DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Status of the Claims
The response and amendment filed 12/16/2025 is acknowledged.
Claims 1, 6-13, 15, 20, 25, 27-28, 32, 41, 43-44, and 46-47 are pending.
Claims 1, 41, and 44 are independent.
Claims 41, 43, 46-47, and 44 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/22/2025.
Claims 1, 6-13, 15, 20, 25, 27-28, and 32 are treated on the merits in this action.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. Rejections not reiterated herein have been withdrawn.
Withdrawn
The rejection of claim 27 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subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention has been withdrawn because of Applicant’s amendment.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
Applicant argues Lonza teaches a composition for use as a disinfectant comprising a hydrogen peroxide source, a non-surfactant organic sulfonic acid or salt thereof, a non-ionic surfactant and an optional additional acid other than the organic sulfonic acid. Applicant argues Lonza does not disclose a composition comprising a corrosion inhibitor package that comprises a fatty acid and a surfactant, nor does it teach any use of a fatty acid for anti-corrosive properties. Applicant argues Lonza makes mention of a corrosion inhibitor that may be used as an additive, but makes no mention of any specific example of a corrosion inhibitor package in the composition of independent claim 1 as amended. Applicant argues Lonza does not disclose use of a fatty acid in the composition for its anti- corrosive properties.
Applicant argues Richter does not fill in the missing element of a corrosion inhibitor including a fatty acid. Applicant argues Richter teaches sanitizing and/or cleaning compositions in both concentrated and in diluted use solutions, using antimicrobially effective short chain fatty acids, a shorter chain weak carboxylic acid, and a strong mineral acid. Applicant argues the shorter chain weak carboxylic acid functions as a solvent. Applicant argues Richter teaches that the short chain fatty acids are antimicrobially effective, however, makes no mention that a fatty acid shows anti-corrosive properties. Applicant argues There is therefore no teaching in Richter of the use a fatty acid for its anti-corrosive properties. Applicant argues one of skill in the art would not look to Richter to fill in the missing gaps of Lonza.
These arguments are unpersuasive.
It is acknowledged that claim 1 includes the limitation of a corrosion inhibitor package comprising a fatty acid and a surfactant, wherein the composition has a brass corrosion rate of 0.07 mg/minute or less.
However, the combined teachings of Lonza and Richter do teach a composition having all of the recited elements including a surfactant and a fatty acid. Thus, the prior art of record teaches compositions having a corrosion inhibitor package as claimed.
It is acknowledged that Lonzo teaches the composition further comprising a corrosion inhibitor (Lonzo, e.g., 0044-0045) but does not teach a fatty acid as a corrosion inhibitor.
However, Richter teaches fatty acid are antimicrobial and effective in sanitizing compositions (Richter, e.g., ¶ spanning c2-c4). The fatty acid is combined with a shorter chain weak carboxylic acid, e.g., c1-C4 carboxylic acid as a solvent for the antimicrobial fatty acid (Richter, e.g., c3:21-25). Richter teaches antimicrobial fatty acids offer broad spectrum antimicrobial activity and persistent, residual activity (Richter, e.g., c2:23-29). Thus, the skilled artisan would have been motivated to include a fatty acid and C1-C4 carboxylic acid, e.g., acetic acid as solvent to improve the antimicrobial properties of Lonzo’s sanitizing compositions.
In response to applicant's argument that neither Lonza nor Richter teaches a fatty acid as a corrosion inhibitor, 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). Here, the skilled artisan, modifying Lonza’s hydrogen peroxide compositions with a fatty acid, e.g., decanoic acid and a solvent for the fatty acid, e.g., acetic acid, would have arrived at a composition having a fatty acid and a surfactant. Said modified composition would naturally have the corrosion inhibiting properties observed by Applicant based on the presence of the added fatty acid.
