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 .
Election/Restriction
Applicant elected, without traverse, Group II, claims 9-17, drawn to a biocidal composition, and species : 1) guanidine enhancer - 2-cyanoguanidine; 2) inorganic mineral species - a silicate; and 3) 4-isothiazolin-3-one biocidal active compound - 1,2-benzisothiazolin-3-one, on 05/26/2026.
Claims 9-17 read on elected invention.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected inventions.
Claim Status
Claims 1-17 are pending.
Claims 1-8 are withdrawn.
Claims 9-17 are currently under examination in this office action.
Priority
This instant application 18/551,203, filed on 09/19/2023, is a national stage of PCT/US2022/020952 filed 03/18/2022, which claims benefit of US provisional application No. 63/163,279 filed on 03/19/2021.
Information Disclosure Statement
The information disclosure statements 09/19/2023 and 11/13/2024 are in compliance with the provisions of 37 CFR1.97. Accordingly, the reference listed in IDS are being considered by the Examiner. Reference written in foreign language is considered to the degree of English abstract or patent family of foreign patent.
Claim Objections
Claims 10 and 15 are objected to because of the following informalities:
Claim 10 recites “the 4-isothiazolin-3- one biocidal active compound is one or both of 1,2-benzisothiazolin-3-one and N-(n-butyl)-1,2- benzisothiazolin-3 -one”, which is confusing.
Claim 15 recites “no less than one parts per million” which should be singular.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 10, 12, 14, 20, 30, 32, 34. It’s not clear what these reference numbers refer to.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim interpretation
Instant specification (See [0018]) discloses 2-cyanoguanidine is also referred to as dicyandiamide. Dicyandiamide (i.e. 2-cyanoguanidine) is also known as cyanoguanidine ,1-cyanoguanidine, N-cyanoguanidine, etc.(See PubChem CID 10005, https://pubchem.ncbi.nlm.nih.gov/compound/10005).
Instant claims are product claims wherein the intended use and/or process of making does not necessarily contribute to the structural limitation of the product.
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.
Claims 9-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 9 recites a biocidal composition, comprising: a 4-isothiazolin-3-one biocidal active compound; and a guanidine enhancer, wherein the guanidine enhancer is one or more of 1-cyanoguanidine, a salt of 1- cyanoguanidine, 2-cyanoguanidine, and a salt of 2-cyanoguanidine, and the guanidine enhancer is crystallized around an inert inorganic mineral.
First, the recitation “one or more of” is contradictory to “a guanidine enhancer”.
Second, the recitation of “one or more of 1-cyanoguanidine, a salt of 1- cyanoguanidine, 2-cyanoguanidine, and a salt of 2-cyanoguanidine” is redundant and confusing. According to PubChem CID 10005 (retrieved from https://pubchem.ncbi.nlm.nih.gov/compound/10005), dicyandiamide is also known as 1-cyanoguanidine, 2-cyanoguanidine, cyanoguanidine, N-cyanoguanidine, etc . Instant specification (See [0018]) discloses 2-cyanoguanidine is also referred to as dicyandiamide, and “conversion between 1-cyanoguanidine and 2-cyanoguanidine may occur via tautomerization in aqueous solution or exposure to other proton donating solvents and so compositions that include only one tautomer, may display conversion over time to a mixture of both. Further, while exemplified using 1-cyanoguanidine and 2-cyanoguanidine, generally tautomer forms of species derived from Compound I can be included as guanidine enhancers in accordance with example implementations of the present disclosure”. Thus, the recitation “one or more of 1-cyanoguanidine, a salt of 1- cyanoguanidine, 2-cyanoguanidine, and a salt of 2-cyanoguanidine” is indistinct due to tautomerization/conversion between 1-cyanoguanidine and 2-cyanoguanidine and salt thereof.
The limitation wherein the guanidine enhancer is crystalized around an inert inorganic mineral is unclear and indefinite. It’s not clear if the crystallized guanidine enhancer comprises the inert inorganic mineral or if the inert inorganic mineral is a component of biocidal composition. It’s not clear how the preparation/crystallization process of guanidine enhancer contribute to limitation of the biocidal composition, wherein the guanidine enhancer might not remain as crystals in presence of liquid/aqueous excipients. Instant specification (See [0040]) discloses variety of inert inorganic mineral as a suitable material for dispersion within the liquid, e.g. silicates, chalk, Chinese clay, etc . The disclosed inert inorganic mineral does not share common structure or properties and it’s not clear what’s the scope of inert inorganic mineral.
