DETAILED 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 .
Applicants’ arguments, filed 06/01/2026, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 – Improper Dependent Form
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 depends on claim 1 and claim 1 requires cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril. However, claim 17 recites “wherein cucurbituril other than cucurbit[6]uril, cucurbit[7]uril, cucurbit[8]uril derivative thereof, variants thereof or a mixture thereof comprise less than 5% total cucurbituril.” Reciting the list of cucurbiturils in the alternative means the claim encompasses the limitation that, for example, cucurbiturils other than variants of cucurbit[6] comprise less than 5% (e.g., 0%) total cucurbiturils. In other words, claim 17 encompasses the limitation of a composition comprising 0% cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril, which improperly broadens the scope of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
1) Claim(s) 1, 4, 7, 12, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Page et al. (WO 01/28339 A2, publication date 04/26/2001) in view of Coulston et al. (WO 2018/037209 A1, publication date 03/01/2018; previously cited).
Page “relates to antimicrobial compositions which provide enhanced immediate as well as residual anti-viral and antibacterial efficacy” (i.e., disinfecting and coating composition; limitation of instant claim 19) [abstract]. “These compositions are efficacious for rapidly cleaning surfaces which are infected or contaminated with Gram negative, Gram positive, viruses (e.g., rhinoviruses, adenoviruses, rotaviruses, herpes viruses, respiratory syncytial viruses, coronaviruses, parainfluenza viruses, enteroviruses, influenza viruses, etc.)” (i.e., influenza viruses include enveloped viruses according to instant claim 4; rhinoviruses include non-enveloped viruses according to instant claim 7) [p. 3, lines 33-36]. “Optionally cyclodextrin can be added to the compositions of the present invention as an odor control agent” [p. 49, lines 7-8]. According to Page “the cavities within the cyclodextrin in the solution of the present invention should remain essentially unfilled while in solution, in order to allow the cyclodextrin to absorb various odor molecules when the solution is applied to a surface”[p. 49, lines 11-13]. The compositions of Page “may be incorporated into various household care products including, but not limited to, hard surface cleaners (e.g., disinfectant sprays, liquids, or powders)” (i.e., instant claim 18) [p. 13, lines 19-20]. Page discloses the carrier of the composition can be in a wide variety of forms [p. 12, line 20].
Page does not disclose cucurbituril.
Coulston relates to a method of counteracting malodour by application of a suspension of cucurbiturils [abstract]. Coulston discloses “[t]he poor selectivity of cyclodextrin binding and release with respect to fragrances and malodours is a disadvantage. Although this effect can be beneficial in the context of the controlled release of a desirable odour, it becomes very unsatisfactory if the guest molecule released is a malodour” [p. 2, lines 23-17]. According to Coulston the “cucurbituril host-guest complexes overcome many of the disadvantages associated with cyclodextrin complexes” [p. 3, lines 5-6]. Coulston teaches that cucurbiturils useful for counteracting malodour are “selected from CB[5], CB[6], CB[7], CB[8], or a mixture thereof” [p. 31, claim 8] and should be present in amounts from 0.01-25% w/w [p. 31, claim 6]. Additionally, Coulston discloses the cucurbituril compositions may be incorporated into hard surface cleaners [p. 34, lines 6]. Finally, while Coulston discloses solutions and suspensions of the cucurbiturils, suspensions are preferred [p. 28, lines 18-19].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have simply substituted the cyclodextrins of Page for the cucurbiturils of Coulston. One would have been motivated to substituted cucurbiturils in place of the cyclodextrin because Coulston discloses cucurbiturils overcome the disadvantages of cyclodextrin as an odor control agent, namely the release of malodourous compounds from cyclodextrin. One would have had an expectation of success because the cyclodextrins and the cucurbiturils both address malodor by the same mechanism, guest host complex. Additionally, Page and Coulston both discloses the compositions may be incorporated into hard surface cleaners. The simple substitution of one known element (e.g., the cucurbiturils of Coulston) in place of another (e.g., the cyclodextrins of Page) in order to achieve predictable results (odor control agent) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
In making this substitution it also would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the suspension formulation disclosed by Coulston with the compositions taught by Page. One would have been motivated to make this combination because Coulston disclosed suspensions are preferred for cucurbiturils. One would have had an expectation of success because according to Page, the carriers of the cleaning composition can be in a wide variety of forms. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
The Examiner is interpreting compositions comprising 0.000005-5% w/v of the instantly claimed cucurbituril isomers to read on the instantly recited “effective amount.” Support for this interpretation may be found at page 9, lines 4-5 of the instant specification as originally recited. As such, the instantly recited effective amount is obvious in view of the overlapping the prior art range of 0.1-25% w/w, which expressed as %w/v would have been expected to be about 0.1-25%w/v because it is an aqueous composition. See MPEP 2144.05(I).
