DETAILED ACTION
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 .
Objections to the Specification-Withdrawn
The objection to the disclosure is overcome by the Applicants’ amendment, and is hereby withdrawn. Specifically, Applicants amended the specification to delete the embedded hyperlink and/or other form of browser-executable code.
Withdrawn Rejections
The rejection of claims 1-14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is overcome by the Applicant’s amendment, and is hereby withdrawn. Specifically, Applicants amended claims 1, 8, 11 and 16 to delete the limitations enclosed in parenthesis.
The rejection of claims 16-17 under 35 U.S.C. 102(a)(2) as being anticipated by Chevalier of record (WO2012130953A1), is withdrawn in view of the cancellation of claims 16-17.
Status of the Claims
Claims 1-15 and18-24 are pending.
Applicants’ arguments filed on 1/15/2026, have been fully considered. Rejections and/or objections not reiterated from previous Office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Applicants’ amendments filed on 1/15/2026, have been fully considered. Applicants have amended claims 1, 3, 7-8 and 11. Applicants have cancelled claims 16-17. Applicants have newly added claims 21-24. Therefore, claims 1-15 and18-24 are subject of the Office action below.
Maintained Rejections
Claim Rejections - 35 USC § 103-Maintained
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The rejection of claims 1-15 and 18-20, is maintained and newly added claims 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Dalko2017 of record (U.S. Pub. No. 20170096381) in view of Neza of record (Cosmetics, 2016, 3(1), 1-11), for the reasons of record set forth in the previous Office action, of which said reasons are herein reiterated.
By way of a background, Applicants, invention (see, e.g., ¶s 0001, 0004, 0042 and 0011-0013 of the specification), is drawn to a method of using a 4-(3-ethoxy-4-hydroxyphenyl) alkyl ketone compound, for preventing product contamination or treating products contaminated with bacteria (e.g., Burkholderia cepacian complex (Bcc)). Bcc (a gram negative bacterium) contamination is among the causes of product recalls.
Under the broadest reasonable interpretation (BRI), consistent with the specification, independent claim 1 is being interpreted as a method for preventing contamination of a product by Bcc, with at least one compound of formula (I):
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, a salt or a solvate thereof, or a mixture thereof, wherein: i) R2 = H, -CH3 or -CH2CH3; and ii) R3 = a linear C1-C12 alkyl, optionally substituted with -OH; or a linear C2-C12 alkenyl group, optionally substituted with -OH.
Independent claim 8 is similar to claim 1, however, claim 8 differs slightly from claim 1 in that claim 8 is directed to preventing contamination of water or an aqueous composition.
Independent claim 11 is similar to claim 1, however, claim 11 differs slightly from claim 1 in that claim 11 requires incorporation of one or more compound of formula (I), into the product.
Regarding claims 1, 8 and 11, Dalko2017 (see abstract, ¶s 0002-0008, Examples 1-4 and reference claims 1-12), teaches use of a composition comprising at least one compound of formula (I):
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, as preserving agents against a broad-spectrum microbial contamination in cosmetic, dermatological or pharmaceutical, or even nutraceutical or oral cosmetic compositions, wherein: i) R2 = H, -CH3 or -CH2CH3; and ii) R3 = a linear C1-C12 alkyl, optionally substituted with -OH; or a linear C2-C12 alkenyl group, optionally substituted with -OH. Dalko2017 at ¶ 0009, states:
“The term "preserving agent" is intended to mean a substance which is commonly added to a composition in order to preserve said composition with respect to a contaminating agent. Advantageously, the compounds of formula (I) according to the invention are used as an antimicrobial and/or antibacterial and/or antifungal agent.” Emphasis added.
An aspect of the invention also consists of incorporating a compound of formula (I) into a composition (see ¶ 0010).
Specifically, Dalko (see Example 1), teaches working example of a broad-spectrum antimicrobial activity of an aqueous composition comprising 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone:
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(a compound of Formula (I) wherein: R2 = H; and R3 = -CH3), against the following broad-spectrum microorganisms, namely:
i) gram-negative bacteria (E. coli and P. aeruginosa);
ii) gram-positive bacteria (E. faecalis);
iii) yeast (C. albicans); and
iv) mould (A. niger).
Accordingly, at the time of the instant invention, a person skilled in the art would have understood that Dalko2017 contemplates a method for protecting a composition against contamination by broad-spectrum microbial agents (bacteria, fungus and yeast), with at least one compound of formula (I). One skilled in the art would have envisaged a method of using at least one compound of formula (I), in order to protect a composition against contamination by bacteria (e.g., Bcc), in the Dalko2017 disclosures.
Dalko2017 differs slightly from the Applicants’ invention only insofar as the cited reference is not explicit in disclosing Bcc. However, the claimed invention would have been obvious over Dalko2017.
This is because at the time of the instant invention, it was known in the art that product contamination by microorganisms such as E. coli, P. aeruginosa, Bcc and E. faecalis is among the leading cause of product recalls. For example, Similar to Dako2017 (see discussions above), Neza (see abstract and Table 1), discloses product contamination by microorganisms such as E. coli, P. aeruginosa, Bcc, C. albicans, mould and E. faecium among the leading cause of product recalls.
Therefore, at the time of the instant invention, a person skilled in the art would have found it obvious to formulate a composition comprising at least one compound of formula (I), with a reasonable expectation of: i) protecting the composition against contamination by microorganisms such as E. coli, P. aeruginosa, Bcc, C. albicans, mould and E. faecium; and ii) preventing product recall.
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
Therefore, claims 1, 8 and 11 are obvious over Dalko2017 and Neza.
