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
Claim Status
Claims 21-40 are pending. Claims 21-40 are under examination. Claims 21-40 are rejected. No claims allowed.
Filing Receipt
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Response to Amendments/Arguments
Applicant's amendments and arguments filed 02/09/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified
form is herein withdrawn.
Withdrawn Rejections
The 103(a) rejection of claims 1-40 over Groenewegen et al. (EP0231632, Published 08-1987, as cited in the IDS filed 04/08/2022), Aksela et al. (USPGPub 2009/0221704, Publication date 09-2009), Ecolab (JP3566888, Published 06-2004. Machine translation attached) and Hei et al. (USPGPub 2002/0168422, Publication date 11-2002) in the final mailed 12/08/2025 has been withdrawn. Applicant’s arguments, filed 02/09/2026, pages 7 (bottom of page), and 8 (bottom of page) have been fully considered and are persuasive.
The nonstatutory double patenting rejection of the current claims over 1-18 of U.S. Patent No. 11,026,420 (16/559,894) in the final mailed 12/08/2025 has been withdrawn. The claims of 11,026,420 are directed to removing mineral deposits from a membrane system and not the current water target or the pulp and/or paper hard surfaces or medium.
The nonstatutory double patenting rejection of the current claims over 1-22 of U.S. Patent No. 11,117,172 (15/929,702) in the final mailed 12/08/2025 has been withdrawn. The claims of 11,117,172 are directed to removing microbes and mineral deposits from a membrane system and not the current water target or the pulp and/or paper hard surfaces or medium.
The nonstatutory double patenting rejection of the current claims over 1-18 of U.S. Patent No. 11,647,747 (17/302,678) in the final mailed 12/08/2025 has been withdrawn. The claims of 11,647,747 are directed to removing microbes and/or their biofilms and/or mineral deposits from a membrane system and not the current water target or the pulp and/or paper hard surfaces or medium.
The nonstatutory double patenting rejection of the current claims over 1-18 of U.S. Patent No. 12,059,002 (18/297,482) in the final mailed 12/08/2025 has been withdrawn. The claims of 12,059,002 are directed to removing microbes and/or their biofilms and/or mineral deposits from a membrane system and not the current water target or the pulp and/or paper hard surfaces or medium.
Response to Arguments
Applicant states a mere conclusory statement concerning the nonstatutory double patenting rejections is insufficient to support an obviousness-type double patenting rejection (ODP).
The following ODP rejections do not rely on a mere conclusory statement.
For the reasons stated above the ODP rejections are maintained/modified as set forth below.
Newly Applied Rejections
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 21-40 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. This is a new matter rejection. This rejection was necessitated by amendment.
Claim 1 recites the following phrase which is new matter.
Phrase 1: “a peroxyformic acid composition comprising greater than 10 wt.%”.
The specification contemplates the peroxy acid concentration at weight percent ranges of from about 1 wt-% to about 40 wt-% (p. 23 of the current specification). The specification of provisional application filed 12/18/2024 has identical ranges (bridging pages 22-23).
Nowhere in the original disclosure were concentrations greater than 40 wt-% contemplated. High concentrations of 100 wt-% are encompassed in the current range of greater than 10 wt.%. The original disclosure does not contemplate these concentrations. Additionally, the amendment filed 02/09/2026 did not point to the support for the current range.
Note: The newly added range limitation of 0.1 to 10,000 ppm has support in the current specification bridging pages 22-23.
Modified Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a
nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The following is being incorporated by reference into each of the below nonstatutory double patenting rejections.
The specification can be utilized as a dictionary to interpret the reference’s claims and to confirm the scope of the reference’s claims. See MPEP 804(II)(B)(1).
The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) ("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of US Patent 10,233,149 (15/730,502).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 10,233,149 claims the following.
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The above claimed 20% overlaps the current greater than 10% wt.
Concerning the treating a target, the ordinary artisan practicing the invention of 10,233,149 would have looked at the specification to determine the full scope of the utility of the formed peroxyformic acid composition and would have found in column 37 the following.
