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 .
DETAILED ACTION
The office acknowledges Applicants filing of the claim amendments and arguments on 11/17/2025 in response to the office action dated 5/20/2025. Claims 12-13, 18 has been amended. Applicants arguments have been considered but are moot in light of the new rejections necessitated by the amendments. The action is made final. Claims 12-28 are pending and are examined based on the merits herein.
Response to Applicants Arguments
Applicants argue that Amirzadeh-Asl is directed to surface-modified inorganic pigments whose surfaces are treated with metal salts (e.g., zinc laurate, zinc formate). The antimicrobial behavior in Amirzadeh-Asl arises from metal salts immobilized on inorganic particles, not from a combination of dodecanoic acid and propionic acid or formate/propionate salts in aqueous solution. Amirzadeh-Asl does not disclose any combination of a C12 fatty acid with propionic acid or a propionate compound, nor does it disclose any pH control, let alone a pH between 6 and 9. Nothing in Amirzadeh-Asl suggests that the surface-treatment teachings of that reference should be transformed into a soluble preservative system for waterborne coating compositions.
In response, the instant claims are to a composition ‘comprising’ the compounds. It is noted that the combination of the compounds can be a composition for e.g. composition comprising immobilized inorganic particles (added separately) as taught by Amirzadeh-Asl. The reference is explicit in teaching the combination of lauric acid (which is dodecaenoic acid, C12 fatty acid) and metal salt of propionic acid. Further the reference teach that in the case of surface treatment of the inorganic solids after the drying, the biocidally acting compounds can be used in liquid form. It is noted that there is no limitation in the instant claims that the composition is an aqueous solution. The reference do not teach the pH as claimed. However as stated below the secondary reference teach waterborne coating compositions, for e.g. at a pH of 8.0. A skilled artisan would have found it obvious to arrive at the claimed composition comprising the antimicrobials as claimed from the combined prior art teachings.
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.
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.
Claim(s) 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Gutzmann et al. (US 20170094985).
Gutzmann teach antimicrobial composition comprising one or more carboxylic acids, propionic acid, and dodecanoic acid, in about 20-10000 ppm (See [0019], claims 2, 23) and the pH of the composition is from about 1-11 or about 2-10 (claims 30-31) for treating animal carcass to reduce microbial population.
A person skilled in the art from Gutzmann would have found it obvious to arrive at the instantly claimed antimicrobial composition. A person skilled in the art would have been motivated to arrive at the claimed antimicrobial composition with a reasonable amount of success and to use to reduce or eradicate microbial population in places where microbial contamination is possible. Thus claim 12 is addressed. As to claims 13-14, Gutzmann teach 20-10000 pm of the acids in the antimicrobial composition. Hence a skilled artisan would have found it obvious to add 20 parts of dodecanoic acid and 50 parts of propionic acid in the mixture and arrive at the claimed composition with a reasonable amount of success and use it to decontaminate microbial surfaces/places.
Claim(s) 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 20100152086 A1).
Wu teach wet clean compositions comprising acids that include propionic acid, dodecanoic acid and a corrosion inhibitor; the pH can be in the range of 7-14 (See claims 1, 4-5). The formulations comprise deionized water (DIW), organic acid and/or the salt thereof, amine and/or quaternary ammonium hydroxide and solvent. The pH of the composition is 7-14, preferably 7-11 (see [0022]. The organic acid can be added in the range of 0.2-5 wt % (Table 10).
From Wu a person skilled in the art would have found it obvious to arrive at the instantly claimed composition. A person skilled in the art would have been motivated to arrive at the claimed composition with a reasonable amount of success. As to the limitation of ‘antimicrobial’ the composition comprising the same agents and in the amounts, e.g. 1% of dodecanoic acid or its salt and 2.5% of propionic acid or its salt will function as an antimicrobial composition because it is the inherent property of the composition. Thus claims 12-14 are addressed.
Claim(s) 12-28 are rejected under 35 U.S.C. 103 as being unpatentable over Amirzadeh-Asl et al. (US 20080317800 A1) in view of Foster (WO 2019090098 A1)
and Cobb (WO2007009161A1).
Amirzadeh-Asl teaches a biocidal composition comprising an inorganic solid, wherein the surface of the inorganic solid is modified with a metal salt. e.g. metal salt of propionic acid and lauric acid; wherein the metal salt is zinc, e.g. zinc laurate (see claims 27, 34, 37, 39) and to a lacquer, paint, glaze, impregnation, coating, plaster, comprising the composition (See claim 55). The composition can include zinc phosphate (See claim 40); wherein the content of the metal salt is 0.01 to 50 wt% based on the weight of the inorganic solid (claim 41). The reference teach that biocides (from Greek/Latin: killers of life) are active compounds which are used in a large number of products in order to kill, depending on the individual case, a broad spectrum of organisms from viruses, bacteria, algae, fungi and insects etc. [0003]. It is taught that this composition can be employed for various uses, such as lacquers and paints, for example watercolors or water-based paints, coatings [0018]. In the case of surface treatment of the inorganic solids after the drying, the biocidally acting compounds can be added in liquid form or in powder form [0041]. The biocidally acting composition according to the invention can be in the form of a powder, paste, suspension or slurry, depending on the field of use [0045].
Amirzadeh-Asl do not teach the pH of the biocidal composition.
