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 .
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 1-4, 7-10, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Alimi et al. (US PGPub No. 2019/0000086- henceforth Alimi B).
Alimi B teaches a composition to clean and/or disinfect a device composed of a hypochlorous acid or free available chlorine and a disinfectant where peroxides are listed amongst three disinfectant options (see abstract and paragraphs 6, 220, and 224). The hypochlorous acid is envisioned and exemplified at various concentrations that include several between 80 ppm and 450 ppm (see paragraph 222 and tables 1-2; instant claims 1 and 8-10). Values in excess 100 ppm are also detailed (see instant claim 7). Stable hypochlorous acid is generated from the electrolysis of sodium chloride in water that also produces hypochlorite ions, oxygen, and chlorine gases or from stable hypochlorite salts (see paragraph 20; instant claims 1 and 13-15). The peroxide is taught at 100 to 1000 ppm as well as below 250 ppm (see paragraph 71; instant claim 2-4). While a full example of each embodiment that follows from the teachings of Alimi B is not detailed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ an envisioned hypochlorous concentration and source with an envisioned peroxide concentration. These choices would have been obvious because of the limited number of pairings of components that are disclosed. The concentrations of hypochlorous acid and peroxide overlap with that instantly claimed ranges, thereby rendering the claimed ranges obvious. “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)” (see MPEP 2144.05). Therefore claims 1-4, 6-10, and 13-15 are obvious over Alimi B.
Claims 1-4, 7-10, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Alimi B as applied to claims 1-4, 6-10, and 13-15 above, and further in view of Alimi et al. (US PGPub No. 2019/0216090 – henceforth Alimi C).
Alimi B renders obvious the limitations of instant claims 1-4, 7-10, and 13-15. The intended uses of their composition include cleaning and disinfecting hard surfaces (see paragraph 203). A zinc salt and copper salt are not explicitly detailed as components in combination with the chlorine compound.
Alimi C teaches a hypochlorous acid based composition for cleaning and disinfecting hard surfaces (see abstract and paragraphs 4 and 262). The composition further includes metal salts, specifically envisioned as zinc chloride as well as copper chloride (see paragraph 11 and 196; instant claims 16 and 20). These salts may be present at 50 to 500 ppm as well as 40 to 140 ppm (see paragraphs 197 and 200; instant claims 17-19). They teach these salts to enhance the stability of the composition via interaction with chlorine compounds in the composition (see paragraph 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a zinc chloride and copper chloride to the composition of Alimi et al. to enhance the stability of the composition in light of Alimi C. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The concentration of these salts overlaps with that instantly claimed ranges, thereby rendering the claimed ranges obvious (see MPEP 2144.05; instant claims 17-19). Therefore claims 1-4, 7-10, and 13-20 are obvious over Alimi et al. in view of Alimi C
Claims 1-4, 6-10, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US PGPub No. 2010/0003342) in view of Alimi C.
Ito et al. teach an aqueous composition for disinfection composed of a halogen compound selected from one or more of four options that include hypochlorous acid and an active oxygen selected from one or more of three options that include hydrogen peroxide (see claims 15 and 17; instant claim 1). The halogen compound is present at 10 to 50,000 ppm and the reactive oxygen is present at 0.1 to 1000 ppm (see claim 1). Preferred ranges of 10 to 300 ppm for the halogen compound and 1 to 100 ppm for the active oxygen are also taught (see paragraph 59). Preparation of the composition via electrolysis employing a fluorine ion exchange membrane yields the additional occurrence ozone (see paragraph 24; instant claims 14-15). Stability of the composition is not detailed.
