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
Claims 1-19 are pending in the present application. Acknowledgment is made of Applicant’s amendments filed on May 01, 2026.
Election/Restrictions
Applicant's election with traverse of a composition comprising:
ethanol;
Bis-PEG/PPG-20/20 dimethicone;
a combination of triethyl citrate, potassium laureth-4-carboxylate, and triheptanoin;
in the reply filed on May 01, 2026 is acknowledged. The traversal is on the ground(s) that the examiner has. This is not found persuasive because the electionfiled March 13, 2026 specified that “Applicant is required to elect a single disclosed formulation by electing every single component present” (p. 5) and thus is drawn to the election of a species of the generic composition recited in claim 1. The election of a specific composition is made by electing each individual component that makes said composition.
The requirement is still deemed proper and is therefore made FINAL.
In view of the cited art, examination has been expanded to include compositions wherein the silicone surfactant is PEG/PPG-18/18 dimethicone.
Claims 10-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 01, 2026.
Priority
This application claims foreign priority to DE102022134202.6, filed December 20, 2022.
Claim Objections
Claim 1, 6, 9, 17 are objected to because of the following informalities:
Claim 1 is missing a space between in the phrase “isododecane,and” which should read be written “isododecane, and”. Claim 1 is also missing a space in the phrase “triheptanoin,and” which should read “triheptanoin, and”.
Claim 6 contains extra commas “,” before the terms “of alcohol”. The phrase “contains 75% by weight to 90% by weight of alcohol, based on…” should read “contains 75% by weight to 90% by weight of alcohol based on…”.
Claim contains extra commas “,” before and after the “of silicone surfactant.” The phrase “contains 0.1% by weight to 5% by weight, of silicone surfactant, based on…” should read “contains 0.1% by weight to 5% by weight of silicone surfactant based on…”.
Claim contains extra commas “,” before and after the “of silicone surfactant.” The phrase “contains 0.5% to 2% by weight, of silicone surfactant” should read “contains 0.1% to 2% by weight of silicone surfactant”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
Claim 12 recites the use of a disinfectant of according to claim 1 for hand disinfection. However, this is not a specific utility, as it is unclear whether these claims are drawn to a method for hand disinfection comprising using the disinfectant of claim 1 or to the disinfectant of claim 1 for use in hand disinfection. Thus, the claimed invention is not supported by a specific utility.
Claim Rejections - 35 USC § 112
112(a) – Utility
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 12 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 is directed to the use of a disinfectant of according to claim 1 for hand disinfection. It is unclear whether the claims are intending to encompass a product (i.e. a
disinfectant according to claim 1 for use in hand disinfection) or method of utilizing the claimed product (i.e. a method of using a disinfectant according to claim 1 for hand disinfection).
For the purposes of applying prior art, claim 12 will be construed as a method claim: i.e., a method of using a disinfectant according to claim 1 for hand disinfection.
112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites the disinfectant as claimed in claim 2, wherein the at least three foam stabilizers are selected from the group consisting of:
trialkyl citrate,
potassium laureth-4 carboxylate or sodium laureth-5 carboxylate,
a mixture of neopentyl glycol diheptanoate, and
triheptanoin.
Claim 4 recites the disinfectant as claimed in claim 2, wherein the disinfectant contains one or more foam stabilizers in amounts of:
0.1% to 1% by weight of trialkyl citrate,
0.1% to 1% by weight of alkali metal laureth carboxylate,
0.1% to 1% by weight of a mixture of neopentyl glycol diheptanoate and isodecane, or
0.1% to 1% by weight of triheptanoin.
The “one or more” stabilizers of claim 4 fails to include all the limitations of claim 2, upon which it depends. Claim 4 may include one stabilizer or two stabilizers, which would not read on the at least three stabilizers required in claim 2. Furthermore, the “alkali metal laureth carboxylate” of item ii. of claim 4 is broader than the “potassium laureth-4 carboxylate or sodium laureth-5 carboxylate” of corresponding item ii. of claim 2, and thus fails to further limit the limitations of claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 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.
Claims 1, 5-9, 12-14, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Asmus (US 2006/0281663) in view of Mathur et al. (US 2016/0120803 A1).