Finally, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, before the effective filling date of the claimed invention, to have selected and combined known components for their established functions with predictable results by following the teachings of Page. MPEP 2143 and 2144.06(I). Specifically, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the composition to a surface comprising the viruses disclosed by Page because Page discloses the compositions is suitable for cleaning and providing residual protection against those viruses.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated solid surface with a liquid suspension comprising an effective amount of cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril isomers. Wherein the virus is an enveloped or non-enveloped virus. Wherein the composition is suitable for spray. Wherein the composition is in the form of a liquid coating and the step of treating is coating the solid surface (i.e., an composition that provides residual protection).
Page also discloses the composition may comprise an antimicrobial agent such as phenoxyethanol, as per instant claim 12 [p. 25, line 31].
Regarding instant claim 16, Coulston discloses an exemplary product of cucurbit[S]uril 8%, cucurbit[6]uril 44%, cucurbit[7]uril 28%, cucurbit[8]uril 18% [p. 14, lines 28-29].
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 of cucurbit[8]uril per total cucurbituril of 10-30% w/w overlaps with the range of the prior art of 18% w/w and so a prima facie case of obviousness exists.
Regarding instant claim 17, in an examples of the synthesis, Coulston disclose products of approximately cucurbit[5]uril 5%, cucurbit[6]uril 58%, cucurbit[7]uril 28%, cucurbit[8]uril 9% (i.e., [p. 17, lines 15-16].
“[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” See MPEP 2144.05(I). In the present case, the instantly claimed range of less than 5% w/w cucurbituril isomers other than cucurbit[6]uril, cucurbit[7]uril, and cucurbit[8]uril is so close to the prior art amount of 5% that a skilled artisan would have expected the same properties and so a prima facie case of obviousness exists.
2) Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Page et al. (WO 01/28339 A2, publication date 04/26/2001) in view of Coulston et al. (WO 2018/037209 A1, publication date 03/01/2018; previously cited) as applied to claims 1, 4, 7, 12, and 16-19 above, and further in view of Blut et al. (Transfusion Medicine and Hemotherapy, 2009, v. 36, p. 32-39), as evidenced by Wikipedia (Orthomyxoviridea, Wikipedia, 2026, [retrieved 08/06/2026], https://en.wikipedia.org/wiki/Orthomyxoviridae).
Page and Coulston, which are taught above, differ from the instant claims insofar as they do not teach the specific family and genus of enveloped viruses. Page discloses the compositions are effective against influenza viruses [p. 3, lines 33-36].
Blut discloses “Influenza viruses are members of the family Orthomyxoviridea. This family represents enveloped viruses the genome of which consists of segmented negative-sense single-strand RNA segments. There are four genera of this family: types A, B, C and Thogotovirus, of which, however, only genera A and B are clinically relevant for humans” [first two sentences].
Genera A and B are Alphainfluenzavirus, and Betainfluenzavirus (i.e., instant claim 3), as evidenced by Wikipedia in the fourth line.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated a surface infected with Orthomyxoviridea Alphainfluenzavirus or Betainfluenzavirus with the composition taught by Page and Coulston. One would have been motivated to do so because Blut discloses those genera relevant to humans. One would have had an expectation of success because Page discloses the composition is effective against influenza viruses. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, 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, before the effective filling date of the claimed invention, to have treated a surface infected with Orthomyxoviridea Alphainfluenzavirus or Betainfluenzavirus with the composition taught by Page and Coulston, and discussed above, which comprises an effective amount of cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril isomers in a liquid suspension.
3) Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Page et al. (WO 01/28339 A2, publication date 04/26/2001) in view of Coulston et al. (WO 2018/037209 A1, publication date 03/01/2018; previously cited) as applied to claims 1, 4, 7, 12, and 16-19 above, and further in view of Palmenberg et al. (Methods in Molecular Biology, 2015, no. 1221, p. 1-10).
Coulston and Page, which are taught above, differ from the instant claims insofar as they do not teach the specific family or genus of the virus. Page discloses the compositions are effective against influenza viruses [p. 3, lines 33-36].
Palmenberg discloses “[t]he human rhinoviruses currently comprise the RV-A, RV-B, and RV-C species of the Enterovirus genus in the Picornaviridae family” (i.e., instant claim 5-6) [first sentence].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated a surface infected with Picornaviridae Enterovirus with the composition taught by Page and Coulston. One would have been motivated to do so because Palmenberg teaches Picornaviridae Enterovirus is relevant to humans. One would have had an expectation of success because Page discloses the composition is effective against rhinoviruses. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, 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, before the effective filling date of the claimed invention, to have treated a surface infected with Picornaviridae Enterovirus with the composition taught by Page and Coulston, and discussed above, which comprises an effective amount of cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril isomers in a liquid suspension.
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.
1) Claims 1-7, 12 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,484,615 B2 in view of Page et al. (WO 01/28339 A2, publication date 04/26/2001).
The conflicting claims “method for counteracting malodour in a moist environment, providing a mixture comprising 0.1-20% by weight CB[5], 35-75% by weight CB[6], 10-45% by weight CB[7] and 10-30% by weight CB[8], based on a total weight of cucurbiturils in the mixture” [claim 1], wherein “cucurbiturils are free of guest molecules before coming into contact with malodour molecules” [claim 15].
The conflicting claims do not disclose treating an infected surface.
