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 .
Status of the Claims
Claims 1-4, 8-10, 13-16, 18, 21, 26, 28-29, 32 and 35 are pending in the present application.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
Claim Objections
Claim 28 is objected to because of the following informalities: claim 28 depends from cancelled claim 27. Appropriate correction is required.
For examination purposes, claim 28 is being construed as depending from claim 26.
Claim Rejections - 35 USC § 112
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 1-4, 9-10, 13-16, 18 and 21 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.
Instant claim 1 states “C0-C10 carboxylic acid”. It is unclear what is meant by a C0 carboxylic acid, since the compound would contain zero carbon atoms. A carboxylic acid requires at least one carbon atom (i.e., formic acid, HCOOH, is a C1 carboxylic acid since it comprises one carbon atom). It is recommended that Applicant amend claims 1 and 8 to delete “C0-C10” from the claims. The claims would then clearly state that the composition comprises a carboxylic acid, a salt thereof, or both, wherein the carboxylic acid is represented by formula R-COOH, wherein R is H or a C1-C10 alkyl.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “C0 carboxylic acid” in claim 1 is used by the claim to mean “formic acid,” while the accepted meaning of formic acid is “C1 carboxylic acid.” The carboxyl carbon is numbered as C1 in a carboxylic acid. Therefore, formic acid is a C1 carboxylic acid. The term “C0 carboxylic acid” is indefinite because the specification does not clearly redefine the term.
Claims 2-4, 9-10, 13-16, 18 and 21 depend from claim 1 and do not clarify the meaning of C0 carboxylic acid. Therefore, the claims are also indefinite.
Claim 1 is also indefinite because it states “a disinfectant consisting of (i) an oxidizing agent, of (ii) propionic acid, a salt thereof, or both, and of (iii) an acid component”, and the claim also states “said effective amount comprises a w/w concentration of peroxypropionic acid within said composition of at least 10 ppm”. The claim does not state that the disinfectant includes peroxypropionic acid. It is unclear if the peroxypropionic acid is a different part of the sanitizing composition, separate from the disinfectant. The instant specification states that the composition comprising an oxidizing agent, propionic acid, and an acid component results in a sanitizing effective amount of peroxypropionic acid ([006], [048], [054], [108]). Therefore, it is apparent from the specification that the disinfectant includes peroxypropionic acid, which is produced by the combination of the oxidizing agent, propionic acid and an acid component.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 9, 13, 15-16, 18 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wright et al. (WO 94/06294 A1).
Regarding instant claim 1, Wright et al. disclose a microbicidal composition comprising 30 ppm peracetic acid (PAA) (oxidizing agent), 500 ppm propionic acid (PA), and 56 ppm acetic acid (AA) (acid component) (pg. 13, Table 4). Regarding the concentration of peroxypropionic acid, the instant specification states that the combination of the oxidizing agent, propionic acid and an acid component results in the peroxypropionic acid. Wright et al. disclose combining the same components as instantly claimed, resulting in an effective microbicidal composition. In the absence of evidence to the contrary, the combination according to Wright et al. comprising 30 ppm peracetic acid (PAA), 500 ppm propionic acid (PA), and 56 ppm acetic acid (AA) would inherently result in at least 10 ppm peroxypropionic acid.
Similarly, in the absence of evidence to the contrary, the composition according to Wright et al., which comprises the same components as instantly claimed, will inherently have a pH between 0 and 5.5.
Regarding instant claim 2, Wright et al. disclose the oxidizing agent peracetic acid (i.e., a percarboxylic acid) (Table 4).
Regarding instant claim 3, Wright et al. disclose 500 ppm propionic acid (PA) (Table 4).
Regarding instant claim 9, Wright et al. disclose the compositions comprising water as the solvent (Table 4).
Regarding instant claim 13, Wright et al. disclose peracetic acid (Table 4).
Regarding instant claim 15, Wright et al. disclose that the compositions show antimicrobial activity for 14 days (i.e., stability) (Table 4).
Regarding instant claim 16, Wright et al. disclose contacting a mixed culture of bacteria with the microbicidal composition (Example 4).
Regarding instant claim 18, Wright et al. disclose that the compositions can be applied to the article or surface in a large number of ways. For example, they can be sprayed or can be wiped using a suitable distributor, e.g. a cloth. In many embodiments, however, the compositions are employed as a soak bath in which the article to be disinfected is immersed in the bath, and then rinsed after treatment to remove substantially all of the disinfectant (pg. 6, ln. 16-22).
