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 Claims
Receipt of Remarks/Amendments filed on 04/08/2026 is acknowledged. Claims 1-3 and 5-6 are amended and claims 8-10 and 15 are canceled. Claims 4 and 16-20 remain withdrawn as being directed to a non-elected invention/species. Claims 1-3, 5-7, and 11-14 are examined on the merits herein.
Priority
The instant application filed 10/18/2023, claims benefit to U.S. Provisional Application No. 63/380,007, filed 10/18/2022.
Withdrawn Rejections
Claim 15 was rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s cancellation of claim 15 has rendered the rejection moot and the rejection is withdrawn.
Claims 1-3, 5-9, and 11-15 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vermeulen. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5-9, 11, and 13-15 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bobbert. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5-9, and 13-15 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Giuliani. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1-3 and 5-15 were rejected under 35 U.S.C. 103 as being unpatentable over Vermeulen in view of Foster. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5-11, and 13-15 were rejected under 35 U.S.C. 103 as being unpatentable over Bobbert as evidenced by SpecialChem. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
The following grounds of rejections are new as necessitated by amendment:
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-7, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Foster, S., et al. (WO 2019090105 A1, 05/09/2019, on record), hereinafter Foster, in view of Bobbert, I. (WO 2015091925 A1, 06/25/2015, IDS dated 03/05/2024), hereinafter Bobbert.
Foster discloses an antimicrobial composition comprising 3-phenylpropanol alone or in combination with an organic acid or salt thereof (abstract). Specifically, it has been found that 3-phenyl propanol is highly effective as an antimicrobial when combined with sodium benzoate ([0016]).
Regarding claim 1: Foster discloses antimicrobial compounds based on use of 3-phenyl propanol alone or in combination with other compounds having antimicrobial activity, in particular organic acids or salts thereof and/or alcohols ([0025]). Explicitly disclosed are antimicrobial composition comprising 3-phenyl propanol, which reads on the instantly claimed alkyl aryl alcohol microbial synergist, in combination with sodium benzoate, which reads on the instantly claimed carboxylic acid salt preservative, and benzyl alcohol ([0034]; [0038]; claim 12; table 1). Other organic acids (or salts thereof) are useful in combination with 3-pheny propanol including lactic acid ([0076]; claim 3). Amounts of 3-phenyl propanol useful to achieve antimicrobial effects when used in an end-use formulation range from 0.1 wt.% to 1 .99 wt.%, based upon the total weight of the components of the end use product ([0077]). The endpoint of 1.99 wt. % reads on about 2 wt. % as claimed, meaning one of ordinary skill in the art would readily envisage the claimed invention from the disclosure of Foster. See MPEP 2131.03. Amounts of sodium benzoate suitable for use in combination with 3-phenyl propanol range from 0.005 wt.% to 10 wt.%, based upon the total weight of the components of the end use product ([0080]). Ranges for other organic acids (or salts thereof) in combination with 3-phenyl propanol are expected to be the same or substantially close to the ranges for sodium benzoate ([0081]).
Regarding claims 6-7: The sodium benzoate of Foster reads on a salt of benzoic acid.
Regarding claim 13: The antimicrobial compositions of Foster may be in the form of concentrated antimicrobial blends diluted with a solvent, wherein the solvent is water, ethanol, propanol, isopropyl alcohol, propylene glycol, etc. ([0084]-[0085]; claims 21-22). A specific skin lotion formulation comprises water (table 1), which reads on the instantly claimed solvent.
Regarding claim 14: A specific skin lotion formulation comprises glycerin as a humectant, xanthan gum as a rheology modifier (aka. a thickener), and mineral oil and petrolatum as emollients (table 1).
The teachings of Foster differ from that of the instantly claimed invention in that Foster does not explicitly teach a specific embodiment comprising the carboxylic acid of claims 1 and 3, nor does Foster explicitly teach the instantly claimed concentrations of the organic acid and preservative, as defined in claim 1. Foster also fails to explicitly teach a specific embodiment comprising an additional organic acid or preservative as recited in claims 2 and 5.
