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
Pursuant to the amendment dated 07/23/2026, claims 3-7, 9, and 10 have been cancelled and new claims 11 and 12 has been added.
Claims 1, 2, 11 and 12 are pending and under current examination.
All rejections/objections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, 11, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
This is a new matter rejection. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims have been amended to replace the trademark/tradename “84-disinfectant” directly with “sodium hypochlorite solution”; however, the breadth in scope of “sodium hypochlorite solution” is not supported by the specific product “84-disinfectant”, which one publication indicates is a specific solution typically containing from 5.5 – 6.5% chlorine, and the remainder, unidentified substances (See Grand: “What is Chinese 84 Disinfectant, published 10/10/2020). The original application, as filed, does not disclose adding any sodium hypochlorite solution, only the specific product 84-disinfectant purchased from Shandong Lanving Chemical Technology Co. Accordingly, the amendment is treated as new matter under 35 USC 112(a).
The examiner acknowledges this amendment was introduced to overcome the indefiniteness rejection over the term “84-disinfectant” as a trademark/tradename. If Applicant feels an interview would be helpful to discuss the new matter rejection, Applicant is invited to contact the examiner at their convenience.
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, 2, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dautreuil et al. (US20170280728; publication date: 10/05/2017) in view of Davies et al (US2987435; issue date: 06/06/1961) and further in view of Sharma et al (US20190350200; publication date: 11/21/2019; of record).
With regard to claims 1 and 2, Dautreuil discloses an antimicrobial composition comprising a hypochlorite salt and a copper(II) salt (abstract). An example composition contains copper (II) sulfate pentahydrate and sodium hypochlorite (0043, 0054). The combination of ingredients results in synergistic antimicrobial effect (0047).
Dautreuil does not disclose including dodecyl dimethyl benzyl ammonium bromide in the composition.
Davies teaches that hypochlorite solution in combination with quaternary ammonium salts show antimicrobial synergy (col 1, lines 27-32; col 2, lines 31-4). Specifically, Davies teaches a synergistic example comprising benzyl dimethyl alkylammonium chloride and sodium hypochlorite aqueous solution (example 1). Davies teaches that the hypochlorite solution may be aqueous solutions of sodium hypochlorite and that commercial hypochlorite bleaching solutions are suitable (col 1, lines 45-50).
It would have been prima facie obvious to combine Dautreuil’s antimicrobial composition containing copper(II)sulfate pentahydrate and sodium hypochlorite with one of the quaternary ammonium compounds taught by Davies. The skilled artisan would have been motivated to do so to further enhance antimicrobial potency such that even lower amounts of each agent could be employed and had reasonable expectation of success because combinations of two of the actives had been demonstrated in the art to show synergistic germicidal benefit.
With regard to the limitation requiring “dodecyl dimethyl benzyl ammonium bromide”, as noted above, Davies discloses benzyl dimethyl alkylammonium chloride in an example composition. Davies teaches that any quaternary ammonium salt having substantial germicidal activity can be used including various bromide salts; however, Davies does not teach the bromide salt of dodecyl dimethyl benzyl ammonium cation. Sharma teaches that dodecyl dimethyl benzyl ammonium bromide was a quaternary ammonium salt known to have antimicrobial properties as of the instant effective filing date (0003). It would have been prima facie obvious to use dodecyl dimethyl benzyl ammonium bromide as the quaternary ammonium salt in Davies’ invention because it was known to serve the purpose as of the instant effective filing date (see MPEP 2144.06).