Regarding instant claim 21, Wright et al. disclose inhibiting bacteria growth for 14 days (Table 4).
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.
Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Wright et al. (WO 94/06294 A1).
The teachings of Wright et al. are discussed above.
Regarding instant claim 4, Wright et al. do not explicitly disclose a microbicidal composition comprising 250 to 1000 ppm peroxypropionic acid.
Regarding instant claim 14, Wright et al. do not explicitly disclose a microbicidal composition comprising 300 ppm to 1 wt.% oxidizing agent, and a total w/w concentration of propionic acid and acid component between 250 and 4000 ppm.
Wright et al. teach that aliphatic peracids comprise greater than about 0.1 % by weight of the composition, often from about 0.5% to about 20% by weight, and most often from about 1 to about 15% by weight (pg. 4, ln. 13-15). Hydrogen peroxide typically comprises from about 0.5 to 20% by weight of the compositions according to the present invention, often from about 0.75 to about 15%, and most often from about 1 to about 10% by weight (pg. 4, ln. 20-22).
Wright et al. teach that the peracid solutions prepared just prior to use can have a very wide range of peracid concentrations depending on the application, and the conditions under which they are to be applied. The concentration of peracid can often be up to about 2 % by weight, although the concentration is usually from about 0.001 % to about 1 %, preferably from about 0.002% to about 0.75% (pg. 7, ln. 15-19; pg. 8, ln. 3-8 and 20-27).
Wright et al. teach solutions diluted to give applied peracetic acid concentrations of 800 ppm and 1600 ppm (pg. 10, Example 2). Wright et al. also teach a formulation comprising 1% peracetic acid, 9% acetic acid and 6% H2O2, which is diluted for use (pg. 14, Table 5, Formulation C).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Wright et al. comprising an antimicrobially effective concentration of peracid, acid, and oxidizing agent.
The examiner respectfully points out the following from MPEP 2144.05: “[W]here 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); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969); Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed.Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Claims 8, 10, 26, 28-29, 32 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Wright et al. (WO 94/06294 A1) as applied to claims 4 and 14 above, further in view of Ho (US 8,263,151).
The teachings of Wright et al. are discussed above.
Regarding instant claims 8, 26, 28-29, 32 and 35, Wright et al. do not explicitly disclose a microbicidal composition comprising lactic acid and citric acid.
Wright et al. teach that the aliphatic peracid can be any aliphatic peracid that has a disinfectant effect. However, in many embodiments, the aliphatic peracid is selected from the group containing soluble peracids, which may include low molecular weight aliphatic peroxyacids, for example containing up to 6 carbon atoms, of which especially preferred examples comprise peracetic acid and perpropionic acid. The peracid may alternatively be selected from hydroxy-peracids, for example percitric or pertartaric acid (pg. 3, ln. 32 to pg. 4, ln. 7).
Ho teaches compositions comprising an organic peracid, a 2-hydroxy organic acid, such as citric acid and lactic acid, hydrogen peroxide, water and optionally an anionic surfactant, wherein the compositions are useful for sanitizing and maintaining the quality of produce including vegetables and fruits (col. 1, ln. 41 to col. 2, ln. 9; col. 5, ln. 4-10 and 55-67; col. 6, ln. 1 to col. 7, ln. 8; col. 7, ln. 28-47).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Wright et al. wherein the microbicidal formulations comprise citric acid, lactic acid, an organic peracid and hydrogen peroxide. Such would have been obvious because Wright et al. teach that the peracid may be selected from hydroxy-peracids, for example percitric or pertartaric acid, and Ho teaches citric acid and lactic acid combined with hydrogen peroxide and peracids as sanitizing compositions for produce.
A person of ordinary skill in the art would reasonably expect the selection of citric acid and lactic acid as the aliphatic acids and percitric acid and perlactic acid as the peracids would be effective for the control of microbes since Wright et al. teach that the peracids include low molecular weight peracids and hydroxy-peracids, such as percitric acid, and Tennakoon et al. teach percitric acid and perlactic acid as being effective antimicrobial agents.
Regarding instant claim 10, Wright et al. do not explicitly disclose a microbicidal composition comprising a surfactant.