An ordinary skilled in the art would not be appraised the scope of claim 9. Claims 10-17 are also rejected due to dependency on claim 9.
Claim 16 recites variety of product, wherein the product is a paint, a coating, a sealant, a plaster, a starch solution, an aqueous mineral slurry, a dispersion, a caulk, a slurry of colored pigments, a slurry of inorganic fillers and colored pigments, a construction chemical product, a glue or adhesive, a polymer dispersion, an emulsion polymer, a detergent or cleaner, a mineral oil or mineral oil product, a cooling lubricant, an auxiliary for leather and/or textile and/or photochemical industry, a pre-product or intermediate of the chemical industry, a wax, a clay emulsion, an ink, or a disinfectant. It’s not clear what’s encompassed by construction chemical product , the pre-product or intermediate of the chemical industry, auxiliary for leather and/or textile and/or photochemical industry, etc. The scope of claim 16 is indefinite.
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 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 9, 11, 13 and 16 are rejected under 35 U.S.C. § 103 as unpatentable over HENAN (CN106745566, Applicant’s IDS dated 11/13/2024).
HENAN teaches sewage treatment agent which comprises, by weight, 2-10 parts of isothiazolinone, 4-8 parts of basic chilosan, 6-12 parts of dicyandiamide (i.e. 2- cyanoguanidine) , 10-16 parts of diatomite, 3-8 parts of sodium sulfate, 2-7 parts of aluminum sulfate, 2-5 parts of sodium silicate, etc. The sewage treatment agent has synergistic effect on sterilizing /damaging environmental bacteria (See abstract).
HENAN teaches embodiments comprising variety amount of isothiazolinone and dicyandiamide (i.e. 2- cyanoguanidine) and preparation thereof, wherein dicyandiamide is added to deionized water in presence of diatomite, sodium sulfate or sodium silicate that reads on instant recited inert inorganic mineral (See Embodiments 1-4). The ratio of dicyandiamide to isothiazolinone could be calculated as 6:1 or 3:1 (6-12 parts verse 2 parts, which falls within the range of instant claim 11). Please note instant claims are product claims. A skilled artisan would have known composition comprising isothiazolinone and dicyandiamide (i.e. 2- cyanoguanidine) could be made and used for sterilization /disinfection. Thus, HENAN renders instantly claimed composition comprising isothiazolinone and cyanoguanidine prima facie obvious.
Claims 9-17 are rejected under 35 U.S.C. § 103 as unpatentable over Bradford et al( WO2020003285A1, hereafter “Bradford’ 285”, family of US20210235699A1 disclosed in Applicant’s IDS dated 09/19/2023), in view of Cornish et al. (US 7202287 B2) and O’Callaghan et al. (Soil Biology & Biochemistry, 2010, 42,1425-1436, https://doi.org/10.1016/j.soilbio.2010.05.003, Effect of the nitrification inhibitor dicyandiamide (DCD) on microbial communities in a pasture soil amended with bovine urine).
Bradford’ 285 discloses biocidal compositions comprising an isothiazolone biocidal active compound in combination with a guanidine adjuvant, wherein the guanidine adjuvants enhance the biocidal activity of 4-isothiazolin-3-one biocidal active compounds ( See abstract, page 3, lines 5-25; Examples 1-4, Tables 1-10; claims 1-19).
Regarding the guanidine enhancer, Bradford’ 285 teaches variety of guanidine adjuvant, e. g. compound of Formula I,
PNG
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44
277
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Greyscale
wherein R is H, n-propyl, isopropyl, tert-butyl, acetyl or pivaloyl, dodecylguanidine, N,N-dihexylguanidine, and specific embodiment 1, 1,3,3- tetramethylguanidine (TMG ) (See page 5, lines 1-18, Examples 1-4). Bradford’ 285 teaches guanidine adjuvant as a salt , derived from inorganic or organic acid (See page 5, lines 15-29, claim 7, 8).
