DETAILED ACTION
Status of the Claims
Claims 1-5, 10, 12-15, 17-19, 21, 23-31, 35, 38 and 39 are pending in the instant application. Claims 25-31, 36, 38 and 39 have been withdrawn based upon Restriction/Election. Claims 1-5, 10, 12-15, 17-19, 21, 23-24 and 35 are being examined on the merits in the instant application.
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/19/2026 has been entered.
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All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.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
Applicant’s amendment to the Specification filed 05/19/2026 is acknowledged, and the examiner finds no new matter added with said amendment.
Claim Rejections - 35 USC § 112(b)
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 1-5, 10, 12-15, 17-19, 21, 23-24 and 35 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.
Claim 1 is rejected as being indefinite because the claim recites “such salts are selected from […]” wherein “such salt” is unclear in the context of the claim as the claim recites “one or several metallic salts that act as a long-lasting sanitizing agent of a micro or nanometric size”, and it is unclear which “one or several” of the same is referenced by “such salts” in line 3. Appropriate clarification is required.
Claim 1 is further rejected as being indefinite because the claim recites “wherein such salts are selected from the group comprising zinc oxide, dipyrithione (C10H8N2O2S2) and zinc pyrithione, (C10H8N2O2S2Zn) and a mixture thereof” (in lines 3-5. Which is unclear because (1) “selected from the group comprising” is improper Markush language (MPEP §2173.05(h)), and (2) dipyrithione (C10H8N2O2S2) is not a salt. Claims 2-5, 10, 12-15, 17-19, 21, 23-24 and 35 are rejected as inheriting and doing nothing to clarify the above-discussed issue. Appropriate clarification is required.
Claim 1 is further rejected as being indefinite because the claim recites “c. a fixing agent […] selected from the group comprising […].” (in item c). Which is unclear because “selected from the group comprising” is improper Markush language (MPEP §2173.05(h)). Claims 2-5, 10, 12-15, 17-19, 21, 23-24 and 35 are rejected as inheriting and doing nothing to clarify the above-discussed issue. Appropriate clarification is required.
Claim 1 contains the trademark/trade name Carbopol. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe WATER-SOLUBLE AND WATER-SWELLABLE SYNTHETIC POLYMERIC MATERIALS TO BE USED AS THICKENING, SUSPENDING, OR EMULSIFYING AGENTS1 and, accordingly, the identification/description is indefinite. Claims 2-5, 12-15, 17-19, 21, 23-24 and 35 are rejected as inheriting and doing nothing to clarify the above-discussed issue. Appropriate clarification is required.
Claim 1 is further rejected as being indefinite because the claim recites “d. a compound that facilitates use of the disinfectant composition or an appearance of the disinfectant composition.”, where it is unclear what the metes and bounds of the claimed “compound that facilitates use of the disinfectant composition or an appearance of the disinfectant composition.” should be considered. The examiner particularly notes that there no definition in the specification of “a compound that facilitates use of the disinfectant composition or an appearance of the disinfectant composition”, and this in not, to the knowledge of the examiner, a term of art in the art to which the invention pertains. Thus, one of ordinary skill in the art would not be appraised of the metes and bounds of the claimed subject matter. Claims 2-5, 10, 12-15, 21, 23-24 and 35 are rejected as inheriting and doing nothing to clarify the above-discussed issue. Appropriate clarification is required.
Claim 13 is rejected as being indefinite because the claim recites “wherein it is present in a proportion of vehicle: concentration 10,000:1 w/w.” Where the claim term “vehicle” lacks proper antecedent basis in the claims, and the claim recites “it is” which is not clear exactly what “it is” referencing. Appropriate clarification is required.
Claim 14 recites the limitation "the composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-5, 10, 12-15, 17-19, 21, 23-24 and 35 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); KAPPOCK (US 5,939,203); 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, wherein such salts are selected from the group comprising zinc oxide, dipyrithione (C10H8N2O2S2) and zinc pyrithione (C10H8N2O2S2Zn) and a mixture thereof; (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 selected from the group comprising Carboxy Methyl Cellulose (CMC), Hydroxyethyl Cellulose, Methyl Ethyl Hydroxyethyl Cellulose, Xanthan Gum, Glyceryl Acetate, Carbopol, Polyvinyl Alcohol, a polymer, a natural fixative and mixtures thereof; and (d) a compound that facilitates use of the disinfectant composition or an appearance 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])(instant 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 natural fixing agent”; instant claims 10, 23-24). 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 14). 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). BICARD-BENHAMOU teaches an aqueous and hydroalcoholic formulations ([0365]) including ethanol (A = 50 wt.%, D = 40 wt.%)(instant claim 1, item (b), instant claim 14, concentration of alcohol). 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.
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, amount). 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). 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.
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). 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. BICARD-BENHAMOU teaches thickeners include xanthan gum and hydroxpropylmethyl cellulose, in addition to Carbopols ([0279]).
BICARD-BENHAMOU teaches 1% disinfectant compositions in water (p. 26, Table 1)(instant claims13 & 15). 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.
