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 .
Election/Restrictions
Applicants’ election of Group I (claims 1-16) drawn to a disinfectant composition, is acknowledged. Applicants’ election for the species of silver anti-microbial agent and PVP polymer, is acknowledged. The elections were made without traverse.
As the requirement for restriction is deemed proper, it is maintained and hereby made FINAL.
Claims 17-20 are hereby withdrawn from further consideration by the Examiner, pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions, and non-elected species of the invention, there being no allowable generic or linking claim. The instant claims have been examined commensurate with the scope of the elected invention, and the elected species of the invention. Applicants timely responded to the restriction/election requirement in the reply filed 8/20/25.
Accordingly, claims 1-16 are under current examination.
Objection to the Specification
The use of the term “Kolliphor EL”, “Tween 80” and “Triton X” in [0021], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1, 4, 9, 11, 14 and16 are objected to because of the following informalities:
Claim 1 recites “anti-microbial” whereas claim 2 recites “antimicrobial”. The Examiner suggests amending claim 1 to read “antimicrobial” in order the keep the language consistent throughout the claims.
Claims 4, 14 and 16 recite “poly vinyl pyrrolidone (PVP)” or “polyvinyl pyrrolidone”. Claim 4 recites “carboxy methyl cellulose (CMC)”. The Examiner suggests amending to “polyvinylpyrrolidone” and “carboxymethyl cellulose” as such are the standard names and for the sake of keeping the language consistent throughout the claims.
Claim 9 recites “sodium lauryl sulfate” twice. The Examiner suggests deleting one occurrence.
Claim 9 recites “polyethylene glycol/alkyl glycol copolymers, and polyethylene glycol/polyalkylene glycol ether di-block or tri-block copolymers…”. As this are in the middle of a long list recited in claim 9, the Examiner suggests removing the “and”.
Claim 11 recites “…at least one matrix component, at least wetting agent…”. The Examiner suggests adding “one” after “at least”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 contains the trademark/trade names: Kolliphor EL, Tween 80 and Triton X. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a chemical and, accordingly, the identification/description is indefinite.
Examiner’s Note
The prior art relied upon in the following 102 and 103 rejections are based on the English machine translations. All translations have been provided herein.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song (CN 1692732; published: 5/11/05).
Song is directed to disinfection, deodorization and sterilization spray agent (Title).
With regards to instant claims 1-8, 12 and 14, Song teaches a disinfectant composition comprising 0.01-5 wt% antibacterial metal ion compound (e.g., silver nitrate), 0.1-10 wt% polyvinylpyrrolidone, 10-30 wt% water, 60-85% ethanol (i.e., an alcohol) and 0.5-5 wt % fragrance (See entire ref; e.g., p. 1-2).
Therefore, by teaching all the limitations of claims 1-8, 12 and 14, Song anticipates the instant invention as claimed.
Claims 1-4, 9-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al. (CN 105936788; published: 9/14/16).
Zhou et al. are directed to a self-cleaning antibiosis leather coating (Title).
With regards to instant claims 1-4, 9-11 and 14, Zhou et al. teach a coating comprises, by weight, 2-3 parts of poly(epsilon-caprolaclone glycol), 0.2-0.4 parts of diphenylimidazoline, 0.1-0.2 parts of Salatrim (i.e., short and long-chain acyl triglceride molecules which reads on the Markush group of instant claim 9), 1.7-2 parts of polyvinylpyrrolidone, 0.8-1 part of polyacrylamide (i.e., a matrix component), 1.6-2 parts of stannous chloride (i.e., a reducing agent), 0.1-0.13 parts of triethanolamine, 190-200 parts of methyl methacrylate, 3-4 parts of sodium dodecyl sulfate (reads on the Markush group of instant claim 10), 0.1-0.2 parts of urotropine, 0.2-0.3 parts of ammonium persulfate, 6-7 parts of a 20-25% formaldehyde solution, 16-20 parts of zinc acetate, 4-7 parts of silver nitrate, 0.2-0.5 parts of dithiosalicylic acid, 1-2 parts of calcium propionate, 0.1-0.3 parts of aluminum magnesium silicate, 0.7-1 part of hexamethylphosphoramide and 0.07-0.1 parts of iron trichloride (Abstract). As indicated in the last step of the method of making the abovementioned coating, the final product is in solution form (limitations of instant claim 12; See step 8 that states “the mixture was stirred to normal temperature to obtain the coating”).
