DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3, 6-7, and 9-18 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 06/29/2026 has been entered.
Claims 2 and 19 were canceled. Claims 1, 3, 7, and 9 were amended. No new material was added.
The previous rejections of claims 2 and 19 are moot, because the claims were canceled.
Applicant’s amendments have overcome the previous rejections under 35 U.S.C. 103 over Baker, Engblom, and Pereira.
The rejections of claims 1, 3, 6-7, and 9-18 under 35 U.S.C. 103 over Morgan have been modified to address the amendments and maintained.
Response to Arguments
Applicant’s arguments, see Remarks (pages 13-14), filed 06/29/2026, with respect to the rejection(s) of claim(s) 1, 3, 11-12, and 14-18 under 35 U.S.C. 103 over Baker, Engblom, and Pereira have been fully considered and are persuasive due to the amendment of the independent claim 1. Therefore, the rejection has been withdrawn.
Applicant's arguments, see Remarks (pages 8-13), filed 06/29/2026, with respect to the rejection(s) of claim(s) 1, 3, 6-7, and 9-18 under 35 U.S.C. 103 over Morgan have been fully considered but they are not persuasive.
Applicant argues that ranges of 20-75% by weight of ethanol, 0.3-3% by weight of a surfactant, and 2-15% by weight of an oil are critical individually and in combination (Remarks, pages 10-11). This argument is not persuasive, because as stated in the rejection below, Morgan teaches amounts of ethanol and an oil which fall within the claimed ranges. Morgan further teaches an amount of surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11), which overlaps the claimed range of 0.3-3%. The evidence cited in Table 3 compares amounts within the claimed range to an amount of 0.1 wt%, which is also below the range taught by Morgan. Therefore, the evidence provided does not show that the particular range is critical by showing that the claimed range achieves unexpected results relative to the prior art range. See MPEP 2144.05(III)(A). There is no evidence provided to support the assertion that the ranges are critical in combination. Further, comparative example 2-1 (instant specification, table 2) suggests that the ranges are not critical, as the composition having no surfactant and 2% ethanol forms a stable emulsion.
Applicant argues that Morgan does not disclose or suggest combining a high ethanol content with an O/W emulsion containing the claimed oil and surfactant (Remarks, pages 11-12). This argument is not persuasive, because disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). As discussed in the rejection below, Morgan teaches each of the claimed features and the composition as claimed would be prima facie obvious to one of ordinary skill in the art.
Applicant argues that Morgan teaches away from the claimed combination, and that there would be no reasonable expectation of successfully forming a stable high-ethanol emulsion (Remarks, page 12). This argument is not persuasive, because Morgan specifically teaches in a preferred embodiment the carrier of the present invention comprises an alcohol solution (Morgan, page 8, lines 19-20). As above, disclosed examples do not constitute a teaching away from a broader disclosure.
Applicant argues that Morgan does not disclose any single combination containing all the claimed components in the claimed amounts, and therefore the recited viscosity stands as a further distinguishing limitation (Remarks, page 13). This argument is not persuasive, because as discussed in the rejection below, Morgan teaches suitable emulsions may have a wide range of viscosities depending on the desired product form (Morgan, page 11, lines 27-29), and teaches the composition is a hand sanitizer (i.e., a skin disinfectant composition; Morgan, page 51, example 1), which is the same product form as claimed, suggesting a similar viscosity would be expected. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Maintained/Modified 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.
Claims 1, 3, 6-7, and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Morgan (WO 2001028340 A2). The reference was cited previously by the Examiner.
Regarding claim 1, Morgan teaches a hand sanitizer (i.e., disinfectant composition) comprising ethanol in 62% by weight, which lies within the claimed range, and water (Morgan, page 51, example 1). Morgan further teaches the composition can be an oil-in-water emulsion (Morgan, page 11, line 13), and can comprise an emulsifying surfactant which is sorbitan monostearate (i.e., a sorbitan fatty acid ester surfactant; Morgan, page 10, lines 30-31) and a moisturizing agent which is olive oil (Morgan, page 9, lines 27-32). Morgan teaches an emulsifying surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11), which overlaps the claimed range, and a moisturizing agent which can be olive oil (Morgan, page 9, lines 27-32) in most preferably from about 2% to about 10% by weight (Morgan, page 10, lines 10-12), which lies within claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Morgan teaches suitable emulsions may have a wide range of viscosities depending on the desired product form and teaches a preferred viscosity for oil-in-water emulsions in centistokes (Morgan, page 11, lines 27-29), but does not measure viscosity in cps as claimed. Morgan teaches the composition is a hand sanitizer with the same ethanol content (Morgan, page 51, example 1), which is the same product form as claimed, suggesting a similar viscosity would be expected. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Morgan is considered to be analogous to the claimed invention, because both are in the same field of compositions comprising oil-in-water emulsions for disinfection. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention upon optimization of the composition based on the teachings of Morgan. See MPEP §2144.05(II).
Regarding claim 3, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a sanitizer comprising ethanol in 62% by weight (Morgan, page 51, example 1), which lies within the claimed range.
Regarding claim 6, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches the composition can comprise an emulsifying surfactant which is sorbitan monostearate (i.e., sorbitan stearate; Morgan, page 10, lines 30-31).
Regarding claim 7, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches an emulsifying surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11), which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 9, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches a moisturizing agent which can be olive oil (Morgan, page 9, lines 27-32) in most preferably from about 2% to about 10% by weight (Morgan, page 10, lines 10-12), which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 10, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches an emulsifying surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11) and a moisturizing agent which can be olive oil (Morgan, page 9, lines 27-32) in most preferably from about 2% to about 10% by weight (Morgan, page 10, lines 10-12), which results in a possible ratio of surfactant and oil of 0.0125 to 6.25 : 5, which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 11, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches thickeners are preferably added to the solutions (Morgan, page 8, line 31).
Regarding claim 12, Morgan teaches all the elements of the current invention as applied to claim 11. Morgan teaches thickeners (i.e., additives) are preferably present in about 0.1% to about 3% (Morgan, page 9, lines 24-26), which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 13, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches suitable emulsions may have a wide range of viscosities depending on the desired product form and teaches a preferred viscosity for oil-in-water emulsions in centistokes (Morgan, page 11, lines 27-29), but does not measure viscosity in cps as claimed. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 14, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches a preferable particle size of about 1-20 microns (Morgan, page 43, lines 24-26), which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 15, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches the composition can be an oil-in-water emulsion (Morgan, page 11, line 13).
Regarding claim 16, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a hand sanitizer (i.e., a skin disinfectant composition; Morgan, page 51, example 1).
Regarding claim 17, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a hand sanitizer (i.e., a hand disinfectant composition; Morgan, page 51, example 1).
Regarding claim 18, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a hand sanitizer (Morgan, page 51, example 1). It would be obvious to one of ordinary skill in the art that hand sanitizer is intended for external use on skin.
Conclusion
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.
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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