Bobbert discloses an antimicrobial disinfecting composition comprising 0.1 to 1 wt. % of a food allowed organic acid or salt thereof (abstract; claim 1), specifically lactic acid (claim 7), which reads on the carboxylic acid of claims 1 and 3. Lactic acid is frequently used in cleaning compositions. However, high concentrations of organic acids in antibacterial compositions results in hazard warnings and safety sentences under European CLP (p. 2, lines 24-33). Accordingly, exceeding a threshold of 1% of organic acid will lead to a hazard classification and use precaution under CLP (p. 3, lines 10-12). Formulation 7 comprises lactic acid, sodium benzoate, and phenoxyethanol (table 1). Lactic acid is present at 0.95% w/w, which falls within the instantly claimed range for the organic acid in claim 1 (i.e., 0.5-1.5 wt.%) (table 1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add lactic acid to the antimicrobial composition of Foster since lactic acid is a known and routine antimicrobial organic acid in the art as taught by Bobbert. One of ordinary skill in the art could have added lactic acid, as taught by both Foster and Bobbert, into the antimicrobial composition of Foster which already comprises 3-phenyl propanol and sodium benzoate, according to known methods to predictably yield a composition comprising the carboxylic acid of claims 1 and 3. Furthermore, both Foster and Bobbert teach antimicrobial compositions comprising organic acids and an alkyl aryl alcohols. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Further regarding the amount of 3-phenyl propanol (i.e., alkyl aryl alcohol), Foster teaches a range of 0.1 wt.% to 1.99 wt.%, which as established above, teaches an amount of about 2 wt. % as recited in claim 1. In addition, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05.
Regarding the amount of the lactic acid (i.e., carboxylic acid) and sodium benzoate (i.e., carboxylic acid salt), Foster teaches 0.005 wt.% to 10 wt.% of sodium benzoate, based upon the total weight of the components of the end use product, and a similar range for any additional organic acids. Such a range encompasses the amounts of the instantly claimed carboxylic acid (i.e., 0.5-1.5%) and carboxylic acid salt (i.e., 1-1.5%), as defined in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Furthermore, Bobbert teaches an amount of 0.95% w/w of lactic acid when used in an antimicrobial composition also comprising sodium benzoate and an alkyl aryl alcohol. It would have been prima facie obvious to one of ordinary skill in the art to include lactic acid at an amount of 0.95% w/w in the combined composition, since such an amount is known and effective in similar antimicrobial compositions to that of Foster. Additionally, one of ordinary skill in the art would have been motivated to adapt this specific amount, within the broader range of Foster since Bobbert teaches that high concentrations of organic acids in antibacterial compositions can result in hazard warnings and safety sentences, as such amounts below 1% are desired for lactic acid. An amount of 0.95 % w/w of lactic acid falls within the instantly claimed range of a carboxylic acid (i.e., 0.5-1.5%), as recited in claim 1.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Foster welcomes the addition of other organic acids such as lactic acid and Bobbert teaches that lactic acid, sodium benzoate, and alkyl aryl alcohols may be used in combination.
Regarding claims 2 and 5, it is discussed above the Foster teaches other organic acids (or salts thereof) and alcohols as useful in combination with 3-phenol propanol. Exemplary non-limiting organic acids (and salts thereof) include: benzoic acid, dehydroacetic acid, acetic acid, citric acid, formic acid, propionic acid, fumaric acid, sorbic acid, lactic acid, sodium benzoate, potassium benzoate, potassium sorbate, sodium sorbate, sodium citrate, or sodium lactate, or mixtures thereof, all of which read on the carboxylic acid or carboxylic acid salts of claims 2 and 5. Exemplary non-limiting alcohols include: phenyl ethanol or phenoxyethanol ([0076]; claim 3), both of which read on the phenolic compounds of claim 5. As such, it would have been prima facie obvious to one of ordinary skill in the art to add in an additional carboxylic acid, carboxylic acid salt, or phenolic compound to the combined composition above since these ingredients are known and routine compounds in combination with 3-phenol propanol as taught by Foster. One of ordinary skill in the art could have incorporated any one of these compounds into the antimicrobial composition according to known methods to yield predictable results.
