DETAILED ACTION
This Office Action is in response to the Amendment filed on 3/11/2026.
Claim(s) 21, 29, and 31-39 were cancelled.
Claim(s) 13, 15, 17-18, 20, 23-24 and 30, are now pending in the application.
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.
Claim 15 is 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. Newly amended claim 15 sets forth the oil-modified polyester resin that is cured via oxidative crosslinking wherein instant specification is silent on any form of crosslinking.
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.
Claim 18 is 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.
Claim 18 recites the limitation "the cationic compound" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as “the coating composition according to claim 13, wherein the quaternary ammonium compound comprises…” as to be consistent with the quaternary ammonium compound set forth in instant claim 13.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 13, 15, 17-18, 20-21, 23-24 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over US2020/0030276 to Scholz et al. (as found on the IDS dated 5/4/2022).
Regarding Claim 13 and 23, Scholz discloses a composition applied as a uniform wet coating [0089] i.e., a coating composition wherein example 46 [0380] comprises water (liquid carrier); a solid blend comprising GML (a binder composition); SALCARE SC92 that comprises poly(2-methacryloxyethyl trimethyl ammonium chloride) [0242] i.e., a quaternary ammonium compound; and a stabilization composition comprising DOSS (an anionic surfactant). As an alternative to GML, Scholz teaches the fatty acid ester of a polyhydric alcohol having the formula (R1-C(O)-O)n-R2; wherein n can be 0, 1 or 2 [0107]. At the broadest meaning, "polymer" means one or more units of monomer. The definition of n=2 means multiple unit; i.e. the fatty acid ester is a polyester and R2 is a polyhydric alcohol. As such, Scholz teaches the binder composition is a polymer selected from an alkyd (polyester + alcohol) i.e., alkyd resin.
Scholz does not particularly teach in the specified example 46 a binder composition that comprises an anionic binder. However, the solid blend as disclosed by Scholz comprises the alkyd resin
and the anionic surfactant DOSS, therefore the alkyd emulsion polymer binder composition is reasonably considered anionic. As such Scholz teaches an anionic alkyd emulsion polymer binder composition comprising an alkyd resin.
Scholz does not particularly teach this preferred embodiment comprising a silicate compound comprising lithium sodium magnesium silicate in an amount ranging from about 0.1 wt% to about 1.0 wt% based on the coating in the dry state.
However, Scholz does teach the addition of thixotropes such as laponite (a silicate compound) [0218] added to water-based formulations [0214] in an amount less than 8 wt% and as little as 0.5 wt% based on the total weight of the ready to use composition [0217] thereby reading on 0.1 to 1 wt%.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Scholz silicate compound to the embodiment found in example 46 thereby arriving at the claimed invention.
The motivation is that the addition of a thixotrope such as laponite increases the viscosity of a composition [0218] which are preferred to reduce migration as well as to provide substantivity (resistance to removal by fluids) to ensure long-term antimicrobial activity.
Scholz does not particularly teach a non-ionic surfactant in the specified embodiment.
However, Scholz teaches the invention can include one or more surfactants in an amount of 0.1-10 wt% [0159] to emulsify the composition and help wet the surface and/or to aid in contacting the microorganisms [0154] such as nonionic surfactants [0177].
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to include a secondary non-ionic surfactant in an amount to total that is no greater than 10 wt% in Scholz’s composition. Given that Scholz’s example 46 comprises 2.7 wt% DOSS, this corresponds to an addition of 0-7.3 wt% of non-ionic surfactant as to comprise surfactants in an amount of no greater than 10 wt% as taught by Scholz [0159].
The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven , 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven , combining various surfactants would have been obvious given their known and shared intended use.
Scholz is silent regarding the HLB value of the non-ionic surfactant.
However, Scholz teaches the preferred surfactants are those that have an HLB of at least 8 [0157].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include a surfactant with a HLB value between about 10 and about 14 (and between 10 and about 12 of claim 23) to the embodiment of example 46 thereby arriving at the claimed invention.
The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Scholz shows that an HLB value of greater than 8 is known in the art to be suitable for emulsifying the composition and wetting the surface to aid in contacting the micro-organisms [0154].
Scholz discloses the coating composition of claim 13, comprising 0-7.3 wt% of non-ionic surfactant as set forth above, and thixotropes such as laponite (a silicate compound) [0218] in an amount of 0.5-8 wt% [0218] that is reasonably calculated to be a range less than 14.6:1 (calculated from the normalized ratios of 0:8 to about 7.3:0.5 i.e., 0 to about 14.6:1) therefore reading on a ratio of the surfactant to the silicate compound from about 3:1 to about 1:1 of claim 1 and about 2:1 of claim 30.