Ho teaches that the antimicrobial compositions may optionally comprise an anionic surfactant (Abstract; Claim 7).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to include an anionic surfactant in the compositions according to Wright et al., as reasonably taught by Ho.
Claims 1-3, 9, 13-16, 18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. (JP 4533618 B2).
Regarding instant claim 1, Nakahara et al. teach a sterilizing cleanser composition having such high bactericidal effect as to be suitable in sterilizing cleansing medical equipment, water treatment apparatuses, food production machines, etc. (Abstract; [0001]; Claim 1). Nakahara et al. teach that it is possible to improve the disinfecting detergency of organic peracid by mixing and dissolving persulfate in an organic peracid aqueous solution ([0014]). The disinfecting detergent composition of the present invention contains at least an effective amount of an organic peracid and a persulfate, and further contains a non-amino phosphonic acid or a salt thereof as necessary, if necessary, and has a specific pH range ([0019]). The organic peracid that can be used in the present invention is not particularly limited, and any organic peracid known in the art can be used. Specifically, peralkylic acids such as formic acid, peracetic acid, perpropionic acid, persuccinic acid, perglutaric acid, per-β-alanine, per-4-aminobutyric acid, per-5-aminovaleric acid, per-6-amino acid and peraminocarboxylic acids such as per-n-caproic acid. These organic peracids may be used alone or in combination of two or more ([0020]). Of the above organic peracids, peracetic acid, perpropionic acid, persuccinic acid and perglutaric acid are preferred ([0023]). Nakahara et al. teach compositions comprising propionic acid, hydrogen peroxide, potassium hydrogen persulfate, and a pyrophosphoric acid, wherein the concentration of percarboxylic acid is greater than 10 ppm and the pH of the solutions is less than 5.5 ([0059]-[0062]; Table 3, Examples 7-9 and 18; Claims 1-2, 4). It is preferable that the pH of the aqueous solution as the disinfecting detergent composition of the present invention at 25 °C is in the range of 2.5 to 0.3 ([0031]; Claim 2).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare a disinfectant composition according to Nakahara et al. comprising hydrogen peroxide (oxidizing agent) and a combination of two or more of propionic acid and additional organic acids, such as acetic acid. Such would have been obvious because Nakahara et al. teach that their compositions comprise hydrogen peroxide and a combination of two or more peracids, including peracetic acid, perpropionic acid, etc.
Regarding instant claim 2, Nakahara et al. teach hydrogen peroxide as an oxidizing agent.
Regarding instant claim 3, Nakahara et al. teach compositions comprising 4.5-18.0 wt.% propionic acid (Table 3, Examples 7-9 and 18).
Regarding instant claim 9, Nakahara et al. teach an aqueous solution in the examples (Examples 1-21).
Regarding instant claim 13, Nakahara et al. teach hydrogen peroxide (Examples 1-21).
Regarding instant claim 14, Nakahara et al. teach the disinfecting detergent composition is a one-part aqueous solution and in an aqueous medium, hydrogen peroxide at a rate of 3.5 to 6% by weight, potassium hydrogen persulfate at a rate of 0.2 to 5% by weight, and potassium hydrogen sulfate and potassium sulfate at a rate of 3%. An aqueous solution obtained by adding acetic acid in the form of a heavy salt in an amount of 5 to 30% by weight and 1-hydroxyethylidene-1,1-diphosphonic acid or a salt thereof in an amount of 0.05 to 1% by weight ([0015]). The amount of the active ingredient of the organic peracid in the aqueous solution is preferably 0.1% by weight or more, more preferably in the range of 0.4 to 6% by weight, and more preferably in the range of 1 to 4% by weight ([0021]). The weight ratio of the organic peracid, organic acid, and hydrogen peroxide in the aqueous solution is not particularly limited, and a general ratio can be applied, but usually, (organic peracid + organic acid) / peroxide the weight ratio of hydrogen is in the range of 0.1 to 15, preferably in the range of 0.5 to 10, and particularly preferably in the range of 1 to 5. The ratio of hydrogen peroxide to the aqueous solution is preferably 6% by weight or less ([0022]).
