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 election without traverse of Group I (composition of claims 1-5,7-17,21, and 23-24) in the reply filed on 01/09/2026 is acknowledged.
Claim 25 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (to a method), there being no allowable generic or linking claim. Election of Group I was made without traverse in the reply filed on 01/09/2026.
Applicant's election with traverse of the species: 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.
The traversal is on the ground(s) that some of the requirement for species are not explicitly listed in each claim and that the open ended language of comprising allows for inclusion of optional components that do not need to be specifically elected. The elected composition may optionally include a non-ionic surfactant, pH adjusting agent in general and any species of these optional components is expected to exhibit similar performance.
This is not found persuasive because an election of species can be required even if no species claim is present, however the instant claims presented a genus of peroxycarboxylic acid (claim 1) carboxylic acid (claim 1), pH adjusting agents (claim 21) and nonionic surfactant (claims 16-17). Per PCT Rule 13.1, the species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept as demonstrated by the teachings of Man et al. presented in the restriction requirement mailed on 12/23/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claim 8 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim.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Claims 8-14 and 25 are currently withdrawn.
Claims 1-5, 7, 9-13, 15-17, 21, and 23-24 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.
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 05/11/2023 and 06/25/2024 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claim Objections
Claims 2-5, 7, 9-13, 15-17, 21, and 23-24 are objected to because of the following informalities: Claims 2-5, 7, 9-13, 15-17, 21, and 23-24 recite “the antimicrobial composition”. For claim language consistency with claim 1, the claims should recite the synergistic antimicrobial composition.
Claim 17 appears to have a period instead of a comma for part b) after the word amine oxide surfactants. It is believed this is meant to be a comma instead of a period.
Appropriate correction is required.
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.
Claims 3-4, 7, 10, 12, 13, 15, 17, and 21 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 3 recites wherein the peroxycarboxylic acid comprises performic acid, peracetic acid, peroxypentanoic acid, peroxyhexanoic acid, peroxyheptanoic acid, peroxyoctanoic acid, peroxynonanoic acid, peroxydecanoic acid, peroxyundecanoic acid, peroxydodecanoic acid, perglycolic acid, peroxyascorbic acid, peroxyadipic acid, peroxycitric acid, peroxypimelic acid, peroxysuberic acid, or any mixture thereof. Claim 3 is being interpreted as a Markush group being selected from the group comprising due to the list of alternatives for the peroxycarboylic acid recited. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
Claim 4 recites wherein the peroxycarboxylic acid comprises performic acid, peracetic acid, peroxyoctanoic acid, peroxydecanoic acid, peroxydodecanoic acid, perglycolic acid, or any mixture thereof. Claim 4 is being interpreted as a Markush group being selected from the group comprising due to the open list of alternatives for the peroxycarboxyic acid. Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
Clam 7 recites wherein the carboxylic acid comprises formic acid, acetic acid, propionic acid, valeric acid, caproic acid, caprylic acid, nonanoic acid, decanoic acid, undecanoic acid, lauric acid, cinnamic acid, benzoic acid, or any mixture thereof. Claim 7 is being interpreted as a Markush group being selected from the group comprising due to the list of alternatives for the carboxylic acid recited. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022).
Claim 10 recites wherein the carboxylic acid comprises glycolic acid, lactic acid, citric acid, gluconic acid, malic acid, salicylic acid, tartartic acid, ascorbic acid, erythorbic acid, arginic acid, mandelic acid, or any mixture thereof. Claim 10 is being interpreted as a Markush group being selected from the group comprising due to the open list of alternatives for the carboxylic acid. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
Claim 12 recites wherein the anionic surfactant comprises sulfate-based surfactant, sulfonate-based surfactant, sarcosinate-based surfactant, sulfosuccinate-based surfactant, carboxylate-based surfactant, phosphate ester-based surfactant, or any mixture thereof. Claim 12 is being interpreted as Markush group being selected from the group comprising due to the open list of alternatives for the anionic surfactant. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
Claim 13 recites comprises and then a list of alternatives for the sulfate based surfactant, sulfonate based surfactant, sarcosinate based surfactant, sulfosuccinate based surfactant, carboxylate based surfactant, and phosphate ester based surfactant. Claim 13 is being interpreted as Markush group being selected from the group comprising due to the open list of alternatives for the anionic surfactant. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
Claim 15 recites comprises and then a list of alternatives for the anionic surfactant. Claim 15 is being interpreted as Markush group being selected from the group comprising due to the open list of alternatives for the anionic surfactant. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation of from about 0.003 to 2.8 wt%, and the claim also recites preferably from about 0.02 wt% to about 2 wt% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 17 recites at part b) the nonionic surfactant comprises alkyl polyglucoside, alcohol alkoxylate surfactants, alkoxylated surfactants, sorbitant surfactants, fatty acid ester surfactants, fatty alcohol surfactants, amine oxide surfactants, or any mixture thereof; and for part c) the nonionic surfactant comprises alkyl poly glucoside (C8-C10), coco poly glucoside (C8-C16), lauryl poly glucoside (C12-C16), or any mixture thereof. Claim 17 is being interpreted as a Markush group being selected from the group comprising due to the open list of alternatives for the nonionic surfactant. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). Furthermore, it is unclear if the claim requires the carbon chain amounts since the claims recite the carbon chain amounts in parenthesis for the alkyl poly glucoside, coco poly glucoside and lauryl poly glucoside. See MPEP 2173.05(h).
Claim 21 recites the pH adjusting agent comprises followed by a list of alternatives for the pH adjusting acid. Claim 21 is being interpreted as a Markush group being selected from the group comprising due to the open list of alternatives for the pH adjusting acid. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Here, since the claim is being interpreted as an open Markush list of alternatives, it is unclear what other alternative are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). See MPEP 2173.05(h).
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 and 24 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 0.006-.20% by weight with the formic acid to impart synergism.
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 0.006-0.20% 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. Thes amounts overlap the ratio of from about 0.005:1 to about 4:1 and Schacht is inclusive of a 1:1 ratio of 1% of peracetic acid and 1% formic acid. 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 are rendered prima facie obvious over the teachings of Buchalova et al. in view of Schacht et al.
Conclusion
Currently, no claims are allowed and claims 1-5,7,9-13,15-17, 21, 23 and 24 are rejected.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619