Alimi C teaches a hypochlorous acid based composition for cleaning and disinfecting hard surfaces (see abstract and paragraphs 4 and 262). The composition further includes metal salts, specifically envisioned as zinc chloride as well as copper chloride (see paragraph 11 and 196; instant claims 16 and 20). These salts may be present at 50 to 500 ppm as well as 40 to 140 ppm (see paragraphs 197 and 200; instant claims 17-19). They teach these salts to enhance the stability of the composition via interaction with chlorine compounds in the composition (see paragraph 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a composition of Ito et al. with hypochlorous acid and hydrogen peroxide because it is one of a small number of combinations possible from the recited options for the halogen compound and active oxygen they detail. It additionally would have been obvious to add a zinc chloride and copper chloride to the composition of Ito et al. to enhance the stability of the composition in light of Alimi C. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The concentration of these salts as well as the hypochlorous acid and hydrogen peroxide, overlap with those instantly claimed ranges, thereby rendering the claimed ranges obvious (see MPEP 2144.05; instant claims 17-19). Therefore claims 1-4, 6-10, and 15-20 are obvious over Ito et al. in view of Alimi C
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, 6-10, and 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of US Patent No. 10,016,455 or claims 1-11 and 13 of US Patent No. 9,782,434, each separately in view of Ito et al. and Alimi et al. (EP 3205358 - previously cited).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a composition composed of free chlorine in the form of hypochlorous acid. The presence of peroxide or a reactive oxygen species is not detailed in the patented claims.
Ito et al. teach an aqueous composition for disinfection composed of a halogen compound selected from one or more of four options that include hypochlorous acid and an active oxygen selected from one or more of three options that include hydrogen peroxide (see claims 15 and 17; instant claim 1). The halogen compound is present at 10 to 50,000 ppm and the reactive oxygen is present at 0.1 to 1000 ppm (see claim 1). Preferred ranges of 10 to 300 ppm for the halogen compound and 1 to 100 ppm for the active oxygen are also taught (see paragraph 59). Preparation of the composition via electrolysis employing a fluorine ion exchange membrane yields the additional occurrence ozone (see paragraph 24; instant claims 14-15).
Alimi B teaches a composition to clean and/or disinfect a device composed of a hypochlorous acid or free available chlorine and a disinfectant where peroxides are listed amongst three disinfectant options (see abstract and paragraphs 6, 220, and 224). The hypochlorous acid is envisioned and exemplified at various concentrations that include several between 80 ppm and 450 ppm (see paragraph 222 and tables 1-2; instant claims 1 and 8-10). Values in excess 100 ppm are also detailed (see instant claim 7). Stable hypochlorous acid is generated from the electrolysis of sodium chloride in water that also produces hypochlorite ions, oxygen, and chlorine gases or from stable hypochlorite salts (see paragraph 20; instant claims 1 and 13-15). The peroxide is taught at 100 to 1000 ppm as well as below 250 ppm (see paragraph 71; instant claim 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a composition of Alimi B as the hypochlorous acid source in the product of the patented claims with proportions of hydrogen peroxide, hypochlorous acid, and ozone as detailed by Ito et al. due to its detailed stability and provision of free chlorine. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The resulting range of concentrations meets or overlaps in scope with the instantly claimed ranges, thereby rendering the instantly claimed ranges obvious (see MPEP 2144.05). Therefore claims 1-4, 6-10, and 13-15 are obvious over claims 1-3 and 5 of US Patent No. 10,016,455 or claims 1-11 and 13 of US Patent No. 9,782,434, each separately in view of Ito et al. and Alimi B.
Claims 1-4, 6-10, and 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of US Patent No. 10,016,455 or claims 1-11 and 13 of US Patent No. 9,782,434, each separately in view of Ito et al. and Alimi B as applied to claims 1-4, 6-10, and 13-15 above, and further in view of Alimi C.
Claims 1-3 and 5 of US Patent No. 10,016,455 or claims 1-11 and 13 of US Patent No. 9,782,434, each separately in view of Ito et al. and Alimi B render obvious the limitations of instant claims 1-4, 6-10, and 13-15. The intended uses of their composition include disinfection. A zinc salt and copper salt are not explicitly detailed as components in combination with the chlorine compound.