Regarding claim 10, Bradford’ 285 teaches isothiazolones / 4-isothiazolin-3-one are highly effective biocides and widely used as broad-spectrum biocides in various industries, and 4-isothiazolin-3-one active compound is 1,2-benzisothiazolin-3-one (BIT) and/ or N-(n-butyl)-1,2-benzisothiazolin-3-one (BBIT) (See page 1, last para; page 3, lines 15-18, 25; Table 1; claim 2-3,11-12, 14-15).
Regarding claim 11, Bradford’ 285 teaches the weight ratio of the guanidine adjuvant to 4-isothiazolin-3-one (e.g. , BIT, BBIT) is from about 200:1 to 1 :1, preferably from about 100:1 to 1 :1, more preferably from about 80:1 to 5:1, and most preferably from about 40:1 to 5:1(See page 5, lines 20-30; page 6, lines 1- 29; claims 4-6).
Regarding claim 12, Bradford’ 285 teaches biocidal compositions as an aqueous mineral slurry, a dispersion, and preferably aqueous products (See page 11, lines 4, 13-15; claim 16). Bradford’ 285 teaches embodiments comprising various amount of 4-isothiazolin-3-one and guanidine adjuvant, e.g. BIT 2.5% dodecylguanidine HCI 22.5% (See Table 5, 6), wherein the water content if present could be calculated as less than 75% accordingly. The aqueous mineral slurry is also considered read on instantly recited limitation wherein guanidine derivative crystallized around inert inorganic mineral.
Regarding claims 13 and 16-17, Bradford’ 285 teaches variety of product comprising biocidal composition, e.g. paint, a coating, sealant, a plaster, a starch solution, an aqueous mineral slurry, polymer dispersion, an emulsion polymer, dispersion, a caulk, a slurry of colored pigments, a slurry of
inorganic fillers and colored pigments, a construction chemical product, a glue or adhesive, a detergent or cleaner, a mineral oil or mineral oil product, a cooling lubricant, an auxiliary for leather and/or textile and/or photochemical industry, a pre-product or intermediate of the chemical industry, a wax, a clay emulsion, an ink and a disinfectant, etc. that can be used in many field (See page 8, lines 10-20; page 11, lines 3- 15; claim 16). The aqueous mineral slurry, slurry of inorganic fillers, etc. are also considered read on instantly recited limitation wherein guanidine derivative crystallized around inert inorganic mineral.
Regarding claim 14, Bradford’ 285 teaches product comprising various amount of 4-isothiazolin-3-one (e.g. , BIT, BBIT), e.g. about 1 to 400 ppm, about 1 to 300 ppm, about 1 to 200 ppm, about 1 to 150 ppm, about 1 to 100 ppm, or about 1 to 50 ppm, or about 1 to 25 ppm. Preferably, the at least one 4-isothiazolin-3-one biocidal active compound is present in said biocidal product in an amount of from about 1 to 200 ppm, etc. ( See page 9, lines 1-25; claims 10-12)
Regarding claim 15, Bradford’ 285 teaches product comprising various amount of guanidine adjuvant, e.g. 500 to 1000 ppm, ( See page 9, lines 29-34; claim 13 ).
Bradford’ 285 teaches biocidal composition comprising combination of 4-isothiazolin-3-one biocidal active compound and guanidine adjuvant is TMG, wherein the 4-isothiazolin-3-one biocidal active compound (e.g. BIT) is from about 10 to 90 ppm and TMG in an amount of from about 500 to 990 ppm (See page 10, lines 5-14; Table 2-6; claims 14-15).
Bradford’ 285 collectively discloses biocidal compositions comprising an isothiazolone biocidal active compound (e.g. 1,2-benzisothiazolin-3-one BIT) in combination with a guanidine adjuvant (e.g. TMG), wherein the guanidine adjuvants enhance the biocidal activity of 4-isothiazolin-3-one biocidal active compounds.
Bradford’ 285 is silent about cyanoguanidine as the guanidine enhancer. A skilled artisan would have known 2-cyanoguanidine is a guanidine derivative that’s structurally similar to the guanidine taught by Bradford’ 285.
