DETAILED ACTION
Status of the Claims
Claims 1-10, 12-21 and 23-45 are pending in the instant application. Claims 25-31, 36, 38, 39, 42, 44 and 45 have been withdrawn based upon Restriction/Election. New claims 42 is directed to a sanitizing gel formulation (Example 3) whereas Applicant has elected d) a species of water based product is a water-based paint, therefore claim 42 is withdrawn. New claims 44 and 45 require a metal coordination complex including zinc gluconate or zinc pyrithion, whereas Applicant has elected (a) a species of metallic salt is zinc oxide (ZnO). Claims 1-10, 12-21, 23-24, 32-35, 37, 40, 41 and 43 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The U.S. effective filing date has been determined to be 10/19/2020, the filing date of the PCT/IB2020/059828.
Specification
The Specification is objected to because the Specification discloses benzalkonium chloride (C6H5CH2N(CH3)2RC) (p. 5, 1st paragraph line 4; 3rd paragraph lines 3-4) which includes chemical formula with improper subscripts. Additionally, Applicant should verify the units CFU/ml include the proper superscripts (p. 7, 1st paragraph lines 8 & 12; p. 8, Example 1, lines 4-5; Example 3, line 5; p. 9, lines 11-12). Appropriate correction is required. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 30, 31, 36, 38, 39, 42, 44 and 45 are objected for including incorrect status identifiers, see 37 C.F.R. 1.122 (c) (MPEP §714). Appropriate correction is required.
Additionally, examiner notes that, while instant claim 45 stand withdrawn, dipyrithione is not a metal coordination complex.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10, 12-21, 23-24, 32-35, 37, 40, 41 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over BICARD-BENHAMOU (US 2010/0119461; published May, 2010) in view of BASSI (WO 2016/169814 A1; published October, 2016); Tornero et al. (“Antimicrobial ecological waterborne paint based on novel hybrid nanoparticles of zinc oxide partially coated with silver,” 2018, ELSEVIER, Progress in Organic Coatings, Vol. 121, pp. 130-141); and as evidenced by Gurunathan et al. (“Antiviral Potential of Nanoparticles—Can Nanoparticles Fight against Coronaviruses?,” 08-2020, MDPI; Nanomaterials, Vol. 10, Article 1645, pp. 1-29).
Applicants Claims
Applicant claims a disinfectant composition comprising: (a) one or several metallic salts that act as long-lasting sanitizing agent of a micro or nanometric size, in a concentration of 0.005% to 60% w/w, the metallic salts having a formula: MnXy wherein M is a metal; wherein X is a non-metal n = 1-4; and y is 1-2; (b) a disinfectant in a content w/w from 0.00001 to 70%, which shows a broad spectrum, eliminating microorganisms in a short period of time; (c) a fixing agent in a concentration of 0.005% to 15% w/w; and (d) a compound that facilitates use of the disinfectant composition or an appears of the disinfectant composition (instant claim 1).
Elected Species: Applicant has elected the following species for examination on the merits: (a) a species of metallic salt is zinc oxide (Zn1O1); (b) a species of fixing agent is natural fixative selected from nonpal mucilage, flaxseed mucilage, chia mucilage, pitch, a resin and a combination thereof(claim 37); (c) a species of disinfectant is isopropanol; and (d) a species of water based product is a water-based paint.
Determination of the scope
and content of the prior art (MPEP 2141.01)
BICARD-BENHAMOU teaches antimicrobial compositions including zinc oxide and their use in various applications such as cosmetics, inks, lacquers or plastics (title, abstract, see whole document)(claim 1, item (a), instant claims 7, 32-33). BICARD-BENHAMOU teaches that: “Microbial contamination is an essential concern in our daily life, whether it concerns cosmetic products, surface areas in bathrooms, surgical instruments or wall paints.” ([0002]).
BICARD-BENHAMOU teaches their antimicrobial compositions include 40-60 weight percent of zinc oxide ([0015])(claim 1, item a - amount).
