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 .
Claims Status
Applicant’s elected with traverse of the species of: peracetic acid as the peroxycarboxylic acid; formic acid as the carboxylic acid; sodium lauryl sulfate as the anionic surfactant; alkyl polyglucoside as the nonionic surfactant; and methane sulfonic acid as the pH adjusting agent in the reply filed on 01/09/2026 is acknowledged.
Claim 8 and 14 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/09/2026. Claims 78-80 are directed to a non-elected species in that there is a mixture of first and second carboxylic acids whereas the elected species is to formic acid. The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention.
Claims 8, 14 and 25 and 78-80 are currently withdrawn.
Claims 1-5, 7, 11-13, 15-17, 21, and 24 and 76-77 are under current examination to the extent of the elected species of: peracetic acid as the peroxycarboxylic acid; formic acid as the carboxylic acid; sodium lauryl sulfate as the anionic surfactant; alkyl polyglucoside nonionic surfactant; and methane sulfonic acid pH adjusting agent.
Applicants' arguments and amendments filed on 07/14/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Rejection modified in view of claim amendments and addition of new claims
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 1-5,7,9-13,15-17, 21,23, 24 and new claims 76-77 are rejected under 35 U.S.C. 103 as being unpatentable over Buchalova et al. (United States Patent Publication 2015/0335598) in view of Schacht et al. (United States Patent Publication 2019/0275468).
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Buchalova et al. teach an aqueous germicidal composition which comprise 0.05-35% formic acid and anionic surfactant, see claim 1. The formulation can be combined with mineral acids including methane sulfonic acid, see paragraph [0028]. The pH of the composition is less than about 5, see paragraph [0041]. The composition can contain other germicides such as peracetic acid present up to 25% by weight (thus encompassing a range from 0-25% by weight), see paragraphs [0026]- [0027]. The anionic surfactant can comprise sodium lauryl sulfate and can be present from 0.5-1% by weight, see paragraph [0023]. The composition can further comprise alkyl polyglucoside nonionic surfactant in addition to the anionic surfactant, see paragraph [0025]. The nonionic surfactant can be present from about 0.01-20% by weight or from 0.1-1% by weight, see paragraph [0025]. Formic acid has the structure of
and therefore has one hydroxy group and one carbon atom.
Buchalova does not expressly teach that the peracetic acid is from about 0.006-0.06% by weight with the formic acid to impart synergism wherein a weight ratio of the peroxycarboxylic acid (i.e. peracetic acid) to the carboxylic acid (i.e. formic acid) is form about 0.005:1 to about 1.66:1.
However, Schacht et al. teach cleaning compositions which comprises from 0.1-1% by weight organic acid and 0.02%-0.15% by weight of oxidant wherein the organic acid includes formic acid and wherein the oxidant is inclusive of peracetic acid, see paragraph [0018] and claims 1-2 and 10. The antimicrobial solution can include in another embodiment from 0.05-0.5% by weight organic acid, from 0.01-0.5% anionic surfactant and from 0.04-0.1% of oxidant, see paragraph [0020]. The combination of the organic acid and oxidizer results in synergistic sanitizing and removal of bacterial spores and biofilms, see paragraphs [0054], [0069] and [0074].
It would have been prima facie obvious to provide the peracetic acid taught in Buchalova et al. in amounts from 0.02-0.15% by weight with the formic acid aqueous germicidal composition.
One of ordinary skill in the art would have been motivated to do so because Schacht et al. teach that organic acids inclusive of formic acid act synergistically when in combination with oxidants including peracetic acid against bacteria.
There would have been a reasonable expectation of success as Buchalova suggests placing the peracetic acid as an additional biocide with aqueous formulations comprising formic acid.
