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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 05/11/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
The application is examined in view of sodium lauryl sulfate as anionic surfactant, dialkyl quaternary ammonium salt as specific quaternary ammonium compound. Claims 1, 3, 5, 9-15, 17-20 read on the elected species and are under examination; claims 4, 6-8 and 16 do not read on the elected species and are withdrawn from consideration.
Claims 1 and 3-20 are pending, claims 1, 3, 5, 9-15, 17-20 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/31/2026 and 07/01/2026 is being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 05/11/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent 10426162, 11044907 and 11406103 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1, 3, 5, 9-15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brueckner et al. (US20100062965).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Brueckner et al. teaches A cleaning agent for hard surfaces, which is made of a combination of at least one alkyl pyrrolidone, at least one glycol ether, and at least one anionic surfactant, exhibits very good cleaning power and cleaning speed for dirt of different kinds and can be utilized particularly for cleaning glass (abstract). The preparation according to the invention furthermore contains at least one anionic surfactant. Particularly preferred anionic surfactants are sodium lauryl sulfate and sodium lauryl ether sulfate with 2 EO. The preparation according to the invention contains anionic surfactants preferably in quantities of 0.01 to 30 wt. %, in particular of 0.1 to 1 wt. %. ([0017, 0022]). In addition to the above-stated ingredients, the preparation according to the invention may contain further auxiliary substances and additives. These include in particular further agents for modifying or hydrophilizing surfaces, polymers, pH adjusting agents, acids, bases, further solvents, further surfactants, preservatives, corrosion inhibitors, dyes, fragrances, bleaching agents, enzymes, thickeners, disinfectants, electrolyte salts, antimicrobial active ingredients, UV stabilizers and mixtures thereof ([0026]). In addition to the previously stated surfactants, the preparation according to the invention may furthermore also contain cationic surfactants and/or amphoteric surfactants ([0041]). Suitable cationic surfactants are inter alia the quaternary ammonium compounds of the formula (Rvi)(Rvii)(Rviii)(Rix)N+ X−, in which Rvi to Rix denote four identical or different, in particular two long-chain and two short-chain, alkyl residues and X− denotes an anion, in particular a halide ion, for example didecyldimethylammonium chloride, alkylbenzyldidecylammonium chloride and mixtures thereof. The preparations contain cationic surfactants in quantities, relative to the composition, of 0 to 10 wt. %. ([0043]). The pH value of the preparations according to the invention may be varied over a wide range, but a range from 2.5 to 12 is preferred. Glass cleaner formulations and multipurpose cleaners here in particular have a pH value of 6 to 11, extremely preferably of 7 to 10.5 while bathroom cleaners in particular have a pH value of 2 to 5, extremely preferably of 2.5 to 4.0 ([0054]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Brueckner et al. is that Brueckner et al. does not teach all limitation in one embodiment.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1, 3,5, 9-11, 14-15, 17-20, Brueckner et al. teaches a cleaner composition comprising sodium lauryl sulfate at 0.01 to 30 wt. %, didecyldimethylammonium chloride at 0 to 10 wt. % and other ingredients such as antimicrobial active and fragrances at pH 2.5-12. “For inactivating a surface active and/or antimicrobial” is intended use, not limiting. Furthermore, the clearer composition is expected to be able of inactivating a surface active and/or as antimicrobial.
Regarding the limitation of “instructions for determining and or providing a molar ratio of anionic surfactant to a quaternary ammonium compound”, it is basic chemistry knowledge to calculate the molar ratio of two components with known percentage in a composition, this, it is within skill of one artisan in the art to determine a molar ratio of anionic surfactant to a quaternary ammonium compound. Furthermore, instructions (as printed insert according to applicant’s specification) are mot limiting, Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004). "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969).
Regarding the mol ratio of anionic surfactant to quaternary ammonium salt in claim 1 and 12-13, Brueckner et al. teaches sodium lauryl sulfate (MW 288.372) at 0.01 to 30 wt. %, didecyldimethylammonium chloride (MW 362.08) at 0 to 10 wt. %. For a composition of 1000g, when the sodium lauryl sulfate 1.44% and didecyldimethylammonium chloride is 3.62%, the molar ratio of sodium lauryl sulfate to didecyldimethylammonium chloride is (1.44%x1000)/288 to (3.62%x1000)/362 = about 1:2, inside of claimed range of claims 1 and 13; when the sodium lauryl sulfate 0.576% and didecyldimethylammonium chloride is 3.62%, the molar ratio of sodium lauryl sulfate to didecyldimethylammonium chloride is (0.576%x1000)/288 to (3.62%x1000)/362 = about 1:5, inside of claimed range of claims 1 and 12; therefore, prior art teaches a range that overlap or lie inside claimed range. MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding the limitation of “wherein the molar ratio controls the degree of inactivation of the quaternary ammonium compound”, this is regarded as inherency of prior art composition. MPEP 2112 I, "[T]he discovery of a previously unappreciated property of a prior art composition, or of 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). MPEP 2112.01, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to argument:
Applicants argue that prior art does not teaches kit as well as molar ratio and all related arguments are incorporated herein by reference.
In response to arguments: this is not persuasive. As discussed in the above 103 rejection, prior art teaches each limitation of applicant’s claimed invention, either expressly or inherently. Brueckner et al. teaches a cleaner composition comprising sodium lauryl sulfate at 0.01 to 30 wt. %, didecyldimethylammonium chloride at 0 to 10 wt. % and other ingredients such as antimicrobial active and fragrances at pH 2.5-12. “For inactivating a surface active and/or antimicrobial” is intended use, not limiting. Furthermore, the clearer composition is expected to be able of inactivating a surface active and/or as antimicrobial. The limitation of instruction, molar ratio and “wherein the molar ratio controls the degree of inactivation of the quaternary ammonium compound” have been fully addressed, and there is no optimization to establish the obvious rejection because MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Therefore, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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, 5, 9-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12091641 in view of Brueckner et al. (US20100062965). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches antimicrobial composition comprising quaternary ammonium salt (dioctyl dimethyl ammonium chloride in claim 8) and anionic surfactant (sodium lauryl sulfate in claim 5), in view of Brueckner et al. teaching range of quaternary ammonium salt (dioctyl dimethyl ammonium chloride) and anionic surfactant (sodium lauryl sulfate) as well as molar ratio, it is obvious for one of ordinary skill in the art to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1, 3, 5, 9-15, 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18805875 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent application teaches antimicrobial composition comprising quaternary ammonium salt (dioctyl dimethyl ammonium chloride in claim 13) and anionic surfactant (sodium lauryl sulfate in claim 11).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Argument:
Applicants argue that 641’ does not teach applicant’s invention.
In response to this argument: this is not persuasive. As discussed in the above double patenting rejection, in view of Brueckner et al. teaching range of quaternary ammonium salt (dioctyl dimethyl ammonium chloride) and anionic surfactant (sodium lauryl sulfate) as well as molar ratio, it is obvious for one of ordinary skill in the art to produce applicant’s claimed invention with reasonable expectation of success.
Conclusion
No claim is allowed.
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 JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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