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 .
Applicants’ arguments filed 11/26/2025 have been entered. Claims 1-9 and 11-19 are pending.
Maintained Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yin (US 8,889679; November 18, 2014) in view of Evans (GB 2205748; December 21, 1988) in further view of Jerusik et al. (JPH0363204A; published March 19, 1991).
Applicant’s Invention
Applicant claims a biocidal composition comprising glutaraldehyde and tris(hydroxymethyl)nitromethane, a buffer that is an acid, salt or combination thereof and a solvent wherein the pH of the buffer is 2.8-5 and the solvent is selected from methanol, isopropanol, triethylene glycol, dipropylene glycol methyl ether, dipropylene glycol n-propyl ether, dipropylene glycol dimethyl ether, diethylene glycol methyl ether and mixtures thereof.
Determination of the scope and the content of the prior art
(MPEP 2141.01)
With respect to claims 1-5 and 7, Yin teaches glutaraldehyde based biocidal compositions and methods of use comprising tris(hydroxymethyl)-nitromethane (abstract). The biocides are used to control microorganisms in aqueous water-containing systems, and other industrial processes, especially oil or natural gas productions as well as ballast water, pulp and paper manufacture, textiles, latexes, paints and coatings (column 1, lines 14-39; column 4, lines 2-20). The combination of glutaraldehyde and tris(hydroxymethyl)-nitromethane exhibit synergistic effect against anaerobic sulfate reducing bacteria (column 8, lines 18-23). The ratios of glutaraldehyde to tris(hydroxymethyl)nitromethane (tris nitro) range from 9:1 to 1:9, including a 1:1 ratio (Table 2, column 6, lines 35-55).
With respect to claims 6, 8 and 9, Yin teaches that the solutions are prepared in salt solutions comprising NaCl (Examples 1 and 2).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Yin et al. does not teach a buffer, with a pH of 2.8-5 or a solvent selected from isopropanol. Yin et al. does not teach buffer selected from phosphoric acid. It is for this reason that Evans is joined.
Evans teach disinfectant composition comprising aqueous mixture of glutaraldehyde, cationic antibacterial, a surfactant and an acid such as phosphoric acid to form a concentrated composition (abstract). The disinfectant is inexpensive, storage stable and reduces staining or corrosion problems present when glutaraldehyde is used alone (column 2, lines 3-10; column 5, lines 12-13). The acid is preferably phosphoric acid or other acids such as citric acid and sulphuric acid (column 3, lines 12-19). Other ingredients include isopropanol which assists in dissolving cationic compound (column 3, lines 20-22). The mixture has bactericidal activity, virucidal activity and fungicidal activity (column 5, lines 4-11).
Yin and Evans do not teach the pH of the buffer is 2.8-5. It is for this reason that Jerusik et al. is joined.
Jerusik et al. teach glutaraldehyde and 1,2-benzisothiazole-3-one formulations comprising a buffer, acetic acid and sodium acetate capable of providing pH of 2-7, preferably 3.2-4.8 (abstract; claims 1-3). The buffer lowers the pH without adversely affecting biocidal activity and include acetic acid, formic acid and suitable bases include sodium acetate (paragraphs 9 and 10; claim 4).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Yin, Evans and Jerusik et al. all teach glutaraldehyde biocidal compositions. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Yin, Evans and Jerusik et al. to include a phosphoric acid and isopropanol with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Yin, Evans and Jerusik et al. to include the solvent isopropanol because Evans teaches it aids in dissolving cationic compounds and one of ordinary skill would have also been motivated to add phosphoric acid because Evans teaches that glutaraldehyde is more stable in acidic solutions.
Furthermore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Yin, Evans and Jerusik et al. to include disodium phosphate with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Yin, Evans and Jerusik et al. to include the salt of the buffer because Yin et al. teach that the biocides are formulated in a salt solution and Evans teaches the additions of acids selected from phosphoric acid. Therefore, the salt solutions would interact with the acids to form the disodium phosphate salt.
It would have been prima facie obvious to one of ordinary skill to combine the teachings of Yin, Evans and Jerusik et al. to include acetic acid or sodium acetate and adjust to pH of 3.2-4.8 with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings of Yin, Evans and Jerusik et al. to include acetic acid and sodium acetate because Jerusik et al. teach that acetic acid and sodium acetate buffers are capable of adjusting the pH without adverse effects to biocidal activity. Furthermore, one of ordinary skill in the art would have also been motivated to adjust the pH to 3.2-4.8 with acetic acid and sodium acetate because Jerusik et al. teach glutaraldehyde formulations with acetic acid and sodium acetate are capable of providing pH of 3-7, preferably 3.2-4.8. and Evans et al. teach that glutaraldehyde is more stable in acidic solutions.
Claims 11-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yin (US 8,889,679; November 18, 2014) in view of Evans (GB 2205748; December 21, 1988) in further view of Jerusik et al. (JPH0363204A; published March 19, 1991).
Applicant’s Invention
Applicant claims a method of inhibiting microbial growth or reducing microbial concentration comprising adding the composition of claim 1 in an application selected from oil production, water treatment purification processes and systems, paper and pulp production, ballast water disinfection, other industrial processes, cooling and heating processes, latex, paint and coatings.