Further, the corrosion inhibition would not have been considered an unexpected property since it was known in the art that fatty acids, e.g., decanoic acid, have corrosion inhibiting properties for metals. See Eli, Israel Journal of Chemistry, 2008, entire document. It was known that fatty acids show concentration dependent corrosion protection for metals because the fatty acids form a thin and dense organic layer on the metal surface (Eli, e.g., Abstract).
Claim Rejections - 35 USC § 103
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-13, 15, 20, 25, 27-28, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Lonza, WO 2016044607 A1 and Richter, US 6472358 (both cited previously).
Lonza teaches compositions for disinfection comprising hydrogen peroxide, a surfactant, and organic acids (Lonza, e.g., Abstract). Citric acid and acetic acid are named in Lonza, e.g., 0038 in an amount ranging from about 0.5 to about 8wt%. Various acids are taught as stabilizers for hydrogen peroxide when present in amounts ranging from about 0.01 to about 5wt%, e.g., HEDP, phosphoric acid, citric acid, glutaric acid, and dipicolinic acid are named in Lonza, e.g., 0042. Based on Lonza, e.g., 0042, the skilled artisan understood that citric acid and dipicolinic acid were art recognized equivalents for phosphoric acid and HEDP exemplified in Lonza’s stabilized examples (Lonza, e.g., 0057, table 1 and 0063, Table 2). Lonza teaches carboxylic acids including acetic acid, citric acid and mixtures thereof (Lonza, e.g., 0038). Lonza exemplifies compositions with two hydrogen peroxide stabilizers (Lonza, e.g., 0057, Table 1). Lonza exemplifies compositions three acid hydrogen peroxide stabilizers, e.g., glutaric acid, HEDP and phosphoric acid (Lonza, e.g., 0063, Table 2). Phthalic acid is a named optional acid (Lonza, e.g., 0038).
Glutaric acid is a C2 to a C6 alkyl or alkylene dicarboxylic acid (Specification, e.g., 0044).
Glycolic acid and Citric acid are named alpha hydroxy acids (Specification, e.g., 0038 and 0042).
Dipicolinic acid is a named heteroaromatic dicarboxylic acid (Specification, e.g., 0048).
It would have been obvious before the effective filing date of the presently claimed invention to modify compositions comprising hydrogen peroxide by combining a heteroaromatic dicarboxylic acid, e.g., dipicolinic acid, an alpha hydroxy acid, e.g., citric acid, a third acid and a surfactant with a reasonable expectation of success. Since Lonza exemplifies compositions comprising hydrogen peroxide, a surfactant, and three acid hydrogen peroxide stabilizers, the skilled artisan would have found the selection of named hydrogen peroxide stabilizers, e.g., dipicolinic acid and citric acid obvious. The skilled artisan would have seen this modification as a substitution or combination of known hydrogen peroxide stabilizers into a single composition to provide predictable results, e.g., a stabilized hydrogen peroxide composition effective for sterilizing and disinfecting.
Lonza does not expressly teach compositions further comprising a fatty acid and a first organic acid comprising a C1 to a C6 monocarboxylic acid.
Lonza does teach acetic acid (a first organic acid comprising a C1 to a C6 monocarboxylic acid) as an optional acid (Lonza, e.g., 0038).
Richter teaches sanitizing and disinfecting compositions (Richter, e.g., c4:12-24) comprising a fatty acid, at least one carboxylic weak acid. Richter teaches fatty acids are antimicrobial and effective in sanitizing compositions (Richter, e.g., ¶ spanning c2-c4). The fatty acid is combined with a shorter chain weak carboxylic acid, e.g., c1-C4 carboxylic acid as a solvent for the antimicrobial fatty acid (Richter, e.g., c3:21-25). Richter teaches antimicrobial fatty acids offer broad spectrum antimicrobial activity and persistent, residual activity (Richter, e.g., c2:23-29).
