DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 23-24 are withdrawn.
Claims 1-10 and 13-22 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 03/19/2026 has been entered.
Claim 1 was amended, and new material was added.
Applicant’s amendment has overcome the previous objection to claim 1.
Claims 1-10 and 13-22 are newly rejected under 35 U.S.C. 112.
The rejections of claims 1-10 and 13-22 under 35 U.S.C. 103 have been modified to address the amendments and maintained.
Response to Arguments
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive.
Applicant argues that Cornell fails to teach or suggest the claimed disinfectant composition as a whole and the rejection relies on impermissible hindsight construction (Remarks, pages 5-6). This argument is not persuasive, because Cornell teaches all the elements of the claimed invention as stated previously. As noted in MPEP 2145, any obviousness rejection is in a sense necessarily a reconstruction based on hindsight reasoning and is not improper if it takes into account only knowledge within the level of ordinary skill in the art at the time the claimed invention was made. Applicants have provided no evidence that the rejection is not based on knowledge available to those of ordinary skill in the art.
Applicant argues that the amended claim requires that the at least two different metal salts are simultaneously maintained in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate, while nothing in Cornell teaches co-existing multiple metal salts that remain dissolved and non-particulate under near-neutral pH conditions and rather that Cornell relies on sparing solubility (Remarks, page 6). This argument is not persuasive, because while Cornell does not specifically state the at least two different metal salts are simultaneously maintained in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate, this is considered to be a property of the at least two different metal salts. Cornell teaches the composition comprising silver salts and gold salts as previously stated, and specifically teaches that many soluble silver salts can be used (Cornell, page 44, lines 25-26) and states that any solvent including water which adequately dissolves the compounds is contemplated by the invention (Cornell, page 45, lines 1-3), suggesting the metals are soluble. Further, the instant specification states that silver and gold metal salts (paragraph 0031) may be utilized. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01(II). Therefore, it would be reasonable to expect the combination of a silver and gold metal salt of Cornell would not precipitate as claimed.
Applicant argues that Agrawal is fundamentally incompatible with the claimed disinfectant composition, because Agrawal is directed to particulate antimicrobial materials, while claim 1 excludes particulate systems and requires that multiple metal salts remain simultaneously dissolved and non-particulate (Remarks, pages 6-7). This argument is not persuasive, because there is not limitation in the instant claims excluding particulate systems as suggested by the Applicant in the Remarks. The claim states that the disinfectant composition does not contain nanoparticles, and as previously stated, Agrawal teaches the use of particles greater than 1 micron in size (i.e., microparticles; Agrawal, page 18, paragraph 0140), which therefore reads on the composition as claimed. Regarding the dissolved metal salts, while Agrawal does not specifically state the at least two different metal salts are simultaneously maintained in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate, this is considered to be a property of the at least two different metal salts. Agrawal teaches the composition comprising silver bromide and copper iodide as previously stated. Further, the instant specification states silver bromide is a suitable silver salt (paragraph 0044) and copper iodide is a suitable copper salt (paragraph 0052). Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01(II). Therefore, it would be reasonable to expect the combination of silver bromide and copper iodide taught by Agrawal would not precipitate as claimed.
Priority
Acknowledgment is made of applicant’s claim for priority of U.S. Provisional Application 63/233161 filed 08/13/2021 and U.S. Provisional Application 63/234593 filed 08/18/2021.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
Claim 1 contains new material which is "wherein the at least two different metal salts are simultaneously maintained in solution in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate for at least 24 hours”. Claims 2-10 and 13-22 are dependent on claim 1. Therefore, claims 1-10 and 13-22 are considered to have an effective filing date of 03/19/2026.
Information Disclosure Statement
The information disclosure statements filed 12/17/2025 and 03/19/2026 have been considered.
New Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 and 13-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, there is no support in the specification for the claim amendment of "wherein the at least two different metal salts are simultaneously maintained in solution in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate for at least 24 hours”.
Claims 2-10 and 13-22 are dependent on claim 1, and therefore have the same deficiency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 and 13-22 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.