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And in column 26 the following.
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Concerning the claimed from about 0.1 ppm to about 10,000 ppm, the ordinary artisan in need of how to treat the pulp industry liquids and solids would have looked to the specification and would have found 0.001% to 20% in column 12, lines 20-35 and/or 0.1 to 300 ppm in column 29 lines 40-55.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning the w/v limitations, the ordinary artisan in need of the scope of reacting the regents would have looked to the specification and found in column 9 the following.
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The contacting leading to the following in column 2
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in column 9.
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Concerning current claim 27, the ordinary artisan wanting to know the scope of the utility of the claimed composition would have looked to the specification and would have found in column 27 the following.
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Concerning current claim 28-30, the ordinary artisan wanting to know the scope of the utility of the claimed composition would have looked to the specification and would have found in column 25 the following.
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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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning the full scope of the catalysts that are being claimed by 10,233,149,
the ordinary artisan would have looked to the specification and would have found in
column 10 the following.
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Concerning current claim 38-39, upon practicing the invention of 10,233,149, a microbial population would be reduced as currently claimed. Both the current invention and that of 10,233,149 utilize substantially identical peroxyacid compositions on surfaces.
Concerning claim 40, the ordinary artisan in need of the scope of how to utilize the formed composition, would have looked to the specification and would have found in column 25, lines 55 to bottom the contacting can be done in 1 to 9 minutes. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Claims 21-25 and 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,278,392 (15/487,641).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 10,278,392 claims the following.
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Concerning the current pulp equipment, the ordinary artisan needing the scope of the hard surfaces claimed by 10,278,392 would have looked to the specification and found black liquor evaporators in the pulp industry in column 11 lines 10-20.
The above 25 ppm overlaps the current range. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
10,278,392 does not claim the current 10 wt.%. However, the ordinary artisan
needing a definition and/or scope of the “on site” and/or “in-situ” formation, would have looked to the specification of 10,278,392 and would have found the resulting aqueous composition of peroxyformic acid made in situ can be 0.001% to about 20% (w/w). See column 15, line 60 and column 20, lines 45-55. This range overlaps the current range of 10 or higher and 0.1 to 10,000 ppm.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning the limitation of the ratio reaching 2 or higher within about 2 hours, 10,278,392 claims the ratio of 2 or higher within 1 hour. Within 1 hour overlaps the current within 2 hours.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claims 22-23 see claim 13 of 10,278,392.
Concerning current claim 24-25, upon practicing the invention of 10,278,392, foul odors would be reduced by converting the elements and/or compounds in claim 25. Additionally, 10,278,392 recites “surfaces being treated” in claim 3 and defines treatment in column 14 lines 1-25, wherein minerals in current claim 25 are removed.
Concerning claim 31 and 32, the ordinary artisan in need of the scope of the peroxyacid composition would have looked to the specification of 10,278,392, and found the current limitation in column 20, lines 55 to the bottom.
Concerning current claim 33, see claim 11 of 10,278,392. 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. In re Wertheim, 541 F.2d 257, 191 USPQ
90 (CCPA 1976).”
Concerning current claim 34-37, see claim 15 of 10,278,392. A definition of the catalysts can be found in column 16, lines 5-30 which includes cation exchange resins.
Concerning current claim 38-39, upon practicing the invention of 10,278,392, a microbial population would be reduced as currently claimed. Both the current invention and that of 10,278,392 utilize substantially identical peroxyacid compositions on surfaces.
Concerning claim 40, the ordinary artisan in need of the scope of the contacting in the claims of 10,278,392, would have looked to the specification and would have found in column 12, lines 40-50 the contacting can be done in 15 sec. to 2 hours. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Claims 21-25, and 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,241,009 (16/362,885).
Although the conflicting claims are not identical, they are not patentably distinct
from each other because the instantly claimed subject matter embraces or is embraced
by the patented subject matter. For example, 11,241,009 claims the following.