Cornish teaches a composition comprising isothiazolinone (e.g. 1,2-benzisothiazolinone) in combination with a polymeric biguanide that improves efficacy for inhibiting the growth of microorganisms in latices used in in paints, adhesives and sealants or other industrial media (e.g. coating, leather, emulsion, etc. )(See abstract, Col.1, lines 37-45; Col. 9, lines 53-55; Col. 12, lines 25-65; Examples 1-8; claims 11-12 ). Cornish teaches preferred benzisothiazolinones, e.g. 1,2-benzisothiazolinone BIT, butyl BIT etc. (See Col. 2, lines 40-67; Examples 1-8; claims 4 and 5). Cornish teaches the polymeric biguanide comprises cyanoguanidine group, or prepared from bisdicyandiamide, wherein cyanoguanidine group can hydrolyze during preparation of the linear polymeric biguanide yielding a guanidine end group (See Col. 3, line 39-45; Col. 5, lines 18- 28, 43-52). Cornish teaches polymeric biguanides form salts with inorganic acids and are water-soluble (See Col. 5, lines 62-65). Cornish teaches composition comprising isothiazolinone, polymeric biguanide and optionally a medium, wherein the medium is liquid medium, preferably water (See Col. 10, line 19-30, 66-67; Col. 11, lines 1-2)(which reads on aqueous dispersion of instant claim 12). Cornish teaches mineral fillers such as clays, calcium carbonate and calcium sulphates, etc. ( See Col. 10, lines 35-36)(which read on instantly claimed inert inorganic mineral)
Cornish teaches various weight ratio of polymeric biguanide: benzisothiazolinone in the anti-microbial composition e.g. from 99:1, 10:1, 4:1 etc. ( Col. 12, lines 38-47)(which falls within the range of instant claim 11). Cornish teaches various amount of polymeric biguanide ( from 10 to 1000 ppm ) and benzisothiazolinone (from 1 to 500 ppm) (See Col. 10, lines 46-63) (which falls within the range of instant claim 14-15). Cornish teaches combination of the polymeric biguanide and isothiazolinone exhibits a synergistic effect against the micro-organisms commonly found in latices (See Col.11. lines 61-67).
Cornish collectively teaches biocidal composition comprising isothiazolinone and polymeric cyanoguanidine.
O’Callaghan teaches dicyandiamide (DCD, i.e. 2-cyanoguanidine) is one of the most widely used nitrification inhibitor that targets at ammonia oxidation catalyzed by ammonia monooxygenase (AMO), wherein the microbes, the ammonium-oxidising bacteria were significantly affected by DCD with reductions in population size and altered activity (See whole article, abstract, page 1426, left column, third para; ). O’Callaghan and incorporated reference teach various formulations of DCD have been developed and their efficacy has been measured under a range of environmental conditions. Because it is readily water soluble, has little or no losses through volatility and is reasonably priced, DCD is the most used nitrification inhibitor in New Zealand( See page 1426, left column, third para).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the biocidal composition comprising combination of 4-isothiazolin-3-one and guanidine derivative taught by Bradford’ 285 with cyanoguanidine as the guanidine adjuvant based on the combined teaching of Cornish and O’Callaghan, and arrive at the instant invention with reasonable expectation of success. At the time of instant invention, it’s already known that guanidine derivative could enhance the activity of isothiazolinone as taught by Bradford’ 285 and Cornish. Cornish also teaches combination of isothiazolinone with polymeric cyanoguanidine. It’s also known cyanoguanidine is one of the most widely used antimicrobial nitrification inhibitor as taught by O’Callaghan. A skilled artisan would be motivated to explore cyanoguanidine in combination with 4-isothiazolin-3-one and reasonably expect the combination of isothiazolinone with cyanoguanidine would exhibit enhanced biocidal efficacy.
As stated in MPEP 2144.05, " It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions". In instant case, cyanoguanidine is considered as guanidine adjuvant equivalent taught by Bradford’ 285 and Cornish. It’s also known cyanoguanidine is one of the most widely used antimicrobial nitrification inhibitor as taught by O’Callaghan. A skilled artisan would reasonably expect the combination of isothiazolinone with cyanoguanidine would exhibit enhanced biocidal efficacy.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention based on the combined teachings of prior art together with optimization based on general knowledge of biocidal composition. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 9-17 are rejected under 35 U.S.C. § 103 as unpatentable over Gerharz et al. (US 9693560B2, Applicant’s IDS dated 09/19/2023), in view of Cornish et al. (US 7202287 B2) and O’Callaghan et al. (Soil Biology & Biochemistry, 2010, 42,1425-1436, https://doi.org/10.1016/j.soilbio.2010.05.003, Effect of the nitrification inhibitor dicyandiamide (DCD) on microbial communities in a pasture soil amended with bovine urine).
