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 .
Claim Interpretation
Clause (d) of claim 1 uses the closed transition phrase “consists of” when disclosing the composition of a non-propellant portion of a liquid contained in a container. The phrase “consists of” excludes any element or ingredient not specified in the claim, as per MPEP 2111.03(II.). Thus, claim 1 prohibits the liquid in the container from including any ingredient that is not one of ethanol or isopropanol, propylene glycol, a fragrance, or a propellant gas (dissolved or condensed into the liquid).
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.
Claims 1-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, firstly, the claim does not provide antecedent basis for the following terms: “the propellant gas” (line 3), “the valve” (line 4), “the liquid” (line 5), “the container” (line 5). In each stated instance, the term “the” should be switched to “a”.
Furthermore, the claim indicates that a non-propellant portion of a liquid in a container has a composition consisting of 60% to 90% ethanol or isopropanol by weight, propylene glycol up to 100% by weight, and optionally a fragrance up to 5% by weight. The recited weight percentages are indefinite because it is not clear how embodiments of the composition can comprise both 100% propylene glycol and at least 60% ethanol or isopropanol. That is, since it is indicated that the ethanol or isopropanol constitutes at least 60% of the weight of the composition, the maximum possible weight percentage for propylene glycol in the composition would be 40%. The recited weight percentages should be adjusted to clarify the scope of compositions which fall within the claim.
Additionally, the final line of claim 1 recites the broad ranger “greater than 10%”, followed by the narrower range “preferably at least 30%”. This renders the claim indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, the claim has been interpreted as encompassing the broader range (greater than 10%).
Also, the phrasing of clause (d.)(iii.) of the claim is unclear, stating “optionally, a fragrance up to 5%, in which case the propylene glycol content is conveniently reduced to reach 100%”. As best understood, the claim appears to be suggesting that when the fragrance is included, the fragrance takes the place of a portion of propylene glycol which otherwise would be present in the solution. However, this is not clearly communicated by the language of the claim. Also, such a limitation appears superfluous as the composition is only limited by the weight percentage of each component, the mental processes or adjustments made to arrive at the weight percentages being immaterial to the scope of the claimed composition.
To address the plurality of issues identified in claim 1 above, it is suggested that claim 1 be rewritten to the following:
A cleaning and disinfection product comprising:
a container which contains a liquid and a propellant gas; and
A valve configured to discharge an aerosol product from the container at a rate of 0.2 g/s to 4 g/s when the valve is activated,
wherein:
the propellant gas is liquefied petroleum gas,
a percentage by weight of the propellant gas within the container relative to 100% of the weight of an interior of the container is greater than 10%, and
the liquid, excluding any components of the propellant gas present in the liquid, has a composition consisting of:
Ethanol or isopropanol at a weight percentage between 60% and 90%;
Propylene glycol at a weight percentage between 5% and 40%; and
Optionally, a fragrance at a weight percentage up to 5%; and
Regarding claim 2, the claim does not provide sufficient antecedent basis for the term “it” at line 4, which could refer to ethanol, the cleaning and disinfection product, or another subject recited in the claim.
Furthermore, the claim recites “the guidelines of the Food and Drug Administration”, which is indefinite as there is no indication of which specific guidelines are being refereed to. Furthermore, there is at least some evidence that propylene glycol is known to have a biocidal effect; particularly, Natawade et al. (Journal of International Society of Preventing and Community Dentistry, Vol. 5, No. 2, pp. 114-119) indicates that propylene glycol demonstrated bactericidal activity against the test organisms S. mutans, E. Faecalis, and E. coli (see conclusion section of abstract). Thus, if propylene glycol can fairly be recognized as having biocidal activity, and propylene glycol is a required component of claim 2 (by dependency on claim 1), then claim 2 indicating that ethanol is the only biocidal component of the composition is indefinite because propylene glycol also has at least some recognized biocidal activity.