Regarding claim 1, the recitation of "wherein the at least two different metal salts are simultaneously maintained in solution in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate for at least 24 hours” renders the claim indefinite, because it is unclear whether this is intended to be a property of the claimed at least two different metal salts, if an aqueous solution and a pH of about 6 to about 8 are intended to be a part of the claimed composition, or if this is stating a process by which the composition is prepared. It is the Examiner’s interpretation that this limitation refers to a property of the at least two different metal salts.
Claims 2-10 and 13-22 are dependent on claim 1, and therefore have the same deficiency.
Modified/Maintained 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, 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.
Claims 1-10, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cornell (WO 2006015317 A2), and as evidenced by HighGate Beauty, PubChem (Lactic Acid), and PubChem (Dihydroxytartaric Acid). The references were previously cited by the Examiner.
Regarding claim 1, Cornell teaches an antimicrobial device comprising a composition (i.e., a disinfectant composition) comprising silver salts (i.e. metal salts; Cornell, abstract) and teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), which can be gold salts (i.e., a second metal salt; Cornell, page 54, line 10) and complexes with carriers (Cornell, claim 6) such as glycolic acid (i.e., glocolic acid as evidenced by HighGate Beauty, which uses the two spellings interchangeably), lactic acid (i.e., a hydroxypropanoic acid as evidenced by PubChem) and tetrahydroxysuccinic acid (i.e., dihydroxytartaric acid as evidenced by PubChem; Cornell, page 32, lines 9-12). Cornell teaches nanoparticles of metals as a possible but not required embodiment (Cornell, claim 6), so it would be obvious to formulate the composition to be free of nanoparticles.
Cornell does not specifically state the at least two different metal salts are simultaneously maintained in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate. However, Cornell teaches the composition comprising silver salts and gold salts, and specifically teaches that many soluble silver salts can be used (Cornell, page 44, lines 25-26) and that any solvent including water which adequately dissolves the compounds is contemplated by the invention (Cornell, page 45, lines 1-3), suggesting the metals are soluble. Further, the instant specification states that silver and gold metal salts (paragraph 0031) may be utilized. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01(II). Therefore, it would be reasonable to expect the combination of a silver and gold metal salt of Cornell would not precipitate as claimed.
Cornell is considered to be analogous to the claimed invention, because both are in the same field of metal-containing antimicrobial compositions. Based on the teachings of the reference, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the disinfectant composition as instantly claimed. Therefore, the claimed invention would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date, and absent a clear showing of evidence to the contrary.
Regarding claim 2, Cornell teaches all the elements of the current invention as applied to claim 1. Cornell teaches the use of water as a solvent (Cornell, page 45, line 1).
Regarding claim 3, Cornell teaches all the elements of the current invention as applied to claim 1. Cornell teaches additives such as surfactants (Cornell, page 50, line 14).
Regarding claim 4, Cornell teaches all the elements of the current invention as applied to claim 1. As above, Cornell teaches silver salts (i.e. metal salts; Cornell, abstract) and teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), which can be gold salts (i.e., a second metal salt; Cornell, claim 6).
Regarding claim 5, Cornell teaches all the elements of the current invention as applied to claim 4. As above, Cornell teaches silver salts (i.e. metal salts; Cornell, abstract), teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), and teaches silver, zinc, or copper compounds (Cornell, claim 1) and salts as alternative antimicrobial agents (Cornell, claim 6). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose. See MPEP § 2144.06(I). Therefore, it would be obvious to one of ordinary skill in the art to use a combination of any of the above mentioned salts in the composition.
Regarding claim 6, Cornell teaches all the elements of the current invention as applied to claim 5. As above, Cornell teaches silver salts (i.e. metal salts; Cornell, abstract), teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), and teaches silver and copper compounds (Cornell, claim 1) and salts as alternative antimicrobial agents (Cornell, claim 6). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose. See MPEP § 2144.06(I). Therefore, it would be obvious to one of ordinary skill in the art to use a silver and a copper salt in the composition.
