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
Applicant’s election without traverse of Group I, claims 1-14 in the reply filed on February 18, 2026 is acknowledged.
Claims 31-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 18, 2026mkm5.
Claim Objections
Claim 9 is objected to because of the following informalities: for consistency “ .0625%” needs a zero preceding the period. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 14 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.
The term “significant” in claim 14 is a relative term which renders the claim indefinite. The term “significant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The disclosure has been reviewed; however no illustrative discussion or data supports a determination of the requisite degree of “significant precipitation, discoloration or loss of antimicrobial efficacy”.
For the purposes of examination now this claim term is construed as “stable” as recited in claim 1, i.e., “wherein the composition maintains a pH of from about 4.0 to about 7.0 without discoloration or solid iodine precipitation for at least 6 months”. (See Opinion, p.4 second-last para., US Application 16/874,525, February 16, 2022.)
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-14 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being clearly anticipated by Rhodes (US 2018/0228837).
Rhodes teaches a liquid or gel antimicrobial solution (title; abstract; paras. 0005-06, 0008, 0011-12, 0056-66, 0086, 0088, 0098). The following are Findings of Fact from the opinion issued in parent application 16/874,525.
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(Opinion, pp.8-9, US Application 16/874,525, February 16, 2022.)
Instant claim 1, limitations (a) through (e), and claims 2-11, 13, and 14 read on ClyraTM 4 and C4 shown above. Rhodes does not expressly disclose whether ClyraTM 4 and C4 meet claim 1’s limitation (f), and claim 12’s “effective antimicrobial activity of at least three days”. However the following are also from the Opinion.
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(Opinion, pp.10-11, US Application 16/874,525, February 16, 2022.)
The Board proceeded to rely on “Clyra 501(k)”; however it further stated as follows.
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(Opinion, pp.11-12.)
Footnote number 7 in the above quote is as follows.
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(Opinion, p.12.)
As the Board noted, for product claims, “when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent”. MPEP §2112.01(I). Furthermore a “chemical composition and its properties are inseparable”. MPEP § 2112.01(II). Therefore ClyraTM 4 and C4 are presumed to have the properties in claim 1 limitation (f) and claim 12. Furthermore the Board stated the Applicant, “as real party in interest of Rhodes and the instant application, is better placed than most to determine whether …the ClyraᵀM 4 disinfectant solution …solution satisfies the requirements of claim” 1, limitation (f), and claim 12. Applicant may file relevant data in response hereto.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11744249.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to a stable liquid antimicrobial disinfectant composition comprising: a. at least 95.0% of total weight of a carrier liquid; b. potassium iodide at a first effective concentration by weight; c. copper sulfate at a second effective concentration by weight; d. wherein a mixture of the first concentration of potassium iodide and the second concentration of copper sulfate generates an amount of free iodine in the composition of from about 100 ppm to about 330 ppm; e. wherein the carrier liquid does not include any metallo-peptides, acidifying agents, buffers or surfactants; and f. wherein the composition maintains a pH of from about 4.0 to about 7.0 without discoloration or solid iodine precipitation for at least 6 months. The difference is that the ‘249 patent’s claims further require the composition be “against coronavirus”, which is narrowing. Therefore the present claims are anticipated.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11457632.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to a stable liquid antimicrobial disinfectant composition comprising: a. at least 95% of total weight of a carrier liquid; b. potassium iodide at a first effective concentration by weight; c. copper sulfate at a second effective concentration by weight; d. wherein a mixture of the first concentration of potassium iodide and the second concentration of copper sulfate generates an amount of free iodine in the composition of from about 100 ppm to about 330 ppm; e. wherein the carrier liquid does not include any metallo-peptides, acidifying agents, buffers or surfactants; and f. wherein the composition maintains a pH of from about 4.0 to about 7.0 without discoloration or solid iodine precipitation for at least 6 months. The difference is that the ‘632 patent’s claims recite a method of providing the stable liquid antimicrobial disinfectant composition. However the ‘632 patent does not recite steps that render the method distinct from the composition recited. The ‘632 patent’s claims also recite that the composition be “against coronavirus”; however this is narrowing.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12156524.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to a stable liquid antimicrobial disinfectant composition comprising: a. at least 95% of total weight of a carrier liquid; b. potassium iodide at a first effective concentration by weight; c. copper sulfate at a second effective concentration by weight; d. wherein a mixture of the first concentration of potassium iodide and the second concentration of copper sulfate generates an amount of free iodine in the composition of from about 100 ppm to about 330 ppm; e. wherein the carrier liquid does not include any metallo-peptides, acidifying agents, buffers or surfactants; and f. wherein the composition maintains a pH of from about 4.0 to about 7.0 without discoloration or solid iodine precipitation for at least 6 months. The difference is that the ‘524 patent’s claims recite a method of providing the stable liquid antimicrobial disinfectant composition. However the ‘524 patent does not recite steps that render the method distinct from the composition recited.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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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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/H. SARAH PARK/Primary Examiner, Art Unit 1614