It would have been obvious before the effective filing date of the presently claimed invention to modify a hydrogen peroxide composition suggested by Lonza containing hydrogen peroxide, a surfactant, and peroxide stabilizers including heteroaromatic dicarboxylic acid, an alpha hydroxy acid, by including an antimicrobial fatty acid and a c1-c4 carboxylic acid as known from Richter with a reasonable expectation of success. The skilled artisan would have seen this modification as a combination of two known disinfecting agents into a single composition useful for the same utility. The skilled artisan would have been motivated to improve Lonza’s peroxide compositions with a fatty acid antimicrobial agent for improved antimicrobial effectiveness, e.g., broad spectrum antimicrobial activity and residual biocidal activity in the same way suggested by Richter with a reasonable expectation of success.
Applicable to claims 1, 6, 27 and 28: Lonza teach acetic acid (a first organic acid comprising a C1 to a C6 monocarboxylic acid) as an optional acid (Lonza, e.g., 0038). Further, Richter clearly teaches acetic acid useful as a solvent for the antimicrobially active short chain fatty acid when present in an amount of 5-50 wt%. This amount overlaps with the range in claim 28. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Applicable to claims 1, 7-13 and 27-28: Claims 7-13 further limit optional limitations of the second organic acid. Lonza teaches compositions comprising acids in an amount ranging from about 0.01 to about 5wt%, e.g., HEDP, phosphoric acid, citric acid, glutaric acid, and dipicolinic acid are named in Lonza, e.g., 0042. At least citric acid meets the limitations of claims 1, 7-13 and 27-28. Citric acid satisfies the limitations of “a second organic acid” in claim 1 and “alpha hydroxy acid” in claim 8. The limitations of claims 9-13 are also satisfied since they only further limit alternative acids without requiring them. Notably, applicable to claim 10: glutaric acid is named (Lonza, e.g., 0042 and table 2) and applicable to claim 11: phthalic acid is named (Lonza, e.g., 0038). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
It is acknowledged that claim 1 includes the limitation of a corrosion inhibitor package comprising a fatty acid and a surfactant, wherein the composition has a brass corrosion rate of 0.07 mg/minute or less.
However, the combined teachings of Lonza and Richter do teach a composition having all of the recited elements including a surfactant and a fatty acid. Thus, the prior art of record teaches compositions having a corrosion inhibitor package as claimed.
Applicable to claim 15: the recited range overlaps with the amounts suggested in Lonza, e.g., dipicolinic acid in an amount ranging from, e.g., about 0.01% to about 5wt%, preferably form 0.1wt% to 1.0wt% (Lonza, e.g., 0042). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Applicable to claims 1, 20, 27, and 28: Richter teaches medium chain fatty acids, e.g., decanoic acid in an amount ranging from about 0.1wt% to about 5wt% (Richter, e.g., claims 50-51). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Applicable to claims 1, 25, and 27-28: Lonza teaches hydrogen peroxide compositions may be further modified with a surfactant, e.g., sodium dodecyl sulfate in an amount ranging from 0.5 to 5wt% (Lonza, e.g., 0043). Lonza teaches modifying hydrogen peroxide disinfecting compositions with a sulfo based surfactant such as a sulfate was understood to enhance efficacy of hydrogen peroxide disinfection (Lonza, e.g., 0010). These teachings would have prompted the skilled artisan to modify hydrogen peroxide containing compositions with sodium dodecyl sulfate. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Applicable to claim 32: Lonza teaches a concentrate (Lonza, e.g., Abstract and claims). Compositions are effective for sanitizing and disinfecting (Lonza, e.g., 0051).
Accordingly, the subject matter of claims 1, 6-13, 15, 20, 25, 27-28, and 32 would have been prima facie obvious before the effective filing date of the presently claimed invention, absent evidence to the contrary.
Conclusion
No claim is allowed.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A CRAIGO whose telephone number is (571)270-1347. The examiner can normally be reached on Monday - Friday, 9am - 6pm, PDT.
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/WILLIAM CRAIGO/Examiner, Art Unit 1615
/SUSAN T TRAN/Primary Examiner, Art Unit 1615