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
This action is in response to Applicant’s amendment filed March 2, 2026 in reply to the First Office Action on the Merits mailed November 28, 2025. Claims 1, 2, and 8-22 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 Claims 9-15 and 18-22 have been withdrawn.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 Claim Rejections - 35 USC § 101
Claim 1 has been satisfactorily amended. Therefore, the 35 USC 101 rejection for lack of utility, presented in the First Office Action on the Merits mailed November 28, 2025, is hereby withdrawn.
Abstract
The abstract of the disclosure is objected to because of the following:
1. The abstract should be a concise summary of the key technical aspects of the invention which are new to the art to which the invention pertains. If the invention pertains to a composition, the abstract should recite the key requisite ingredients. If the invention pertains to a method, the abstract should recite the key requisite active steps.
2. The abstract presented merely informs the reader that the invention is “certain hydroxy compounds”. This is nothing new to the art at all. “Certain hydroxy compounds” have been known for many decades, even those with antiviral activity. The abstract thus fails to inform the reader of the key technical aspects of the invention which are new to the art.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 2, and 17 are objected to because of the following:
i). In claim 1, the expression “one or more of…and mixtures thereof” is awkward and redundant. There are extraneous colons following the phrase “selected from the group consisting of” in the Markush (sub)groups. The elements in a Markush (sub)group should be separated by commas rather than semicolons. There should be a semicolon between “and mixtures thereof” and “(a2)”. There is an extraneous “and” between group (a2) and (a3). There should be an “and” between groups (a4) and (a5).
ii). In claim 2, the term “claim” in the preamble should not be capitalized. There should be a comma between “the composition of claim 1” and “wherein”. Claim 2 is in improper Markush format, i.e. “selected from the group consisting of…and/or herpes”, i.e. there should be commas rather than semicolons between the recited elements of the Markush group.
iii). In claim 17, the preamble “the compositions of claim 1” is improper, as the term “compositions” in the preamble should be “composition”. The expression “present in ratios by weight” should be e.g. “present in a ratio by weight” or e.g. “present in a weight ratio”.
Appropriate correction is required.
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 is 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. Applicant is advised that a proper Markush claim has the general format “selected from the group consisting of A, B, C, and D”, not selected from the group consisting of A, optionally: l, m, n, and mixtures thereof, B, optionally: o, p, q, and mixtures thereof, C, optionally: r, s, t, and mixtures thereof, and D, optionally: u, v, w, and mixtures thereof, and mixtures of the groups thereof”. Indeed, no Markush group should consist of separate Markush groups.
Claim 2 is in improper Markish format and thus one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter. Applicant is advised that a proper Markush claim has the general format “selected from the group consisting of A, B, C, and D”, not “selected from the group consisting of A, B, C, and/or D”.
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 Nahrwold et al. (U.S. Patent Application Pub. No. 2018/0280268).
Applicant’s elected subject matter is directed to a composition comprising 1,2-pentanediol and water present in a weight ratio of 0.1:99.9 to 50:50; wherein the 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 hydroxyl compound, e.g. 1,2-pentanediol, is present in the amount of 0.1-50 wt%. Moreover, the original specification provides an example where 1,2-pentanediol is present in the amount of 33 wt% and this amount provides potent virucidal activity.
Nahrwold et al. disclose a composition comprising 1,2-pentanediol and water present in a weight ratio of 40:55; wherein the 1,2-pentanediol is present in the amount of 40 wt% (see Table 1, formulation A).
Therefore, without question, Nahrwold et al.’s “formulation A” would exhibit potent virucidal activity, and thus anticipates the presently claimed subject matter.
Conclusion
No claims are allowed.
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.
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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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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/DAVID BROWE/Primary Examiner, Art Unit 1617
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