Regarding the amount of formic acid, Buchalova et al. teach 0.05-35% formic acid which overlaps and renders obvious the claimed ranges of about 0.008 to about 10% by weight, from about 0.015 to about 10% by weight and from about 0.01-10% by weight. Regarding the amount of peracetic acid present, Buchalova suggests up to 25% can be present and Schacht et al. teach that 0.02-0.15% of peracetic acid can be combined with 0.1-1% organic acid to achieve synergism against biofilms. An amount of 0.02-0.15% by weight of peracetic acid overlaps and renders obvious the claimed amounts of amounts of from about 0.006-0.06% by weight and from about 0.01-0.2% by weight. Regarding the amount of anionic surfactant, Buchalova et al. teach from 0.5-1% by weight which overlaps and renders obvious the claimed range of from about 0.001-1.1% by weight and about 0.02 to about 1% by weight . Regarding the presence of nonionic surfactant, Buchalova et al. teach nonionic surfactant present from about 0.001-1.1% by weight which overlaps and renders obvious the claimed range of from 0.003-2.8% by weight. Regarding the ratio of peracetic acid (peroxycarboxylic acid) to formic acid (carboxylic acid), Schact et al. teaches synergism with 0.1-1% organic acid inclusive of formic acid and from 0.02-0.15% of oxidant inclusive of peracetic acid. These amounts overlap the ratio of from about 0.005:1 to about 1.66:1 of peroxycarboxylic aid to carboxylic acid as Schacht et al. teaches 0.02% by weight of peracetic acid and 0.1% by weight formic acid. These amounts yield a weight ratio of 0.2:1 which is a range within instant claims 1 and 76-77. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Accordingly, claims 1-5,7,9-13,15-17, 21,23 and 24 and 76-77 are rendered prima facie obvious over the teachings of Buchalova et al. in view of Schacht et al.
Response to Remarks
Applicants argue that claim 1 has been amended to recite that the peroxycarboxylic acid is from about 0.006-0.06% weight. Applicants argue that this range claimed is shown to be critical to yield improved performance over a range of up to 0.15% as taught by Schacht. Applicants point to example 1 in which PAA concentrations at more than 0.08% by weight show an undesirable grey appearance but when carboxylic acid is added the synergistic effect allowed the amount of peroxycarboxylic acid to be decreased to less than 0.06% by weight thereby achieving synergy in performance while complying with food contact regulations absent any discoloration. Applicants point out that in Example 12, synergism between peracetic acid to formic acid was demonstrated at various weigh ratios and it was found that synergistic effect observed when the ratio of peroxycarboxylic acid to carboxylic acid is from 0.005:1 to 1.666:1.
Examiner respectfully submits that per MPEP 716.02(d), Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, claim 1 is to peroxycarboxylic acid whereas Table 1 tests a combination of peracetic acid and formic acid at a pH from 1.0-3.0. Similarly, example 2 utilizes a pH range of 1-3 and combines peracetic acid with acetic acid, valeric acid, caproic acid caprylic acid and lauric acid. Example 4 at a pH of from 1-3 combines peracetic acid with succinic acid, adipic acid, itaconic acid, benzoic acid and oxalic acid. Notably the examples in the instant specification utilize a specific pH range and peracetic acid as the peroxycarboxylic acid. Example 12 utilizes a pH range of 0.5-3 but tests formic acid with peracetic acid (PAA). Peracetic acid appears to be the only peroxycarboxylic acid being tested and the examples appear to disclose low pH ranges. From these examples demonstrating a low pH range and only peracetic acid, one of ordinary skill in the art would not be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). Examples 1 and 12 both utilize peracetic aid and have a pH range from either 0.5-3 or 1.0-3 with Example 12 exemplifying formic acid and example 1 demonstrates propionic acid. One of ordinary skill in the art based on these examples would not be able to extrapolate a trend for synergism to any peroxycarboxylic acid: carboxylic acid combination at a pH inclusive of 7 (i.e. no more than 7). Examiner further notes that the evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In the instant case, antimicrobial synergism is indeed disclosed in Schacht against bacterial spores where a carboxylic acid (formic acid) and peracetic acid as an oxidant are combinable to boost the antimicrobial composition.
Applicants argue that none of the references teach the weight ratio as claimed of peroxycarboxylic acid to carboxylic acid. Applicants argue that none of the references make any suggestion as the ratio of the two components, thus there would be no reason to select specific values form the disclosed ranges of each individual component.
Examiner respectfully disagrees and notes that per the teachings of Schacht, synergism for sanitizing and removal of bacterial spores is taught and the organic acid which is inclusive of formic acid is present from 0.1-1% with 0.02-0.15% oxidant which is inclusive of peracetic acid. The 0.02% by weigh oxidant (i.e. peracetic acid) with 0.1% of formic acid is a ratio of 0.2:1 which falls within the range of about 0.005:1 to about 1.666:1. Thus, the weight percents suggested by Schacht et al. expressly meet the claimed weight ratio range called for in claims 1 and new claims 76-77. These ranges in Schacht which overlaps the instantly claimed ranges and Schacht teaches their oxidant and organic acid can provide synergism to bacterial spores.
Conclusion
Currently, no claims are allowed and claims 1-5, 7, 11-13, 15-17, 21, and 24 and 76-77 are rejected.
Applicant’s arguments/remarks are considered unpersuasive.
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 extension fee 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.
Correspondence
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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