2 and 22 carbons with an
amine that has either a primary amine and tertiary amine or a secondary amine and
tertiary amine. An example is dimethylaminopropylamine (DMAPA). The amido amine
that results from the condensation reaction described is then reacted with ethyl benzyl
chloride (EBC) to produce the desired EB quat. Additional processing, such as ion
exchange can be performed to eliminate the chlorine or substitute it for another anionic
species, organic or inorganic.…” is not descriptive of the elected invention, compounds of formula in claim 1.
Applicant is reminded of the proper content of an abstract of the disclosure.
See MPEP § 608.01(b). Correction is required.
2.The lengthy specification has not been checked to the extent necessary to
determine the presence of all possible minor errors. Applicant's cooperation is
requested in correcting any errors of which applicant may become aware in the
specification.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-6 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites compounds of the formula
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defined by variables R1, R2, n, A.
The specification does not show any preparative examples of compounds of formula as claimed wherein A is -(CH2)3Si(OH)3.
The instant specification lists various prophetic schemes. However,. The Applicant has not described the claimed genus of compounds of formula in claim 1 or the elected species in a manner that would indicate they were in possession of the full scope of this genus.
Regarding the requirement for adequate written description of chemical entities, Applicant's attention is directed to the MPEP §2163. In particular, Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089, 118 S. Ct. 1548 (1998), holds that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, "not a mere wish or plain for obtaining the claimed chemical invention." Eli Lilly, 119 F.3d at 1566. The Federal Circuit has adopted the standard set forth in the Patent and Trademark Office ("PTO") Guidelines for Examination of Patent Applications under the 35 U.S.C. 112.1 "Written Description" Requirement ("Guidelines"), 66 Fed. Reg. 1099 (Jan. 5, 2001), which state that the written description requirement can be met by "showing that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics," including, inter aria, "functional characteristics when coupled with a known or disclosed correlation between function and structure..." Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 316, 1324-25 (Fed. Cir. 2002) (quoting Guidelines, 66 Fed. Reg. at 1106 (emphasis added)). Moreover, although Eli Lilly and Enzo were decided within the factual context of DNA sequences, this does not preclude extending the reasoning of those cases to chemical structures in general. Univ. of Rochester v. G.D. Searle & Co., 249 Supp. 2d 216, 225 (W.D.N.Y. 2003).
In the instant case, in addition to lacking an adequate number of species, the disclosure fails to the only structural feature shared by all species of claimed formula is
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which is not an art-recognized chemical class.
The specification, then, is considered absent of sufficiently detailed, relevant, identifying characteristics demonstrating that Applicant was in possession of the genus now claimed, i.e., additional complete or partial structures, other physical and/or chemical properties, functional characteristics coupled with a known or disclosed correlation between function and structure, or some combination thereof demonstrating possession of the entirety of the claimed genus.
Instant claims do not comply with the written description requirement because the disclosure does not provide a representative number of species falling within the scope of the genus compound of formula in claim 1. Applicants have not described this genus in a manner that would allow one skilled in the art to immediately envisage the compounds contemplated for use. As such, the claims lack adequate written description for the claimed compounds.
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 1-6 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Instant claim 1 is drawn to quaternary ammonium salts of formula in claim 1. However, the nature of the counterion of the salt is not specified in the claim, rendering said claim and its dependents indefinite, because the scope of claims is not clearly defined.
Claim 3 recites “R is such that the amide is formed from coconut fatty acid or oil” rendering said claim indefinite because is not clear what is meant by the limitation.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692