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 .
Priority
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. 120 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).
The disclosures of the prior-filed applications, Application No. 62/570,808, 62/591,591, 62/591,588, PCT/US2018/055367 and 16/755,361, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed applications do not provide adequate written support for an alcohol blend comprising a first alcohol and a second alcohol, wherein (i) the second alcohol comprises at least one C5-C8 aliphatic, alicyclic, or aromatic alcohol compound; (ii) the aqueous composition has a flash point of at least 50 °C; (iii) the mass ratio of the first alcohol relative to the second alcohol within the aqueous composition is at least 1:10, and up to 4:1; (iv) the second alcohol comprises up to 2.5% by weight of the aqueous composition; (v) the alcohol blend comprises at least 2.0% by weight, and up to 4.5% by weight, of the aqueous composition; and (vi) the surface tension of the aqueous composition comprising the alcohol blend is less than 30 dyne/cm at 20 °C.
The prior-filed applications disclose that at least one of the first aqueous composition or the second aqueous composition comprises an alcohol comprising one or more alcohol compounds, wherein the alcohols can be aliphatic alcohols, alicyclic alcohols or aromatic alcohols. However, they do not disclose that the aqueous composition has a flash point of at least 50 °C, a mass ratio of the first alcohol relative to the second alcohol, the precise concentration of second alcohol and alcohol blend in the aqueous composition, or the surface tension of the aqueous composition comprising the alcohol blend. The prior-filed applications do not provide adequate written support for the first and second aqueous compositions having the specific components and properties instantly claimed.
Therefore, the effective filing date for the instant claims is the filing date of the provisional Application 62/985,783, which was filed 5 March 2020.
Status of the Claims
Claims 1-9 and 11-13 are pending in the present application.
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 1-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Markesbery et al. (WO 2019/075176 A2).
Regarding instant claim 1, Markesbery et al. teach a method of disinfecting a surface in need of disinfecting within a volumetric space, comprising the steps of: a) dispensing onto the surface a first aqueous composition comprising a first peracid reactant compound that is either a peroxide compound or an organic acid compound capable of reacting with a peroxide compound to form a peracid; b) allowing a time sufficient for the first aqueous composition to distribute across the surface and coalesce into a first aqueous composition layer upon the surface; c) dispensing onto the surface a second aqueous composition comprising a second peracid reactant compound that is the other of the first peracid reactant compound; and d) allowing a second time sufficient for the second aqueous composition to combine with the coalesced first aqueous composition layer and to form a reaction layer upon the surface, thereby forming a peracid in situ within the reaction layer and disinfecting the surface (Claim 1).
Markesbery et al. teach that at least one of the first aqueous composition and the second aqueous composition further comprises an alcohol, preferably at least about 1% by weight, and up to about 30% by weight, alcohol, wherein the alcohol comprises a lower-chain alcohol selected from the group consisting of ethanol, isopropanol, t-butanol, and mixtures thereof, preferably isopropanol (Claims 14-15).
Markesbery et al. teach that in some embodiments, an alcohol can be further comprised within one or both of the aqueous compositions to decrease the surface tension of the compositions deposited on the surface to be disinfected ([0160]). The alcohol present in an aqueous composition can be a single alcohol or a combination of multiple alcohols. An alcohol can include aliphatic alcohols and other carbon-containing alcohols having from 1 to 24 carbons. The alcohol can be selected from a straight-chained or completely saturated alcohol or other carbon-containing alcohols, including branched aliphatic alcohols, alicyclic, aromatic, and unsaturated alcohols ([0162]).
To enhance the volatility of the aqueous compositions after they are deposited on one or more surfaces, the individual components of each of the aqueous compositions can be selected to have a relatively higher standard vapor pressure compared to less labile components that remain on surfaces long after they are disinfected ([0170]; Table 1).
Thus, in some embodiments, one or both of the aqueous compositions can be formulated so at least about 99.0% by weight of the components, or at least about 99.5%, or at least about 99.9% by weight of the components within the aqueous composition have a standard vapor pressure of at least 1.0 mm Hg at 20 °C. In further embodiments, one or both of the aqueous compositions can be formulated so that essentially 100% of the components by weight of the aqueous composition have a vapor pressure of at least about 1.0 mm Hg at 20 °C ([0171]).