As such, the prior art teaches all the components of the composition as claimed with amounts within or overlapping the instantly claimed ranges. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Regarding the recitation of “hand wash”, such language is classified as intended use. In the instant case, the combined composition of Foster and Bobbert is capable of functioning as a hand wash whether or not it is explicitly taught.
Claims 1-3, 5-7, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Foster and Bobbert as applied to claims 1-3, 5-7, and 13-14 above, and further in view of Vermeulen, Y., et al. (US 20160081897 A1, 03/24/2016, IDS dated 03/05/2024), hereinafter Vermeulen.
The combined teachings of Foster and Bobbert are discussed above.
The combined teachings of Foster and Bobbert differ from that of the instantly claimed invention in that they do not explicitly teach the surfactants of claims 11 and 12.
Vermeulen discloses an antibacterial cleansing composition comprising lactic acid (abstract). Example 1 of Vermeulen discloses composition A which comprises lactic acid, sodium benzoate, and phenoxyethanol (p. 4, Ex. 1). Composition A comprises sodium cumenesulfonate, sodium laureth sulfate, and cocamidopropyl betaine, all of which are examples of anionic or amphoteric surfactants as defined in claim 11, as evidenced by Vermeulen ([0017]) and the instant specification ([0086]; [0092]; [0114]). The sodium cumenesulfonate and sodium laureth sulfate read on the sulfate and sulfonate of (i) in claim 12, while the cocamidopropyl betaine reads on the CAPB of (iii) in claim 12. Together, these surfactants read on (iv) a combination thereof, as defined in claim 12.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add the surfactants of Vermeulen into the combined composition of Foster and Bobbert, since such surfactants are known and routine in the art as taught by Vermeulen. One of ordinary skill in the art could have added the surfactants of Vermeulen according to known methods to predictably yield the instant invention of claims 11 and 12. As such, the prior art teaches all the components of the composition as claimed. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in adding the surfactants of Vermeulen into the combined composition of Foster and Bobbert since Vermeulen teaches antimicrobial compositions comprising organic acids (or salts thereof) in combination with sodium benzoate and alky aryl alcohols.
Response to Arguments
Applicant's arguments filed 04/08/2026 have been fully considered but they are not persuasive:
Applicant argues that Vermeulen in view of Foster and Bobbert alone fail to disclose the claimed concentrations and components that result in superior efficacy (p. 9-11 of Remarks). However, as discussed above in the newly applied rejections, Foster teaches an amount of phenyl propanol that reads on the instantly claimed amount, as well as amounts of the organic acids and their salts which encompass the instantly claimed ranges. Bobbert teaches an amount of lactic acid which falls within the instantly claimed range of the carboxylic acid.
Applicant also argues the claimed composition demonstrates superior antimicrobial efficacy, pointing to Example 4, Table 9, and Figures 1-2 of the instant specification. Applicant argues that these results demonstrate a synergistic interaction between the preservative, organic acid, and microbial synergist leading to unexpected and superior antimicrobial efficacy (p. 13 of Remarks). In response to this argument, Figures 1 and 2 do not indicate significant synergism in the base formulation comprising the preservative, organic acid, and microbial synergist combination as compared to these elements alone. Generally, to claim “synergy” a greater than additive effect must be observed. See MPEP 716.02(a). In the instant case it does not appear that the base formula results in a greater than additive effect nor does the base formulation seem significantly better than the 1% benzoate alone. Even if this evidence was convincing, the primary reference Foster, discloses a known synergy between phenyl propanols and organic acids and their salts. As such, an observed synergy in the instantly claimed composition would not be “unexpected”.
Conclusion
No claims 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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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, Sue X Liu can be reached at (571)272-5539. 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.
/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
Prosecution Insights