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 .
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.
Election/Restrictions
Applicant’s election in the reply filed on 29 September 2025, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicants’ elected “2-cyanoguanidine” as a species of “guanidine enhancer”. The Examiner found prior art for the elected species of instant claim 1.
Therefore, per Markush search practice, the Markush search extension will not be extended unnecessarily to additional species within this Office Action.
Claims 1-20 read on Applicants’ elected species.
No claims are withdrawn.
Current Status of 18/026,204
This Office Action is responsive to the amended claims of 29 September 2025.
Claims 1-20 have been examined on the merits. Claims 1-2, 8, 12, 17, and 19 are original. Claims 3-7, 9-11, 13-16, 18, and 20 are previously presented.
Priority
The effective filing date is 14 September 2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 16 January 2026; 31 October 2024; and 14 March 2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 14 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 14 recites the limitation "1,2-benzisothiazolin-3-one" and “N-(n-butyl)-1,2-benzisothiazolin-3-one”. There is insufficient antecedent basis for these limitations in the claim.
As drafted, claim 14 depends from claim 11, and claim 11 depends from claim 1. The limitations of claim 14: "1,2-benzisothiazolin-3-one" and “N-(n-butyl)-1,2-benzisothiazolin-3-one” are not earlier seen (lack antecedent basis) within claims 1, 11, and/or 14. Thus, this renders the metes and bounds of claim 14 undefined (hence rendering claim 14 indefinite under 35 USC 112(b)). The artisan is not certain where antecedent basis to each of: "1,2-benzisothiazolin-3-one" and “N-(n-butyl)-1,2-benzisothiazolin-3-one” can be found within claims 1, 11, and/or 14. At best, claim 1 is drawn to “4-isothiazolin-3-one” but does not further provide antecedent basis linking either "1,2-benzisothiazolin-3-one" or “N-(n-butyl)-1,2-benzisothiazolin-3-one” to 4-isothiazolin-3-one (however, claim 2 does).
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.
Claims 2-3, 6, 13-14, and 17 are 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.
Dependent claim 2, drawn to “wherein the 4-isothiazolin-3-one biocidal active compound is one or more of … ” (emphasis on “or more of”), improperly changes the scope from the one and only one 4-isothiazolin-3-one biocidal active compound of parent claim 1 (“a 4-isothiazolin-3-one biocidal active compound” of claim 1 is interpreted as permitting just one species of 4-isothiazolin-3-one; thus, a dependent claim of claim 1 cannot permit more than one species of 4-isothiazolin-3-one biocidal active compound). Thus, claim 2 is rejected under 35 USC 112(d).
The “one or both of” of claim 3 means that claim 3 is similarly rejected under 35 USC 112(d) for changing the scope of 4-isothiazolin-3-one compound. Claim 3 permits more than one 4-isothiazolin-3-one compound while parent claim 1 just permits one 4-isothiazolin-3-one compound.
Similarly, claim 6’s “the at least one” means claim 6 is similarly rejected under 35 USC 112(d) since claim 6 permits more than one 4-isothiazolin-3-one compound while claim 1 limits it to just one 4-isothiazolin-3-one compound.
The same is true for “or both” (two occurrences) of claim 13, rendering claim 13 rejected under 35 USC 112(d) since claim 13 permits more than one 4-isothiazolin-3-one compound while claim 1 limits it to just one 4-isothiazolin-3-one compound.
Also, claim 14, drawn to two 4-isothiazolin-3-one compounds is similarly rejected under 35 USC 112(d) since claim 14 permits more than one 4-isothiazolin-3-one compound while claim 1 limits it to just one 4-isothiazolin-3-one compound.
Claim 17 which permits two 4-isothiazolin-3-one compounds, improperly further limits claim 1, just drawn to one/“a” 4-isothiazolin-3-one compound. Thus, claim 17 is rejected under 35 USC 112(d) since claim 17 permits more than one 4-isothiazolin-3-one compound while claim 1 limits it to just one 4-isothiazolin-3-one compound.
As such, dependent claims 2-3, 6, 13-14, and 17 (all rejected under 35 USC 112(d)) permit more than one 4-isothiazolin-3-one compound while parent claim 1 requires/permits only one 4-isothiazolin-3-one compound.
