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 .
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 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.
Restriction Requirement
Election/Restrictions - Groups
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 26 and 45-53, drawn to a colored disinfectant composition comprising a reversibly protected fading agent, a colorant, and a disinfectant solution, wherein the colorant is sufficient to color the composition allowing for temporary visualization of a disinfectant.
Group II, claims 35 and 41-44, drawn to a method for disinfecting a surface or an object, comprising applying the colored disinfectant solution according to claim 26 to the surface or object; wherein, upon applying, the color of the disinfectant solution clearly marks where the colored disinfectant solution has or has not been applied to the surface or object; and wherein colored disinfectant solution is subjected to a chemical and/or mechanical action that releases the protected species from the protection such that the color of the disinfectant solution fades to clear within a period of time.
As set for the in Rule 13.1 of the Patent Cooperation Treaty (PCT), “the international application shall relate to one invention only or to a group of inventions so linked as to from a single general inventive concept.” Moreover, as stated in PCT Rule 13.2, “where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features." Furthermore, Rule 13.2 defines “special technical features” as “those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.”
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The special technical feature of Group I is a colored disinfectant composition comprising a reversibly protected fading agent, a colorant, and a disinfectant solution, wherein the colorant is sufficient to color the composition allowing for temporary visualization of a disinfectant. This composition is not novel in view of Jin (WO 2020/0146121 A1). Jin teaches compositions and methods for surface disinfection and decontamination comprising a multi-component indicator composition and a disinfectant (Abstract). The multi-component indicator composition comprise a colorant, generally in the form of a water soluble dye or lake pigment, a catalyst which modulates the transition of the colorant from a visible color to colorless, and one or more optional additives. The “catalyst” refers to an agent that directly or indirectly modulates the loss of color from the colorant, or the “fade time” of the colored disinfectant composition following addition of the indicator composition thereto, meaning the time required for the colored disinfectant composition to fade to clear, for example after application to a surface. In some implementations, the catalyst may be provided by the disinfectant composition itself (pg, 11, [0062]; pgs 57-58, [00181]).
As such, Group I does not share a special technical feature with the instant claims of Group II. Therefore, the claims are not so linked within the meaning of PCT Rule 13.2 so as to form a single inventive concept, and unity between Groups I and II is broken.
Inventorship
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Telephonic Election
During a telephone conversation with attorney Joseph C. Zucchero on 11/3/2025, provisional election was made without traverse to prosecute the invention of Group 1, claims 26 and 45-53. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 35 and 41-44 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Status
Claims 1-25, 27-34, and 36-40 are cancelled.
Claims 45-53 are newly added.
Claims 26, 35, and 41-53 are pending.
Claims 35 and 41-44 are withdrawn.
Claims 26 and 45-53 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claims 16 and 45-48 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (WO 2020/014612 A1, filed 7/12/2019), in view of Domburg (US 5,747,441).
Jin teaches compositions and methods for surface disinfection and decontamination comprising a multi-component indicator composition and a disinfectant (Abstract). The multi-component indicator composition comprise a colorant, generally in the form of a water soluble dye or lake pigment, a catalyst which modulates the transition of the colorant from a visible color to colorless, and one or more optional additives (pg 11, [0062]). The “catalyst” of Jin refers to an agent that directly or indirectly modulates the loss of color from the colorant, or the “fade time” of the colored disinfectant composition following addition of the indicator composition thereto, meaning the time required for the colored disinfectant composition to fade to clear, for example after application to a surface. In some implementations, the catalyst may be provided by the disinfectant composition itself ([0062]). Jin also teaches that “different dyes can be selected based on which are sensitive or resistant to bleach oxidation” (pg 55, [00174]).
For claim 45, Jin teaches the catalyst may be selected from a strong base, a weak base, a combination of strong and/or weak bases, a metal salt, a reducing agent, an oxidizing agent, an additional amount of a disinfectant composition such as additional hydrogen peroxide, or a reactive oxygen species precursor (pgs 57-58, [00181]).
Jin does not teach the reversibly protected fading agent as fully or partially encapsulated, coated, or shielded.
It is noted that the instant specification does not define the terms “encapsulated,” “coated,” or “shielded” in such a way as to provide one of ordinary skill the ability to differentiate the terms. For example, the specification states: “In embodiments, the reversibly protected species is a colorant or fading agent that is fully or partially encapsulated, fully or partially coated, fully or partially shielded (pg 23: 3-4) or “In embodiments where the protection is imparted by encapsulation or coating, this can be accomplished by encapsulating or coating, partially or fully, the colorant or fading agent” (pg 23: 13-14). As such, the terms “encapsulated,” “coated,” and “shielded” are considered to represent the same invention.