Also, the claim indirectly states the compositional limitations such that it is unclear if whether or not claim 2 is requiring thymol and menthol as optional or required components of the claim; for purposes of examination, they have been interpreted as optional.
As best understood, claim 2 is directed toward an embodiment of the product of claim 1 wherein: the liquid contains ethanol and not isopropanol; and there are no solid biocidal compounds in the container. The claim should be cancelled or rewritten to address the issues above. Below is a suggested rewrite of claim 2 which addresses the issues raised above:
The cleaning and disinfection product of claim 1, wherein the composition of the liquid includes ethanol and does not include isopropanol, and the container does not contain any solid biocidal components at room temperature with the exception of thymol and menthol which may optionally be included as fragrance.
Claim 3 is rejected at least by virtue of dependency on claim 1.
Regarding Claim 4, the claim does not provide sufficient antecedent basis for the term “the average particle size”. To improve the clarity of the claim and reflect mores standard US practice, it is suggested the claim be rewritten to the following:
4. The cleaning and disinfection product of claim 1, wherein the aerosol product discharged by the valve has an average particle size between 5 µm and 100 µm.
Claim 5 is rejected at least by virtue of dependency on claim 1.
Regarding claim 6, the claim recites a process using the aerosol product according to claim 1, but the claim does not set forth any positively recited steps indicating how the aerosol product is used. As per MPEP 2173.05(q), such a use claim is indefinite because it merely recites a use without any active, positive steps delimiting how the use is actually practices. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). The claim should be cancelled or adjusted to recite active steps describing how the product is used. An example of a modified claim 6 which includes a positively recited step is provided below:
6. A surface disinfection process using the cleaning and disinfection product of claim 1, comprising:
Activating the valve to discharge the aerosol product toward a surface.
Regarding claim 7, the claim is a use claim which describes using a composition similar to the composition recited in claim 1 as a disinfecting agent and air and surface cleaner to prolong the contact time of ethanol or propanol with germs or dirt. However, the claim does not positively recite any steps with respect to how the recited composition is used to achieve the recited disinfecting and cleaning effects. Accordingly, the use claim is indefinite; see MPEP 2173.05(q). The claim should be cancelled or rewritten as a method claim which positively recites active steps for using the composition of the claim.
The suggested revised claims presented above are intended to resolve the issues raised under 35 U.S.C. 112(b) above and conform more closely to standard US practice without altering the core subject matter of the claim; alternative revisions which address the issues raised under 35 U.S.C. 112(b) are appropriate. It is the applicant’s responsibility to ensure that any amendments to the claims do not introduce new subject matter that was not present in the application at the time of filing.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is a “use” claim that does not positively recite active steps for performing the claimed use. Thus, the “use” claim does not constitute a proper process claim, and cannot be classified as one of a process, machine, manufacture, or composition of matter. See MPEP 2173.05(q).
Claim Objections
Claim 3 is objected to because the final line of the claim should include the conjunction “and” or “or” between the terms “geraniol” and “eucalyptol”.
Also, it is suggested that the claim preamble be adjusted recite “The [[C]]cleaning and disinfection product ofwherein
Additional Suggestion
Claim 5 is not formally objected to, but it is suggested that the grammatical clarity of the claim could be adjusted by rewriting the claim as follows:
5. The cleaning and disinfection product according to claim 1, wherein the valve is configured to discharge the aerosol product such that at least 10% of droplets of the aerosol product have a particle size of less than 50 µm.
Allowable Subject Matter
Claims 1-6—as best understood—would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action.
This finding of allowable subject matter corresponds to the analysis presented in the European Search Opinion for European Application EP 21793817.4, mailed 02 July 2024, wherein said application is in the same family of the instant application and is directed toward the same subject matter. A copy of said European Search opinion has been provided with this correspondence.
