DETAILED ACTION
Status of Application
The Examiner acknowledges receipt of the amendments filed on 8/11/2025 wherein claims 127 and 128 have been amended, claim 144 has been cancelled and claim 147 has been added.
Claims 127-143 and 145-147 are presented for examination on the merits. The following rejections are made.
Response to Applicants’ Arguments
Applicant’s amendment filed 8/11/2025 overcomes the objection of claims 128. This objection is withdrawn.
Applicant’s arguments filed 8/11/2025 regarding the rejection of claims 127-129, 131-138, 141-143 and 145 made by the Examiner under 35 USC 103 over Ito (JP2012/055888) in view of Hasan et al. (US 2011/0112059), evidenced by Ebayashi et al. (US 5354372) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 3/11/2025.
Applicant’s arguments filed 8/11/2025 regarding the rejection of claims 130 and 146 made by the Examiner under 35 USC 103 over Ito (JP2012/055888) in view of Hasan et al. (US 2011/0112059), evidenced by Ebayashi et al. (US 5354372) further in view of Columbo et al. (US 2008/0292684) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 3/11/2025.
Applicant’s arguments filed 8/11/2025 regarding the rejection of claims 139 and 140 made by the Examiner under 35 USC 103 over Ito (JP2012/055888) in view of Hasan et al. (US 2011/0112059), evidenced by Ebayashi et al. (US 5354372) further in view of Morris-Irvin et al. (US 2014/0271507) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 3/11/2025.
In regards to the 103 rejections, Applicant asserts the following:
Ito provides no suggestion of a composition in a non-hydrated form and for this reason alone the claims are allowable.
Columbo does not provide units for molecular weight so it is not possible to determine the molecular weight and for this reason claims 130 and 146 should be considered allowable.
In response to A, the limitation that the film may have a hydrated state and non-hydrated state is related to the composition being used rather than the composition itself. Independent claim 127 is directed to ‘a composition for application to a plant… wherein the composition forms a film that is substantially impermeable to oxygen when in a non-hydrated state on the plant and can be penetrated by oxygen in a hydrated state.’ This is a property of the composition post application to a plant and not so much a property of the composition itself. The property of being oxygen permeability after application of the composition to a surface is a property which requires the composition be applied (an ‘intended use’) and is a property of a film which is secondary to the claimed composition. See MPEP 2111.02 regarding intended use limitations. However, it is important to note that the obvious composition of the prior art would comprise the very same ingredients as the claimed composition (a photosensitizer, a film-forming agent, an antioxidant, and a liquid carrier) and so the properties would be expected to overlap despite being unrecognized.
In response to B, Applicant is correct that Columbo does not teach the units of the molecular weight. However, the standard units for molecular weight are g/mol (or Da) and that would be reasonably applied here.
Rejections, New (claim 147) and Maintained (claims 127-143 and 145-146)
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 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 127-129, 131-138, 141-143 and 145 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP2012/055888; translation provided) in view of Hasan et al. (US 2011/0112059), evidenced by Ebayashi et al. (US 5354372).
Ito is directed to an emulsion composition comprising an antioxidant such as gallic acid and propyl gallate (see pages 1 and 5) (see instant claims 127 and 131-133), a water-soluble film forming polymer such as polyvinyl alcohol (see pages 1 and 9) (see instant claims 127-129) and an antibacterial agent such as a photosensitizer (see page 9) (see instant claim 127). The antioxidant is to be present in an amount of about 0.005-90 % by mass, the antibacterial is to be present in an amount of 0.01-50% by mass, a water-soluble film forming polyvinyl alcohol is to be present in an amount of 1-99.9% by mass with respect to the total composition (see page 6) (see instant claims 143 and 146). See MPEP 2144.05(I) regarding the obviousness of overlapping ranges.