Regarding instant claims 2-4, Markesbery et al. teach that polyhydric alcohols can also be used alone or in combination with other alcohols. Non-limiting examples of polyhydric alcohols which can be used in the present disclosure include ethylene glycol (ethane-1,2-diol) glycerin (or glycerol, propane-1,2,3-triol), propane-1,2-diol, polyvinyl alcohol, sorbitol, other polyols, and the like. Other non-aliphatic alcohols may also be used including but not limited to phenols and substituted phenols, erucyl alcohol, ricinolyl alcohol, arachidyl alcohol, capryl alcohol, capric alcohol, behenyl alcohol, lauryl alcohol (1-dodecanol), myristyl alcohol (1-tetradecanol), cetyl (or palmityl) alcohol (1- hexadecanol), stearyl alcohol (1-octadecanol), isostearyl alcohol, oleyl alcohol (cis-9-octadecen-1-ol), palmitoleyl alcohol, linoleyl alcohol (9Z,12Z-octadecadien-1-ol), elaidyl alcohol (9E-octadecen-1-ol), elaidolinoleyl alcohol (9E,12E-octadecadien-1-ol), linolenyl alcohol (9Z,12Z,15Z-octadecatrien-1-ol), elaidolinolenyl alcohol (9E,12E,15E-octadecatrien-1-ol), and combinations thereof ([0162]).
In some embodiments, for practical considerations, methanol, ethanol, isopropanol, propanol, tert-butanol, butanol, pentanol, hexanol, heptanol, octanol, nonanol, and decanol, including all constitutional isomers, stereoisomers, and denatured alcohols thereof, can be used because of their properties and cost ([0163]).
In some embodiments, alcohols with four or more carbon atoms, including but not limited to C4-, C5-, C6-, C7-, C8-, C9-, and C10 alcohols, can be utilized because they have a relatively low vapor pressure, a relatively high flash point, and can reduce the surface tension of the coalesced layer and/or reaction layers on the surfaces at relatively low concentrations. In one non-limiting example, the surface tension of an aqueous solution with 15% (v/v) ethanol is about 33 dyne/cm at 20 °C, whereas an aqueous solution with about 0.5% (v/v) of 1-hexanol has a surface tension of lower than 30 dyne/cm at 20 °C. Furthermore, the flash points of pure C4-, C5-, C6-, C7-, C8-, C9-, and C10 alcohols are much higher than a standard room temperature of 20 °C, and can safely be utilized within any of the aqueous compositions of the present invention when dispersing them into the volumetric space ([0164]).
Regarding instant claims 5-7, Markesbery et al. teach that a) the first peracid reactant compound is a peroxide compound, preferably hydrogen peroxide, and b) the second peracid reactant compound is an organic acid compound; preferably an organic carboxylic acid selected from the group consisting of formic acid, acetic acid, citric acid, succinic acid, oxalic acid, propanoic acid, lactic acid, butanoic acid, pentanoic acid, octanoic acid, and a mixture thereof; and more preferably acetic acid (Claim 11). Markesbery et al. teach the first aqueous composition comprises at least about 2% by weight, and up to about 15% by weight, hydrogen peroxide; and the second aqueous composition comprises at least about 1% by weight, and up to about 10% by weight, acetic acid (Claims 12-13).