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
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over:
Biocide (“Isothiazolinone Based Biocide: Industrial Perspective.” Published: 27 January 2018. Accessed 1 April 2026. Available from: < http://www.preservatives4u.com/1-isothiazolinone-based-biocide/219799/#:~:text=Methylisothiazolinone%20is%20an%20efficient%20broad,%2C%20shampoo%2C%20and%20wet%20wipes > ),
in view of:
HEO (Heo, Jin, Ju, et al. “Simultaneous quantitative analysis of four isothiazolinones and 3-iodo-2-propynyl butyl carbamate in hygienic consumer products.” Published 17 July 2018, Environ. Eng. Res. (2019), 24(1), pp. 137-143),
in view of:
2_CN (“Dicyandiamide.” Benco Chemical LTD. Available to public on: 10 August 2015. Accessed 1 April 2026. Available on: < https://web.archive.org/web/20150810214927/https://www.bencochemical.com/Dicyandiamide.html > ).
in view of:
FLOX (“How Flocculation Cleans Up Drinking Water.” First made available to Public: 24 August 2016. Accessed 1 April 2026. Available from: < https://www.sciencebuddies.org/science-fair-projects/project-ideas/EnvEng_p039/environmental-engineering/clean-drinking-water-flocculation >),
and in further view of:
ANSEL (Ansel, Howard C., et al. “Pharmaceutical Dosage Forms and Drug Delivery Systems.” 7th ed. Williams and Wilkins Publishers. (1999), pp. 48-53).
The instant claims are drawn to a biocidal composition comprising:
a 4-isothiazolin-3-one biocidal compound; and
a 2-cyanoguanidine (“dicyandiamide”) guanidine enhancer.
Furthermore, the claims include dependent claims drawn to routinely optimized variables in the form of weight percentages and weight ratios of one or more ingredients of the biocidal composition.
Determining the scope and contents of the prior art:
The prior art reference BIOCIDE teaches that isothiazolinone compounds are used as broad-spectrum biocides in emulsions, building materials, textiles, papermaking, industrial additives, cosmetic products such as creams, lotions, sunscreens, and shampoos (see page 3 of 8). These isothiazolinone compounds include 4-isothiazolin-3-one compounds, such as methylisothiazolinone (see pages 4-5 of 8), which the Examiner interprets as including 2-methyl-2H-isothiazolin-3-one and 5-chloro-2-methyl-2H-isothiazolin-3-one of instant claim 2; octyl-isothiazolinone (see pages 5-6 of 8), which the Examiner interprets as including 2-octyl-3(2H)-isothiazolin-3-one and di-chloro-n-octyl-2H-isothiazolin-3-one of instant claim 2; and benzisothiazolinone (see pages 6-7 of 8), which the Examiner interprets as including 1,2-benzisothiazolin-3-one and N-(n-butyl)-1,2-benzisothiazolin-3-one of instant claim 2. Thus, this teaches instant claims 2-3. Also, this teaches use of 4-isothiazolin-3-one active compounds with biocidal properties and helps teach instant claim 1.
The prior art reference HEO teaches that 4-isothiazolin-3-one compounds, such as 1,2-benzisothiazolin3-one and 2-octyl-4-isothiazolin-3-one are disinfectant and preservative biocidal active ingredients used globally to prevent bacteria and mildew growth in various consumer products, such as cosmetics, hair and skin care products, cleaning agents, and fabric softeners (first page). HEO also teaches their use in paints (see paragraph immediately preceding “3.3 Korean Market Consumer Products” on 7th page, which teaches instant claims 18-19). This teaches instant claims 2-3. Also, this teaches use of 4-isothiazolin-3-one active compounds with biocidal properties and helps teach instant claim 1. This reinforces what is taught by the primary reference BIOCIDE.
The prior art reference 2_CN teaches that 2-cyanoguanidine (Applicants’ elected species), otherwise known in the art as “dicyandiamide”, is used in a wide variety of applications, including as a pharmaceutical ingredient/adjuvant and a flocculant for water treatment (see enclosed one-page reference).
The prior art reference FLOX teaches that flocculants are chemicals that are used in industry to help clump small particles (many small particles containing bacteria) together to readily remove these particles from water (in water treatment applications) (see paragraph under “Figure 1” on 5th page of enclosed reference). Thus, this helps teach that flocculants can be used with biocidal compounds to break up particles that normally harbor microbes/bacteria which help increase the volume of space and surface area of bacteria therein exposed to the biocide hence maximizing the efficacy of the biocide.
The reference ANSEL teaches that physicians routinely change/optimize the dosage of medicaments to meet the particular needs of the patient (see page 48). This reference is helpful in reasoning by analogy as to why the artisan would be expected and motivated to routinely optimize ingredients of the biocidal composition (analysis, below).
