FINAL REJECTION
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
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-4 and 6 are 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.
Independent claim 1 is indefinite in regards to the distinction between the fatty acid species of octylic acid and octanoic acid, because chemically said species are deemed to be the same.
Dependent claim 6 is deemed to be indefinite in regards to the actually intended concentration range for the fatty acid component. Applicant use of the phrase: “wherein a content of the fatty acid . . .” is the cause of this indefiniteness issue, because the use of the article “a” implies that which follows is only one possible concentration range out of many other not set forth possible concentration ranges. If Applicant in the future wants to positively require that the fatty acid component falls within a concentration range of “0.01% by mass or more and 10% by mass or less”, Applicant will need to replace the article “a” with the word --the--.
Claims 2-4 are also being rejected here because they are directly dependent on rejected independent claim 1.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claim 2 is not further limiting of independent claim 1 when the fatty acid selected has a carbon number of 6 or 7. The reasons being is that the required fatty acid species, as set forth in independent claim 1, all have 8 or more carbon atoms.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winston et al. U.S. Patent Application Publication No.: 2020/0022363 A1.
Winston et al. discloses process for forming controlled release antimicrobial salts that include a four-part mixture of (i) an antimicrobial cation, (ii) the anion of an organic acid, (iii) an ammonium, sodium or potassium cation and (iv) an anion such as a halide, acetate or gluconate, dissolved in a solvent so that a concentrate with dissociated controlled release antimicrobial ions is formed. Upon addition of water, controlled-release antimicrobial salt having a solubility in water at 20° C. of greater than about 0.001 (w/w) %, but less than about 1 (w/w) % are formed. Alternatively, a controlled release antimicrobial salt is formed in situ at a site of application containing moisture by addition of a concentrate having dissociated controlled release antimicrobial ions, see abstract.
Winston et al.’s compositions are directly disclosed to have various uses such as in dental applications and dental compositions, see paragraphs [0069] and [0073].
Applicant’s claims are deemed to be directly anticipated over at least the process of making the composition set forth in TABLE 2, see paragraphs [0081] and [0082]. Said process, see paragraph [0082], has the first process step of: while stirring, adding 3.1 wt. % of lauric acid to 84.98 wt. % of propylene glycol. Said concentration amounts are based on the final composition. Taking just the first composition which consists of only lauric acid and propylene glycol, the Examiner calculated concentration of the lauric acid in this said first composition is as followed: [(3.10 parts lauric acid)/(3.10 part lauric acid + 84.98 parts propylene glycol)] x 100 = 3.52 wt. % lauric acid which falls directly within the fatty acid concentration range as set forth in Applicant’s dependent claim 6.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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