Nakahara et al. teach that the effective amount of the persulfate in the aqueous solution is preferably in the range of 0.1 to 10% by weight, more preferably in the range of 0.5 to 6% by weight ([0026]). The mixing ratio (molar ratio) of the organic peracid and the persulfate in the aqueous solution is preferably in the range of 95/5 to 5/95. A more desirable compounding ratio is in the range of 90/10 to 20/80, and within this range, a particularly excellent sterilization and cleaning effect is obtained. In addition, the molar ratio of the organic peracid means a peracetic acid conversion value ([0028]). The non-amino phosphonic acid in the present invention has a function as a stabilizer for organic peracids and persulfates. Although the amount of the active ingredient of the non-amino phosphonic acid varies depending on the type of the acid, it is preferably in the range of 0.01 to 2% by weight, more preferably in the range of 0.05 to 1% by weight ([0029]).
Nakahara et al. further teach that when the disinfecting detergent composition is used after being diluted, a method of diluting the organic peracid-containing aqueous solution to a predetermined multiple and then dissolving the persulfate in the diluent may be mentioned ([0039]). More preferable one-part disinfecting detergent composition has an aqueous medium containing 3.5 to 6% by weight of hydrogen peroxide and 0.2 to 5% by weight of potassium hydrogen persulfate. In the form of a triple salt of potassium hydrogen sulfate and potassium sulfate, acetic acid is added in an amount of 5 to 30% by weight, and 1-hydroxyethylidene-1,1-diphosphonic acid or a salt thereof is added in an amount of 0.05 to 1% by weight. It is an aqueous solution obtained by adding in proportions ([0042]). Even when applied to the sterilization washing step with a dilution ratio solution, a sufficient sterilization effect is exhibited ([0043]). The disinfecting detergent composition of the present invention may be used as it is for disinfecting and washing, but generally it is used as a stock solution for treatment when diluted with water at the time of use (water diluent). The dilution ratio can be appropriately selected depending on the concentration of the organic peracid, the method of using the composition, the target bacteria and the state of contamination, but is usually about 10 to 300 times ([0044]). See also [0073]-[0076].
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to determine through routine experimentation the effective concentrations of the components of Nakahara et al. wherein upon dilution the composition is effective for disinfecting.
The examiner respectfully points out the following from MPEP 2144.05: “[W]here 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); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969); Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed.Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Regarding instant claim 15, Nakahara et al. teach the coexistence of a non-amino phosphonic acid in the mixed solution can greatly improve the storage stability of persulfates and organic peracids in a dissolved state ([0014]). By coexisting a non-amino phosphonic acid, the disinfecting effect of the organic peracid and persulfate can be stabilized in an aqueous solution, and a disinfecting detergent composition that can be stored for a long time can be provided ([0017]). The inventors of the present invention require that an organic acid, hydrogen peroxide and an organic peracid and a non-amino phosphonic acid coexist in order to stably present a persulfate in a dissolved state in an aqueous solution for a long period of time. It has been found that this can be realized by adjusting the pH range of the aqueous solution to an appropriate range. In other words, the inventors of the present invention have found that it is possible to provide a one-part disinfecting detergent composition containing a persulfate salt whose stability has been improved to a level that can be distributed as a product on the market ([0040]). See also [0052] and [0068]-[0070].
Therefore, Nakahara et al. teach the long term stability of their composition, such that it can be distributed as a product on the market. In the absence of evidence to the contrary, the composition according to Nakahara et al. would be stable within the scope of the instant claims.
Regarding instant claim 16, Nakahara et al. teach that the method of disinfecting and washing can be carried out by bringing a disinfecting detergent into contact with the surface of the material to be disinfected and washed in a dynamic or static state for a time necessary for the effect to be exhibited ([0046]).
Regarding the reduction in colony forming units, Nakahara et al. teach application of the same composition to a surface for disinfection. In the absence of evidence to the contrary, the method according to Nakahara et al. would inherently reduce the CFU of pathogens on the surface by a factor of 10 to 100,000 as compared to a non-treated substrate.