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Concerning the current pulp equipment, the claimed black liquor evaporator is the current pulp equipment.
11,241,009 does not claim the current 10 wt.%. However, the ordinary artisan needing a definition and/or scope of the “in-situ” formation, would have looked to the specification of 11,241,009 and would have found the resulting aqueous composition of peroxyformic acid made in situ can be 0.001% to about 20% (w/w). See column 20, line 50-65. This range overlaps the current range of 10 or higher and 0.1 to 10,000 ppm.
Concerning the limitation of the ratio reaching 2 or higher within about 2 hours,
11,241,009 claims the ratio of 2 or higher within 1 hour. Within 1 hour overlaps the current within 2 hours.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claims 22-23, the ordinary artisan needing a definition and/or scope of the “in-situ” formation would have found the aqueous compositions in column 19, lines 20 to the bottom. Additionally, see claim 15 of 11,241,009.
Concerning current claim 24-25, upon practicing the invention of 11,241,009, foul odors would be reduced by converting the elements and/or compounds in claim 25. Additionally, see claim 17 of 11,241,009 wherein minerals are removed. The minerals being listed in column 14, lines 10-25.
Concerning claim 31 and 32, the ordinary artisan in need of the scope of the peroxyacid composition would have looked to the specification of 11,241,009 and found the current limitation in column 21, lines 1-15.
Concerning claim 33, the ordinary artisan in need of the scope of the contacting would have looked to 11,241,009 and found the current limitation in column 13, lines 25-35. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claims 34-37, see claim 16 of 11,241,009. The ordinary
artisan needing a definition and/or scope of the “in-situ” formation, would have looked to
the specification of 11,241,009 and would have found the current catalysts column 16
, lines 15-30.
Concerning current claim 38-39, upon practicing the invention of 11,241,009, a microbial population would be reduced. Both the current invention and that of 11,241,009 utilize substantially identical peroxyacid compositions on surfaces.
Concerning claim 40, the ordinary artisan in need of the scope of the contacting
in the claims of 11,241,009, would have looked to the specification and would have found in column 12, lines 45-60 the contacting can be done in 15 sec. to 2 hours. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Claims 21-25, and 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,882,826 (17/646,239).
Although the conflicting claims are not identical, they are not patentably distinct
from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 11,882,826 claims the following (see next page).
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Concerning the current pulp equipment, the ordinary artisan needing the scope of the hard surfaces claimed by 11,882,826 would have looked to the specification and found black liquor evaporators in the pulp industry in column 11 lines 20-40.
The above 25 ppm overlaps the current range. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
11,882,826 does not claim the current 10 wt.%. However, the ordinary artisan needing a definition and/or scope of the “on site” and/or “in-situ” formation, would have looked to the specification of 11,882,826 and would have found the resulting aqueous composition of peroxyformic acid made in situ can be 0.001% to about 20% (w/w). See column 15, lines 20-55. This range overlaps the current range of 10 or higher and 0.1 to 10,000 ppm.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning the limitation of the ratio reaching 2 or higher within about 2 hours, 10,278,392 claims the ratio of 2 or higher within 1 hour. Within 1 hour overlaps the current within 2 hours.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claims 22-23 see claim 12 of 11,882,826 and column 19 lines 35-55 for the scope of the contacting of the reagents.
Concerning current claim 24-25, upon practicing the invention of 11,882,826, foul odors would be reduced by converting the elements and/or compounds in claim 25. Additionally see claim 16 of 11,882,826. Mineral deposits are defined column 14, lines 5-25.
Concerning claim 31 and 32, the ordinary artisan in need of the scope of the peroxyacid composition would have looked to the specification of 11,882,826, and found the current limitation in column 29, lines 1 to 35.
Concerning current claim 33, see claim 10 of 11,882,826. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claim 34-37, see claim 14 of 11,882,826. A definition of the
catalysts can be found in column 16, lines 10-30 which includes cation exchange resins.