BICARD-BENHAMOU teaches that: “Paints and lacquers comprising compositions according to the present invention can be waterborne or solvent-based. They can be on the basis of synthetic or chemically modified natural polymers, such as for example, acryl polymers, vinyl polymers, alkyd resins, phenol resins, urea resins, melamine resins, polyester resins, cellulose nitrate, epoxy resins polyurethane resins, bitumen, tar, shellac, natural rubber or resins, and can comprise all known additives and adjuvants, such as for example sikkatives, waxes, dispersing agents, anti-blocking agents or drying agents.” [emphasis added]([0059])(instant claim 1, “a fixing agent”; instant claims 10, 23-24 & 37). BICARD-BENHAMOU further teaches “Paste inks” can include “linseed/soibean oil based resins” (soibean being regarded as soybean), which are regarded as natural resins ([0060]).
BICARD-BENHAMOU teaches that: “The usage of compositions according to the present invention can help to minimize the contamination with microorganisms thus allowing to decrease the necessary content of preservatives. The therewith provided preparations are stable for a long period of time. The liquid inks can be water based, based on water/alcohol mixtures or solvent based.” And “Solvents which can be used in solvent based inks are ethanol, isopropanol […].” ([0060])(instant claim 1, item b; instant claim 34). BICARD-BENHAMOU teaches a roll-on formulation including 10 % (w/w) ethanol which, based in the broad disclosure is substitutable with isopropanol). BICARD-BENHAMOU teaches a W/O emulsion composition including 2, 4, 5 % (w/w) alcohol which is indicated as isopropanol ([0352], [0353] & [0354])(instant claim 1, item b). And O/W emulsions including water in an amount of 30% to 99.5%, for example, in paragraphs [0359] and [0361] (instant claims 1, 9, 15, amount).
BICARD-BENHAMOU teaches microorganism testing of their antimicrobial compositions ([0327]-[0328]) including that: “The inoculated preparation is stored away from the daylight at 20-25° C. In order to begin the test, 1 g or 1 ml samples from the tests preparation (containing the inoculated micro-organisms and the antimicrobial product according to the invention) will be taken at different intervals of time (in our case , 0, 2 min, 5 min, 30 min, 1 h, 3 h, 6 h, 24 h, 48 h, 7 days, 14 days and 28 days) and the number of microorganisms will be measured using the Agar plate or the membrane filtration method.” ([0329]). BICARD-BEHAMOU teaches long-lasting (at least 28 d) against multiple microorganisms (p. 26, Table 1)(instant claims 2-4, 21 & 35).
BICARD-BENHAMOU teaches that: “In all above-mentioned applications the compositions according to the present invention can advantageously be combined with all known preservatives or antimicrobial agents, such as for example phenoxyethanol, triclosan […], benzalkonium chloride, […], Hexetidine […], Benzyl alcohol (mould), […] Chlorhexidine Diacetate, Chlorhexidine Digluconate […], Phenoxyisopropanol […], sodium benzoate, […].” ([0052])(instant claim 6). BICARD-BENHAMOU teaches the inclusion of “Tee Trea Oil” regarded as “Tea Tree Oil” (p. 6, col. 1, line 35) which is a natural essential oil which include terpenes such as γ-terpinene, α-pinene, limonene, among others (instant claim 9 “extracts of natural […] oils”, instant claim 20). And includes, for example, phenoxyethanol and parabens in an amount of 0.5 % (w/w)([0342])(instant claims 5-6, amount; instant claims 41 & 43, preservatives). And further teaches the inclusion of surfactants such as cetyl pyridium chloride ([0069]) in an amount of 0-20% ([0071])(instant claims 5-6, 9 & 18 amount).
BICARD-BENHAMOU teaches the inclusion of thickening agents such as carbopol ([0279]) and teaches a O/W emulsion including carbomer (syn. carbopol) in an amount of 0.2-0.3 % (w/w)([0359])(instant claims 14, 16, 17 & 40).
BICARD-BENHAMOU teaches 1% disinfectant compositions in water (p. 26, Table 1)(instant claim 15).
