530DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) and phenoxyethanol (Formula 3) in reply filed on 11/21/2025 is acknowledged.
Applicant asserts claims 1-13 are readable on the elected species, phenoxyethanol. The examiner respectfully disagrees. The independent claim recites formulas 2-5 in the alternative. Instant claims 6, 7, and 10-13, which are directed to Formulas 2, 4 and 5 do not read on the elected species, phenoxyethanol of Formula 2. Therefore instant claims 6, 7, and 10-13 are withdrawn from current examination.
Claims 6, 7, and 10-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/2025.
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 4 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 4 for recites “the compound represented by Formula 1 and the compound represented by Formula 2, Formula 3, Formula 4 or Formula 5 are present in a weight ratio of 0.01:9.99 to 9.99:0.01.” This is indefinite insofar as it is unclear which number in the ratio is assigned to the compound of Formula 1. For the purposes of examination the ratio will be interpreted as the compound of Formula 1 to the compound of Formula 2, 3, 4, or 5 at a ratio of 0.01:9.99 to 9.99:0.01.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-5, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ruan et al. (WO 2017/132356 A1, publication date 08/03/2017) in view of KR ‘644 (KR 101754644 B1, publication date 07/10/2017; citing machine English translation).
Ruan discloses a “personal care compositions comprising an effective amount of an antibacterial component selected from chloroxylenol (PCMX) and o-cymene-5-on (IPMP); phenoxyethanol; piroctone olamine; and a surfactant” [abstract]. Ruan teaches the surfactants may be anionic and non-ionic surfactants (page 10, [0029]) and desires emulsifiers [p. 4, (h)]. Ruan discloses the composition may comprise preservatives (line 8 of [0033] on page 11).
Ruan does not discloses a compound of the instant Formula 1.
Regarding instant claims 1-3, 8 and 9, KR ‘644 “relates to a surfactant-type preservative compound[s]” [abstract]. KR ‘644 discloses “emulsification and solubilization were supported in accordance with the surfactant characteristics, while the antimicrobial activity was excellent and exhibited a broad antibacterial spectrum. In addition, the surfactant-type preservative compound of the present invention exhibits a wide range of applications because it can be widely used in anionic surfactant-based compositions and cationic surfactant-based compositions” [p. 6, para. 1]. The compound of KR ‘644 may be selected from the structure [p. 6, last para.]:
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“Wherein R1 is one of H, CH3 and CH2 CH3 , and R2 as a hydrophilic group is an alkyl or alkenyl group having 6 to 18 carbon atoms” (i.e., instant Formula 1) [p. 6, last para.].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the antimicrobial surfactant of KR ‘644 with the composition taught by Ruan. One would have been motivated to make this combination because, first, KR ‘644 discloses non-ionic surfactants which are compatible with anionic and cationic surfactants and capable of emulsifying, as desired by Ruan. Second, the antibacterial properties of the surfactant disclosed by KR ‘644 would have supported to purpose of Ruan, which is to provide an antibacterial composition. Third, KR ‘644 discloses the surfactant can act as a preservative and Ruan desires a preservative. One would have had an expectation of success because KR ’644 disclose the surfactants supports emulsification and is compatible with anionic surfactants. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated an antimicrobial composition comprising a compound of instant Formula 1 and phenoxyethanol (claims 8 and 9). Additionally, because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e., antibacterial activity against Escherichia coli, Pseudomonas aeruginosa, Staphylococcus aureus, Klebsiella pneumoniae, MRSA (methicillin-resistant Staphylococcus aureus), Bacillus subtilis, Vibrio parahaemolyticus, Salmonella typhimurium, Listeria monocytogenes and Shigella flexneri, and has antifungal activity against Candida albicans, and Aspergillus niger (i.e., claims 2 and 3).
Regarding instant claim 4, Ruan discloses “wherein the phenoxyethanol is present in an amount of about 0.1% to about 5% by weight of the composition” [p. 3, para. 3].
KR ‘644 discloses the antimicrobial surfactant may be present in amounts from 0.1 to 10% by weight [p. 6, last para.].
In combining the surfactant and antibacterial composition, as discussed above, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the amounts discloses by Ruan and KR ‘644 for the phenoxyethanol and antimicrobial surfactant, respectively, because those amounts were disclosed as a suitable range. See MPEP 2144.07. As a result the instantly claimed weight ratio range would have overlapped with the prior art.
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). In the present case, the instantly claimed range for the weight ratio of Formula 1 (i.e., compound of KR ‘644) to phenoxyethanol overlaps with the range taught in the prior art (i.e., 0.1-10% w/w to 0.1-5% w/w; 100:1 to 1:50) and so a prima facie case of obviousness exists.
Regarding instant claim 5, in the example compositions KR ‘644 discloses 3-laurylamino 1,2-propanediol (i.e., 3-(dodecylamino)propane-1,2-diol; Formula 1-1) as a specific structure of the surfactant with antibacterial activity (see page 8, second paragraph; page 9, paragraphs 2 and 4). Additionally, KR ‘644 teaches 3-laurylamino 1,2-propanediol is effective for inhibiting bacteria (see translation of graph 1 on page 1, 3-laurylamino 1,2-propanediol is marked with triangles). Graph 1 shows “the MIC (minimum inhibitory concentration) of the preservative compound of the present invention and other preservative agents against bacteria” [p. 6, para. 2].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the 3-laurylamino 1,2-propanediol (i.e., 3-(dodecylamino)propane-1,2-diol; Formula 1-1) of the examples for the surfactant disclosed generally because KR ‘644 discloses 3-(dodecylamino)propane-1,2-diol is a suitable structure. One would have had additional motivation to select 3-laurylamino 1,2-propanediol (i.e., 3-(dodecylamino)propane-1,2-diol; Formula 1-1) because KR ‘644 teaches it is effective against bacteria.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated an antimicrobial composition comprising 3-(dodecylamino)propane-1,2-diol and phenoxyethanol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612