Alimi C teaches a hypochlorous acid based composition for cleaning and disinfecting hard surfaces (see abstract and paragraphs 4 and 262). The composition further includes metal salts, specifically envisioned as zinc chloride as well as copper chloride (see paragraph 11 and 196; instant claims 16 and 20). These salts may be present at 50 to 500 ppm as well as 40 to 140 ppm (see paragraphs 197 and 200; instant claims 17-19). They teach these salts to enhance the stability of the composition via interaction with chlorine compounds in the composition (see paragraph 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a zinc chloride and copper chloride to the modified composition of the modified patented claims to enhance the stability of the composition in light of Alimi C. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The concentration of these salts overlaps with that instantly claimed ranges, thereby rendering the claimed ranges obvious (see MPEP 2144.05; instant claims 17-19). Therefore claims 1-4, 6-10, and 13-20 are obvious over claims 1-3 and 5 of US Patent No. 10,016,455 or claims 1-11 and 13 of US Patent No. 9,782,434, each separately in view of Ito et al., Alimi B., and Alimi C
Claims 1-4, 6-10, and 13-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No.11,910,797 or claims 1-19 of US Patent No. 11,272,710, each separately in view of Alimi et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a composition composed of free chlorine in the form of hypochlorous acid (stable) at 300 to 400 ppm as well as chloride salts of copper and zinc. The free chlorine is present at various concentrations that meet or overlap with those instant claimed. In addition, the copper and zinc salts are also present at concentrations that meet or overlap with those instantly claimed. Therefore the instantly claimed ranges are obvious (see MPEP 2144.05). The presence of peroxide or a reactive oxygen species is not detailed in the patented claims.
Alimi et al. recite a composition similar to that of the patented claims that is a stable composition which provides free chlorine, but also includes hydrogen peroxide at 0.05 to 100 ppm and ozone as a disinfecting composition (see abstract and paragraphs 2 and 97-98).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the composition of Alimi et al. to provide the free chlorine containing component of the composition of the patented claims as a stable free chlorine composition with multiple disinfecting actives. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The resulting range of concentrations meets or overlaps in scope with the instantly claimed ranges, thereby rendering the instantly claimed ranges obvious (see MPEP 2144.05). Therefore claims 1-4, 6, 13-16, and 21-23 are obvious over claims 1-20 of US Patent No.11,910,797 or claims 1-19 of US Patent No. 11,272,710, each separately in view of Alimi et al.
Claims 1-4, 6-10, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 7-8, 12, 15-18, 21, 23-24, and 39-40 of US Application No. 19/199977.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a composition composed of stable chlorine species composed of hypochlorous acid. The copending claims recite the hypochlorous acid present at a concentration of at least 70 ppm as well as 100 to 500 ppm. They also recite the presence of peroxide where particular compounds include hydrogen peroxide. This component is present at 100 to 425 ppm. Reactive oxygen species such as ozone may also be present. The resulting range of concentrations for the hypochlorous acid and peroxide meets or overlaps in scope with the instantly claimed ranges, thereby rendering the instantly claimed ranges obvious (see MPEP 2144.05). Therefore claims 1-4, 6-10, and 14-15 are obvious over claims 1, 3-4, 7-8, 12, 15-18, 21, 23-24, and 39-40 of US Application No. 19/199977.
Claims 1-4, 6-10, and 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 7-8, 12, 15-18, 21, 23-24, and 39-40 of US Application No. 19/199977 as applied to claims 1-4, 6-10, and 14-15 above, and further in view of Alimi C.
Claims 1, 3-4, 7-8, 12, 15-18, 21, 23-24, and 39-40 of US Application No. 19/199977 render obvious the limitations of instant claims 1-4, 6-10, and 13-15. A zinc salt and copper salt are not explicitly detailed as components in combination with the chlorine compound.