Regarding claims 2-3, 7, 10, 21 and 23, Dalko2017 discloses: i) an aqueous composition (see discussions above); and ii) that a compound of formula (I) can be used in a proportion of from 0.01 % to 5% by weight, relative to the weight of the composition (see ¶ 0024).
Regarding claims 4-6, 18-21 and 24, Dalko (see ¶ 0020), teaches compound:
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and compound:
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Regarding claim 9, the cited references combine to disclose cosmetics (see discussions above).
Regarding claims 12 and 15, Dalko2017, discloses incorporation of a compound of formula (I) into a product (see discussions above).
Regarding claims 13-14, Dalko2017 discloses, wherein at least one compound of formula (I), can be added to a product or incorporated into a product (see discussions above).
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(a). From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited references.
Response to Applicants’ Arguments
Applicants raised several arguments (see pages 10-14 of Remarks), alleging that the rejection is improper on the grounds that:
1) Dalko2017 and the present application are commonly owned by L’Oreal (see page 10, footnote1 of Remarks).
Response:
The publication date of Dalko2017 is 04/06/2017, which is before the priority date of the present application (11/28/2019). Therefore, it is proper to rely on Dalko2017 as prior art. Furthermore, in order to disqualify a commonly owned patent or published application as prior art, the arguments must be presented in the form of an affidavit or declaration (see MPEP § 715). However, in the instant case, the Applicants’ argument is presented in the form of an attorney statement.
2) Applicants have surprisingly and unexpectedly discovered that compounds of formula (I), were found to have activity against a gram-negative bacterium (Bcc, see pages 11-13 of Remarks).
Response:
Regarding the advantageous results alleged by the Applicants for rebutting the obviousness of claimed invention, please note that advantageous results alone are not sufficient for overcoming an obviousness. The results must be unexpected (emphasis added). For the establishment of unexpected results, a few notable principles are well settled. It is Applicants’ burden to explain any proffered data and establish how any results therein should be taken to be unexpected and significant. See MPEP 716.02 (b). The claims must be commensurate in the scope with any evidence of unexpected results. See MPEP 716.02 (d). Further, A DECLARATION UNDER 37 CFR 1.132 must compare the claimed subject matter with the closest prior art in order to be effective to rebut a prima facie case if obviousness (emphasis added). See, MPEP 716.02 (e).
In instant case, the alleged advantageous results are not unexpected, rather would have been reasonably expected for the following reasons:
At the time of the instant invention, compounds of formula (I) were known to have broad spectrum activities against microorganisms, namely: i) gram-negative bacteria (E. coli and P. aeruginosa); ii) gram-positive bacteria (E. faecalis); iii) yeast (C. albicans); and iv) mould (A. niger). Product contamination by microorganisms such as E. coli, P. aeruginosa, Bcc, C. albicans, mould and E. faecium among the leading cause of product recalls. Please see discussions above.
Treatment of product contaminated with 106 gram-negative bacterium (E. coli and P. aeruginosa) per gram of product with compound of formula (I), was found to result in <200 gram-negative bacterium (E. coli and P. aeruginosa) per gram of product (see Dalko2017 at ¶s 0064-0065).
Accordingly, it would not have been a surprising and an unexpected observation that treatment of product contaminated with gram-negative bacterium (e.g., E. coli, P. aeruginosa or Bcc), with compound of formula (I), was found result in high or excellent efficacy against the gram-negative bacterium (e.g., E. coli, P. aeruginosa or Bcc).
3) The cited references fail to motivate or lead a person skilled in the art to using compounds of formula (I) against Bcc (see page 13 of Remarks)..
Response:
In response to the Applicants’ arguments alleging that there is no motivation for a person skilled in the art to combine the cited references, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, as set forth in the rejection above and in the previous Office action, at the time of the instant invention, product contaminated with gram-negative bacteria (E. coli and P. aeruginosa), can be treated with compounds of formula (I), and product contamination by gram-negative bacteria (E. coli, P. aeruginosa and Bcc), is among the leading cause of product recalls. Please see discussions above.
This would form sufficient motivation for one of ordinary skill in the art to employ compounds of formula (I) against by gram-negative bacteria (E. coli, P. aeruginosa and Bcc), with a reasonable expectation of: i) protecting the composition against contamination by gram-negative bacteria (E. coli, P. aeruginosa and Bcc); and ii) preventing product recall.
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
4) The instant invention allegedly satisfies a long felt but unsatisfied need which was recognized, persistent, and not solved by others. The arguments proffered alleged what appears to be the Applicants’ position alleging that at the time the instant invention was made, product contamination by gram-negative bacterium (e.g., Bcc) existed for a long period of time without a solution. Please see pages 13-14 of Remarks.
Response:
Applicants’ arguments have been fully considered but they are not found to persuasive. This is because at the time of the instant invention, product contaminated with gram-negative bacteria (E. coli and P. aeruginosa), can be treated with compounds of formula (I). Pleas see discussions above. Furthermore, it was also known in the art compound that have activity against P. aeruginosa (a gram-negative bacterium), can also exhibit activity against Bcc (a gram-negative bacterium). For example, Livermore et al (Int. J. Antimicrobial Agents, 2009, 34, 402-406, cited in response to the Applicants’ allegations), discloses activity of compound FR26405 against P. aeruginosa (a gram-negative bacterium) and Bcc (a gram-negative bacterium). Please see abstract.
For the reasons above, and those made of record in the previous Office action, the rejections are maintained.
Conclusion
No claim is allowable.
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.
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Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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