Regarding instant claim 18, Nakahara et al. teach the method of disinfecting and washing can be carried out by bringing a disinfecting detergent into contact with the surface of the material to be disinfected and washed in a dynamic or static state for a time necessary for the effect to be exhibited. For example, sterilization and cleaning of an apparatus having a liquid flow circuit such as an artificial dialysis apparatus is performed by flowing a sterilizing detergent through the liquid flow circuit for a specified time (single-pass method) or by filling and leaving (reservation method). Alternatively, it can be carried out by a method combining these methods. Further, when the disinfecting detergent composition of the present invention is applied to disinfecting washing of an artificial dialysis device, disinfection of the inner surface of the device, calcium carbonate formed in the circuit derived from the dialysate used in the dialysis step excellent effect for removing scale ([0046]). The present invention can be suitably applied to sterilization and cleaning of a filtration membrane including a treated water storage tank surface or a reverse osmosis membrane ([0047]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to apply the disinfecting detergent of Nakahara et al. to the substrate by any necessary means, including injecting into a liquid flow circuit, application to the surface of a tank, etc. A person of ordinary skill in the art would readily be able to determine the proper method for application of the disinfecting detergent depending on the type of surface to be sterilized.
Regarding instant claim 21, in the absence of evidence to the contrary, the method according to Nakahara et al. would inherently inhibit pathogen formation on the substrate within a period of at least 5 days.
Response to Arguments
Applicant's arguments filed 30 September 2025 have been fully considered but they are not persuasive. Applicant argues that Nakahara requires organic acid, persulfate and non-amino phosphonic acid and is completely silent re instantly claimed disinfectant consisting of (i)-(iii). Of note, the non-amino phosphonic acid of Nakahara is definitely not the C0-C10 carboxylic acid of instant claim 1. Applicant asserts that based on Nakahara, a skilled artisan would be under the impression that the disinfectant has to include persulfate together with an inorganic acid (non-amino phosphonic acid).
The examiner respectfully argues that instant claim 1 recites “A sanitizing composition comprising…” The transitional phrase “comprising” is open-ended and inclusive of non-recited components. Therefore, the composition comprises the specific disinfectant claimed, and may additionally comprise any other non-recited components. The examiner recommends that Applicant amend the claims to recite “A sanitizing composition consisting of…” if they would like to exclude additional non-recited components.
Nakahara et al. teach a sanitizing detergent composition comprising hydrogen peroxide, an organic acid and a peracid, wherein the organic acid includes a combination of two or more organic acids, such as propionic acid, acetic acid, citric acid, etc. It would have been prima facie obvious to combine hydrogen peroxide with two or more organic acids, such as propionic acid and an additional organic acid, to produce peracids and the sanitizing detergent composition according to Nakahara et al.
Applicant further argues that claims 2 and 13 specifying the "oxidizing agent" towards peroxides or precursors thereof (which are definitely not a persulfate) should be considered as inventive over the cited art.
The examiner respectfully argues that Nakahara et al. teach an aqueous solution of hydrogen peroxide and an organic acid, thus producing the organic peracid.
Applicant also argues that Nakahara clearly guides a skilled artisan using peracetic acid as the most preferable disinfectant. To this end, a skilled artisan would be refrained from using peroxypropionic acid based sanitizing compositions.
The examiner respectfully argues that Nakahara et al. teach that suitable organic peracids include perpropionic acid. Nakahara et al. teach that of the organic peracids, peracetic acid, perpropionic acid, persuccinic acid and perglutaric acid are preferred.
The examiner directs attention to MPEP 2123(I) and (II):
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. (JP 4533618 B2), as applied to claims 1-3, 9, 13-16, 18 and 21 above, further in view of Smith et al. (US 2014/0120179 A1).
The teachings of Nakahara et al. are discussed above.
Regarding instant claim 10, Nakahara et al. do not explicitly disclose a surfactant.
Smith et al. teach an enhanced stability peroxycarboxylic acid composition comprising: at least one peroxycarboxylic acid; hydrogen peroxide; and a stabilizing agent, wherein the stabilizing agent is a nitrogen-containing compound or a sodium salt that is effective for enhancing peroxycarboxylic acid stability and is present in a weight ratio of peroxycarboxylic acid to stabilizing agent from about 1000:1 to about 10:1 ([0008]). The peroxycarboxylic acid compositions also include at least one surfactant. Surfactants may be included in the compositions to enhance microbial efficacy, increase solubility of the peroxycarboxylic acid and/or to maintain the pH of the composition. Particularly suitable surfactants for use according to embodiments of the invention include, nonionic, anionic, amphoteric, and/or cationic surfactants ([0092]).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include a surfactant in the compositions according to Nakahara et al. in order to enhance microbial efficacy, increase solubility of the peroxycarboxylic acid and/or to maintain the pH of the composition, as reasonably suggested by Smith et al.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response above is repeated.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616