Foster teach antimicrobial compounds for use in boosting the efficacy of known antimicrobial, preservative or biocidal compositions. The antimicrobial compositions can be used in waterborne coating composition [0089] and can be used in waterborne coating compositions (see also claims 9, 11-13, 15-18). Exemplary organic acid that can be used in the composition include propionic acid (see [0081]). The composition can be formulated at a pH of 8.0 (see [0315]). A concentrated antimicrobial blend of the invention is prepared by adding the booster compound in amounts ranging from about 0.01 wt.% to 90 wt.%, to a combination of an organic acid or salt thereof and an alcohol, wherein the organic acid or salt thereof and alcohol are added in amounts sufficient so that the amounts of all of the components of the concentrated antimicrobial blend total 100 wt.%, as based on the total weight of the components of the concentrated antimicrobial blend [0086]. The amount of organic acids in the inventive compositions range from 0.005 wt.% to 10 wt.% [0084]. Other organic acids (and salts thereof), other alcohols or other preservatives traditionally used in certain end use applications, which are known to have antimicrobial activity, may also be useful in combination with the booster compounds of the invention [0070]. The reference teaches preservative composition consisting of: a booster compound; b. an organic acid or salt thereof (claim 18). The composition comprises preservatives and polymer dispersions (claim 10).
Cobb teach water-based paint composition comprising least one pigment; at least one alkali soluble polymer in an amount effective to increase the open time of the composition; at least one substituted amine in an amount effective to adjust the pH to about 7 to about 11: a binding effective amount of at least one water dispersible acrylic polymer; and an effective amount of at least one alkali soluble or alkali swellable thickener (Abstract, claim 1). The composition further comprises one or more dispersants, rheology modifiers, defoamers, coalescents or preservatives and mixtures thereof (claim 6).
A person skilled in the art would have found it obvious to formulate the instantly claimed antimicrobial composition, pH of 7.5-9.0 from the combined teachings of the prior art because (i) Amirzadeh-Asl teaches a biocidal composition (kill a broad spectrum of microorganisms, e.g. bacteria, fungi, algae) that comprises e.g. zinc phosphate (0.1 wt% for example), zinc laurate, metal salt of propionic acid that can be employed in water based paint. The amount of the metal salts can range from 0.1-50%. Foster teach antimicrobial waterborne compositions comprising organic acids such as propionic acid; the pH of the antimicrobial composition can be around 8.0; the composition is used in paints, coatings etc. (iii) Cobb teach water-based paint comprising water dispersible acrylic polymer, e.g. water dispersible polymers containing one or more monomers selected from styrene, acrylates, alkylarylates and dienes, polymers including acrylate, methacrylate and methyl methacrylate monomers are common. The pH of the composition range from about 7-11. A person skilled in the art would have been motivated to arrive at the claimed antimicrobial composition with a reasonable amount of success and use it as a biocidal composition in water based paint(s), thus addressing claims 12-14, 15,17. As to the limitation of corrosion inhibitor in claim 17, it is noted that zinc phosphate added to the composition will function as the same irrespective of whether it has been identified as the corrosion inhibitor in the reference. As to claim 16, Amirzadeh-Asl teach metal salts and exemplifies zinc salts. Thus one skilled in the art would have arrived at using the zinc propionate salt in the biocidal composition.
As to claims 18-20, Amirzadeh-Asl teach biocidal compositions comprising zinc laurate, metal salt of propionic acid that can be used in paint coat compositions. Foster teach polymeric dispersions in the composition and Cobb teach polymers in the paint composition, e.g. monomers of styrene and acrylates. From the combined teachings of the prior art a skilled person would have found it obvious to arrive at the claimed waterborne coating composition. A person skilled in the art would have been motivated to arrive at the claimed composition of claim 18 is with a reasonable amount of success and to use to coat surfaces.
As to claims 21, 27 from the teachings of the prior art, a person skilled in the art before the effective filing date of the invention would have arrived at the method because (i) Cobb teach preservative in the paint composition (ii) Amirzadeh-Asl teach metal salt of propionic acid and lauric acid (e.g. zinc laurate) in the biocidal compositions to be used as coat, e.g. paint. A skilled artisan would have been motivated to preserve the waterborne composition by adding the antimicrobial composition of claim 12 to prevent microbial spoilage of the composition and to achieve storage stability. As to the amount of the antimicrobial composition in the waterborne coating formulation as in the instant claims 22-25, it is within the skill of an artisan to add an amount of 0.1-3.0% for example because the amount in a composition is a parameter that can be routinely adjusted and it is within the skill of an artisan to attain a specific diluted composition. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As to claim 26, it is within the skill of an artisan to add the components in a specific order to arrive at the water borne coating composition, for example add the antimicrobial composition to the water borne composition to preserve it from microbials before adding additional components, e.g. pigments. As to claim 28, a person skilled in the art would have found it obvious to add 0.1-3 wt% of the antimicrobial composition to the waterborne coat composition that comprises acrylic polymer before or during the manufacture to reduce microbial spoilage. As to the limitation of ‘wherein the method reduces microbial contamination of processing equipment used during manufacture of the water borne coating composition’ it is obvious that the microbial contamination is reduced because the water borne coating composition comprises antimicrobial agents, e.g. lauric acid and propionic acid or its salts. Thus the claimed method would have been obvious over the combined prior art teachings.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMAMAHESWARI RAMACHANDRAN whose telephone number is (571)272-9926. The examiner can normally be reached M-F- 8:30-5:00 PM (PST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at 5712705239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/ docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Umamaheswari Ramachandran/Primary Examiner, Art Unit 1627