With regard to the amount of each active agent in the composition, both prior art references teach synergy between copper and either sodium hypochlorite or an antimicrobial quaternary ammonium salt and teach methods to assess germicidal efficacy. It would have been merely a matter of routine to determine optimal working concentrations of each active to arrive at a synergistic combination of the three antimicrobial ingredients. Moreover, Davies teaches formation of concentrated solutions that can be diluted prior to use (paragraph bridging col 1-2). It would have been obvious to concentrate the solution for convenience during storage and handling. For these reasons, the examiner does not consider the limitations on amounts of ingredients in the claimed composition to patentably define over the cited prior art. See MPEP 2144.05(II)(A): Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1, 11, and 12 specify the steps used to form the claimed product and therefore claim the invention in terms of product by process language. MPEP §2113(I) states: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). In the instant case, it would have been obvious to combine Dautreuil’s solution containing copper sulfate and sodium hypochlorite with the quaternary ammonium compound dodecyl dimethyl benzyl ammonium bromide as laid out in the rejection. The record at this juncture does not establish a patentably distinct difference between the claimed invention and the prior apart product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113), and as such the claims are considered prima facie obvious.
Response to Arguments
Applicant's arguments filed 07/23/2026 have been fully considered but they are not persuasive.
On page 5, Applicant argues D1 [Dautreuil] is directed to food industry applications and does not disclose application to plants. Applicant argues D2 [Davies] is drawn to textile disinfection not plant treatment, and D3 [Sharma] and D4 [Wang; no longer cited] disclose individual biocidal components but no plant pathogen application. Applicant argues that there is no motivation to combine D1-4 to arrive at a rice bactericidal composition.
Applicant is reminded that the claims are directed to a composition, and that the intended use recited in the preamble is limiting only insomuch as the product rendered obvious by the prior art must be compatible with the recited use (see MPEP 2111.02). Applicant has not demonstrated that the prior art is incompatible with use in agriculture. Moreover, the disclosed antimicrobials have broad efficacy and one of ordinary skill would have expected them to be effective against microbes in many settings, including agriculture.
Insomuch as Applicant may be arguing that the cited prior art is non-analogous; the examiner points out that the prior art and the instant invention are both directed to antimicrobial compositions, and are therefore in the same field of endeavor.
On page 6, Applicant argues that the claimed invention possesses unexpectedly superior properties in terms of lower phototoxicity and consequent seed germination and growth when the claimed combination of actives is used vs. each active in isolation.
This argument is not persuasive because synergy among the ingredients allowing for lower concentrations of each agent to provide antimicrobial efficacy in combination relative to each agent in isolation had been taught in the art (see rejection supra). Achieving effective protection against infection at lower doses of each active translates to lower toxicity due to the actives; thus, in view of the prior art, one having ordinary skill would have expected the outcome reported in the specification. Please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims. In this case (1) the data do not appear to have been unexpected and (2) no side by side comparison to the closest prior art has been made of record; the closest prior art being Dautreuil [discloses synergy between hypochlorite salt and copper(II) salt] and also Davies [teaches synergy between hypochlorite solution and quaternary ammonium salts].
On page 6, Applicant argues that the order of steps recited in the product by process language is not taught by the prior art and is important because it prevents a violent reaction between copper chloride and sodium hypochlorite resulting in coarse agglomerated precipitates and large copper particles that readily clause phytotoxicity, rendering such a composition unsuitable for application to rice.
The examiner notes that Dautreuil already teaches an example composition containing sodium hypochlorite and copper(II) sulfate and Davies already teaches an example composition containing sodium hypochlorite and quaternary ammonium salts, thus a solution to the problem of reactivity between copper(II) sulfate and sodium hypochlorite substances appears to have existed in the prior art at the time filing, please see above regarding interpretation of product by process language. In response to applicant's argument that an explosive reaction results if sodium hypochlorite is directly combined with copper sulfate, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, Applicant has presented arguments that the claimed order of steps results in product with patentably distinct properties. Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). The description on page 6 of the remarks of the benefits associated with the claimed steps of making the invention are considered argument and not afforded the probative value of evidence on the record because they have not been submitted in the form of an affidavit or declaration and were not disclosed in the specification, as filed. In the present case, other than the arguments presented by Appellant’s attorney, there is no evidence on the record establishing a patentable distinction from prior art compositions. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Please refer to MPEP 716.01(C)(II) regarding probative value of objective evidence and MPEP 2145(I) regarding weight given to Applicant opinion.
Conclusion
No claims are 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 KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