Ascertaining the differences between the prior art and the claims at issue:
While the prior art reference BIOCIDE teaches use of isothiazolinone compounds, such as 4-isothiazolin-3-one compounds as having biocidal properties and applications (see citations, above), it does not teach a biocidal composition comprising both 4-isothiazolin-3-one compounds and guanidine enhancers.
While the prior art reference HEO teaches that 4-isothiazolin-3-one compounds, such as 1,2-benzisothiazolinone and 2-octyl-4-isothiazolin-3-one are disinfectant and preservative biocidal active ingredients used globally to prevent bacteria and mildew growth in various consumer products, such as cosmetics, hair and skin care products, cleaning agents, and fabric softeners (first page), the reference does not teach a biocidal composition comprising both 4-isothiazolin-3-one compounds and guanidine enhancers.
While the prior art reference 2_CN teaches that 2-cyanoguanidine (Applicants’ elected species), otherwise known in the art as “dicyandiamide”, is used in a wide variety of applications, including as a pharmaceutical ingredient/adjuvant and a flocculant for water treatment (see enclosed one-page reference), the 2_CN reference does not teach dicyandiamide’s use as a biocide or paired with 4-isothiazolin-3-one biocidal compounds.
The prior art reference FLOX teaches that flocculants are chemicals that are used in industry to help clump small particles (many small particles containing bacteria) together to readily remove these particles from water (in water treatment applications) (see paragraph under “Figure 1” on 5th page of enclosed reference). However, FLOX does not teach a biocidal composition comprising 4-isothiazolin-3-one compounds paired with 2-cyanoguanidine.
While the reference ANSEL teaches that physicians routinely change/optimize the dosage of medicaments to meet the particular needs of the patient (see page 48), ANSEL does not teach the biocidal composition of the instant claims.
Resolving the level of ordinary skill in the pertinent art:
The artisan is knowledgeable in making and using biocidal compositions to control microorganism growth on inanimate surfaces and on subjects in need thereof. The artisan is knowledgeable in tailoring the specific dosage, weight ratios, weight percentages, etc. of ingredients in the biocidal composition to optimize biocidal efficacy thereof.
Considering objective evidence present in the application indicating obviousness or nonobviousness:
The instant claims are prima facie obvious in light of the combination of references BIOCIDE, HEO, 2_CN, FLOX, and ANSEL.
The artisan would be expected to pair a known flocculant, such as 2-cyanoguanidine (also known as “dicyandiamide”) with a biocidal 4-isothiazolin-3-one compound to maximize the efficacy of the biocidal 4-isothiazolin-3-one active compounds.
The artisan would be motivated to pair dicyandiamide (Applicants’ elected species), a known flocculant (see 2_CN one-page reference), with any biocidal 4-isothiazolin-3-one compounds (see numerous citations from references BIOCIDE and HEO, above), which include the compounds of instant claims 2-3 (see citations within BIOCIDE and HEO, above) because the flocculants would break up any dirt/particles harboring bacteria (just as they do for water treatment applications per FLOX reference-see citations, above) thereby maximizing the surface area/volume of the exposed bacteria to the biocidal 4-isothiazolin-3-one compounds (of instant claims 2-3) which would increase the biocidal efficacy of said biocidal composition (comprising dicyandiamide flocculant and 4-isothiazolin-3-one compound). Thus, one would arrive at the biocidal composition of instant claims 1-3.
Also, since the prior art references BIOCIDE, HEO, 2_CN, and FLOX are silent as to biguanidine or polymeric variants thereof, the combination of these references used in this rejection teach instant claim 10.
Having arrived at the biocidal composition, above, one would be expected to use it in disinfectant cleaning products (HEO first page, which teaches “detergent or cleaner” and “disinfectant” of instant claim 18), including with water based applications to maximize the flocculant functions of dicyandiamide. The artisan would be motivated to include the biocidal/flocculant composition, above, with water, perhaps in an aerosol spray bottle, to maximize the flocculant functions of dicyandiamide, thereby arriving at the water/solvent composition of instant claims 7-8. This helps teach “aqueous dispersion” of instant claims 9 and others. The aerosol spray bottle, and the disinfectant cleaning products (HEO first page) are “A product comprising the instant claim 1 biocidal composition”, thereby teaching instant claim 11.