Regarding claim 7, Cornell teaches all the elements of the current invention as applied to claim 5. As above, Cornell teaches silver salts (i.e. metal salts; Cornell, abstract), teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), and teaches silver and zinc compounds (Cornell, claim 1) and salts as alternative antimicrobial agents (Cornell, claim 6). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose. See MPEP § 2144.06(I). Therefore, it would be obvious to one of ordinary skill in the art to use a silver and a zinc salt in the composition.
Regarding claim 8, Cornell teaches all the elements of the current invention as applied to claim 5. As above, Cornell teaches silver salts (i.e. metal salts; Cornell, abstract), teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), and teaches silver, zinc, or copper compounds (Cornell, claim 1) and salts as alternative antimicrobial agents (Cornell, claim 6). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose. See MPEP § 2144.06(I). Therefore, it would be obvious to one of ordinary skill in the art to use a combination of a zinc and a copper salt in the composition.
Regarding claim 9, Cornell teaches all the elements of the current invention as applied to claim 5. As above, Cornell teaches silver salts (i.e. metal salts; Cornell, abstract), teaches the silver compounds may be used in combination with other compounds (Cornell, page 41, line 20), and teaches silver, zinc, or copper compounds (Cornell, claim 1) and salts as alternative antimicrobial agents (Cornell, claim 6). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose. See MPEP § 2144.06(I). Therefore, it would be obvious to one of ordinary skill in the art to use a combination of a silver, a zinc, and a copper salt in the composition.
Regarding claim 10, Cornell teaches all the elements of the current invention as applied to claim 1. Cornell teaches a preferred amount of silver between 0.01-0.025% (Cornell, page 48, line 27), which lies within the claimed range of 0.001-50% by weight. Therefore, it would be obvious to one of ordinary skill in the art to use a combination of salts as discussed above in the same total concentration.
Regarding claim 17, Cornell teaches all the elements of the current invention as applied to claim 1. Cornell teaches light and heat stable silver compounds are used to maintain light and heat stability (Cornell, page 6, line 21-23).
Regarding claim 20, Cornell teaches all the elements of the current invention as applied to claim 1. Cornell teaches the composition can comprise antimicrobial, antifungal, or antiviral agents (Cornell, page 53, line 15) which can be used in treating maladies caused by bacteria, viruses, yeasts, fungi, molds, mildew, protozoa, and microbes (i.e., a variety of pathogens; Cornell, page 49, line 22-23).
Claims 1-6, 10, and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Agrawal (US 20140271757 A1), and as evidenced PubChem (Octanoic Acid). The references were previously cited by the Examiner.
Regarding claim 1, Agrawal teaches an antimicrobial composition used in disinfectants (Agrawal, page 18, paragraph 0145) comprising an inorganic copper salt and a functionalizing agent, which can be caprylic acid (i.e., octanoic acid as evidenced by PubChem; Agrawal, page 5, paragraph 0054) and exemplifies a composition to comprise both AgBr and CuI (i.e., a multi-metal salt including two different metal salts; Agrawal, page 32, table 5, “result R13”). Agrawal teaches in many cases it is not desirable to have very small functionalized particles and teaches the use of particles greater than 1 micron in size (i.e., not nanoparticles; Agrawal, page 18, paragraph 0140).
Agrawal does not specifically state the at least two different metal salts are simultaneously maintained in an aqueous medium at a pH of about 6 to about 8 without forming a precipitate. However, Agrawal teaches the composition comprising silver bromide and copper iodide, while the instant specification states silver bromide is a suitable silver salt (paragraph 0044) and copper iodide is a suitable copper salt (paragraph 0052). Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01(II). Therefore, it would be reasonable to expect the combination of silver bromide and copper iodide taught by Agrawal would not precipitate as claimed.
Agrawal is considered to be analogous to the claimed invention, because both are in the same field of metal-containing antimicrobial compositions. Based on the teachings of the reference, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the disinfectant composition as instantly claimed. Therefore, the claimed invention would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date, and absent a clear showing of evidence to the contrary.
Regarding claim 2, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches the composition comprises water (Agrawal, page 27, paragraph 0221, example 1).
Regarding claim 3, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches the composition comprises polyvinylpyrrolidone (i.e., a polymer; Agrawal, page 27, paragraph 0221, example 1).