Determination of the scope and the content of the prior art
(MPEP 2141.01)
With respect to claims 11-15 and 17 of the instant application, Yin teaches glutaraldehyde based biocidal compositions and methods of use comprising tris(hydroxymethyl)-nitromethane (abstract). The biocides are used to control microorganisms in aqueous water-containing systems, and other industrial processes, especially oil or natural gas productions as well as ballast water, pulp and paper manufacture, textiles, latexes, paints and coatings (column 1, lines 14-39; column 4, lines 2-20). The combination of glutaraldehyde and tris(hydroxymethyl)-nitromethane exhibit synergistic effect against anaerobic sulfate reducing bacteria (column 8, lines 18-23).
With respect to claims 16, 18 and 19 of the instant application, Yin teaches that the solutions are prepared in a salt solution comprising NaCl (Example 2).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Yin et al. do not teach a buffer, with a pH of 2.8-5 or a solvent selected from isopropanol. Yin et al. do not teach buffer selected from phosphoric acid. It is for this reason that Evans is joined.
Evans teach disinfectant composition comprising aqueous mixture of glutaraldehyde, cationic antibacterial, a surfactant and an acid such as phosphoric acid to give an acidic pH of 1.5-2.5 to form a concentrated composition (abstract). The disinfectant is inexpensive, storage stable and reduces staining or corrosion problems present when glutaraldehyde is used alone (column 2, lines 3-10; column 5, lines 12-13). The acid is preferably phosphoric acid or other acids such as citric acid and sulphuric acid (column 3, lines 12-19). Other ingredients include isopropanol which assists in dissolving cationic compound (column 3, lines 20-22). The mixture has bactericidal activity, virucidal activity and fungicidal activity (column 5, lines 4-11).
Yin and Evans do not teach the pH of the buffer is 2.8-5. It is for this reason that Jerusik et al. is joined.
Jerusik et al. teach glutaraldehyde and 1,2-benzisothiazole-3-one formulations comprising a buffer, acetic acid and sodium acetate capable of providing pH of 2-7, preferably 3.2-4.8 (abstract; claims 1-3). The buffer lowers the pH without adversely affecting biocidal activity and include acetic acid, formic acid and suitable bases include sodium acetate (paragraphs 9 and 10; claim 4).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Yin, Evans and Jerusik et al. all teach glutaraldehyde biocidal compositions. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Yin, Evans and Jerusik et al. to include a phosphoric acid and isopropanol with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Yin, Evans and Jerusik et al. to include the solvent isopropanol because Evans teaches it aids in dissolving cationic compounds and one of ordinary skill would have also been motivated to add phosphoric acid because Evans teaches that glutaraldehyde is more stable in acidic solutions.
Furthermore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Yin, Evans and Jerusik et al. to include disodium phosphate with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Yin, Evans and Jerusik et al. to include the salt of the buffer because Yin et al. teach that the biocides are formulated in a salt solution and Evans teaches the additions of acids selected from phosphoric acid. Therefore, the salt solutions would interact with the acids to form the disodium phosphate salt.
It would have been prima facie obvious to one of ordinary skill to combine the teachings of Yin, Evans and Jerusik et al. to include acetic acid or sodium acetate and adjust to pH of 3.2-4.8 with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings of Yin, Evans and Jerusik et al. to include acetic acid and sodium acetate because Jerusik et al. teach that acetic acid and sodium acetate buffers are capable of adjusting the pH without adverse effects to biocidal activity. Furthermore, one of ordinary skill in the art would have also been motivated to adjust the pH to 3.2-4.8 with acetic acid and sodium acetate because Jerusik et al. teach glutaraldehyde formulations with acetic acid and sodium acetate are capable of providing pH of 3-7, preferably 3.2-4.8. and Evans et al. teach that glutaraldehyde is more stable in acidic solutions.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Applicant first argues that while Yin teaches synergistic biocidal effect between glutaraldehyde (GA) and THNM one skilled in the art would have recognized the combination is unstable with significant degradation and nothing in the art teaches how this problem is overcome by adding buffer having pH from 2.8-5. The Examiner is not persuaded by this argument because the claims are drawn to a composition and a method of inhibiting microbial growth not a method of improving stability. The discovery of a previously unappreciated property of a prior art composition, or a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Applicant further argues that Table 2 shows improve stability by inclusion of buffer to result in less than 10wt% loss of glutaraldehyde. The Examiner is not persuaded by this argument because the specification only shows specific examples wherein the target of less than 10wt% loss for each active at 40 degrees Celsius for 12 weeks is reached. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range and show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). However, presently compositions comprising the ingredients in the specific ratio of GA:THNM is 1:1 do not appear to have unexpected properties commensurate in scope the claims because Yin et al. teaches this specific ratio (Table 2, column 6, lines 35-55).
Applicant argues there is no motivation to combine the teachings of Yin, Jerusik and Evans. The Examiner is not persuaded by this argument because Yin, Jerusik and Evans are all drawn to making biocidal formulations comprising glutaraldehyde and are therefore from the same field of endeavor and reasonably pertinent to the problems faced by the inventors. Jerusik teaches that buffering glutaraldehyde by lowering the pH with acetic acid and sodium acetate does not adversely affecting biocidal activity of the active biocidal ingredients. (paragraphs 9 and 10; claim 4). Therefore, the properties of glutaraldehyde biocidal formulations was well known before the time of filing and one of ordinary skill would have been motivated to adjust the pH of the formulation to 2.8-5 to obtain desired pH with reasonable expectation of success because adding buffers to change pH is routine in the chemical arts.
Conclusion
No claims allowed.
THIS ACTION IS MADE FINAL. 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 DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached on Monday-Friday 9:00 am-5:30 pm.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617