Asmus teaches a foaming alcohol composition comprising 63.77% SDA-3-C, 1.00% Dow 190, 3.00% triethyl citrate, and water (p. 13, Table 12, Example 112; see para. [0079] for composition breakdown). SDA-3-C is a mixture of 100 parts ethanol to 5 parts isopropyl alcohol (p. 9, Table 3 footnote). Dow 190 is the surfactant, PEG/PPG-18/18 dimethicone (p. 7, Table 1, row 3). Asmus teaches the type and amount of emollient was varied [0079]. Asmus teaches compositions of the invention may comprise compositions having an alcohol content between about 35% and about 99.5% by weight, or between about 60% to about 80%, noting compositions with alcohol contents within these ranges typically provide efficacious bacterial kill (para. [0027]). Asmus also teaches a hand scrub comprising a composition of the invention (claim 35), as well as a method of sanitizing human skin comprising applying a composition in stable foam form (claim 37).
Asmus does not teach the use of triheptanoin or alkyl ether carboxylate.
Mathur teaches a liquid composition suitable for topical administration and for use with a non-aerosol pump, wherein actuation of the pump produces a foam, comprising about 1% to about 8% (w/w) foam booster; about 0.4% to about 5% (w/w) foaming agent; and (c) about 20% to about 98% (w/w) solubilizer (claim 1). Mathur teaches the composition can further comprise 0.5% to 5% (w/w) emollient (claim 14). Mathur teaches the foaming agent can be sodium trideceth-4 carboxylate (claim 12, p. 11, right, line 15), the solubilizer can be ethanol or glycerine (claim 13), and the emollient can be one or a combination of bis-PEG/PPG-20/20 dimethicone (claim 21, p. 12, left, line 22), neopentyl glycol diheptanoate (claim 21, p. 13, left, line 7), isododecane (claim 21, p. 13, right, line 19), and triheptanoin (claim 21, p. 13, right, line 32). Mathur also teaches liquid foams are widely used as disinfectants (para. [0001]), and in particular as hand soaps and sanitizers (para [0002], lines 6-8).
Regarding claims 1, 5, 7-9, 14, and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to make a foaming disinfectant comprising: ethanol, DOW 190 (bis-PEG/PPG-18/18 dimethicone), triethyl citrate, and sodium trideceth-4 carboxylate, triheptanoin, and water.
One would have been motivated and had a reasonable expectation of success to do so because Asmus teaches a foaming composition comprising at least one monohydric alcohol (ethanol and isopropyl alcohol), at least one silicone surfactant (PEG/PPG-18/18 dimethicone) at 1% by weight based on the total weight of the composition, and triethyl citrate, and because Mathur teaches suitable emollients for a similar foaming composition include an alkyl ether carboxylate (sodium trideceth-4 carboxylate), a silicone surfactant, and triheptanoin. Although the prior art does not teach triethyl citrate, an alkyl ether carboxylate, or triheptanoin as foam stabilizers, their use as such reads on foam stabilizers recited in claim 1. A chemical composition and its properties are inseparable.
Moreover, Asmus teaches suitable surfactants include dimethicone surfactants with varying PEG lengths (e.g. PEG/PPG-4/12 Dimethicone, PEG/PPG-35/65 dimethicone, and PEG/PPG-18/18 (Table 1). Asmus does not explicitly teach the use of the elected, PEG/PPG-20/20. However, Mathur teaches the use of dimethicones as an emollient [0046] and teaches dimethicones with varying PEG lengths are useful as emollients, e.g. Dimethicone PEG/PPG-20/23 Benzoate, Dimethicone PEG-8 Benzoate, Dipropylene Glycol Dibenzoate, PPG-15 Stearyl Ether Benzoate, Bis-PEG/PPG-20/20 dimethicone, Stearoxy Dimethicone, Behenoxy Dimethicone, Stearyl Dimethicone, Cetyl Dimethicone, Cerotyl Dimethicone, PEG-8 Dimethicone, PEG-9 Dimethicone, PEG-14 Dimethicone, PEG-12 Dimethicone/PPG-20 Crosspolymer. PEG/PPG-18/18 differs from the elected Bis-PEG/PPG-20/20 in that the PEG/PPG length is 18 vs 20. Thus, these are structurally similar agents. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute one functional equivalence (any dimethicone) for another (Bis-PEG/PPG-20/20) with an expectation of success, since these agents are both structurally similar dimethicone agents suitable as excipients in foaming skin cleansing compositions.
