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
Claims 1-4 and 6-33 are pending.
Priority
Instant application 18/549,886, filed 09/08/2023 claims priority as follows:
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Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
All references from IDS(s) received 09/08/2023 have been considered unless marked with a strikethrough.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-4, 6-13, and 16-33) and the species composition disclosed in the reply filed on 03/18/2026 is acknowledged. The traversal is on the grounds that the claims share a technical relationship involving at least one clear, common and special feature. Applicant traverses the Office’s position that the composition of claim 1 is obvious over VELINGS in view of PARTE. Applicant notes that the claimed formulation addresses a very specific problem of creating a stable, concentrated liquid disinfectant composition containing hydrophobic short-chain fatty acids. Applicant states that a key aspect of the invention is the claimed solubilizing/hydrotrope system that combines an ethoxylated fatty alcohol and EO/PO/EO copolymer to stabilize the formulation containing hydrophobic short-chain fatty acids.
Applicant argues that Parte, which was cited by the Office to cure the deficiencies of Velings, fails to actually cure those deficiencies because Parte is directed to solving a different problem (drying aid for laundry, reducing drying time) and the core of Parte is the synergy between an EO/PO/EO copolymer and an aminosilicone, rather than the solubilizing system (EO/PO/EO copolymer and ethoxylated fatty alcohol) of the claimed invention.
Applicant’s arguments have been fully considered an found persuasive. Accordingly, the restriction requirement and election of species requirement is withdrawn and claims 1-4 and 6-33 are fully examined for patentability on the merits herein.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the length exceeds 150 words and the abstract uses phrases which can be implied (“The present invention generally relates to”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 27 and 31 are objected to because of the following informalities: Claims 27 and 31 are missing punctuation (semicolons). Several adjacent clauses run together without any semicolon to separate the clauses. For example, in claim 27, the clause ending “between 0.5 and 20%” is immediately followed by “the above-mentioned pH-regulating acid system represents between 5 and 20% by mass…” without a semicolon or other delimiter. Appropriate correction is required.
“Use” Claim Rejections – See MPEP 2173.05(q)
Rejection under 35 USC § 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.
Claims 14-15 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.
Claims 14-15 are drawn to a process for disinfecting open surfaces or disinfecting in washing tunnels or in circuits which comprises “using” a composition according to claim 12 or claim 13. The claims are indefinite because they merely recite “using” the composition without providing any active, positive steps delimiting how this use is actually practiced.
Rejection under 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.
Claims 14-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to “using” a composition, and do not purport to claim a process, machine, manufacture, or composition of matter. A “use” claim which fails to recite any active, positive steps delimiting how this use is actually practiced is not a process. See MPEP 2106.03 in this regard: “As explained by the Supreme Court, a ‘process’ is ‘a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.’” See also MPEP 2173.05(q) regarding the eligibility of “use” claims.
To overcome this issue, the examiner recommends amending claims 14 and 15 to recite at least one positive, active step. For example, claim 14 could be amended to instead recite “comprising applying the composition of claim 12 to the open surfaces”; and claim 15 could be amended to instead recite “comprising applying the composition of claim 13 to the washing tunnels or circuits”.
Claim Rejections - 35 USC § 112
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 1-3, 10-16, 18-26, 28-30, 32, and 33 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.
The terms “concentrated” and “diluted” are relative terms which render claim 1 indefinite. See MPEP 2173.05(b). The terms “concentrated” and “diluted” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Neither the claim nor the specification defines the boundary between “concentrated” and “diluted”. It is unclear what concentration threshold, dilution factor, or other objective criterion are required to distinguish a “concentrated” composition from a “diluted” one. The specification at [0057] states that concentrated forms “are used after dilution to the necessary concentration (V/V)” but does not quantify what constitutes “concentrated” versus “diluted”. Some dependent claims recite different percentage ranges depending on whether the composition is “in concentrated form” or “in diluted form” (e.g., claim 4 recites 1-10% for concentrated and 0.02-0.2% for diluted). However, since independent claim 1 does not recite any such ranges and simply covers both forms, a person of ordinary skill would be uncertain about which set of boundaries applies to a given composition that falls between the ranges stated in the dependent claims. Claims 2-3, 10-16, 29-30, 32, and 33 depend (directly or indirectly) from claim 1 and fail to resolve this issue. Therefore, these claims are also indefinite.
Claim 12 recites “an integer between 2.5 and 12”. The number 2.5 is definitionally not an integer. A person of ordinary skill cannot determine if the claim captures only integer numbers, or also include non-integer numbers. Additionally, if n is 2.5, what is the structure of the carboxylic acid ether? Claim 14 depends from claim 12 and fails to resolve the issue. Therefore, claim 14 is also indefinite.
Claim 12 recites the limitation “said mixture of surfactants” in line 2. There is insufficient antecedent basis for this limitation in the claim. This phrase appears to refer back to the “one or more surfactants” in claim 1, but the phrasing is different and therefore unclear. Claims 14 and 32 depend from claim 12 and fail to resolve the issue. Note that claim 32 also recites the phrase “said mixture of surfactants”. Therefore, claims 14 and 32 are also indefinite.
