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 of Group I, claims 1-8 in the reply filed on 02/18/2026 is acknowledged. Because applicant did not distinctly and specifically point out any errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 02/18/2026.
Claims 1-8 are under current examination.
Information Disclosure Statement
The information disclosure statement filed 04/24/2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
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.
Claims 1-8 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.
Claims 1, 3, and 4 each recite a “% active” in parentheses following the citric acid, isopropanol, and sodium lauryl sulfate. In each instance this phrase renders the claim indefinite because it is unclear how the phrase is intended to limit the composition. The meaning of a citric acid, for example that has 50% activity is totally unclear in terms of how a substance could only be 50% active and in terms of what the activity is. Additionally, the phrase is within parentheses and therefore it is unclear whether it is intended to limit the composition at all. No clarity is gained from the specification regarding the meaning of this phrase.
Claims 5 and 6 both list ATCC numbers in parentheses following categories of microbes. This renders the claim indefinite because it is unclear whether the effect of the formulation must be against the specific strain recited in parentheses or may be against any of the recited categories of microbe, the parenthetical statement being only exemplary.
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bond (US 2022/0202020; publication date: 06/30/2022) in view of Kinstler (US20210329923; publication date: 10/28/2021), Green (US 2019/0021993; publication date: 01/24/2019) and Drohmann et al. (US20050148751; publication date: 07/07/2005).
With regard to claims 1, 3, and 4, Bond discloses a cleaner and disinfectant containing only 25(b) ingredients (title, abstract). In one embodiment, the formulation contains in weight percent: thyme oil in an amount ranging from about 0.195 to about 0.276%; wintergreen oil in an amount ranging from about 0.128 to about 0.207%; at least one 25(b) surfactant in an amount ranging from about 2.159 to about 3.015%; granular citric acid in an amount ranging from about 0.994 to about 1.358%; isopropanol in an amount ranging from about 1.351 to about 1.886%; and the remainder water (0006-0011). The 25(b) surfactant is sodium lauryl sulfate (0012). The ranges in amounts of the oil ingredients overlaps with the amounts required by the instant claims (see MPEP 2144.05).
The ranges in amount of citric acid, isopropanol, and sodium lauryl sulfate in this embodiment disclosed by Bond are below the amounts recited in the instant claims; however citric acid and sodium lauryl sulfate are listed as active ingredients in table 1. Bond lists isopropyl alcohol (i.e. isopropanol) as an inert ingredient (table 2); however, this substance was known to impart antimicrobial effect:
Kinstler discloses that isopropanol is an antimicrobial agent (0038).
It would have been prima facie obvious to adjust the amounts of these three recognized antimicrobial ingredients (citric acid, isopropanol, and sodium lauryl sulfate) to increase the antimicrobial activity of the formulation to suit any particular need. See MPEP 2144.05(II)(A).
Bond discloses further that cedarwood oil is a 25(b) ingredient (Table 1); however, Bond does not particularly call out this substance from the list of 25(b) ingredients provided.
Green discloses that cedarwood in addition to thymol (i.e. an antimicrobial active in thyme oil; Drohmann: 0185) has antimicrobial properties (0016).
It would have been prima facie obvious to include cedarwood oil in Bond’s formulation because it was known to serve the same purpose as the other antimicrobial oil present, and it was also listed as a 25(b) ingredient (see MPEP 2144.06). With regard to the amount of cedarwood oil required by instant claims 1, 3, and 4, the examiner considers it a matter of routine for one of ordinary skill to determine the optimal amount of additional antimicrobial oil to provide a target activity against a pathogen. See MPEP 2144.05(II)(A).
With regard to claim 2, the pH is from 6-8 (0012).
With regard to claims 5 and 6, Bond directs the artisan of ordinary skill to reduce or eliminate microbes (mold or bacteria; 0035). Although Bond does not report testing on log reduction of microbes, the examiner considers it prima facie obvious to maximize the formulation’s efficacy using the known ingredients to achieve the elimination of microbes. As such the log reduction values recited in the instant claims does not patentably define over the cited prior art (see MPEP 2144.05(II)(A)).
With regard to claim 7, the formulation is a microemulsion (abstract).
With regard to claim 8, the examiner considers “is a diluted formulation” to be product by process language as it limits the product of claim 1 to one that has been formed by dilution. As all of the limitations of claim 1 are taught by the cited prior art, so also is claim 8 obvious. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”.
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, 3-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11033024 (cited in the IDS filed 09/14/2023) in view of Bond (US 2022/0202020; publication date: 06/30/2022), Kinstler (US20210329923; publication date: 10/28/2021), Pan et al. (US20040018154; publication date: 01/29/2001), Green (US 2019/0021993; publication date: 01/24/2019), and Drohmann et al. (US20050148751; publication date: 07/07/2005).
Inter alia, the claims of the ‘024 patent embrace a microemulsion comprising, in weight percent: at least one surfactant in an amount ranging from about 2.48 to 3.36%, citric acid in an amount ranging from about 1.62 to 2.20%, alcohol with a proof ranging from 90 to 180 and in an amount ranging from about 2.81 to 3.81%, thyme oil in an amount ranging from about 0.18 to 0.24%,a pH adjuster to adjust the pH of the microemulsion between 2.3 and 3.3, and water. The surfactant is sodium lauryl sulfate and the alcohol is isopropanol. The ranges in amounts of the oil ingredients overlap with the amounts required by the instant claims (see MPEP 2144.05).
The ranges in amount of citric acid, isopropanol, and sodium lauryl sulfate in the ‘923 claims are below the amounts recited in the instant claims; however these substances were known to impart antimicrobial effect:
Bond lists citric acid and sodium lauryl sulfate are listed as active [antimicrobial] ingredients in table 1.