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). 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.
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). 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.
BASSI teaches “The thickeners for latex paints can be natural polymers, such as guar or xanthan, synthetic polymers, such as polyacry[l]ate or polyurethane based thickener, or semi-synthetic polymers, or chemically modified natural polymers, exhibiting the specific characteristic of bonding and coordinating a large amount of water once they are dissolved in water. Among the chemically modified natural polymers, the thickeners of choice for latex paints have been for a long time the derivatives of cellulose, including carboxymethyl cellulose (CMC), hydroxyethyl cellulose (HEC), ethyl hydroxyethyl cellulose (EHEC), methyl cellulose (MC), methyl hydroxylethyl cellulose (MHEC), hydroxypropyl methyl cellulose (HPMC) ethers alone and blends of them. These polymers thicken the water-phase of the paint and increase the viscosity of the paint overall.” [emphasis added](p. 2, lines 16-27)(instant claim 1, item c; instant claim 10; instant claim 17). The examiner notes that latex paints implies water-based paints (MPEP §2144.01).
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.
KAPPOCK teaches “Disclosed is an aqueous coating composition comprising: (a) water, (b) a base medium, ( c) a pyrithione salt, in an amount of from 0.01 % to 2.0% based upon the weight of the composition, and ( d) zinc oxide compound selected from the many grades suitable for paint manufacture at a concentration of from 0.001 % to 10% based upon the weight of the coating composition. Also disclosed is an aqueous antimicrobial coating composition, characterized by antimildew efficacy and protected against discoloration attributable to the presence of pyrithione therein, said composition being selected from the group consisting of water-based paints, […].” (abstract, see whole document). KAPPOCK teaches an Example Latex Paint containing zinc oxide (and Zinc pyrithione)(col. 8, Comparative Examples A, B; col. 9 Examples 1-2,) each including hydroxyethyl cellulose (instant claims 1, item c, instant claim 10).
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 (and zinc pyrithione), 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 and KAPPOCK, 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, and as suggested by KAPPOCK. 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 05/19/2026 have been fully considered but they are not persuasive.
Applicant argues that: “In response, the composition of claim 1 is amended to specific embodiments that show unexpected antimicrobial effects. Submitted herewith are two documents that contain experimental data that support an improved antibacterial effect for LMB 2444 and LMB 2446.” (p. 10, 2nd paragraph).
In response the examiner argues that the results presented on 05/19/2026 are (1) not in the form of a proper declaration (MPEP §716), and it is not clear exactly how the composition(s) utilized map to the instantly rejected claims such that the examiner can determine if the composition(s) are commensurate with the claims (MPEP 716.02(d)). Additionally, Applicant’s allegation that: “unexpected antimicrobial effects” and that: “The key data to highlight from the report are those mentioning that it meets and unexpectedly exceeds the standard's specifications. Therefore, the presently claimed disinfectant composition provides an unexpectedly prolonged antibacterial effect.” (p. 11, 1st paragraph), is acknowledged. In response the examiner is unclear what exactly “exceeds the standard's specifications” means as Applicant has not explained what said “standard’s specifications” is referencing. The examiner notes that both zinc oxide and zinc pyrithione were known to have antimicrobial effect in water based (latex) paints (see, e.g., BICARD-BENHAMOU teaching zinc oxide as antimicrobial element; and KAPPOCK (newly cited, see whole document).
Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997). Applicant is reminded that the submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987).
Applicant further argues that: “The present specification teaches 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: gram+ and gram- bacteria, such as Escherichia coli, Staphylococcus aureus, Vibrio cholerae, Salmonella enterica, Pseudomonas aeruginosa, among others; fungi such as Candida albicans, Penicillium chrysogenum, Aspergillus, Trichophyton rubrum, Rhizopus nigricans, Alternaria alternata, Mucor corymbilfer, Mucor mucedo, Saccharomyces cerevisiae, Schizosaccharomyces pombe, Cryptococcus neoformans; and viruses with and without enteric coating such as Influenza A(HlNl), SARS-CoV-2, Influenza A(H3N2), Influenza A(H7N9), Rhinovirus, Rotavirus, RSV, Hepatitis A, Adenovirus, Coronavirus, among others. The presently claimed disinfectant compositions preserve their antimicrobial effect for at least 24 hours and up to 120 hours later. The prior art provides no basis for such a prolonged antimicrobial
effect.” (p. 11, 2nd paragraph).
In response the examiner argues that: Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Claims 1-5, 10, 12-15, 17-19, 21, 23-24 and 35 are pending and have been examined on the merits. Claims 1-5, 10, 12-15, 17-19, 21, 23-24 and 35 are rejected under 35 U.S.C. 112(b); and claims 1-5, 10, 12-15, 17-19, 21, 23-24 and 35 are rejected under 35 U.S.C. 103. No claims allowed at this time.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
1 Trademark Serial Number 71662728 registered to LUBRIZOL ADVANCED MATERIALS, INC.
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