DETAILED ACTION
RESPONSE TO AMENDMENT
1. Receipt of Applicants’ amendments/remarks filed 3/26/2026 are acknowledged.
INFORMATION DISCLOSURE STATEMENT
2. No new Information Disclosure Statement has been submitted for review.
WITHDRAWN REJECTIONS
3. Rejections not reiterated from previous Office Actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections- 35 USC § 112
4. 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.
Claims 11, 13 and 14 are 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 11 recites that the composition is configured to adhere directly to living tissue of invasive coral and it is not clear if there is something additionally done to the composition such that it would be considered to be configured.
Claim 13 recites (sun coral) and the parenthesis renders the claim indefinite because it is not clear if the limitations are part of the claim or not. It is suggested to remove (sun coral).
Claim 14 depends from claim 1 with regards to the density control additive, claim 1 recites in terms of w/v and claim 14 recites in terms of w/w and thus it is not clear what units are meant to be for claim 14 as it is inconsistent with claim 1.
5. 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.
Claims 9-10 are 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. Claims 9 and 10 recite when applied to invasive corals and does not further limit the structure of the composition of claim 1. As such the claims are not further limiting. 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
6. 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 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Uss et al. (US Patent 11685794) in view of Sun et al. (US 20180209069).
Uss et al. (US Patent 11685794) (hereinafter Uss et al.) disclose sodium alginate gels that contain sodium chloride, sodium alginate and sodium hypochlorite (clam 1). The viscosity ranges from 5-1500 cP which overlaps with the viscosity as recited in claim 12 (claim 6 ).
Uss et al. does not disclose cross-linking agent comprising calcium chloride from 0.2 g/mL to 0.8 g/mL. Sun et al. (US 20180209069) (hereinafter Sun et al.) disclose aqueous alginate solution with contact with cross-linking solution causes gelation and cross-linking time is a function of the alginate and calcium chloride concentration. The concentration can be from 0.2 g/mL to 1 g/mL calcium chloride (para 0066). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include the cross linking agent calcium chloride as the cross-linker in the composition of Uss et al. One would have been motivated to do so because it causes gelation. With regards to the fact that the biocidal composition remains intact when submerged in water, this is a property of the composition and since the structural features of the claim are met by the combined teachings of Uss et al. and Sun et al., the properties would necessarily follow. Claim 11 recites that the composition is configured to adhere directly to living tissue of the invasive coral and thus is a property of the composition and since the structural features of the claim have been met, the property would necessarily follow.
With regards to the limitation “wherein the biocidal composition is configured to be applied to invasive corals” and the coral comprises Tubastrea, this recitation is an intended use of the composition and does not impart any additional structure to the claim. A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Additionally, claims 9-10 are future intended use of the composition and does not add additional structure to the composition.
CONCLUSION
7. 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.
RESPONSE TO ARGUMENTS
8. Applicants’ arguments have been fully considered and are not persuasive for the reasons below.
Applicants argue that the references do not teach wherein the biocidal composition remains intact when submerged in water, however this is a property of the composition that occurs when the composition is applied to water and since the prior art meets all the structural features as claimed the properties would necessarily follow.
Applicants argue there is no disclosure in the Uss-Sun combination that the application is to invasive corals however, Applicants are arguing intended use of the composition and the prior art need not recognize the same intended use of the composition. The intended use of the composition does not impose a structural limitation to the claim. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
CORRESPONDENCE
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danah Al-Awadi whose telephone number is (571) 270-7668. The examiner can normally be reached on 9:00 am - 6:00 pm; M-F (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Danah Al-Awadi/
Primary Examiner, Art Unit 1615
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