Domburg teaches the missing element of Jin.
Domburg teaches encapsulated bleach particles, wherein the bleach component is selected from the group consisting of a peroxygen bleach compound, a bleach catalyst, and a bleach precursor (Title; Abstract); as such, Domburg teaches the catalyst of Jin, an oxidizing agent and a reactive oxygen species. Domburg teaches the catalyst/oxidizing agent has good storage stability and the agent can be released in a controlled manner after wetting (col 1: 51-55).
The person of ordinary skill in the art would have expected success in adding Domburg's encapsulated peroxygen bleach compound, bleach catalyst, or bleach precursor as the reversibly protected fading agent since Jin teaches the catalyst may be an oxidizing agent or a reactive oxygen species precursor and Domburg teaches that encapsulation, shielding, and/or coating the fading agent allows a controlled release of the oxidizing agent or a reactive oxygen species precursor and permits control of the decolorization of the colorant.
2) Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Jin (cited above), in view of Domburg (cited above) and Dluzneski (WO 2017/151584 A1).
The teachings of Jia and Domburg are discussed above.
The combination of Jia and Domburg does not teach the reversibly protected fading agent in the form of micelles.
Dluzneski teaches the missing element of the combination of Jia and Domburg.
Dluzneski teaches encapsulated peroxide particles, wherein the peroxide is encapsulated in micelles (pg 3: 24-26). Dluzneski teaches the advantage of encapsulating peroxide is that the release rate of the peroxide is delayed over a longer period of time than a non-encapsulated version (pg 3:20-21).
The skilled artisan would have expected success in substituting Dluzneski's micelles comprising peroxide for the encapsulated peroxygen bleach compound of the combination of Jia and Domburg because Domburg teaches that encapsulation of the fading agent allows a controlled release of the oxidizing agent or a reactive oxygen species precursor and Dluzneski teaches that micelles can be used for the same purpose. The skilled artisan could have substituted one encapsulant for another because both Domburg and Dluzneski teach encapsulation as a means of controlling the release rate of the oxidizing agent. The person of ordinary skill in the art would have found it obvious to make the substitution because ordinarily skilled artisans would have predicted that an encapsulant can be manipulated to release the decolorizing oxidant after the disinfection has been carried out.
3) Claims 50-52 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (cited above), in view of Markus (US 9,717,240).
The teachings of Jia are discussed above.
Jia does not teach a reversibly protected colorant.
Markus teaches the missing element of Jia.
Markus teaches compositions of microencapsulated essential oils, also comprising other microencapsulated additives such as colorants, in a formulation for non-agricultural applications (Abstract; col 48, claim 13). Markus teaches the physical barrier or film formed has an effect on the release rate of the essential oil from the microcapsules (col 10: 41-43). While Markus does not specifically teach a rationale for coating or encapsulating colorants, one of ordinary skill can generalize the motivation for coating an essential oil to the rationale taught by Markus for coating a colorant.
For claim 51, Markus teaches the formulation can be in the form of a dispersion of micelles (col 2: 33-34).
The skilled artisan would have expected success in substituting Markus’ colorant-containing microcapsules or micelles for the colorant taught by Jia compound because Markus teaches that encapsulation of the colorant allows a controlled release of the colorant, as well as provide improved stability for the coloring agent (col 10: 36-40).
4) Claim 53 is rejected under 35 U.S.C. 103 as being unpatentable over Jin (cited above), in view of Markus (cited above) and Domburg (cited above).
The teachings of Jin and Markus are discussed above.
The combination of Jin and Markus does not teach a fading agent that is reversibly protected.
Domburg, as discussed in detail above, teaches encapsulated bleach particles, wherein the bleach component is selected from the group consisting of a peroxygen bleach compound, a bleach catalyst, and a bleach precursor (Title; Abstract); as such, Domburg teaches the catalyst of Jin, namely an oxidizing agent and/or a reactive oxygen species.
The person of ordinary skill in the art would have expected success in adding Domburg's encapsulated peroxygen bleach compound, bleach catalyst, or bleach precursor as the reversibly protected fading agent since Jin teaches the catalyst may be an oxidizing agent or a reactive oxygen species precursor and Domburg teaches that encapsulation, shielding, and/or coating the fading agent allows a controlled release of the oxidizing agent or a reactive oxygen species precursor and permits control of the decolorization of the colorant.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frederick Krass can be reached on (571)272-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612