Ito’s emulsion is to comprise a liquid carrier such as water (‘an aqueous carrier’) in which the components are to be emulsified/dispersed (see pages 6 and 10) (see instant claims 127 and 135). The emulsion is to comprise an oily component such as a mineral oil like liquid paraffin, alpha-olefin oligomer (see page 4) and/or a plant-based oil such as sunflower oil (see page 15) (see instant claims 136-137). Ebayashi is cited (see column 4, lines 53-60) as evidence that alpha-olefin oligomers is a poly-alpha-olefin (PAO) as required by instant claim 138.
Ito contemplates surfactants in the emulsion such as fatty acid esters such as glyceryl palmitate and polyoxyethylene and polyoxypropylene alkyl ethers (‘a polymeric surfactant’) (see instant claims 141 and 142).
Regarding instant claim 145, these are intended use limitations as they direct how the composition is to be used (application to a plant, type of plant) rather than provide any structural limitation to the composition. See MPEP 2111.02(II) regarding statements of intended use.
Ito fails to teach the antimicrobial photosensitizer as being selected from the group consisting of a porphyrin, a reduced porphyrin and a combination thereof.
Hassan is directed to photoactivated antimicrobial agents. Hassan’s composition is to comprise a photosensitizer wherein the photosensitizer can be a porphyrin such as chlorin e6 monoethylenediamine monoamide (‘a modified chlorin e6’, ‘a chlorophyllin’) (see [0027, 0036]) and/or ALA-induced protoporphyrin IX (‘a modified PP IX’, ‘a protoporphyrin’) (see [0036]) (see instant claims 127 and 133-134). Regarding the requirement that the photosensitizer ‘generates reactive oxygen species in the presence of light and oxygen’, this property is integral to claimed porphyrin and porphyrin species, e.g. modified PP IX, etc. Thus, despite being unrecognized by the prior art as having this chemical property, the porphyrins of the prior art would necessarily exhibit such a property because they are structurally/chemically the same.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claims 130 and 146 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ito (JP2012/055888; translation provided) in view of Hasan et al. (US 20011/0112059), evidenced by Ebayashi et al. (US 5354372) as applied to claims 127-129, 131-138, 141-143 and 145 above, and further in view of Columbo et al. (US 2008/0292684).
Ito and Hasan fail to teach the polyvinyl alcohol as having a molecular weight between about 50-100 kDa and a degree of hydrolysis equal to or greater than 99%.
Columbo is directed to emulsified compositions comprising an active drug such as antibacterials and antifungals (see [0034]) and a film-forming agent such as polyvinyl alcohol (see [0027]). It is taught that water-soluble film-forming polymers such as polyvinyl alcohol are to have a molecular weight between 500-115 and a degree of hydrolysis of 99% (see [0027]) (see instant claims 130 and 146). It would have been obvious to modify the polyvinyl alcohol of Ito such that it possessed the physical properties set forth by Columbo with a reasonable expectation for success in producing an emulsion composition having a water-soluble polymer with film-forming properties. See MPEP 2144.07 which states that the selection of a known material (PVA of Columbo) based on its suitability for its intended use (PVA film-forming agent) is supportive of obviousness.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claims 139 and 140 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ito (JP2012/055888; translation provided) in view of Hasan et al. (US 20011/0112059), evidenced by Ebayashi et al. (US 5354372) as applied to claims 127-129, 131-138, 141-143 and 145 above, and further in view of Morris-Irvin et al. (US 2014/0271507).
Ito and Hasan fail to teach the emulsion as comprising a chelating agent such as EDTA.
Morris-Irvin is directed to compositions for the skin. The composition may take the form of an emulsion (see [0011]) and contains chelating agents, such as EDTA, so as to form coordination complexes with multivalent metal ions which assists in enhancing the preservative activity and stability of the preparation (see [0093, 0094]) (see instant claims 139 and 140). It would have been obvious to modify Ito’s emulsion to further include a chelating agent so as to improve the stability of the resulting composition as it was known that chelators like EDTA complex unwanted metal ion that degrade and destabilize emulsion compositions.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611