Kinstler discloses that isopropanol is an antimicrobial agent (0038).
It would have been prima facie obvious to adjust the amounts of these three recognized antimicrobial ingredients (citric acid, isopropanol, and sodium lauryl sulfate) to increase the antimicrobial activity of the formulation to suit any particular need. See MPEP 2144.05(II)(A).
The ’024 claims do not require wintergreen oil or cedarwood oil.
Pan discloses that wintergreen oil and thymol were both known as antimicrobial agents as of the instant effective filing date (0048).
Green discloses that cedarwood in addition to thymol (i.e. an antimicrobial active in thyme oil; Drohmann: 0185) has antimicrobial properties (0016).
It would have been prima facie obvious to add wintergreen oil and cedarwood oil to the ‘024 composition because these substances were known to serve the same purpose (see MPEP 2144.06). With regard to the amount of wintergreen and cedarwood oils required by instant claims 1, 3, and 4, the examiner considers it a matter of routine for one of ordinary skill to determine the optimal amount of additional antimicrobial oil to provide a target activity against a pathogen. See MPEP 2144.05(II)(A).
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11284624 in view of Bond (US 2022/0202020; publication date: 06/30/2022), Kinstler (US20210329923; publication date: 10/28/2021), Pan et al. (US20040018154; publication date: 01/29/2001), Green (US 2019/0021993; publication date: 01/24/2019), and Drohmann et al. (US20050148751; publication date: 07/07/2005).
Inter alia, the claims of the ‘642 patent embrace a microemulsion comprising, in weight percent: at least one surfactant in an amount ranging from about 2.48 to 3.36%, citric acid in an amount ranging from about 1.62 to 2.20%, alcohol with a proof ranging from 90 to 180 and in an amount ranging from about 2.81 to 3.81%, thyme oil in an amount ranging from about 0.18 to 0.24%, a pH adjuster to adjust the pH of the microemulsion between 2.3 and 3.3, and water. The surfactant is sodium lauryl sulfate, the alcohol is isopropanol and the pH is between 6-8. The ranges in amounts of the oil ingredients overlap with the amounts required by the instant claims (see MPEP 2144.05). The ranges in amount of citric acid, isopropanol, and sodium lauryl sulfate in the ‘923 claims are below the amounts recited in the instant claims; however, these substances were known to impart antimicrobial effect:
Bond lists citric acid and sodium lauryl sulfate are listed as active [antimicrobial] ingredients in table 1.
Kinstler discloses that isopropanol is an antimicrobial agent (0038).
It would have been prima facie obvious to adjust the amounts of these three recognized antimicrobial ingredients (citric acid, isopropanol, and sodium lauryl sulfate) to increase the antimicrobial activity of the formulation to suit any particular need. See MPEP 2144.05(II)(A).
The ’024 claims do not require wintergreen oil or cedarwood oil.
Pan discloses that wintergreen oil and thymol were both known as antimicrobial agents as of the instant effective filing date (0048).
Green discloses that cedarwood in addition to thymol (i.e. an antimicrobial active in thyme oil; Drohmann: 0185) has antimicrobial properties (0016).
It would have been prima facie obvious to add wintergreen oil and cedarwood oil to the ‘624 composition because these substances were known to serve the same purpose (see MPEP 2144.06). With regard to the amount of wintergreen and cedarwood oils required by instant claims 1, 3, and 4, the examiner considers it a matter of routine for one of ordinary skill to determine the optimal amount of additional antimicrobial oil to provide a target activity against a pathogen. See MPEP 2144.05(II)(A).
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-10, 13-16, and 18 of copending Application No. 17694923 in view of Hansen et al. (US4865855; issue date: 09/12/1989), Kinstler (US20210329923; publication date: 10/28/2021), Green (US 2019/0021993; publication date: 01/24/2019) and Drohmann et al. (US20050148751; publication date: 07/07/2005).
Inter alia, the claims of the ‘923 application embrace a cleaner and disinfectant containing only 25(b) ingredients containing in weight percent: in weight percent: thyme oil in an amount ranging from about 0.195 to about 0.276%; wintergreen oil in an amount ranging from about 0.128 to about 0.207%; sodium lauryl sulfate in an amount ranging from about 2.159 to about 3.015%; citric acid in an amount ranging from about 0.994 to about 1.358%; isopropanol in an amount ranging from about 1.351 to about 1.886%; and the remainder water. The pH is from 6-8. The ranges in amounts of the oil ingredients overlap with the amounts required by the instant claims (see MPEP 2144.05). The ranges in amount of citric acid, isopropanol, and sodium lauryl sulfate in the ‘923 claims are below the amounts recited in the instant claims; however, these substances were known to impart antimicrobial effect:
Hansen discloses that citric acid and sodium lauryl sulfate were known antimicrobials (abstract).
Kinstler discloses that isopropanol is an antimicrobial agent (0038).
It would have been prima facie obvious to adjust the amounts of these three recognized antimicrobial ingredients (citric acid, isopropanol, and sodium lauryl sulfate) to increase the antimicrobial activity of the formulation to suit any particular need. See MPEP 2144.05(II)(A).
The claims of the ‘923 application do not recite a limitation requiring cedarwood oil.
Green discloses that cedarwood in addition to thymol (i.e. an antimicrobial active in thyme oil; Drohmann: 0185) has antimicrobial properties (0016).
It would have been prima facie obvious to include cedarwood oil in the ‘923 formulation because it was known to serve the same purpose as the other antimicrobial oil present (see MPEP 2144.06). With regard to the amount of cedarwood oil required by instant claims 1, 3, and 4, the examiner considers it a matter of routine for one of ordinary skill to determine the optimal amount of additional antimicrobial oil to provide a target activity against a pathogen. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617