Though the lithium sodium magnesium silicate prior art range and weight ratio range is not identical to the claimed range (0.1-1.0 wt% and 3:1 to about 1:1 respectively), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 15, Scholz teaches the coating composition of claim 13, comprising alkyd resin which is also known as oil-modified polyester resin as set forth by instant specification [0046] thereby reading on an oil-modified polyester resin and cured via oxidative crosslinking in light of the 112a rejection set forth above.
Regarding Claim 17, Scholz discloses the coating composition wherein the coating composition comprises 22.51 parts of a solid blend comprising 0.94 parts GML, 0.94 parts mantellic acid, 2.70% DOSS, 8.50 parts SALCARE SC92, and 9.43 parts POLOXAMER (Example 46, [0380]). Therefore the binder component GML at 0.94 parts out of 22.51 total solid blend is reasonably calculated to be included at 4.17 wt% reading on an amount ranging from 4.0 to 80.0 wt%.
Regarding Claim 20, Scholz teaches laponite [0218] (i.e., silicate compound comprising lithium sodium magnesium silicate) can be used in an amount as little as 0.5 wt% [0217] which lies just outside the instantly claimed range of 0.1-0.4 wt%. It is the Office's position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding Claim 24, Scholz discloses the coating composition wherein water is added at 77.49 parts (Example 46, [0380]) reading on 5.0 to 80 wt%.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over US2020/0030276 to Scholz et al. as set forth in the rejection of claim 13, in further view of WO2020/230107 to Mani et al.
Regarding Claim 18, Scholz teaches the composition of claim 13 as set forth and incorporated herein by reference wherein example 46 [0380] comprises SALCARE SC92 that is 2-methacryloxyethyl trimethyl ammonium chloride [0242] i.e., a quaternary ammonium compound.
Scholz is silent regarding the quaternary ammonium compound comprises benzalkonium chloride or alkyldimethylbenzyl ammonium chloride.
However, Mani teaches 2-(methacryloyloxy)ethyl)trimethylammonium chloride and alkyldimethylbenzyl ammonium chloride [Mani, P8, first paragraph] as suitable examples of quaternary ammonium compounds having antimicrobial/antibacterial activity [P7, L29-31]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute alkyldimethylbenzyl ammonium chloride for the 2(methacryloyloxy)ethyl)trimethylammonium chloride and used in Scholz. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Mani discloses that both 2-(methacryloyloxy)ethyl)trimethylammonium chloride and alkyldimethylbenzyl ammonium chloride are suitable quaternary ammonium compounds having antimicrobial/antibacterial activity for use in antimicrobial compositions, thus providing evidence of obviousness in substituting one for the other in such compositions.
Response to Arguments
Applicant's arguments filed 3/11/2026 have been fully considered but they are not persuasive.
Applicant states Scholz does not disclose or suggest the newly amended limitations of claim 13.
In response, attention is drawn to the updated rejection of claim 13 wherein Scholz teaches the newly amended limitations of claim 13.
Applicant states Scholz does not disclose the use of lithium sodium magnesium silicate in combination with a non-ionic surfactant having an HLB value of between 10-14 for stabilizing a quaternary ammonium antimicrobial system in an anionic binder environment. Moreover applicant states Scholz does not teach that lithium sodium magnesium silicate is used to stabilize the composition or suggest that the silicate must be combined with a non-ionic surfactant with a defined HLB window to prevent agglomeration.
In response, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant states Scholz is silent on that the stability of a quaternary ammonium system is dependent on selection a non-ionic surfactant within the narrow HBL range of 10-14, stating example 14 of instant specification shows a surfactant having an HLB value of 8 (outside of claimed range) exhibited agglomeration.
In response, Examiner acknowledges example 14 and examples 16-19 of instant specification do not comprise a non-ionic surfactant having and HLB of 10-14 and all said examples agglomerated. However this data is not commensurate in scope with the claim language as the data in tables 1-3 do not comprise a surfactant having an HLB of higher than 14. As such, there is no evidence that surfactants with an HLB of higher than 14 would not have the same unexpected result. (see MPEP 716.02(d)II.) In order to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range
Applicant states the defined weight ratio of the lithium sodium magnesium silicate and a non-ionic surfactant having an HLB of 10-14 have a synergistic combination allowing improved antimicrobial performance, superior percent reduction and improved antimicrobial activity value that is supported by tables 2-3.
It is noted that the data in tables 1-3 do not support a synergistic combination at this defined ratio as there are no tests outside the instantly claimed range to show criticality of this claimed range. Therefore there is no evidence that a surfactant to the silicate range outside of the instantly claimed range would not have the same unexpected results. Furthermore, the composition of the examples of table 3 are not stated, therefore there is no evidence to suggest that the specific ingredients and amount as set forth in instant claim 13 would have these same antimicrobial properties.
For these reasons, Applicant's arguments are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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