Having arrived at the biocidal composition, per, above, the artisan would now be expected to use it to maximize biocidal efficacy. The artisan would be motivated to apply the known biocidal composition, above, to a subject in need thereof or a locus (such as a kitchen countertop) to maximize the biocidal efficacy of the composition and provide relief (for example, sterilized wound on a subject and/or clean kitchen countertop). The artisan would be expected to and motivated to apply enough of the biocidal composition thereby comprising “an amount effective to adversely affect the growth or survival of the microorganisms”. This teaches instant claim 20.
Claims 4-6, 9, and 12-17 are drawn to various (weight) ratios/percentages of ingredients of said biocidal composition. The Examiner interprets these claims as drawn to variables the artisan would normally be expected to routinely optimize.
The reference ANSEL teaches that physicians routinely change/optimize the dosage of medicaments to meet the particular needs of the patient (see page 48). ANSEL is useful as a reference by analogy: if physicians routinely optimize dosages of medicaments to maximize the efficacy of the treatment, then, too, the artisan knowledgeable about biocides would be expected to routinely optimize the ingredients (weight ratios, weight percentages, etc) of said biocidal composition. The artisan would be motivated to routinely optimize the biocidal composition ingredients to maximize the biocidal efficacy of the composition (much as the physician in ANSEL routinely optimizes dosages of medicaments to maximize therapeutic efficacy), thereby arriving at the instant invention. This is especially true since neither the claims nor the Specification explain the criticality of these routinely optimized variables.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). See MPEP 2144.05(II)(A).
Thus, this teaches instant claims 1-20.
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.
Claims 1-4, 9, 11-12, and 18-19 are provisionally rejected on the ground of anticipatory nonstatutory double patenting as being unpatentable over claims 1 and 9-17 of co-pending Application No. 18/551,203 (reference application). The reference amended claims of 19 September 2023 and the instant amended claims of 29 September 2025 were used to write this rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the instant claims. Hence, the reference is used in an anticipatory-manner (thereby making this an “anticipatory nonstatutory double patent rejection”). See MPEP 804(II)(B).
For example, the reference claim 9, drawn to a biocidal composition, comprising:
a 4-isothiazolin-3-one biocidal active compound; and
a guanidine enhancer, wherein the guanidine enhancer is one or more of 1-cyanoguanidine, a salt of 1-cyanoguanidine, 2-cyanoguanidine, or a salt of 2-cyanoguanidine, anticipates instant claim 1, drawn to the same. This is a non-statutory (similar, not identical scope, and not distinct) and not a statutory (same scope) double patent rejection since the last limitation/line of reference claim 9 “guanidine enhancer is crystalized around an inert inorganic mineral” is not seen in the instant claims, thereby the scopes of the reference and instant are not identical but are not distinct. All the limitations of instant claim 1 are anticipated by the reference claim 9.
Similarly, reference claim 10, which depends on reference claim 9, draw to “wherein the 4-isothiazolin-3-one compound is one or more of 1,2-benzisothiazolin-3-one and N-(n-butyl)-1,2-benzisothiazolin-3-one, anticipates instant claims 2-3, drawn to same.
Moreover, reference claim 11, which depends on reference claim 9, drawn to “wherein a weight ratio of the guanidine enhancer to the 4-isothiazolin-3-one compound is no greater than 800:1 and no less than about 1:1” anticipates instant claim 4, drawn to same.
Also, reference claim 12, which depends on reference claim 9, drawn to “wherein the biocidal composition is an aqueous dispersion, and the aqueous dispersion has a water content no less than 20% and no greater than 95% by weight of the biocidal composition”, anticipates instant claim 9, drawn to same.
Moreover, the reference claim 13, drawn to “A product comprising the biocidal composition of [reference] claim 9”, anticipates instant claim 11, drawn to same.
Reference claim 14, which is dependent on reference claim 13, drawn to “wherein the 4-isothiazolin-3-one biocidal active compound is present in an amount no less than about one part per million and no greater than about 400 ppm” anticipates instant claim 12, drawn to same.
Also, reference claim 16, drawn to “product being a paint, a coating, etc.”, which depends on reference claim 13, anticipates instant claim 18, drawn to same.
Finally, reference claim 17, which is dependent on reference claim 16, drawn to “wherein the product is a paint, coating, emulsion polymer, or aqueous mineral slurry”, anticipates instant claim 19, drawn to same.
The Examiner also discloses that the reference claims 1-8, drawn to methods for making the biocidal composition of reference claim 9, teach all the limitations of the instant claim 1.
Applicants can file a Terminal Disclaimer (TD) to render moot this non-statutory double patent rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are presently allowable as written.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625