BICARD-BENHAMOU teaches inclusion of such as sodium lauryl sulfates ([0067]) in an amount of 0% to 20% by weight ([0071])(instant claims 18-19).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of BICARD-BENHAMOU is that BICARD-BENHAMOU does not expressly teach the amount of natural resin (fixing agent).
BASSI teaches methods for preparing water-based paints (title, see whole document) and particularly including a binder such as natural binders – “Examples of natural binders include natural resins, such as rosin or schellac, natural oils, especially oils containing fatty acids which are saturated or contain various degrees of unsaturation, said oils being oxidatively drying if desired, such as linseed oil, ricinene oil, soya oil, castor oil, and the like.” [emphasis added](p. 6, line 33, through p. 7, line 4). And that: “Typically, according to the method of the invention, […] and from 0.1 to 60% by weight, in particular from 1 to 30% by weight, of binder” [emphasis added](p. 5, lines 13-16). The “binder” in this context being regarded as a fixing agent (instant claim 1, item c, natural resin binder/fixing agent).
BICARD-BENHAMOU teaches the inclusion of antimicrobial compositions including zinc oxide, barium sulfate and bound silver ions (abstract), however BICARD-BENHAMOU does not teach nanoparticles of the same.
Tornero et al. teaches Antimicrobial ecological waterborne paint based on novel hybrid nanoparticles of zinc oxide partially coated with silver (title, see whole document), and particularly that: “Zinc oxide nanoparticles (ZnO NPs) are unique in that they can be produced with high surface areas and with unusual crystal structures. The microbiological properties of zinc have also been tested against different bacteria: Bacillus subtilis, Escherichia coli, Pseudomonas fluorescens, Listeria monocytogenes, Salmonella senftenberg and Staphylococcus aureus. Recent interest lies in their NP forms. It is believed that the smaller the size of ZnO, the stronger antimicrobial activity it has.” (p. 131, col. 1, 1st paragraph).
Tornero et al. further teaches that: “As described before antimicrobial biocides are incorporated in small quantities in several products including paints to prevent microbial growth and to extend the functionality and esthetic appearance. The biocides should remain active as long as they are incorporated in the paint. Protection against microbial colonization should last at least a decade. […] The main goal of the biocides for paints is in can and dry film protection (PT6 & PT7). Nevertheless, it is possible to develop new waterborne paints based in silver and zinc oxide NPs which show broad spectrum bactericide activity and it can be tested under the international standard ISO 22196:2011 was modelled after Japanese standard JIS Z 2801.” (p. 131, col. 1, 2nd paragraph).
Torenero et al. concludes that: “ZnO-Ag NPs possess significant antimicrobial properties against bacteria (Pseudomonas aeruginosa, L. monocytogenes, Salmonella spp., S. aureus and B. subtilis). Furthermore, the antifungal activity of NPs using Aspergillus niger was demonstrated. This fact is important from an environmental point of view and, this research improves the understanding of the effect of nanoparticles on molds which a lack of knowledge in relation to the antibacterial activity is detected. ZnO-Ag NPs at a concentration of 0.15 and 0.30% can significantly inhibit the growth of the microorganisms proposed and Pseudomonas spp. was the most resistant. The inhibitory effects increase when ZnO-Ag NPs waterborne paint was formulated adding Zn pyrithione. However, antimicrobial effect is slightly reduced in all bacteria when paint is subjected to an aging process and, being especially remarkable in B. subtilis. Furthermore, after leaching process reduction is observed in all bacteria, except in Salmonella spp. On contrary, the antifungal effect in molds (A. niger) is maintained independent on aging or leaching processes. These results suggest that ZnO-Ag NPs could be used as an effective antibacterial and antifungal in waterborne paints in several applications (food safety, hospital, school, etc).” (p. 140, §Conclusions).
