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 .
Status of the Claims
This Office Action is in response to Applicant's Restriction Requirement remarks filed on December 19, 2025. Applicant's election of species of sodium myristyl sulfate (1st surfactant) and cocobetaine (2nd surfactant) without traverse of the restriction requirement in the reply is acknowledged. The requirement is deemed proper and is therefore made FINAL. Claim(s) 1-20 are examined herein insofar as they read on the elected invention and species.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 18/470,622. Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims are drawn to disinfecting composition comprising: 1. greater than 0.5 wt.% of a hypohalite ingredient, based upon the total weight of the disinfecting composition; and a surfactant blend, the surfactant blend comprising: a first surfactant having a first surfactant surface tension T¹; and a second surfactant having a second surfactant surface tension T², wherein the second surfactant has an average tail chain length that is different than the first surfactant, and wherein the second surfactant has a head group that is different than the first surfactant, and wherein the disinfecting composition has an overall surface tension T, wherein T is less than T¹, and wherein T is less than T². The copending claims are drawn to disinfecting composition comprising: 1. from greater than 0.5 wt.% to 1.5 wt.% of a hypohalite ingredient, based upon the total weight of the disinfecting composition; and a surfactant blend comprising a first surfactant and a second surfactant, wherein the second surfactant has an average tail chain length value that is different than the first surfactant, wherein the disinfecting composition exhibits at least a 6-log reduction in C. diff. within 2 minutes. The two inventions overlap greatly in scope. Limitations regarding surface tension and log reduction are considered properties inherent to the composition. "Products of identical chemical composition cannot have mutual exclusive properties." Any properties exhibited by or benefits from are not given any patentable weight over the prior art provided the composition is inherent. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the disclosed properties are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01. The burden is shifted to the applicant to show that the prior art product does not inherently possess the same properties as the instantly claimed product.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
Claims 1-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Encarnacion (US PG PUB 2019/0261632) of record (IDS 12/28/23, reference #72).
Encarnacion teaches a cleaning and disinfecting composition comprising about 11% by weight Sodium Hypochlorite, about 25% by weight Sodium Hydroxide; about 5% by weight Lithium Perchlorate; about 0.5% by weight stabilizer (claim 10), wherein the surfactant comprises sodium lauryl sulfate and cocamidopropyl betaine (claim 12).
Examiner notes that the limitations regarding surface tension are considered properties inherent in the disclosed active agent. "Products of identical chemical composition cannot have mutual exclusive properties." Any properties exhibited by or benefits from are not given any patentable weight over the prior art provided the composition is inherent. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the disclosed properties are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01. The burden is shifted to the applicant to show that the prior art product does not inherently possess the same properties as the instantly claimed product.
Thus, based on the foregoing reasons, the instant claims are deemed anticipated over the cited art.
Conclusion
Claims 1-20 are not allowed.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sahar Javanmard whose telephone number is (571)270-3280. The examiner can normally be reached on Monday-Friday, 9:00-5:00 EST.
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/SAHAR JAVANMARD/Primary Examiner, Art Unit 1627