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 .
Drawings
The drawings remain objected to because portions of Fig. 19 are functionally illegible, primarily due to overlap. Inventor has submitted replacement drawings (3/23/2026). However, portions of claim 19 remain functionally illegible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
The objection to the drawings will not be held in abeyance.
Specification
The objection to the specification, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment removes the translator’s remarks.
112 Rejections Withdrawn
The rejection of claim 71 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment clarifies the claim as appropriate.
The rejection of claim 74 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action, is withdrawn in light of inventor’s amendment and arguments and reformulated below.
The rejection of claims 72, 73 and 75-79 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action (indefinite from indefinite), is withdrawn. The rejection is moot.
Claim Rejections - 35 USC § 112, NEW
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 74 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.
In independent claim 71, the claim from which claim 74 immediately depends, the broadest definition of variables R11, R21, R31 and R41 of chemical formula (XI) is that they are each hydrogen or an alkyl group. The specification gives guidance as to the definition of this alkyl group: “…(e.g., a straight-chain or branched alkyl group having 1 to 40 carbon atoms…)” (specification page 10, [0042]). That being the case, there is insufficient antecedent basis for the limitations cetylpyridinium chloride, dequalinium chloride, oxytropium, glycopyrronium, safranin, trigonelline, paraquat, pyridostigmine, phellodendrine and pralidoxime methiodide in the claim. In each of these compounds, the ammonium nitrogen is present as a member of a ring (either aromatic or non-aromatic). Such moieties do not appear to be encompassed by the pertinent variable definition of chemical formula (XI), nor encompassed by the general guidance given in the specification.
Clarification is in order.
Markush Search
The Markush search has not yet advanced beyond the elected species, vide infra.
Claim Rejections - 35 USC § 102, MAINTAINED
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 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 71-75 and 79, in so far as they read on the elected species, remain rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 2012/0322124 A1, cited in the IDS. Inventor’s arguments have been carefully considered, but are not persuasive.
As stated in the previous Office Action:
The reference teaches a method for the control of contaminant microorganisms in fermentation broths (i.e. ethanol production from agricultural feedstocks) composed of synergistic formulations of stabilized chlorine dioxide and quaternary ammonium compounds (abstract). Stabilized chloride dioxide compounds include chlorite compounds such as sodium chlorite (page 6, [0061]). Quaternary ammonium compounds include a benzalkonium chloride – an example of which is explicitly taught (page 5, diagramed structure (2)).
With respect to the instant limitations of instant formula (XI) as to its Lewis acidity, and its ability to catalyze radical generation from a radical source in a liquid that is not acidic and where the radical source is a halogenous acid, halite ion or halite, the examiner notes that these properties/characteristics must be intrinsic to the quaternary ammonium of diagramed structure (2) of the cited art. As inventor acknowledges in the Response to Restriction Requirement (11/10/2025), the instant claims encompass benzalkonium chlorides. And that being case, benzalkonium chlorides must intrinsically possess the limitations outlined in instant independent claim 71. Note that a compound and its properties are inseparable (MPEP 2112.01; 2141.02 (V)).
Inventor argues that the cited prior art compound is utilized in a weakly acidic environment, and that there is no suggestion or teaching in the cited art of this compound as a radical-generating catalyst that catalyzes radical generation from a radical source that is not acidic (as taught by instant independent claim 71).
Inventor further argues that the cited prior art is silent with respect to the Lewis acidity of the prior art compound (whereas, as taught by instant independent claim 71, the compound must have a Lewis acidity of 0.4 eV or more).
The examiner notes that the instant claims are drawn to compounds (“A radical generating catalyst…” (instant independent claim 71)). And that being the case, limitations with respect to the utility of the compounds (in this case, for catalyzing radical generation from a radical source, which is at least one of halogenous acids and halite ions, in a liquid which is not acidic) does not further limit the compounds themselves – which are explicitly defined by the Markush formula (XI). That is, recitation of the intended utility of a compound in the preamble of a compound claim which can otherwise stand alone is not considered a further limitation on the claim. (Note the discussion at MPEP 2111.02, I and II.)
Furthermore, a chemical composition - in this case, a compound - and its properties are necessarily inseparable. Products of identical chemical composition cannot have mutually exclusive properties. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (in the present case, the limitation with respect to Lewis acidity). (MPEP 2112.01 (II).)
Additionally, and also with respect to the instant Lewis acid limitation, the examiner notes that if a particular property of a chemical compound has apparently never been directly measured and published (in this case, apparently, the Lewis acidity of the cited prior art compound), or, alternatively, a predicted value for that property has never been calculated and published, that it would make no logical sense for the USPTO to allow a later-presented patent claim to this same compound whose only difference from the prior art is that this later-presented compound claim additionally explicitly recites a limitation with respect to a particular newly measured or calculated property of the compound. However, the compound is still the same compound. No matter how it may be described later in terms of its properties.
In sum, given that the instant preamble limitations of the Markush group of compounds of formula (XI) cannot be given patentable weight for the reasons outlined above, the instant claims distill to claims drawn simply to the compounds of Markush formula (XI). And the cited prior art teaches an example of just such a compound: the instant elected species.
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 BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 4/29/2026
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