Claim 1, as best understood, is essentially directed toward an aerosol spray bottle which contains liquified petroleum gas acting as a propellant and a liquid composition acting as a cleaning and disinfecting agent when discharged as an aerosol, the liquid composition including only ethanol or isopropanol, propylene glycol, and [optionally] a fragrance, at prescribed weight percentages. See the suggested revision of claim 1 presented in the rejection of claim 1 under 35 U.S.C. 112(b) above to see how the weight percentage ranges have been interpreted.
The closest prior art—Barrow (US 6,299,862 B1)—teaches an aerosol spray unit for containing and dispensing a sterilizing aerosol composition for sanitizing surfaces. The unit is a container having a valve which controls a discharge opening. The composition inside the container is 52-75% by weight ethanol or isopropanol, and 25-48% by weight a hydrocarbon propellant blend (claim 1).
Thus, Barrow (see claim 1) teaches A cleaning and disinfection product (aerosol spray unit) comprising:
a container (pressure-tight metallic container) which contains a liquid and a propellant gas (containing and dispensing an anhydrous sanitizing aerosol composition); and
A valve configured to discharge an aerosol product from the container (container having a valve-controlled opening and a valve)
wherein:
the propellant gas is liquefied petroleum gas (hydrocarbon propellant blend consisting of 85% isobutane and 15% propane),
a percentage by weight of the propellant gas within the container relative to 100% of the weight of an interior of the container is greater than 10% (anhydrous aerosol composition comprises 25-48% hydrocarbon propellant blend), and
the liquid, excluding any components of the propellant gas present in the liquid, has a composition consisting of ethanol or isopropanol (52-75%/w of an aliphatic lower alcohol selected from the group consisting of ethanol, isopropanol, and mixtures thereof).
Barrow does not teach the valve being configured to discharge the aerosol product at a rate of 0.2 g/s to 4 g/s when activated.
Barrow further does not teach the non-propellant portion of the liquid in the container having a composition consisting of:
Ethanol or isopropanol at a weight percentage between 60% and 90%;
Propylene glycol at a weight percentage between 5% and 40%; and
Optionally, a fragrance at a weight percentage up to 5%.
With respect to the claimed product discharge rate, the claimed range of 0.2 g/s to 4 g/s corresponds to typical ranges for aerosol spray products. For example, Nguyen et al. (US 20130011341 A1) teaches an aerosol composition comprising a fragrance or disinfectant which is propelled from a dispensing container by a propellant gas (abstract), wherein the spray rate of the composition is between 1.5 g/s and 3.0 g/s ([0006]). Nguyen indicates the stated range of spray rates is desirable because it can influence aerosol particle size and provide an enhanced intensity and longevity of the active ingredients (higher spray rates generally provide larger particle sizes, and were considered not to be desirable—[0003]; properties of the composition which are controlled to provide the enhanced intensity and longevity of the active ingredient in particular include the spray rate of the composition and the average particle size of the composition—[0005]). Therefore, it would be obvious to a person having ordinary skill in the art to modify the product of Barrow such that the valve is configured to discharge the aerosol product at a flow rate of 1.5 g/s to 3.0 g/s, which falls within the claimed range of 0.2 to 4.0 g/s, for the benefit of optimizing the intensity and longevity of the active disinfecting and cleaning components of the composition (see Nguyen at [0003], [0005], [0006]).
Nonetheless, Barrow and Nguyen do not teach combining the ethanol/isopropanol of Barrow with propylene glycol and, optionally, a fragrance, to achieve an ethanol/isopropanol weight percentage between 60% and 90%, and a propylene glycol weight percentage between 5% and 40%.