Therefore, by teaching all the limitations of claims 1-4, 9-12 and 14, Zhou et al. anticipate the instant invention as claimed.
Claims 1-4 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei et al. (TW 201223587; published: 6/16/12).
Wei et al. are directed to a method of manufacturing a nanometer-sized titanium oxide powder having sun-protection characteristics (Title).
With regards to instant claims 1-4 and 13-14, the Examiner first notes that the instant claims are directed to a composition claim and therefore, in order to read on the claim limitations, the prior art must teach a composition comprising the claimed components in the claimed form Wei et al. teach a method to form a powder (i.e., the powder formed reads on the instant composition) comprising dispersing titanium dioxide photocatalyst nano-powder 430 in an aqueous solution, adding silver nitrate 440, exciting by a 300 W high-pressure mercury lamp, and removing oxygen by nitrogen gas 450 (See 1st and 2nd sentences in paragraph bridging p. 5 and 6). Furthermore, Wei et al. teach that in the above-mentioned method of forming a powder, a water-soluble polyvinylpyrrolidone (PVP) can be added as a dispersing agent for the purpose of preventing the aggregation of particles from agglomeration (See 1st sentence in the 1st full paragraph of p. 6). It is noted that Wei et al. teach that titanium dioxide has antibacterial and self-cleaning (see p. 2).
Therefore, by teaching all the limitations of claims 1-4 and 13-14, Wei et al. anticipate the instant invention as claimed.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 9-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (CN 105936788; published: 9/14/16), in view of Cai et al. (CN 104206418; published: 12/17/14).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
As noted in the anticipation rejection above Zhou et al. anticipates claims 1-4, 9-12 and 14 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103 over Zhou et al. for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Zhou et al. are directed to a self-cleaning antibiosis leather coating (Title).
With regards to instant claims 1-4, 9-11 and 14, Zhou et al. teach a coating comprises, by weight, 2-3 parts of poly(epsilon-caprolaclone glycol), 0.2-0.4 parts of diphenylimidazoline, 0.1-0.2 parts of Salatrim (i.e., short and long-chain acyl triglceride molecules which reads on the Markush group of instant claim 9), 1.7-2 parts of polyvinylpyrrolidone, 0.8-1 part of polyacrylamide (i.e., a matrix component), 1.6-2 parts of stannous chloride (i.e., a reducing agent), 0.1-0.13 parts of triethanolamine, 190-200 parts of methyl methacrylate, 3-4 parts of sodium dodecyl sulfate (reads on the Markush group of instant claim 10), 0.1-0.2 parts of urotropine, 0.2-0.3 parts of ammonium persulfate, 6-7 parts of a 20-25% formaldehyde solution, 16-20 parts of zinc acetate, 4-7 parts of silver nitrate, 0.2-0.5 parts of dithiosalicylic acid, 1-2 parts of calcium propionate, 0.1-0.3 parts of aluminum magnesium silicate, 0.7-1 part of hexamethylphosphoramide and 0.07-0.1 parts of iron trichloride (Abstract). As indicated in the last step of the method of making the abovementioned coating, the final product is in solution form (limitations of instant claim 12; See step 8 that states “the mixture was stirred to normal temperature to obtain the coating”).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Zhou et al. do not teach wherein the silver salt is silver chloride, as required by instant claim 15. However, this deficiency is cured by Cai et al.
