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 .
Status of the Application
This Office Action is in response to Applicant's arguments filed on January 21, 2026. Claim(s) 1-16 and 18-21 are pending and examined herein.
Response to Arguments
The Terminal Disclaimers filed over US Patent 10,370,626 and US Patent 11,540,512 overcome the outstanding nonstatutory double patenting rejections of record.
Applicant’s amendments and arguments with respect to the 103 rejection of claims 1--20 as being unpatentable over Taylor (US 2008/0199535) of record have been fully considered.
Applicant argues:
Taylor fails to teach a composition wherein the antimicrobial agent consists essentially of an acid sanitizer, a quaternary ammonium compound, or a combination thereof. In supporting a prima facie case of obviousness, the cited reference must teach or suggest the claimed invention, or there must be some objective motivation to modify the reference to arrive at the claims. (See generally MPEP § 2141). When a cited reference fails to teach or suggest the claimed elements, there is no prima facie case of obviousness. Taylor is directed to antimicrobial compositions having rapid antimicrobial efficacy, wherein the composition comprises an antimicrobial agent, a disinfecting alcohol, and one or more of an organic acid, inorganic salt, and aluminum/zirconium Taylor, Abstract. Taylor relies heavily on the use of a disinfecting alcohol: the compositions comprise at least 40 wt.% and up to 90 wt.% of the disinfecting alcohol. Taylor, [0052]. In comparison, the amended claims do not include antimicrobial agents other than the claimed acid sanitizer and quaternary ammonium antimicrobial agent. Taylor therefore fails to teach, suggest, or otherwise provide guidance as to the preparation of an antimicrobial composition that does not include a disinfecting alcohol as in the instant claims. For at least this reason, there is no prima facie case of obviousness.
Examiner respectfully notes that while Taylor may teach the composition comprising at least 40% to 90% disinfecting alcohol, the instant claims recite the presence of a solvent. The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. While there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention. MPEP 2144 Sources of Rationale Supporting a Rejection Under 35 U.S.C. 103. /www.uspto..qov/web/offices/pac/mpep/documents/2100 2144.htm>.
Furthermore, applicant argues:
The present claims are therefore nonobvious because although the disinfecting alcohols are eliminated, the antimicrobial function of the composition is retained, since the claimed compositions provide an at least 4-log kill. The amended claims also provide a secondary, superior benefit, of the combination of the antimicrobial agents and acid component/polymer component to beneficially reduce the risk of inhalation traditionally posed by many antimicrobial compositions, which is unappreciated by Taylor.
Examiner respectfully notes, the limitations argued by applicant are not present in the instant claims. Applicant’s arguments are not commensurate in scope of the claimed invention.
Any rejection from the previous Office action not set forth on record below is hereby withdrawn.
The maintained/modified rejections are made in the Final Office action below as necessitated by amendment.
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 of this title, 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.
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 1-16 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (US 2008/0199535) of record.
At the outset, Examiner respectfully notes that the limitation with respect to the viscosity as required by claim 1, the molecular weight of the polymer component and particle size as required by claims 4 and 19, and “log kill on treated surfaces” as required by claims 18 and 20 is considered a property inherent in the disclosed active agent. "Products of identical chemical composition cannot have mutual exclusive properties." Any properties exhibited by or benefits from are not given any patentable weight over the prior art provided the composition is inherent. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the disclosed properties are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01. The burden is shifted to the applicant to show that the prior art product does not inherently possess the same properties as the instantly claimed product.
For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. MPEP 2111.03.
Regarding claims 1 and 9-12, Taylor teaches antimicrobial compositions having a rapid antiviral and antibacterial effectiveness, and a persistent antiviral effectiveness, are disclosed. The antimicrobial compositions contain (a) an antimicrobial agent, (b) a disinfecting alcohol, and (c) (i) an organic acid, (ii) an inorganic salt comprising a cation having a valence of 2, 3, or 4 and a counterion capable of lowering a surface pH to about 5 or less, (iii) an aluminum, zirconium, or aluminum-zirconium complex, or (iv) mixtures thereof, wherein the composition has a pH of about 5 or less (abstract; [0002]).
Taylor teaches the carrier of the antimicrobial composition comprises water [0146].