Regarding claim 4, Agrawal teaches all the elements of the current invention as applied to claim 1. As above, Agrawal teaches AgBr and CuI (i.e., a combination of a silver salt and a copper salt; Agrawal, page 32, table 5, “result R13”).
Regarding claim 5, Agrawal teaches all the elements of the current invention as applied to claim 4. As above, Agrawal teaches AgBr and CuI (i.e., a combination of a silver salt and a copper salt; Agrawal, page 32, table 5, “result R13”).
Regarding claim 6, Agrawal teaches all the elements of the current invention as applied to claim 5. As above, Agrawal teaches AgBr and CuI (i.e., a silver salt and a copper salt; Agrawal, page 32, table 5, “result R13”).
Regarding claim 10, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches AgBr and CuI in 14 PPM (i.e., a silver salt and a copper salt; Agrawal, page 32, table 5, “result R13”) or 0.0014% by weight, which lies within the claimed range of 0.001-50% by weight.
Regarding claim 13, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches functionalizing agents, to include acetic acid and caprylic acid (i.e., a chelating agent from the list of claim 1, octanoic acid as evidenced by PubChem; Agrawal, page 5, paragraph 0054) and exemplifies a ratio of acetic acid to water of 5:100, which lies within the claimed weight to volume ratio of 0.1:100.0 to about 50.0:100.0 (Agrawal, page 51, table 40, formulation D6). It would be prima facie obvious to one of ordinary skill in the art to use the reasonable alternative caprylic acid in the same ratio.
Regarding claim 14, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches functionalizing agents, to include acetic acid caprylic acid (i.e., a chelating agent from the list of claim 1, octanoic acid as evidenced by PubChem; Agrawal, page 5, paragraph 0054) and exemplifies a ratio of acetic acid to water of 5:100, which lies within the claimed weight to volume ratio of 0.5:100.0 to about 10.0:100.0 (Agrawal, page 51, table 40, formulation D6). It would be prima facie obvious to one of ordinary skill in the art to use the reasonable alternative caprylic acid in the same ratio.
Regarding claim 15, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches the preferred formulation has a pH of about 2-7 (Agrawal, page 19, paragraph 0147), which overlaps the claimed range of about 6 to about 8. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 16, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches copper containing products are not toxic at effective levels (i.e., the composition is non-toxic; Agrawal, page 2, paragraph 0024) and antimicrobial materials are useful for reducing corrosion (i.e., the composition is non-corrosive; Agrawal, abstract).
Regarding claim 17, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches stability to temperature (i.e., heat stable; Agrawal, page 3, paragraph 0038) and further teaches UV stabilization (i.e., light stable; Agrawal, page 6, paragraph 0058).
Regarding claim 18, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches additives which include a hydrophilic polymer and further teaches additives are preferred which keep cuprous ions from oxidizing (i.e. prevents oxidation of the metal ions; Agrawal, page 17, paragraph 0135).
Regarding claim 19, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches the particles of the composition attach (i.e., maintain contact) to various surfaces (Agrawal, page 5, paragraph 0052).
Regarding claim 20, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches the composition can include antimicrobials, antibiotics, antifungal agents, and antiviral agents (i.e., acts against a variety of pathogens; Agrawal, page 18, paragraph 0139).
Regarding claim 21, Agrawal teaches all the elements of the current invention as applied to claim 1. As above, Agrawal teaches the composition can be used on various surfaces (Agrawal, page 5, paragraph 0052). Agrawal further teaches compositions which completely kill the bacteria plated under it, suggesting a 100% kill rate (Agrawal, page 42, paragraph 0316).
Regarding claim 22, Agrawal teaches all the elements of the current invention as applied to claim 1. Agrawal teaches efficacy against microbes (Agrawal, page 1, paragraph 0006) and further teaches the composition can be used on various surfaces (Agrawal, page 5, paragraph 0052). Agrawal does not teach the composition remains efficacious for up to 60 days, but does teach the composition is stable for 1 month (Agrawal, page 46, paragraph 0352; table 31). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
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 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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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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