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 114-117, 119-130 and 132-134 are pending.
Declaration under 37 C.F.R. §1.132
The declaration under 37 CFR 1.132 filed 29 December 2025 is insufficient to overcome the rejection of claims 114-117, 120-130, 132 and 134 based upon Banish et al. (WO 2018/187809 A1) in view of Yun et al. (KR 101535215 B1) and Dong et al. (Molecules, 2017) as set forth herein below because: the showing is not commensurate in scope with the claims. The declaration states that the efficacy of thymol in the instantly claimed smoke generated by initiating a frontal polymerization reaction was unexpected and unpredictable. The declaration further states that numerous disinfectants did not loft in the smoke or did loft but lost their disinfectant properties, including organic salts, alcohols, benzyldimethylhexadecylammonium chloride, citric acid, phenol, aldehydes, glutaraldehyde, cardamom oil, tea tree oil, cinnamic aldehyde, nonivamide, and vanillin. The declaration further states that for whatever reason, thymol lofts with the smoke and retains a high degree of disinfectant activity.
The instant claims recite “a thymol compound”, without limiting the scope of the compounds within this genus, and specifically recite numerous compounds with varying structures (Claim 134). The instant specification only provides examples of thymol as the disinfectant. Therefore, the evidence in the declaration and specification are not commensurate in scope with the instant claims. See MPEP 716.02(d).
Claim Objections
Claim 134 is objected to because of the following informalities: the claim does not end with a period. Appropriate correction is required.
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.
Claim 134 is 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. Claim 134 comprises structures of compounds that are illegible. The images are pixelated and it is also unclear what is defined by some of the R groups (Compounds 42-46) and n values (Compounds 47-48). It is also unclear why some of the compounds are numbered while others are not, and the compound number 28(?) is below a blank space and not related to a specific compound.
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 114-117, 120-130, 132 and 134 are rejected under 35 U.S.C. 103 as being unpatentable over Banish et al. (WO 2018/187809 A1) in view of Yun et al. (KR 101535215 B1), Dong et al. (Molecules, 2017) and Jyoti et al. (Current Bioactive Compounds, 2019).
Regarding instant claims 114-117, 120-130, 132 and 134, Banish et al. teach a non-pyrotechnic method of generating capsaicinoid-containing smoke, the method comprising initiating a frontal polymerization reaction by heating a composition to a sufficient temperature, and generating smoke comprising the capsaicinoid and thermal decomposition products of the initiator compound, wherein the composition comprises: (a) a monomer compound that exothermically polymerizes upon initiation with an initiator compound; (b) an initiator compound that initiates polymerization of the monomer compound, said initiator present at a mass concentration that is at least 5% the mass concentration of the monomer compound; and (c) a capsaicinoid compound in an amount effective to produce an irritant effect in the smoke (Claims 1-33). Banish et al. teach that some embodiments of the composition contain at least 1 % w/w of the capsaicinoid. Further embodiments of the composition contain the capsaicinoid at 1-20% w/w, 2-15% w/w, or 5-10% w/w. Specific embodiments of the composition contain 5 or 10% capsaicinoid by weight ([0048]; Claim 32).
Banish et al. do not explicitly disclose a smoke containing a thymol compound, as instantly claimed.
Yun et al. teach a smoke or fog composition for disinfection, wherein the composition comprises essential oils that exhibit antimicrobial activity, including thymol, in an amount of 0.1 to 10 parts by weight based on 100 parts by weight of paraffin oil (pg. 4).
Dong et al. teach (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6) selectively showed in vitro antibacterial activity against five assayed bacterial strains, Staphylococcus aureus, Bacillus thuringiensis, Bacillus subtilis, Escherichia coli and Shigella dysenteriae (Table 2; and pg. 7).
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Jyoti et al. teach that thymol based motifs are known to exhibit a broad spectrum of biological activities such as anticancer, antitumor, anti-HIV, antibacterial, anti-inflammatory, antiviral, antifungal, antipyretic, anticonvulsant and antidepressant (pg. 456).
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 smoke compositions according to Banish et al. wherein the active ingredient includes (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6), as reasonably taught by Dong et al. Such would have been obvious because Yun et al. teach that smoke or fog compositions for disinfection include thymol, which is known to possess antimicrobial activity, Dong et al. teach (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6) have antibacterial activity against five bacterial strains, and Jyoti et al. teach thymol based motifs exhibit antiviral activity. It would have been obvious to substitute one known disinfectant for another with the reasonable expectation that the resulting smoke composition would be effective for disinfecting surfaces against a broad spectrum of bacteria and viruses.
Regarding instant claim 115, Banish et al. teach that the smoke generating composition comprises an initiator compound and the capsaicinoid (Claim 1).
Regarding instant claim 116, Banish et al. teach that the composition comprises at least 2% mass concentration of fumed silica (Claim 24).
Regarding instant claim 117, Dong et al. teach compounds that are within the scope of the instantly claimed thymol compounds.
