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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 13, 2026 has been entered.
All previous claim rejections made under 35 U.S.C. 103 as indicated in the Office action dated November 18, 2025 have been withdrawn in view of the amendment made to claim 49, which lowered the maximum amount of the compound or salt of the formula II to “less than about 0.05%”.
New rejections have been made to address the amended claim.
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.
Claim 62 is rejected under 35 U.S.C. 35 U.S.C. 103 over Smyth et al. (WO 2016097857 A1, published on June 23, 2016, previously cited) (“Smyth” hereunder) (“Smyth” hereunder).
Claim 62 is 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 consisting of or consisting essentially of an amount of a compound or a salt thereof, wherein the amount of the compound or a salt thereof 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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Formula II
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.
Regarding the transitional phrase “consisting of” and “consisting essentially of”, as Smyth teaches that the one or more anionic surfactants are the active ingredients, using 2-ethylhexyl sulfate alone as the main active ingredient would have been prima facie obvious.
Claims 49-52, 56, 57, 59 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Snyder (US 20100028314 A1, published on February 4, 2010) in view of Smyth.
Claim 49 is 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 0.05 % 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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media_image1.png
155
195
media_image1.png
Greyscale
Formula II
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.
Snyder teaches a method for preventing and reducing biofilm formation and planktonic proliferation of undesirable microorganisms on a surface and in aqueous environments. The method comprises subjecting such surface and environment to Bacillus amyloliquefaciens strain NPRL B-50154 and one or more agents selected from dispersants, surfactants, anti-microbial agents, and biocides. See reference claims 1 and 8; paragraphs [0045—0048]. The reference further teaches that the method results in reduction, elimination/removal of existing biofilm. See [0033].
It is also noted that Snyder also teaches, “[p]reventing or reducing biofilm formation and/or planktonic proliferation by undesirable microorganisms traditionally requires the use of dispersants, surfactants, enzymes, microbes, antimicrobial agents, biocides, boil-out procedures, and/or chemicals.” See [0005]. The statement suggests that one of ordinary skill in the art is well-aware that surfactants can be independently used in preventing, reducing, eliminating or removing biofilm. Snyder teaches adding surfactants, enzymes, lipases, cutinase, etc. The reference teaches that surfactants are used at a level of from 0.01 % to 60 % by weight. See [0046]. The reference specifically discloses using linear alkylbenezensulfonate, alpha-olefinsulfonate, alkyl sulfate, alcohol ethoxysulfate, etc in an amount of about 0-about 40 %. See [0048].
The reference fails to specifically mention 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.
Given the teachings of Snyder to use anionic surfactant as an additive for the disclosed method of preventing and reducing biofilm formation and reduction, elimination/removal of existing biofilm, one of ordinary skill in the art before the effective filing date of the present application would have been obviously motivated to look to prior art such as Smyth for the specific anionic surfactants that can be used in the Snyder invention. Since the latter teaches the specific anionic surfactants known to reduce and/or prevent biofilm formation and/or disrupt existing biofilms the skilled artisan would have been motivated to use the disclose surfactants such as 2-ethylhexyl sulfate in the Snyder method of treating biofilm. Since Snyder teaches alkyl sulfates, alkyl sulfonates or sulfonic acid, etc. are used, the skilled artisan would have had a reasonable expectation of success in combining the references and practicing the Snyder method of reducing biofilm formation and/or disrupting existing biofilm with a composition comprising 2-ethylhexyl sulfate.
As for the concentration range of less than about 0.05 % and greater than about 0.001 % by weight of the total composition, the range overlaps with the Snyder’s range of 0.01-60 wt % of surfactants and also is well within the disclosed range of 0-40 wt % of one of more anionic surfactants. In this case, as Smyth teaches that the anionic surfactants are used in an amount in the range of from 0.1 % to 2 % w/w when the surfactant is the main active ingredient, it would have been obvious to one of ordinary skill in the art, that, in the Snyder invention, lesser than 0.1 % of the anionic surfactant with Bacillus amyloliquefaciens strain as the main active can be used. Discovery of optimal range of 2-ethylhexyl sulfate in the Snyder composition that imparts suitable efficacy by routine experimentations would have been prima facie obvious. See the present claims 49-50.
Regarding claim 52, Snyder teaches that the disclosed method is applicable to treating home or industrial areas, including toilet bowls, pipes, pumps and vessels, etc.
Regarding claim 53, Snyder teaches sanitizer formulations. See [0104-0196].
Regarding claims 51, 57, 59 and 61, Snyder further teaches that the method results in reduction, elimination/removal of existing biofilm. See [0033].
Claims 53 is rejected under 35 U.S.C. 103 as being unpatentable over Snyder and Smyth as applied to claims 49-52, 56, 57, 59 and 61 as above, and further in view of Liao (US 20150353741 A1, published on December 10, 2015).
Although Snyder teaches applying the composition to hard surfaces exposed to water, such as water treatment plant or water tank, etc, the reference fails to specifically antifouling paint or coating.
Liao teaches an antifouling coating composition for inhibiting the formation of biofouling on ship hulls, water pipe systems, etc while retaining the antifouling properties of a silicone. See abstract. The reference teaches that such antifouling composition comprises an antimicrobial agent, a pigment, surfactant, etc. See [0058-0061].
Given the teachings of using the Snyder invention to reduce or inhibit biofilm formation on surfaces exposed to water systems, one of ordinary skill in the art before the effective filing date of the present application would have been obviously motivated to look to prior art such as Liao for suitable composition forms to make and use the Snyder method. Since the latter teaches an antifouling formulation comprising an antimicrobial agent and anionic surfactants, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and practice the Snyder method with an antifouling coating or paint composition.
Response to Arguments
Applicant’s arguments with respect to claims 49-53, 56, 57, 59, 61 and 62 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shi et al. (TW 201347670 A, published December 1, 2013) teaches, “the biocide is difficult to penetrate the polysaccharide/proteinaceous mucus layer around the microbial cells. Thicker biofilms cause the biocide to be almost impermeable and thus the biocide is inefficient. One known method of attempting to better control biofilm is to add dispersants and wetting agents to the biocide composition to enhance biocide efficiency.”
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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