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 .
Applicant’s response filed on August 14, 2025 has been received and fully considered. The previous claim rejection made under 35 U.S.C. 103 as indicated in the Office action dated February 20, 2025 are withdrawn in view of applicants’ amendment made to claims 49 which requires a concentration range of Formula II.
New rejections are made as following:
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.
Claims 49-52, 56-57, 59 and 61 are rejected under 35 U.S.C. 35 U.S.C. 103 over Smyth et al. (WO 2016097857 A1, published on June 23, 2016) (“Smyth” hereunder).
Claim 49 is representative of the present invention and directed to a method of dispersing or removing a biofilm and/or killing fungi or bacteria in a biofilm, comprising contacting the biofilm with an amount of a composition comprising an amount of a compound or a salt thereof, wherein the amount of the compound or a salt thereof is less than about 0.1 % and greater than about 0.001 % by weight of the total composition and is effective to disperse or remove the biofilm, or kill fungi or bacteria in the biofilm, and wherein the compound has the structure:
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155
195
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wherein A is H, C1-20 hydrocarbyl, alkylaryl, or optionally R1 substituted C1-20 hydrocarbyl; Z is O or a bond; G is OH, H, C1-6—COO-alkyl, —O—C1-6 alkyl, R1 substituted C1-10 hydrocarbyl, CH2NHCH2COOH, or O-aryl;
R1 is selected from halogen, cyano, OH, C1-6 hydrocarbyl, C1-6 alkoxy, SOR2, SO2R2, SO2NR3R4, CONR3R4, NR3R4, NR3COR4, NR3SO2R4, NR3CO2R4, and NR3CONR4, wherein each of C1-6 hydrocarbyl, C1-6 alkoxy, SOR2, SO2R2, SO2NR3R4, CONR3R4, NR3R4, NR3COR4, NR3SO2R4, NR3CO2R4, NR3CONR4, can be optionally substituted with halo, amino, hydroxyl, C1-6 hydrocarbyl, C1-6 alkoxy, or cyano;
R2, R3 and R4 are independently selected from hydrogen, C1-6 hydrocarbyl, in which each of the C1-6 hydrocarbyl can be optionally substituted with halo, amino, hydroxyl, C1-6 alkoxy, or cyano.
As for the compound or a salt thereof, applicant has elected sodium 2-ethylhexyl sulfate.
Smyth teaches a method of reducing and/or preventing biofilm formation and/or adhesion and disrupting existing biofilms, the method comprising treating a sewage transport system with a composition comprising one or more anionic surfactants selected from alkyl sulfates, alkyl sulfonates or sulfonic acid, etc. See abstract; p.6, line 21 – p. 8, line 11. Specifically mentioned anionic surfactants in the reference include 2-ethylhexyl sulfate, sodium dodecyl sulfate, sodium laureth sulfate, sodium dodecyl sulfonate, etc, sodium dodecyl benzene sulfonate, etc. See p. 7, lines 7 – p. 8, line 11.
The reference teaches that the composition is directedly applied to the surface of the sewage in the wet well or wet well wall. See p. 10, lines 1- p. 11, line 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to select any of the disclosed anionic surfactants such as 2-ethylhexyl sulfate and use it to disrupt biofilm formed in sewage transport system as taught and suggested by Smyth with a reasonable expectation of success. See p. 10, lines 21 - 24. See present claims 49 -52, 56, 57 and 61.
Regarding the amount of 2-ethylhexyl sulfate, Smyth teaches that the anionic surfactants are used in an amount in the range of from 0.1 % to 2 % w/w. See p. 3, line 31. The upper bound of the presently claimed range “about 0.1 %” encompasses the disclosed lower bound of 0.1 %. Thus, the presently claimed method is prima facie obvious over the disclosed method of using 2-ethylhexyl sulfate.
Claims 49 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamono (WO 2006018917 A1, published on February 23, 2006) in view of Smyth.
Sakamono teaches that antifouling coating composition for inhibiting the formation of water spots on a solid surface while retaining the antifouling properties of a silicone. See translation, abstract. The reference teaches that such antifouling composition comprises detergents such as sulfate ester or sulfonate surfactant and additives (e.g., pigments and fragrance). See translation, [0021, 0026-0027].
Sakamono fails to teach using the specifically sulfate ester surfactant such as 2-ethylhexyl sulfate.
Smyth teaches a method of reducing and/or preventing biofilm formation and/or adhesion, reducing odour and disrupting existing biofilms, the method comprising treating a sewage transport system with a composition comprising one or more anionic surfactants selected from alkyl sulfates, alkyl sulfonates or sulfonic acid, etc. See abstract; p.6, line 21 – p. 8, line 11. Specifically mentioned anionic surfactants in the reference include 2-ethylhexyl sulfate, sodium dodecyl sulfate, sodium laureth sulfate, sodium dodecyl sulfonate, etc, sodium dodecyl benzene sulfonate, etc. See p. 7, lines 7 – p. 8, line 11.
It would have been obvious to one of ordinary skill in the art before the time of the effective filing date of the present application to modify the teachings of Sakamono and add to the composition the anionic surfactants of Smyth such as 2-ethylhexyl sulfate and make an antifouling coating composition which disrupt biofilm and reduces odour, as motivated by Smyth. Since Sakamono teaches using sulfate or sulfonate surfactants, and one of ordinary skill in the art would have had a reasonable expectation of successfully disrupt biofilm by applying the antifouling coating composition of Sakamono comprising the surfactants such as 2-ethylhexyl sulfate by combining the teachings of the references.
Regarding the amount of 2-ethylhexyl sulfate, Smyth teaches that the anionic surfactants are used in an amount in the range of from 0.1 % to 2 % w/w. See p. 3, line 31. The upper bound of the presently claimed range “about 0.1 %” encompasses the disclosed lower bound of 0.1 %. Thus, the presently claimed method is prima facie obvious over the disclosed method of using 2-ethylhexyl sulfate.
Response to Arguments
Applicant’s arguments with respect to claims 49-53, 56-57, 59 and 61 filed on August 14, 2025 have been considered but are moot in view of the new ground of rejection as indicated above in part and unpersuasive in part.
Applicant’s arguments regarding the concentration ranges of the sulfate compound are moot in view of the new grounds of rejection.
Applicant further argues that the Smyth composition is different from applicant’s composition of the present claims as the prior art requires including at least one microorganisms of the genus Bacillus in the composition. In response, the examiner respectfully points out that the scope of the limitation of applicant’s composition is open to include other components not recited in the claim.
Conclusion
No claims are 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 GINA JUSTICE whose telephone number is (571)272-8605. The examiner can normally be reached M-F 9:00 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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