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 .
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.
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 3 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 3 recites the limitation "the aqueous solution" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 3 depends from claim 1 which does not recite an aqueous solution, making it unclear what aqueous solution is limited by claim 3.
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.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Siamon, (US 2002/0031555 A1, March 14, 2002) (hereinafter Siamon) as evidenced by Chopade et al., (Detergent Formulations: Ion Exchange, 2000) (hereinafter Chopade).
Siamon discloses a formulation consisting of sodium bicarbonate, sodium carbonate and trisodium phosphate in aqueous solution that dries as a thin film to the applied surfaces (Abstract). The formulation is used in a method of reducing or eliminating microorganisms on mammalian tissue comprising the acts of: topically applying a solution consisting essentially of sodium bicarbonate, sodium carbonate and trisodium phosphate having a molar ratio of approximately 1:2.6:1.6, to a surface of the mammalian tissue; and allowing the applied solution to dry wherein a film is formed thereof, thereby to reduce or eliminate the microorganisms from said surface (Claim 1). Trisodium phosphate is well known as a water-softening agent as an ingredient ([0016]). In a typical nominally “full-strength” formulation, an amount of solution having a first concentration is prepared by combining approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water; the water used is, e.g., deionized water, softened water or water processed through a reverse osmosis (RO) system. Other quantities having the same molar ratio and percent solids concentration can be readily prepared by one of ordinary skill in the art and while the specific molar ratio of the above components described has been found to be most effective for certain uses, other molar ratios are also effective for other uses ([0020]). The film or coating formed upon drying is a hard, lubricious coating that has been found to be between approximately 2 to 10 microns thick ([0045]). The solution is applied to the afflicted areas ([0034]).
Siamon discloses a method of reducing or eliminating microorganisms on mammalian tissue comprising the acts of: topically applying a solution consisting essentially of sodium bicarbonate, sodium carbonate and trisodium phosphate having a molar ratio of approximately 1:2.6:1.6, to a surface of the mammalian tissue (i.e., a surface at risk of having insects upon the surface); and allowing the applied solution to dry wherein a film is formed thereof (i.e., a solid coating composition) (Claim 1) wherein the solution comprises approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water ([0020]). Together these would provide a method as claimed instantly. The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
Regarding the limitation of claim 1 reciting “a method of reducing the number of insects on a surface,” this is merely a recitation of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02. Because claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention, the preamble is not considered a limitation of the claim.
Regarding the claimed concentrations of sodium bicarbonate, sodium carbonate, and trisodium phosphate per gallon of the liquid coating composition in claims 1 and 2, as discussed above, Siamon teaches sodium bicarbonate, sodium carbonate and trisodium phosphate having a molar ratio of approximately 1:2.6:1.6 in a solution having a first concentration is prepared by combining approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water. However, other quantities having the same molar ratio and percent solids concentration can be readily prepared by one of ordinary skill in the art and other molar ratios are also effective for other uses. Accordingly, because Siamon teaches that other molar ratios are also effective for other uses, one of ordinary skill in the art would have been capable of arriving at the claimed concentration of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate per gallon of the liquid coating composition through routine experimentation, depending on the desired use, as taught by Siamon. "[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." See MPEP 2144.05.
Regarding the limitation of claim 1 reciting the weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate is about 1:2:3, as discussed above, Siamon teaches a solution having a first concentration is prepared by combining approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water. However, other quantities having the same molar ratio and percent solids concentration can be readily prepared by one of ordinary skill in the art and other molar ratios are also effective for other uses. Accordingly, one of ordinary skill in the art would have been capable of arriving at the claimed weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate through routine experimentation, depending on the desired use, as taught by Siamon. "[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." See MPEP 2144.05.
Regarding claim 3, as noted in the instant specification in paragraph [0010], hydrogen bond activated water is water having its hydrogen bonding structure altered by adding a slight charge to the water. As discussed above, Siamon teaches that an amount of solution having a first concentration is prepared by combining SB, SC and TSP in water; the water used is deionized water. It is well known in the art that sodium triphosphate acts as a chelating agent in water as it possesses multiple sites with lone-pair electrons that are available to interact with corresponding electron-deficient coordination sites on metal ions like Ca2+ andMg2+ ions, as evidenced by Chopade et al., (page 2562, Phosphates). Because the deionized water used in the aqueous solution of Siamon is free of electron-deficient metal ions like Ca2+ andMg2+ ions, the unpaired lone-pair electrons of the sodium triphosphate in the aqueous solution of Siamon would produce a charge to the deionized water, even if only transiently. Accordingly, the aqueous solution of Siamon comprises hydrogen bond activated water.
Regarding claim 5, as discussed above, Siamon teaches that the solution dries as a thin film to the applied surfaces and is applied to the afflicted areas. Accordingly, it would have been within the capabilities of one of ordinary skill in the art to have applied the liquid coating composition covering at least 90% of the surface depending on the desired coverage of the afflicted area.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 17365913 in view of Siamon, (US 2002/0031555 A1, March 14, 2002) (hereinafter Siamon).
Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending claims 1-2 are directed to method of disinfecting a room, comprising applying a disinfecting solution to all surfaces of the room and all surfaces of all objects in the room, wherein the disinfecting solution comprises water, sodium bicarbonate, sodium carbonate, and trisodium phosphate, and allowing the water in the disinfecting solution to evaporate to dryness so that only a solid film remains, and wherein the disinfecting solution is applied to at least 90% of the area of the surfaces of the room.
The instant claims differ insofar as disclosing about 0.1 to about 0.5 ounces of sodium bicarbonate per gallon of the liquid coating composition, about 0.5 to about 0.7 ounces of sodium carbonate per gallon of the liquid coating composition, and about 1 to about 4 ounces of trisodium phosphate per gallon of the liquid coating composition, wherein the weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate is about 1:2:3.
However, Siamon discloses a formulation consisting of sodium bicarbonate, sodium carbonate and trisodium phosphate in aqueous solution that dries as a thin film to the applied surfaces (Abstract). The formulation is used in a method of reducing or eliminating microorganisms on mammalian tissue comprising the acts of: topically applying a solution consisting essentially of sodium bicarbonate, sodium carbonate and trisodium phosphate having a molar ratio of approximately 1:2.6:1.6, to a surface of the mammalian tissue; and allowing the applied solution to dry wherein a film is formed thereof, thereby to reduce or eliminate the microorganisms from said surface (Claim 1). In a typical nominally “full-strength” formulation, an amount of solution having a first concentration is prepared by combining approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water; the water used is, e.g., deionized water, softened water or water processed through a reverse osmosis (RO) system. Other quantities having the same molar ratio and percent solids concentration can be readily prepared by one of ordinary skill in the art and while the specific molar ratio of the above components described has been found to be most effective for certain uses, other molar ratios are also effective for other uses ([0020]).
Regarding the limitation of claim 1 reciting “a method of reducing the number of insects on a surface,” this is merely a recitation of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02. Because claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention, the preamble is not considered a limitation of the claim.
Regarding the instantly claimed concentrations of sodium bicarbonate, sodium carbonate, and trisodium phosphate per gallon of the liquid coating composition, as discussed above, Siamon teaches sodium bicarbonate, sodium carbonate and trisodium phosphate having a molar ratio of approximately 1:2.6:1.6 in a solution having a first concentration is prepared by combining approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water. However, other quantities having the same molar ratio and percent solids concentration can be readily prepared by one of ordinary skill in the art and other molar ratios are also effective for other uses. Accordingly, because Siamon teaches that other molar ratios are also effective for other uses, one of ordinary skill in the art would have been capable of arriving at the claimed concentration of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate per gallon of the liquid coating composition through routine experimentation, depending on the desired use, as taught by Siamon. "[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." See MPEP 2144.05.
Regarding the instantly claimed weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate is about 1:2:3, as discussed above, Siamon teaches a solution having a first concentration is prepared by combining approximately 910 grams of SB, approximately 1,930 grams of SC and approximately 2,270 grams of TSP in approximately 208 liters of water. However, other quantities having the same molar ratio and percent solids concentration can be readily prepared by one of ordinary skill in the art and other molar ratios are also effective for other uses. Accordingly, one of ordinary skill in the art would have been capable of arriving at the claimed weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate through routine experimentation, depending on the desired use, as taught by Siamon. "[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." See MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12-13 of U.S. Patent No. US 11,395,493 B2.
Patent claims 1 and 12-13 are directed to a water-based paint, about 0.01 ounces to about 0.02 ounces of sodium bicarbonate per gallon of water-based paint, about 0.02 ounces to about 0.04 ounces of sodium carbonate per gallon of water-based paint, and about 0.03 ounces to about 0.06 ounces of trisodium phosphate per gallon of water-based paint, wherein a weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate is about 1:2:3 and the use of the composition in a method of protecting a surface, comprising: applying a water-based paint product forming a film having a thickness of about 1 μm to about 2,000 μm on the surface; and allowing the water-based paint product to dry to form a protective coating; wherein the surface is a wall or a ceiling; wherein the water-based paint comprises water, sodium bicarbonate, sodium carbonate, and trisodium phosphate.
Regarding the limitation of claim 1 reciting “a method of reducing the number of insects on a surface,” this is merely a recitation of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02. Because claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention, the preamble is not considered a limitation of the claim.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 6,506,392 B2.
Patent claim 1 is directed to a method of reducing or eliminating microorganisms on mammalian tissue comprising the acts of: topically applying a solution consisting essentially of sodium bicarbonate, sodium carbonate and trisodium phosphate having a molar ratio of approximately 1:2.6:1.6, to a surface of the mammalian tissue; and allowing the applied solution to dry wherein a film is formed thereof, thereby to reduce or eliminate the microorganisms from said surface.
Regarding the limitation of claim 1 reciting “a method of reducing the number of insects on a surface,” this is merely a recitation of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02. Because claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention, the preamble is not considered a limitation of the claim.
Regarding the instantly claimed concentrations of sodium bicarbonate, sodium carbonate, and trisodium phosphate per gallon of the liquid coating composition, 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." See MPEP 2144.05.
Regarding the instantly claimed weight ratio of the sodium bicarbonate, the sodium carbonate, and the trisodium phosphate is about 1:2:3, 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." See MPEP 2144.05.
Conclusion
Claims 1-5 are rejected.
No claims are allowable.
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/S.J.K./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614