Lins (US 5,167,950 A) teaches a composition comprising a high amount of ethanol or isopropanol (abstract: intermediate concentrate comprises 52-75% by weight ethanol or isopropyl alcohol—abstract), and further suggests combining the composition with propylene glycol, the propylene glycol acting as a humectant (column 8, lines 39-44). In certain embodiments, the composition (intermediate concentrate) may comprise 52%-75% by weight ethanol, isopropanol, or mixtures thereof (claim 1), and 0.1% to 10% by weight of a humectant (claim 5) such as propylene glycol (claim 6), which overlap with the effective ranges of claim 1. However, Lins teaches the composition comprising several further components (see claim 1, which includes (b) a polymeric gelling agent, (c) an amphiphilic nonionic stabilizer, and (d) water), contrary to the closed “consisting” language of claim 1.
Gander et al. (US 4,129,662 A) teaches a mixture consisting of propylene glycol and ethanol (claim 5; A typical solvent carrier of this type comprises 50% by weight 95% ethyl alcohol and 50% by weight propylene glycol, or 25%-75% by weight ethanol and 25%-75% by a liquid glycol—column 3, lines 26-33). However, Gander uses the mixture as a solvent carrier for a non-fragrance active ingredient, and does not suggest applying the mixture as an aerosol.
Natawade et al. (Journal of International Society of Preventing and Community Dentistry, Vol. 5, No. 2, pp. 114-119) indicates that propylene glycol has some biocidal efficiency against certain microorganisms (see conclusion section of abstract). Nonetheless, Natawade does not fairly suggest combining the propylene glycol with ethanol within an aerosol spray container within the claimed ranges of weight percentages.
Accordingly, the cited art does not provide a clear motivation which would lead a person or ordinary skill in the art to arrive at a composition consisting only of ethanol or isopropanol, propylene glycol, and, optionally, a fragrance, at the claimed weight percentages, which is contained in a container and discharged as an aerosol. For example, although Natawade indicates propylene glycol is biocidal, this teaching alone is insufficient to reasonably motivate the addition of propylene glycol at a weight percentage of 5-40% to the aerosol spray composition of Barrow. Also, there is no clear motivation to remove all components from the composition of Linz except for the ethanol/isopropanol and the propylene glycol, as such removal would likely render the composition of Linz unsatisfactory for its intended purpose. Additionally, there is no clear suggestion in the prior art to dispense the solvent carrier of Gander as an aerosol.
No further prior art was found which fairly teaches or fairly suggest a motivation that would lead a person having ordinary skill in the art to arrive at the claimed product. Furthermore, the instant specification appears to present some evidence that the claimed formulation offers advantages not contemplated by the prior art (page 12, lines 5-13 suggests the claimed composition has improved phase homogeneity/stability; page 12, lines 14-22, suggests the composition has improved stability in a tin container; and page 13 suggests that the composition delays the evaporation of biocidal components to achieve a greater contact time of biocide on surfaces and thus a more thorough disinfection of the surfaces). Therefore, the subject matter of claim 1 (as best understood) is novel and non-obvious over the prior art.
Claims 2-5 contain allowable subject matter by virtue of dependency on claim 1.
Claim 6 needs to be adjusted to positively recite an active step, as discussed in the rejection under 35 U.S.C. 112(b) above. However, since the claim requires the aerosol product according to claim 1, the claim effectively incorporates the allowable subject matter of claim1.
Claim 7 as written is directed toward non-statutory subject matter (see rejection under 35 U.S.C. 101 above); accordingly, claim 7 does not include allowable subject matter. However, if claim 7 is rewritten as a method claim which positively recites at least one active step and which includes the allowable subject matter discussed with respect to claim 1 above, the claim would be allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Weiss et al. (US 20080025942 A1) teaches an aerosol formulation comprising at least 15 wt% glycol (claim 1), such as propylene glycol (claim 2), up to 5 wt% fragrance (claim 9), and a propellant (claim 8).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADY C PILSBURY whose telephone number is (571)272-8054. The examiner can normally be reached M-Th 7:30a-5:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL MARCHESCHI can be reached at (571) 272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADY C PILSBURY/Examiner, Art Unit 1799
/JENNIFER WECKER/Primary Examiner, Art Unit 1797