Regarding claim 2, Taylor teaches wherein the antimicrobial agent comprises a quaternary ammonium antimicrobial agent having a structure:
PNG
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91
120
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Greyscale
, wherein R is an alkyl, aryl, oralkaryl Substituent containing 6 to 26 carbon atoms, R. R. and Ra, independently, are substituents containing no more than twelve carbon atoms, and X is an anion selected from the group consisting of halo, methosulfate, ethosulfate, and p-toluenesulfonyl ([0018]; claims 10, 13, and 15).
Regarding claims 3 and 21, Taylor teaches about 0.1% to about 5% a quaternary ammonium antimicrobial agent (claim 1a).
Taylor teaches nonlimiting examples of thickening or gelling agents including xanthan gum, among others ([0164], last line).
Regarding claims 5-7, Taylor teaches polymeric organic acids to include carboxyl group-containing monomers, e.g., monoethylenically unsaturated mono- or polycarboxylic acids, such as acrylic acid, methacrylic acid ([0132]-[0136]).
Regarding claims 8, Taylor teaches an organic acid is present in an amount of about 0.05% to about 6% [0122].
Regarding claims 13 and 14, Taylor teaches a surfactant may be present in an amount of 0% to about 0.5%, by weight, because a surfactant may be present in a commercial form of a gelling agent to help disperse the gelling agent in water. A surfactant also may be present as an additive or by-product in other composition ingredients ([0161]; [0163]-[0164]).
Regarding claims 15 and 16, Taylor teaches composition further comprises about 0.1% to about 30% of a polyhydric solvent selected from the group consisting of a diol, a triol, and mixtures thereof (claim 46).
Regarding claim 17, Taylor teaches classes of optional ingredients include hydrotropes, polyhydric solvents, gelling agents, dyes, fragrances, pH adjusters, thickeners, viscosity modifiers, chelating agents, skin conditioners, emollients, preservatives, buffering agents, antioxidants, chelating agents, opacifiers, and similar classes of optional ingredients known to persons skilled in the art [0149].
Taylor teaches the antimicrobial compositions can be ready to use compositions, which typically contain 0.1% to about 2% of an antimicrobial agent, by weight of the composition. The antimicrobial compositions also can be formulated as concentrates that are diluted before use with one to about 100 parts water to provide an end use composition [0090].
Taylor teaches the antimicrobial compositions are highly efficacious in household cleaning applications (e.g., hard surfaces, like floors, countertops, tubs, dishes, and softer cloth materials, like clothing), personal care applications (e.g., lotions, shower gels, soaps, shampoos, and wipes), and industrial and hospital applications (e.g., sterilization of instruments, medical devices, and gloves). The present compositions efficaciously and rapidly clean and disinfect surfaces that are infected or contaminated with Gram negative bacteria, Gram positive bacteria, and acid-labile viruses (e.g., rhinoviruses) [0084].
Taylor teaches an antimicrobial composition that exhibits a log reduction against acid-labile viruses, including rhinovirus serotypes, such as Rhinovirus 14, Rhinovirus 1a, Rhinovirus 2, and Rhinovirus 4, of at least 5 after 30 seconds of contact. The antimicrobial composition also provides a log reduction against acid-labile viruses of at least 3 for at least about five hours, and at least 2 for at least about six hours, after application with a 30 second contact time. In some embodiments, the antimicrobial composition provides a log reduction agent non-enveloped virus of about 2 for up to about eight hours [0060].
The specific combination of features claimed is disclosed within the teachings of Taylor, but such "picking and choosing" within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). That being said, however, it must be remembered that "[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious". KSR v. Teleflex, 127 S, Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious", the relevant question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." (Ida). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR v. Teleflex, 127 S, Ct. 1727, 1741 (2007). The Court emphasized that "[a] person of ordinary skill is... a person of ordinary creativity, not an automaton." Id. at 1742.
Regarding the limitation of claim 1, “wherein the composition is free of additional sanitizers, disinfectants, and antimicrobial agents”, Taylor teaches all of the components of the instant invention. The formulation of a cleaning composition including certain components and exclusion of others is within the purview of the skilled artisan. Consistent with this reasoning, it would have obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive compositions "yielding no more than one would expect from such an arrangement", absent any secondary considerations (i.e., unexpected results). Thus, based on the foregoing reasons, the instant claims are deemed unpatentable over the cited reference.
Conclusion
Claims 1-16 and 18-21 are not 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 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.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sahar Javanmard whose telephone number is (571)270-3280. The examiner can normally be reached on Monday-Friday, 9:00-5:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/SAHAR JAVANMARD/Primary Examiner, Art Unit 1622
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