Regarding instant claims 120-122, Banish et al. teach the initiator compound is selected from the group consisting of: di-tert-butyl peroxide, tert-butyl peroxybenzoate, tert-butyl hydroperoxide, and cyclohexyl hydroperoxide (Claim 22).
Regarding instant claims 123-126, Banish et al. teach compositions comprising a filler, including at least 2% mass concentration (e.g., 10% w/w) of fumed silica ([0040], [0092]; Claims 14, 24, 32).
Regarding instant claims 127-128, Banish et al. teach that some embodiments of the composition contain at least 1 % w/w of the capsaicinoid. Further embodiments of the composition contain the capsaicinoid at 1-20% w/w, 2-15% w/w, or 5-10% w/w. Specific embodiments of the composition contain 5 or 10% capsaicinoid by weight ([0048]; Claim 32).
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 comprising an effective concentration of (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6) to provide a disinfectant property in the smoke generated according to Banish et al.
Regarding instant claims 129-130 and 132, Banish et al. teach capsaicinoid-containing smoke. Dong et al. teach (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6) selectively showed in vitro antibacterial activity against five assayed bacterial strains, Staphylococcus aureus, Bacillus thuringiensis, Bacillus subtilis, Escherichia coli and Shigella dysenteriae (Table 2; and pg. 7).
Jyoti et al. teach that thymol based motifs are known to exhibit a broad spectrum of biological activities such as anticancer, antitumor, anti-HIV, antibacterial, anti-inflammatory, antiviral, antifungal, antipyretic, anticonvulsant and antidepressant (pg. 456).
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 smoke compositions according to Banish et al. wherein the active ingredient includes (-)-isochaminic acid (5) or (1α,6α)-10-hydroxy-3-carene-2-one (6), as reasonably taught by Dong et al. Such would have been obvious because Yun et al. teach that smoke or fog compositions for disinfection include thymol, which is known to possess antimicrobial activity, Dong et al. teach (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6) have antibacterial activity against five bacterial strains, and Jyoti et al. teach thymol based motifs exhibit antiviral activity. It would have been obvious to substitute one known disinfectant for another with the reasonable expectation that the resulting smoke composition would be effective for disinfecting surfaces against a broad spectrum of bacteria and viruses, including SARS-CoV-2 and Staphylococcus aureus.
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive. Applicant argues that substituting a thymol compound for a capsaicinoid compound yielded more than merely predictable, expected results.
The examiner respectfully argues that the instant specification only provides data for thymol as the disinfectant. The data is not commensurate in scope with the instant claims, which include numerous compounds of varying structure and properties.
Applicant also argues that Yun teaches a completely different method of delivering thymol, wherein Yun teaches a spray.
The examiner respectfully argues that Yun et al. teach that the compositions were sprayed using a fogger or portable smoke generator (Examples). Therefore, it would have been obvious to disperse thymol disinfectants, such as the disinfectants according to Dong et al., in a smoke or fog, with the reasonable expectation that the resulting smoke or fog would have disinfectant properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 114-117, 120-130, 132 and 134 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 10,941,086 in view of Yun et al. (KR 101535215 B1), Dong et al. (Molecules, 2017) and Jyoti et al. (Current Bioactive Compounds, 2019). Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘086 claims the same non-pyrotechnic method of generating smoke as the instant claims, wherein the smoke comprises a capsaicinoid as an active agent. US ‘086 claims the initiator compound, filler, fumed silica, and organic peroxides as instantly claimed. US ‘086 does not explicitly claim a method of generating a thymol compound-containing smoke, as instantly claimed. As discussed above, Yun et al. teach a smoke or fog comprising thymol as the active agent. Dong et al. teach (-)-isochaminic acid (5) and (1α,6α)-10-hydroxy-3-carene-2-one (6) selectively showed in vitro antibacterial activity against five assayed bacterial strains, Staphylococcus aureus, Bacillus thuringiensis, Bacillus subtilis, Escherichia coli and Shigella dysenteriae. Jyoti et al. teach that thymol based motifs are known to exhibit a broad spectrum of biological activities such as anticancer, antitumor, anti-HIV, antibacterial, anti-inflammatory, antiviral, antifungal, antipyretic, anticonvulsant and antidepressant. Therefore, it would have been prima facie obvious to prepare the smoke according to US ‘086 wherein the active agent is a thymol compound, such as (-)-isochaminic acid or (1α,6α)-10-hydroxy-3-carene-2-one, with the reasonable expectation that the thymol compound-containing smoke would be effective for the control of a broad spectrum of bacteria and viruses.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response above is repeated here as well.
Allowable Subject Matter
Claims 119 and 133 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The examiner recommends amending claims 114, 115, 127-130 and 132 to replace “a thymol compound” and “the thymol compound” with just “thymol”, and canceling claims 117, 119 and 134, in order to place the claims in condition for allowance.
Claims 119 and 133 would be allowable if rewritten in independent form because Applicant’s Remarks and the Declaration filed 29 December 2025 show that it was unexpected that thymol was effectively lofted and retained disinfectant properties in the instantly claimed smoke generated by initiating a frontal polymerization reaction.
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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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
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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