Regarding instant claim 8, Markesbery et al. teach in some embodiments, an aqueous composition comprising an alcohol can comprise at least about 0.05% by weight of the alcohol, including at least about 0.1, 1, 5, 10, 15, 20, 25, 30, 40, 50, 60, or 70% by weight of the alcohol. In other embodiments, an aqueous composition containing an alcohol comprises less than or equal to about 0.05% by weight of the alcohol, including less than or equal to about 0.1, 1, 5, 10, 15, 20, 25, 30, 40, 50, 60, or 70% by weight of the alcohol. Useful ranges can be selected from any value between and inclusive of about 0.05% to about 70% by weight of the alcohol. Non-limiting examples of such ranges can include from about 0.05% to about 70% by weight, from about 0.1% to about 70% by weight, from about 1% to about 70% by weight, from about 5% to about 70% by weight, from about 10% to about 70% by weight, from about 15% to about 75% by weight, from about 20% to about 70% by weight, from about 25% to about 70% by weight, from about 30% to about 70% by weight, from about 40% to about 70% by weight, from about 50% to about 70% by weight, from about 60% to about 70% by weight, from about 1% to about 25% by weight, or from about or 10% to about 20% by weight of the alcohol. In some embodiments, an aqueous composition comprising an alcohol can comprise about 15% by weight of the alcohol. In other embodiments, an aqueous composition comprising an alcohol can comprise about 5% by weight of the alcohol ([0161]).
Regarding instant claim 9, Markesbery et al. teach that at least one of the first aqueous composition or the second aqueous composition comprises about 0.001% to about 1% by weight of a natural biocide selected from the group consisting of manuka honey and the essential oils of oregano, thyme, lemongrass, lemons, oranges, anise, cloves, aniseed, cinnamon, geraniums, roses, mint, peppermint, lavender, citronella, eucalyptus, sandalwood, cedar, rosmarin, pine, vervain fleagrass, and ratanhiae, and combinations thereof. Markesbery et al. also teach at least one of the first aqueous composition or the second aqueous composition comprises about 0.001% to about 1% by weight of a natural biocidal compound selected from the group consisting of methylglyoxal, carvacrol, eugenol, linalool, thymol, p-cymene, myrcene, borneol, camphor, caryophillin, cinnamaldehyde, geraniol, nerol, citronellol, and menthol, and combinations thereof (Claims 16-17).
Regarding instant claims 11-12, Markesbery et al. teach that in some embodiments, the sequential application and delivery system is configured to prevent the first aqueous composition and the second aqueous composition from contacting each other until after each aqueous composition is dispensed into the volumetric space. In further embodiments, the sequential application and delivery system is configured to prevent the first aqueous composition and the second aqueous composition from contacting each other until after each aqueous composition has deposited and/or coalesced into a layer upon the surface ([0070]).
Regarding instant claim 13, Markesbery et al. teach one or more aqueous compositions are substantially free of surfactants, polymers, chelators, and metal colloids or nanoparticles ([0017]).
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 the disinfectant system according to Markesbery et al. comprising a first aqueous composition comprising a first peracid reactant compound that is either a peroxide compound or an organic acid compound capable of reacting with a peroxide compound to form a peracid; and a second aqueous composition comprising a second peracid reactant compound that is the other of the first peracid reactant compound; said first and second aqueous compositions comprising an alcohol selected from the group consisting of ethanol, isopropanol, t-butanol, and mixtures thereof; and the first or second aqueous composition further comprising at least one aliphatic, alicyclic, or aromatic alcohols.
Regarding the concentrations of the alcohols and peracid reactants, Markesbery et al. teach aqueous composition comprising an alcohol can comprise at least about 0.05% by weight of the alcohol, including at least about 0.1, 1, 5, 10, 15, 20, 25, 30, 40, 50, 60, or 70% by weight of the alcohol. Markesbery et al. also teach the first aqueous composition comprises at least about 1% by weight, and up to about 25% by weight, hydrogen peroxide; the second aqueous composition comprises at least about 1% by weight acetic acid, and up to about 25% by weight, acetic acid; and at least one of the first aqueous composition and the second aqueous composition further comprises an alcohol, preferably at least about 1% by weight, and up to about 30% by weight, alcohol (Claims 43-45).
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).
Response to Arguments
Applicant's arguments filed 10 October 2025 have been fully considered but they are not persuasive. Applicant asserts that WO 2019/075176 A2 is not available as prior art in view of the priority claim filed 24 July 2025.
The examiner respectfully argues that the instant claims do not have adequate support in the priority documents, as discussed above. Therefore, WO 2019/075176 A2 is available as prior art.
Conclusion
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616