Page “relates to antimicrobial compositions which provide enhanced immediate as well as residual anti-viral and antibacterial efficacy” (i.e., disinfecting and coating composition; limitation of instant claim 19) [abstract]. “These compositions are efficacious for rapidly cleaning surfaces which are infected or contaminated with Gram negative, Gram positive, viruses (e.g., rhinoviruses, adenoviruses, rotaviruses, herpes viruses, respiratory syncytial viruses, coronaviruses, parainfluenza viruses, enteroviruses, influenza viruses, etc.)” (i.e., influenza viruses include enveloped viruses according to instant claim 4; rhinoviruses include non-enveloped viruses according to instant claim 7) [p. 3, lines 33-36]. “Optionally cyclodextrin can be added to the compositions of the present invention as an odor control agent” [p. 49, lines 7-8]. According to Page “the cavities within the cyclodextrin in the solution of the present invention should remain essentially unfilled while in solution, in order to allow the cyclodextrin to absorb various odor molecules when the solution is applied to a surface”[p. 49, lines 11-13]. The compositions of Page “may be incorporated into various household care products including, but not limited to, hard surface cleaners (e.g., disinfectant sprays, liquids, or powders)” [p. 13, lines 19-20] and may be aqueous-based [p. 12, line 20].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have substituted the cucurbiturils for counteracting malodor of the conflicting claims in place of the cyclodextrin of Page because they work by the same mechanism, guest host complex. The simple substitution of one known element (e.g., the cucurbiturils of the conflicting claims) in place of another (e.g., the cyclodextrins of Page) in order to achieve predictable results (odor control agent) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated an environment infected with an enveloped or non-enveloped virus with a liquid solution comprising an effective amount of cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril isomers.
2) Claims 1-7,12 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 10,881,592 B2 in view of Page et al. (WO 01/28339 A2, publication date 04/26/2001).
The conflicting claims disclose a “stable suspension composition comprising cucurbituril particles suspended in a medium” [claim 1] which may be a “ homecare cleansing composition” [claim 21]. “[W]herein the cucurbituril is selected from CB[5], CB[6], CB[7], CB[8], or a mixture thereof” [claim 8]. “[W]herein the composition comprises from 0.1 to 60% by weight of cucurbituril based on the total weight of the composition” [claim 10]. The claims also discloses a method of counteracting malodour comprising applying the cucurbituril composition [claim 17].
The conflicting claims do not disclose treating an infected surface.
Page “relates to antimicrobial compositions which provide enhanced immediate as well as residual anti-viral and antibacterial efficacy” (i.e., disinfecting and coating composition; limitation of instant claim 19) [abstract]. “These compositions are efficacious for rapidly cleaning surfaces which are infected or contaminated with Gram negative, Gram positive, viruses (e.g., rhinoviruses, adenoviruses, rotaviruses, herpes viruses, respiratory syncytial viruses, coronaviruses, parainfluenza viruses, enteroviruses, influenza viruses, etc.)” (i.e., influenza viruses include enveloped viruses according to instant claim 4; rhinoviruses include non-enveloped viruses according to instant claim 7) [p. 3, lines 33-36]. “Optionally cyclodextrin can be added to the compositions of the present invention as an odor control agent” [p. 49, lines 7-8]. According to Page “the cavities within the cyclodextrin in the solution of the present invention should remain essentially unfilled while in solution, in order to allow the cyclodextrin to absorb various odor molecules when the solution is applied to a surface”[p. 49, lines 11-13]. The compositions of Page “may be incorporated into various household care products including, but not limited to, hard surface cleaners (e.g., disinfectant sprays, liquids, or powders)” [p. 13, lines 19-20] and may be aqueous [p. 12, line 20].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have substituted the cucurbiturils for counteracting malodor of the conflicting claims in place of the cyclodextrin of Page because they work by the same mechanism, guest host complex. One would have had an expectation of success because the conflicting claims and Page disclose the compositions may be household cleaners. The simple substitution of one known element (e.g., the cucurbiturils of Coulston) in place of another (e.g., the cyclodextrins of Page) in order to achieve predictable results (odor control agent) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated an environment infected with an enveloped or non-enveloped virus with a composition comprising an effective amount of cucurbit[6]uril, cucurbit[7]uril and cucurbit[8]uril isomers in the form of a liquid suspension (i.e., suspended in a medium).
Response to Arguments
1) On pages 9 and 10 of their Remarks, Applicant argues that Coulston et al. (WO 2018/037209 A1, publication date 03/01/2018) as evidenced by HMSC (A World of Viruses, Harvard Museums of Science and Culture, 2026 [retrieved 1/27/2026], https://hmsc.harvard.edu/online-exhibits/world-viruses/) does not disclose surfaces or environments that would have been expected to be infected with a virus as asserted by the previous Office Action.
This argument is moot in view of the new rejections set forth above.
2) On pages 11-13 of their Remarks, Applicant argues the double patenting rejections should be withdrawn because the conflicting claims do not recite an infected environment.
This argument is moot in view of the new rejections set forth above.
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
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