The above cited prior art does not teach the compositions are antiviral (claim 35, item c), however, the antimicrobial effect is considered an inherent property of the composition, as suggested by BICARD-BENHAMOU and Torenero et al., and the examiner cites Gurunathan et al. as teaching antiviral properties of nanoparticles including silver nanoparticles (p. 3, item 3, 2nd paragraph), and zinc oxide nanoparticles (p. 9, item 7). Therefore, the antimicrobial particles suggested by the cited prior art would have also encompassed antiviral activity as claimed (instant claim 35, item c).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a antimicrobial (disinfectant) composition comprising zinc oxide, isopropanol, a natural resin binder (fixative) and a thickening substance (compounds that facilitate the process or appearance of the product), as suggested by BICARD-BENHAMOU, the zinc oxide being nanoparticles, as suggested by Torenero et al. for use in a waterborne (water-based) paint, and the natural resin binder being present in a typical amount as suggested by BASSI teaching methods for preparing water-based paints.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because it would have required no more than an ordinary level of skill to produce a antimicrobial composition as suggested by BICARD-BENHAMOU, and formulate a water-based paint using the same. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Response to Arguments:
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant argues that: “one of the differences between the subject matter of the present invention and what is disclosed by Bicard-Benhamou (Bicard) is that the latter does not show the quantity of natural resin. However, the presently claimed disinfectant composition has an advantage not suggested in any of the cited documents: i.e., there is a prolonged disinfection effect. For example, the presently claimed disinfectant composition, as described in paragraph [0023] of the published application, provides antimicrobial compositions with a sanitizing agent and compounds and metal oxides that provide long-lasting disinfectant activity, for example, lasting for 24, 48 and 72 hours, for the elimination of microorganisms on hard, porous surfaces and for cosmetic use. Paragraph [0042] of the published application discloses that the antimicrobial effect can last for at least 24 hours and up to 120 hours in accordance with claim 3, which recites that disinfectant activity is from 24 to 120 hours. The disinfectant composition can be used in concentrated form, diluted or in combination with other agents.” (p. 11, 4th paragraph). Applicant further argues that: “None of the cited documents suggest such a prolonged effect. Bicard is even focused on providing antibacterial compositions that can have a synergistic effect and, as the Examiner correctly indicates, can contain zinc oxide and other agents. However, Bicard's description is not directed at providing a prolonged effect on different types of surfaces. One of the objectives of the present invention is for a form of the composition, for example a water-based paint, to have an effect lasting up to 72 hours.” (paragraph bridging pp. 11-12). Applicant further argues that: “From the combination of Bicard with Bassi, the Examiner raises the possibility that a person skilled in the art could obtain a water-based paint containing fixing agents and an antimicrobial effect. However, there is no indication in either of these documents that would guide a person skilled in the art to a paint composition with a prolonged antimicrobial effect. The objective is not merely about creating a paint composition with an antimicrobial effect-which, of course, can contain agents like zinc oxide and other binders-but that the composition of the present invention, with the selected agents, allows for a prolonged effect that has been proven in the examples of the present application (see Example 4)” (p. 12, 2nd paragraph). Applicant further argues that: “The person skilled in the art will also understand that a simple combination of microbial agents in a composition such as a paint does not guarantee a prolonged effect. It is possible that during its application, a water-based paint of the prior art that contained fixing agents and an antimicrobial effect could maintain a short-term effect. However, there is no evidence in either Bicard or Bassi that a long-term effect could exist. Therefore, the presently claimed disinfectant composition is not prima facie obvious over the cited references.” (p. 12, 3rd paragraph).