Alimi C teaches a hypochlorous acid based composition for cleaning and disinfecting hard surfaces (see abstract and paragraphs 4 and 262). The composition further includes metal salts, specifically envisioned as zinc chloride as well as copper chloride (see paragraph 11 and 196; instant claims 16 and 20). These salts may be present at 50 to 500 ppm as well as 40 to 140 ppm (see paragraphs 197 and 200; instant claims 17-19). They teach these salts to enhance the stability of the composition via interaction with chlorine compounds in the composition (see paragraph 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a zinc chloride and copper chloride to the modified composition of the copending claims to enhance the stability of the composition in light of Alimi C. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The concentration of these salts overlaps with that instantly claimed ranges, thereby rendering the claimed ranges obvious (see MPEP 2144.05; instant claims 17-19). Therefore claims 1-4, 6-10, and 14-20 are obvious over claims 1, 3-4, 7-8, 12, 15-18, 21, 23-24, and 39-40 of US Application No. 19/199977 in view of Alimi C
Claims 1-4, 6-10, and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 9-13, and 16-20 of US Application No. 19/316938 in view of Alimi et al. and Ito et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a composition composed of free chlorine in the form of hypochlorous acid, zinc chloride and copper chloride. Th chloride salts may be present at 290 to 200 ppm while the hypochlorous acid may be present at 50 to 500 ppm. The presence of peroxide or a reactive oxygen species is not detailed in the patented claims.
Ito et al. teach an aqueous composition for disinfection composed of a halogen compound selected from one or more of four options that include hypochlorous acid and an active oxygen selected from one or more of three options that include hydrogen peroxide (see claims 15 and 17; instant claim 1). The halogen compound is present at 10 to 50,000 ppm and the reactive oxygen is present at 0.1 to 1000 ppm (see claim 1). Preferred ranges of 10 to 300 ppm for the halogen compound and 1 to 100 ppm for the active oxygen are also taught (see paragraph 59). Preparation of the composition via electrolysis employing a fluorine ion exchange membrane yields the additional occurrence ozone (see paragraph 24; instant claims 14-15).
Alimi B teaches a composition to clean and/or disinfect a device composed of a hypochlorous acid or free available chlorine and a disinfectant where peroxides are listed amongst three disinfectant options (see abstract and paragraphs 6, 220, and 224). The hypochlorous acid is envisioned and exemplified at various concentrations that include several between 80 ppm and 450 ppm (see paragraph 222 and tables 1-2; instant claims 1 and 8-10). Values in excess 100 ppm are also detailed (see instant claim 7). Stable hypochlorous acid is generated from the electrolysis of sodium chloride in water that also produces hypochlorite ions, oxygen, and chlorine gases or from stable hypochlorite salts (see paragraph 20; instant claims 1 and 13-15). The peroxide is taught at 100 to 1000 ppm as well as below 250 ppm (see paragraph 71; instant claim 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a composition of Alimi B as the of the hypochlorous acid contributing portion of the composition of the copending claims with proportions of hydrogen peroxide, hypochlorous acid, and ozone as detailed by Ito et al. due to its detailed stability and provision of free chlorine. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The resulting range of concentrations meets or overlaps in scope with the instantly claimed ranges, thereby rendering the instantly claimed ranges obvious (see MPEP 2144.05). Therefore claims 1-4, 6-10, and 13-20 are obvious over claims 1-4, 7, 9-13, and 16-20 of US Application No. 19/316938 in view of Alimi B and Ito et al.
Response to Arguments
Applicant's arguments filed September 10, 2025 have been fully considered. In light of the amendment to the claims the previous grounds of rejection under 35 USC 103 are withdrawn as are most of the double patenting rejections. New grounds of rejection are detailed to address the new limitations.
The acknowledgement of the double patenting rejections is noted. It is also noted that 37 CFR 1.111 states that “[t]he reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated.” Double patenting rejections are not objections or requirements of form that may be held in abeyance and warrant a substantive reply.
Conclusion
No claim is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARALYNNE E HELM whose telephone number is (571)270-3506. The examiner can normally be reached Mon-Fri 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARALYNNE E HELM/Examiner, Art Unit 1615
/MELISSA S MERCIER/Primary Examiner, Art Unit 1615