Regarding claims 6 and 16, it would have been prima facie obvious to one of ordinary skill in the art to utilize the alcohol content taught by Asmus as a starting point for optimizing the alcohol content for efficacious bacterial kill because alcohol content is a result-effective variable, i.e. a variable that achieves a recognized result. Therefore, the determination of the optimum or workable alcohol contents would have been well within the practice of routine experimentation by the skilled artisan. Furthermore, absent any evidence demonstrating a patentable difference between the compositions and the criticality of the claimed dosage range, the determination of the optimum or workable alcohol content given the guidance of the prior art would have been generally prima facie obvious to the skilled artisan. Please see MPEP 2144.05 [R-2](II)(A) and In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). ("[W]here the general conditions of claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
Regarding claim 12, it would have been prima facie obvious to use the foaming composition taught by Asmus for hand disinfection since Asmus teaches a method of disinfecting human skin using their compositions and also teaches their compositions can be used in hand scrubs.
Regarding claim 13, it would have been prima facie obvious to make a foaming composition taught by Asmus for use in hand disinfection since Asmus teaches their compositions can be used in hand scrubs and to disinfect human skin.
Taken together, all this would result in the invention of claims 1, 5-9, 12-14, and 16-17 with a reasonable expectation of success.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Asmus in view of Mathur as applied to claims 1, 5-9, 12-14, and 16-17 above, and further in view of Habe (JP 2013241359 A; translated using Espacenet Patent Translate tool), as evidenced by PubChem SID 472401544 Lion Specialty Chemicals.
The teachings of Asmus and Mathur are set forth above. The cited references do not explicitly teach the use of potassium laureth-4 carboxylate.
Habe teaches a foamable aerosol composition comprising an anionic surfactant, a cationic component, and an aqueous stock solution (claim 1). Habe teaches the anionic surfactant can be POE (polyoxyethylene) potassium lauryl ether acetate (p. 3, para. 8, line 6), POE sodium lauryl ether acetate (p. 3, para. 8, line 6), or POE tridecyl ether acetate (p. 3, para. 8, line 7). Habe teaches the aerosol composition is preferably used as a skin care product (p. 9, para. 1, line 1).
As evidenced by Lion Specialty Chemicals, polyoxyethylene lauryl ether sodium acetate is also known as sodium laureth-4 carboxylate (p. 1, table “Alaninate and ether carboxylic acid”, row 2). Thus, polyoxyethylene potassium lauryl ether acetate would be known as potassium laureth-4 carboxylate.
As evidenced by PubChem SID 472401544, sodium trideceth-4 carboxylate is also known as sodium polyoxyethylene tridecyl ether acetate (p. 3, section 2.4).
Regarding claims 2-3, since Asmus and Mathur suggest a foaming sanitizer composition comprising at least one monohydric alcohol (ethanol and isopropyl alcohol), at least one silicone surfactant (PEG/PPG-18/18 dimethicone), triethyl citrate, sodium trideceth-4 carboxylate and triheptanoin, and since Habe teaches sodium trideceth-4 carboxylate and potassium laureth-4 carboxylate are alternatively useful as anionic surfactants in foaming compositions preferably used as skin care products, at the time of the invention it would have been prima facie obvious for a person of ordinary skill in the art to substitute one functional equivalence (any anionic surfactant) for another (potassium laureth-4 carboxylate) with an expectation of success, since the prior art establishes that both function in similar manner, thus resulting in the practice of claims 2-3, with a reasonable expectation of success.
Regarding claim 4, it would be obvious to utilize the concentration of triethyl citrate taught by Asmus as a starting point for optimizing the concentration for foam height because concentration of triethyl citrate is a result-effective variable, i.e. a variable that achieves a recognized result. Therefore, the determination of the optimum or workable alcohol contents would have been well within the practice of routine experimentation by the skilled artisan. Furthermore, absent any evidence demonstrating a patentable difference between the compositions and the criticality of the claimed dosage range, the determination of the optimum or workable dosing regimen given the guidance of the prior art would have been generally prima facie obvious to the skilled artisan. Likewise, it would be obvious to utilize the concentration of triheptanoin taught by Mathur as a starting point for optimizing the concentration of triheptanoin as an emollient because concentration is a result-effective variable. Finally, it would be obvious to utilize the concentration of sodium trideceth-4 carboxylate taught by Mathur as a starting point for optimizing the concentration of potassium laureth-4 carboxylate as an emollient because Habe teaches sodium trideceth-4 carboxylate and potassium laureth-4 carboxylate are alternatively useful as anionic surfactants and because concentration is a result-effective variable.
Taken together, all this would result in the invention of claims 2-4 with a reasonable expectation of success.
Conclusion
Claims 1-9, 12-14, and 16-17 are rejected.
Claims 1, 6, 9, and 17 are objected to.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVER D. HEES whose telephone number is (571)272-9840. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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/O.D.H./Examiner, Art Unit 1628
/Rayna Rodriguez/Primary Examiner, Art Unit 1628
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