Concerning current claim 38-39, upon practicing the invention of 11,882,826, a microbial population would be reduced. Both the current invention and that of 10,278,392 utilize substantially identical peroxyacid compositions on surfaces.
Concerning claim 40, the ordinary artisan in need of the scope of the contacting in the claims of 10,278,392, would have looked to the specification and would have found in column 12 the contacting can be done in 15 sec. to 2 hours. 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. In re Wertheim, 541 F.2d 257, 191
USPQ 90 (CCPA 1976).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Claims 21-25, and 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent 12,290,071 (18/542,978).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 12,290,071 claims the following (see next page).
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Concerning the current pulp equipment, the claimed black liquor evaporator is the current pulp equipment.
The above 75 ppm overlaps the current range. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
12,290,071 does not claim the current 10 wt.%. However, the ordinary artisan needing a definition and/or scope of the “on site” and/or “in-situ” formation, would have looked to the specification of 12,290,071 and would have found the resulting aqueous composition of peroxyformic acid made in situ can be 0.001% to about 20% (w/w). See column 15, lines 20-60. This range overlaps the current range of 10 or higher and 0.1 to 10,000 ppm.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning the limitation of the ratio reaching 2 or higher within about 2 hours, 12,290,071 claims the ratio of 2 or higher within 1 hour. Within 1 hour overlaps the current within 2 hours.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claims 22-23 see claim 12 of 12,290,071.
Concerning current claim 24-25, upon practicing the invention of 12,290,071, foul
odors would be reduced by converting the elements and/or compounds in claim 25. See claim 16 of 12,290,071 wherein minerals are removed. Minerals are defined column 14, lines 10-30.
Concerning claim 31 and 32, the ordinary artisan in need of the scope of the peroxyacid composition would have looked to the specification of 12,290,071, and found the current limitation in column 21, lines 1-20 to the bottom.
Concerning current claim 33, see claim 8 of 12,290,071. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning current claim 34-37, see claim 14 of 12,290,071. A definition of the catalysts can be found in column 16 which includes cation exchange resins.
Concerning current claim 38-39, upon practicing the invention of 12,290,071, a microbial population would be reduced as currently claimed. Both the current invention and that of 12,290,071 utilize substantially identical peroxyacid compositions on surfaces.
Concerning claim 40, see claim 8 of 12,290,071. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Allowable Subject Matter
The current claims would be allowable upon overcoming the above 112(a) and the nonstatutory double patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the invention is Groenewegen et al. (EP0231632, Published 08-1987, as cited in the IDS filed 04/08/2022).
Groenewegen et al. teach (page 2 of 13) sanitizing with the use of performic acid (current PFA). The sanitization being the reduction of the microbial population by at least one log.
Concerning the PFA wt-%, Groenewegen et al. teach (page 4 of 13) “Thus, the
performic acid is prepared in the form of a solution. Preferably, this solution is prepared at a concentration in the range of up to 10% by weight. Although higher concentrations are possible, too many safety hazards arise from performic acid concentrations entering the denotable region. Preferably, the performic acid solution is prepared at a concentration range being in the range of from 2 to 8% by weight, the optimal concentration range being from 3 to 7% by weight”.
It would not have been obvious to have modified the prior art to arrive at the current invention of peroxyformic acid compositions above the 10 wt.% taught by Groenewegen et al. There being no motivation to do so.
Examiner’s Note
A nonstatuatory double patenting rejection over the claims in U.S. Patent No. 11,040,902 (14/972,727) and 11,772,998 (17/303,117) are not being written. The reason being the current ratio of the concentrations of formic acid and hydrogen peroxide (w/v) being about 2 or higher and the current ratio of the concentrations of the peracid (w/w) and hydrogen peroxide (w/v) in the formed aqueous composition reaching about 2 or higher within about 2 hours is not implicitly or explicitly claimed in 11,040,902.
Conclusion
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/B.G.D/ Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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