Cai et al. is directed to discoloration-preventing silver-containing anti-bacterial agent (Title) and the use of such antibacterial agent in an adhesive agent which can adhere to leather and upon release of metal ions of the antibacterial agent, pathogenic microorganisms will be killed. Cai et al. teach that both silver nitrate and silver chloride can be the antimicrobial silver salt.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, 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 combine two compositions, each of which is taught by the prior art to be useful for the same purpose (silver nitrate taught by Zhou et al. + silver chloride taught by Cai et al. for the purpose of providing an antimicrobial effect on leather), in order to form a third composition to be used for the very same purpose (See MPEP 2144.06-I). Alternatively, based on these teachings, 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 substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (silver nitrate taught by Zhou et al. with silver chloride taught by Cai et al. for the purpose of providing an antimicrobial effect on leather) (See MPEP 2144.06-II).
Regarding the concentration of ingredients (silver chloride, at least one polymer (PVP) and at least one reverse micellar ionic surfactant (sodium salt of dodecyl sulfate) as specified in claim 15, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The Applicants' specification provides no evidence that the selected concentration range in claim 15 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to numerous physical/chemical/biological properties of various chemicals (e.g., surface being treated, pathogens being treated, concentration of pathogens), it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine these teachings and alter the concentration. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. One of ordinary skill in the art would have been motivated to change the concentration as this could be expected to be advantageous for providing the best biological outcome.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (CN 105936788; published: 9/14/16), in view of Cai et al. (CN 104206418; published: 12/17/14) as applied to claims 1-4, 9-12 and 14-15 above, and further in view of Cui (CN 103666781; published: 3/26/14).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Zhou et al. and Cai et al. teach and/or make the limitation of instant claims 1-4, 9-12 and 14-15 obvious (See rejection above for details).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Zhou et al. and Cai et al. do not have a particular embodiment wherein the abovementioned composition further comprises titania in an amount between about 1% to about 10 wt%, as required by instant claim 16. However, Cai et al. teach that in order to prevent discoloration of the silver component due to optical reaction, a silver component is used in combination with titanium. This is because titanium acts as an ultraviolet absorber and has an effect of preventing discoloration of the silver component.
Zhou et al. and Cai et al. do not teach wherein the disinfection composition further comprises sodium docusate in an amount between about 1% to about 2 wt%, as required by instant claim 16. However, this deficiency is cured by Cui.
Cui is directed to a special cleaning wipe for leather. Cui teaches a cleaning wipe for leather comprising sodium dioctyl succinate sulfonate (i.e., sodium docusate). Cui teaches that sodium dioctyl succinate, a sulfonate, is an anionic surfactant and has good emulsifying ability and ability to disperse oil. It is stable and resistant to acid, alkali, calcium and magnesium salts. When it is dispersed on the surface of the dispersoid, a thin film or an electric double layer is formed, and the dispersed phase is charged, so that the droplets of the dispersed phase can be prevented from coagulating with each other, and the formed emulsion is relatively stable.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Zhou et al. and Cau et al. are both directed to leather antimicrobial coatings comprising silver salts such as silver nitrate or silver chloride. Based on these teachings, 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 modify the composition by further incorporating titanium to achieve the predictable result of obtaining a composition suitable for an antimicrobial leather coating. One of ordinary skill in the art would have been motivated to do so because Cai et al. teach that it is advantageous for preventing discoloration of the silver component.
Zhou et al., Cai et al. and Cui are all directed to leather antimicrobial compositions. Based on these teachings, 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 modify the composition by further incorporating sodium docusate to achieve the predictable result of obtaining a composition suitable for an antimicrobial leather coating. One of ordinary skill in the art would have been motivated to do so because Cui teaches that it is advantageous for the following reasons: good emulsifying ability and ability to disperse oil.
Regarding the concentration of ingredients (silver chloride, PVP, alcohol, sodium docusate and titania) as specified in claim 16, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The Applicants' specification provides no evidence that the selected concentration range in claim 15 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to numerous physical/chemical/biological properties of various chemicals (e.g., surface being treated, pathogens being treated, concentration of pathogens), it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine these teachings and alter the concentration. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. One of ordinary skill in the art would have been motivated to change the concentration as this could be expected to be advantageous for providing the best biological outcome.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
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/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617