Claims 12 and 13 recite the limitations “foaming non-ionic surfactant” and “weakly-foaming non-ionic surfactant”. The terms “foaming” and “weakly-foaming” in claims 12 and 13 are relative terms which render the claims indefinite. The claims do not define what level of foam generation qualifies a surfactant as “foaming” versus “weakly-foaming”, nor do the claims provide an objective test or numerical threshold. The specification at [0044]-[0049] provides examples of surfactants falling into each category (e.g. dodecyldimethylamine oxide as “foaming,” decyldimethylamine oxide as “weakly foaming”) but does not articulate a general standard. Claims 14 and 15 depend from claim 12 or 13 and fail to resolve the issue. Therefore, claims 14 and 15 are also indefinite.
Claims 18-26 and 28 recite percentages of ingredients but are missing the “by mass of the composition” qualifier used in other claims. For example, claim 18 recites “in concentrated form, the aliphatic-chain fatty acid…represents between 2 and 5%; and when said composition is in diluted form, the aliphatic chain fatty acid…represents between 0.04 and 0.1%.”
Other claims (e.g., claims 4, 6-9, 17, 27, 31) consistently qualify every percentage as “% by mass of the mass of the composition.” However, claims 18-26 and 28 omit this qualifier entirely and recite bare percentages. In chemical composition claims, a percentage can refer to, for example, mass/mass (w/w), volume/volume (v/v), mass/volume (w/v), or molar percentage. The inconsistency within the claim set makes it unclear whether the bare percentages in these claims are intended to carry the same “by mass of the mass of the composition” meaning or whether a different meaning is intended.
Accordingly, claims 1-3, 10-16, 18-26, 28-30, 32, and 33 are rejected as indefinite.
Allowable Subject Matter
Claims 4, 6-9 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The claimed invention is a novel liquid disinfectant composition. The specification states that a problem with prior art compositions (e.g. those marketed by SOPURA under the name “SOPURCLEAN”) is the difficulty in the formulation of a stable composition in the concentrated state. The composition requires a medium-chain fatty acid (C8 to C12), and these acids are hydrophobic, and challenging to formulate in the form of a concentrated product having a high amount of water.
The closest prior art is VELINGS (US 6,368,610; cited previously).
Velings discloses (Examples, col. 5-6) a liquid disinfectant composition having, in its diluted form, a pH less than 3 comprising:
a fatty acid selected from caprylic acid (C8) and carpic acid (C10),
glycolic acid in combination with acetic acid,
sulfuric acid,
a combination of surfactants (nonionic ethoxylated surfactant C16-C18EO11H Lutensol AT11® low-foaming, anionic surfactant C15-25 acid carboxylic ether and C8-12 sulfonate), and
water.
Velings fails to disclose a composition having:
an ethoxylated fatty alcohol in which the alcohol comprises 6 to 12 atoms and the ethoxylation is from 4 to 8, and
an EOx-POy-EOz copolymer with x and z in the range of 2 to 15 and y in the range of 15 to 35.
The prior art fails to teach, suggest, or otherwise provide any motivation to modify Velings’ composition to produce one having the particular properties recited in claim 1.
PARTE (US 20180010073 A1; cited previously), which is representative of the prior art identified, provides a generic teaching of additives to stabilize a laundry drying aid formulation. For example, Parte teaches an EO/PO/EO triblock copolymer (Parte, abstract; [0010]). Parte also generically teaches other surfactants, such as alcohol ethoxylates (Parte, [0044]). However, Parte is generally concerned with solving a different problem (i.e., improving drying time).
Moreover, while Parte generally teaches these ingredients as surfactants/solubilizing agents, Parte fails to teach, suggest, or otherwise provide any motivation to particularly select the specific EO/PO/EO triblock copolymer having the formula of claim 1, wherein x represents between 2 and 15, y represents between 15 and 35, and z represents between 2 and 15; and the specific ethoxylated fatty alcohol having between 6 and 12 carbon atoms and n represents between 4 and 8.
See also LANGE (US 20140308162 A1). Lange discloses concentrated liquid sanitizing and rinse compositions containing peroxycarboxylic acid(s) and compatible rinse aid surfactants (abstract). LANGE generically teaches suitable nonionic surfactants such as EO/PO block copolymers, such as the Pluronic and reverse Pluronic surfactants; and alcohol alkoxylates such as Sasol (Lange, [0106]; [0109]). However, the particular exemplified EO/PO block copolymers suggested by and used in Lange are structurally distinct because they are alkyl capped or reverse PO/EO/PO copolymers (i.e., they do not meet the requirements of instant claim 1); and Lange’s compositions rely on a different sanitizing system (peroxycarboxylic acid a neutral pH) rather than the claimed system (medium-chain fatty acids at pH lower than 3.8).
Accordingly, the prior art fails to teach, suggest, or otherwise provide any motivation to modify Velings’ composition to produce one having the particular properties recited in claim 1.
Conclusion
Claims 1-3, 10-16, 18-26, 28-30, 32, and 33 are rejected. Claims 4-9, 17, 27 and 31 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Nottingham whose telephone number is (571)270-0640. The examiner can normally be reached M-F from 10:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.N./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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