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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 24, 2026, that includes a response to the Final Office Action mailed April 24, 2026, has been entered. Claims 1, 2, and 17 have been amended; and claims 3-7, 23, and 24 have been canceled. Claims 9-15 and 18-22 have been withdrawn. Claims 1, 2, 8, 16, and 17 are under examination.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the Final Office Action mailed April 24, 2026 is hereby withdrawn.
Withdrawal of Prior Claim Objections
Claims 1, 2, and 17 have been satisfactorily amended. Therefore, the objections to these claims presented in the Final Office Action mailed April 24, 2026 are hereby withdrawn.
Withdraw of Prior Claim Rejections - 35 USC § 103
Nahrwold et al. (U.S. Patent Application Pub. No. 2018/0280268) do not explicitly disclose that the at least one 1,2-alkanediol is present in the amount of 0.1-33 wt%, as now stipulated in newly amended claim 1. On the contrary, Nahrwold et al. disclose that their composition necessarily contains 40-95 wt% of at least one 1,2-alkanediol, and thus teaches away from the presently claimed subject matter. Therefore, the 35 USC 102(a)(1) and 102(a)(2) rejection presented in the Final Office Action mailed April 24, 2026 is hereby withdrawn. Upon further search and consideration, however, new prior art has been procured, and a new grounds of rejection has been formulated that addresses the presently claimed subject matter, which is presented herein below and is necessitated by the present amendment.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1, 2, 8, 16, and 17 are 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 1 is indefinite for the following reasons:
1. Claim 1 remains in improper Markush format, and one of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter. Claim 1 presents a Markush group comprised of separate Markush groups. Indeed, no Markush group should consist of separate and distinct Markush groups.
***To remedy this issue, the simplest way is to amend (a) from “at least one hydroxyl compound selected from the group consisting of” to e.g. “at least one hydroxyl compound selected from” or “at least one hydroxyl compound selected from the following”.
2. Claim 1 first provides that element (b), i.e. the solvent, is entirely optional, but then goes on to stipulate in a wherein clause that “the at least one hydroxyl compound is present in an amount of from 0.1 to 33 wt% based on the total weight of the composition”. If element (a) can be present in an amount as low as e.g 0.1 wt%, 99.9 wt% of the composition thus has to be something else. Except for element (a), i.e. the hydroxyl compound, the only other element recited is element (b), i.e. the solvent. If not element (b), there is thus at least one additional required element that the claim never mentions. One of ordinary skill in the art thus cannot definitively ascertain whether the composition necessarily contains the solvent.
Claims 2, 8, 16, and 17 are (also) indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 102(a)(1) and 102(a)(2)
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 8, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Thomas et al. (U.S. Patent Application Pub. No. 2015/0079203).
Applicant’s elected subject matter is directed to a composition comprising at least one 1,2-alkanediol and water present in a weight ratio of 0.1:99.9 to 50:50; wherein the at least one 1,2-alkanediol comprises 1,2-pentanediol, and is present in the amount of 0.1-33 wt%, and wherein the at least one 1,2-alkanediol including 1,2-pentanediol provides virucidal and/or antiviral activity for the composition.
***In light of the specification, “provides virucidal and/or antiviral activity” means that the at least one hydroxyl compound, including 1,2-pentanediol, is present in the amount of 0.1-50 wt%, or preferably in the amount of 0.1-33 wt%.
Thomas et al. disclose e.g. “Composition Q”, which comprises 3% (vol/vol) 1,2-pentanediol, 2% (vol/vol) 1,2-hexanediol, and 95% (vol/vol) water (see Table 1).
For a 100 ml composition, 1,2-pentanediol is 3 ml, 1,2-hexanediol is 2 ml, and water is 95 ml. The density of 1,2-pentanediol is 0.971 g/ml. The mass of 1,2-pentanediol is thus 2.913 g. The density of 1,2-hexanediol is 0.951 g/ml. The mass of 1,2-hexanediol is 1.902 g. The standard density of water is 1 g/ml. The mass of water is 95 g. The total mass is thus 2.913 g + 1.902 g + 95 g, which is 99.815 g. Therefore, 1,2-pentanediol is present in the amount of about 2.9 wt%, 1,2-hexanediol is present in the amount of about 1.9 wt%, and water is present in the amount of about 95.2 wt%. The at least one 1,2-alkanediol is thus present in the amount of about 4.8 wt% (i.e. within the claimed range of 0.1-33 wt%). The weight ratio of the at least one 1,2-alkanediol and water is thus about 1:20, (i.e. squarely within the claimed range of 0.1:99.9 to 50:50).
Therefore, without question, Thomas et al.’s “composition Q” would exhibit potent virucidal activity, and thus anticipates the presently claimed subject matter.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