In response to applicant's argument that the claims are distinguished based on a long-lasting disinfectant activity and/or a prolonged effect on different types of surfaces, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Particularly, Applicant has not clearly pointed out the structure in the claim that defines over the cited combination of prior art, rather arguing that the resulting properties of “long-lasting disinfectant activity” define the claimed invention over the prior art. Further, Applicant points to Example 4, Formulation of Antibacterial and Antifungal Paints, including “the formulation of the present invention” (instant Specification, p. 9, lines 1-4)(“selected agents, allows for a prolonged effect that has been proven in the examples of the present application”). However, based on the disclosure it is not clear what exactly “the formulation of the present invention” or how the same correspond to instant claim 1. And particularly, exactly what “selected agents, allows for a prolonged effect that has been proven in the examples of the present application”. Indeed the examiner sees no Example of a formulation of the present invention disclosed in the as-filed Application. The cited combination clearly suggest an antimicrobial zinc oxide which can include an alcohol such as isopropanol (e.g. drying agent) and natural resin (fixing agent), and a thickening agent (a compound that facilitates use of the disinfectant composition), as suggested by BICARD-BENHAMOU, the zinc oxide being nanoparticles, as suggested by Torenero et al. for use in a waterborne (water-based) paint, and the natural resin binder being present in a typical amount as suggested by BASSI teaching methods for preparing water-based paints. The resulting composition clearly would have had a long-lasting disinfectant activity consistent with the instantly claimed invention (MPEP §2112).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that: “In contrast, the present specification clearly states that it is the combination of the ingredients (i.e., the whole composition) that allows the manufacture of disinfectant compositions that have immediate activity and prolonged sanitizing action. The disinfectant activity of the presently claimed disinfectant compositions is efficient in the elimination of pathogenic microorganisms, such as: […]. The presently claimed disinfectant compositions preserve their antimicrobial effect for at least 24 hours and up to 120 hours later.” (paragraph bridging pp. 12-13). Applicant further argues that: “Example 4 of the present application evaluates the application and effect of the formulation in antibacterial and antifungal paints, obtaining as a result the elimination of 99.9% of microorganisms compared to a reference sample at different evaluation times (24 hours, 7 days, 14 days, 28 days) of samples subjected to accelerated weathering conditions in a UV light chamber at 330 nm with periods of 20 hours of light and 4 hours of darkness per day.” And that: “None of the documents cited in the present Office Action disclose or suggest that the compositions (in the form they describe, including a water-based paint) could achieve a prolonged antimicrobial, antiviral, and/or antifungal effect. Therefore, it was not obvious for a person skilled in the art to arrive at this characteristic based solely on the teachings of the prior art.” (p. 13, 3rd paragraph). And further that: “None of the prior art documents provide any experimental tests to suggest a prolonged effect, as each of the documents pursues different objectives that could not be considered a reasonable combination to solve the technical problem posed in the present invention. In contrast, the presently claimed disinfectant compositions demonstrate this prolonged effect” (p. 13, 4th paragraph). And that: “While the cited documents disclose compositions containing agents/ingredients whose purpose is known to a person skilled in the art, the presently claimed disinfectant compositions achieve a completely unexpected effect derived from the entirety of the composition or the combination of all its ingredients, which is neither described nor suggested anywhere in the cited prior art.” (p. 13, last paragraph).
In response to Applicants allegation of unexpected results, MPEP §716.02 makes clear that: “Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected.” And the burden is on Applicant to provide and explain the evidence supporting any allegation of unexpected results (MPEP §716.02(b)). Arguendo, Applicant has provided and explained evidence of unexpected results, “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.” (MPEP §716.02(d)). The examiner particularly notes that Arguments by Applicant cannot take the place of evidence (MPEP 716.01(c)-II). As discussed above, based on the disclosure of the instant Application it is not clear what exactly “the formulation of the present invention” or how the same correspond to instant claim 1, in Example 4. And particularly, exactly what “selected agents, allows for a prolonged effect that has been proven in the examples of the present application”. Indeed the examiner sees no Example of a formulation of the present invention disclosed in the as-filed Application. Therefore, Applicants allegation of unexpected results is not found persuasive.
Conclusion
Claims 1-10, 12-21, 23-24, 32-35, 37, 40, 41 and 43 are pending and have been examined on the merits. The Specification is objected to, claims 30, 31, 36, 38, 39, 42, 44 and 45 are objected to. Claims 1-10, 12-21, 23-24, 32-35, 37, 40, 41 and 43 are rejected under 35 U.S.C. 103. No claims allowed at this time.
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.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619