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 .
Acknowledgement is made to Applicant’s claims filed 05/11/2023.
Claims 1-14 and 16-20 are pending and are currently under consideration.
Claims 1-14 are currently amended.
Claims 15 and 21-60 are cancelled.
Withdrawn Rejections and/or Objections
The rejection of claims 2-4 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to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention in view of the language “proportion of” has been withdrawn in view of Applicant’s amendment to said claims removing said phrase.
The rejection of claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Podlipskiy (US 2009/0170946) and Cornmell et al (WO 2014/001057) is withdrawn in view of the cancellation of claim 15, wherein the rejection of claims 1-14 and 16-20 is solely withdrawn in view of the New Matter in the claims. If the New Matter were to be removed, the rejections would have been maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 and 16-20 (all claims currently under consideration) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The response filed 03/19/2026 has introduced NEW MATTER into the claims.
As presently amended claims 1-3, 5-7, and 10-14 recite the concept of a sulfur-containing amino acid, and claims 5-8, 10, 12, and 14 recite methionine or a methionine derivative, and claims 5-7, 9, 10, and 14 recite cysteine or a derivative, taurine, or cystine. Thus, the claim broadly encompasses selection of a sulfur containing amino acid, and specifically one of methionine, cysteine, cystine, or taurine or a derivative thereof, which was not previously encompassed by the claims or the specification as originally filed.
The response did not point out where support for currently amended claims could be found in the originally filed disclosure. Although the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP 714.02 and 2163.06 (“Applicant should therefore specifically point out the support for any amendments made to the disclosure.”).
As presently amended, the claims now recite limitations, which were not clearly disclosed in the specification as filed, and now change the scope of the instant disclosure as filed. Such limitations recited in the presently amended claims, which did not appear in the specification, as filed, introduce new concepts and violate the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in the present claims in the specification or claims, as filed, or remove these limitations from the claims in response to this Office Action.
New Grounds of Rejection – Necessitated by Applicant’s Amendments
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-14 and 16-20 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Podlipskiy (US 2009/0170946), Cornmell et al (WO 2014/001057) (both IDS References), and either Hennicke et al (JournalsASM, 2013) or Kosted et al (Biochemistry and Cell Biology, 2002).
Podlipskiy teaches an antifungal composition with antimicrobial activity comprising at least one naturally-occurring compound selected from
the phenylpropanoid family, a synthetic derivative of at least one compound selected
from the phenylpropanoid family, a D-isomer of at least one naturally-occurring aromatic
amino acid, and a synthetic derivative of at least one D-isomer of naturallyoccurring
aromatic amino acids (see entire document, for instance, claim 1). Podlipskiy teaches that the mixture of actives can be diluted with water to produce the composition for use (see entire document, for instance, [0024]). It is noted that Podlipskiy teaches the presence of D-phenylalanine (DPA) and D-tyrosine (see entire document, for instance, [0020]). The synthetic derivative of the phenylpropanoid family is taught as being synthetic derivatives of phenylpropanoid family components, such as derivatives of the phenylalanine and D-tyrosine (see entire document, for instance, [0024]). Podlipskiy further teaches the presence of components such as eugenol and chavicol (see entire document, for instance, [0018]). Podlipskiy teaches that the conversion of the acids to their corresponding esters produces some of the volatile components of herb and flower fragrances (see entire document, for instance, [0017]).
Podlipskiy, while teaching components i)-v) does not expressly teach the new matter for the amino acids or the presence of a halogenated derivative of a natural monoterpenoid phenol. Podlipskiy further, while teaching the presence of the components, and teaching that the composition can be diluted, does not expressly teach the amounts of the components present. Podlipskiy also, while teaching natural monoterpenoid phenols such as eugenol, does not expressly teach thymol or a halogenated monoterpenoid phenol such as 4-chlorothymol or 4-iodothymol.
Cornmell teaches an antimicrobial composition comprising 4-chloro-2-isopropyl-5-methylphenol (4-chlorothymol) and 4-iodo-2-isopropyl-5-methylphenol (4-iodothymol) (see entire document, for instance, page 7, lines 10-29 and page 8, lines 26-33). Cornmell further teaches that there is a synergistic benefit for antimicrobial compositions comprising thymol and alpha-terpineol (see entire document, for instance, page 34, lines 14-18).
Hennicke teaches that the amino acid cysteine has long been known to be toxic at elevated levels for fungi (see entire document, for instance Abstract).
Kosted teaches that the most potent inhibitors for the fungi tested in Kosted was methionine methyl ester (see entire document, for instance, Abstract).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize thymol, alpha-terpineol, 4-chlorothymol, and 4-iodothymol in the composition of Podlipskiy. One would have been motivated to do so since both references are directed to antimicrobial compositions, wherein Cornmell teaches advantageous components that can be useful in antimicrobial compositions. One would have done so with a reasonable expectation of success since adding additional antimicrobial components to an antimicrobial composition would be expected to result in an antimicrobial composition with an even greater antimicrobial effect. It is noted that MPEP 2144.06 states: ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
Regarding the New Matter directed to the presence of cysteine or methionine methyl ester, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize cysteine and/or methionine methyl ester either in place of, or in combination with the phenylalanine or tyrosine as taught by Podlipskiy. One would have been motivated to do so since Podlipskiy teaches the use of amino acids for anti-fungal activity, wherein Kosted and Hennicke teach additional useful amino acids and their antifungal activity. It is noted that the racemate of the methionine methyl ester would comprise both the D and L enantiomers. It is further noted that Applicant has not established the criticality of the particular amino acids, this is particularly the case since the Instant Specification does not even teach the New Matter.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to optimize the amount of the active components present, as well as the amount of water in diluting the composition. One would have been motivated to do so to arrive at a composition with anti-fungal properties and enhanced microbial activities as taught by Podlipskiy. It is noted that 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).”
It further would have been obvious to utilize D-phenylalanine methyl ester or D-tyrosine ethyl ester as the derivatives of the phenylalanine, typrosine, or aromatic amino acids. One would have been motivated to do so since Podlipskiy directly teaches that derivates can be utilized and teaches specifically that esters can produce useful components.
Response to Arguments
Applicant argues in the Remarks filed 03/19/2026 that the prior art does not teach the newly added (New Matter) limitations. Applicant’s argument is not found persuasive in view of the New Grounds of Rejection set forth above.
Conclusion
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 TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611