Gerharz teaches a synergistic biocidal composition comprising at least (a) one isothiazolinone from the group consisting of 1,2-benzisothiazolin-3-one (BIT) and 2-methyl-4- isothiazolin-3-one (MIT), and (b) at least one N-alkyl-guanidinium salt (e.g. dodecyl guanidine hydrochloride, DGH) , methods for the production thereof, and their use for protecting technical materials and products which can be attacked by microorganisms (See abstract, Col. 1, lines 1-67; Example 1-4, Tables 1-24; claims 1-12). The guanidinium salt taught by Gerharz is construed as guanidine enhancer to the isothiazolinones.
Regarding claim 10, Gerharz teaches isothiazolones active compound is 1,2-benzisothiazolin-3-one (BIT) (See abstract, Col. 1, lines 43-45; Col. 2, lines 27-29; Example 1-4; claim 1,3 and 4 ).
Regarding claim 11, Gerharz teaches various weight ratio of 4-isothiazolin-3-one component (a) (e.g. BIT ) to N-alkyl-guanidinium salt component (b) , e.g. about to 1:10, preferably 1:5 , etc. (See Col. 2, 30-33; Example 1-3, Tables 1-3, 5, etc. claim 2 and 4)
Regarding claim 12, Gerharz teaches embodiments comprising water (See Col 6, line 35; claim 8), and water-based system, e.g. a slurry of calcium carbonate (calcium carbonate slurry) with a solids fraction of 75% by weight (See Example 5, Col.13, lines 16-18).
Regarding claims 13 and 16-17, Gerharz teaches variety of product/ technical materials comprising biocidal composition, e.g. paints, inks, plasters coating compositions, slurries of inorganic fillers and pigments such as kaolin, calcium carbonate, gypsum, bentonite, magnesium silicate, smectite or talc, etc. (See Col. 2, lines 38-67; Col. 3, lines 1-20; claims 9-10). The slurries of inorganic fillers is considered as read on instantly recited inert inorganic mineral.
Regarding claim 14 and 15, Gerharz teaches product comprising various amount of 4-isothiazolin-3-one (e.g. BIT ) and guanidine component (b), from 10 to 2000pm, from 200 to 1000 ppm, ( See Col. 4, lines 7-10; Table 10, 14, 24, etc. ).
Gerharz collectively discloses biocidal compositions comprising 4-isothiazolin-3-one biocidal active compound (e.g. 1,2-benzisothiazolin-3-one BIT) in combination with a guanidine (e.g. dodecyl guanidine hydrochloride), that exhibit synergistic biocidal effect (e.g. synergism index SI <1) with a broad activity spectrum (See Col. 9, lines 63-67; Col. 11, lines 34-37; Example 1-4; Table 6, 7, 10 , 11, 14, etc., claim 1) .
Gerharz is silent about 4-isothiazolin-3-one in combination with cyanoguanidine. A skilled artisan would have known cyanoguanidine is a guanidine derivative that’s structurally similar to the guanidine taught by Gerharz.
The collective teachings of Cornish and O’Callaghan are elaborated in preceding 103 rejection and applied as before. Cornish collectively teaches biocidal composition comprising isothiazolinone and polymeric cyanoguanidine. O’Callaghan teaches dicyandiamide (DCD, i.e. 2-cyanoguanidine) is one of the most widely used antimicrobial nitrification inhibitor that targets at ammonia oxidation catalyzed by ammonia monooxygenase (AMO).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the biocidal composition comprising combination of 4-isothiazolin-3-one and guanidine derivative taught by Gerharz with cyanoguanidine as the guanidine adjuvant based on the combined teaching of Cornish and O’Callaghan, and arrive at the instant invention with reasonable expectation of success. At the time of instant invention, it’s already known that guanidine derivative could enhance the activity of isothiazolinone as taught by Gerharz and Cornish. Cornish also teaches combination of isothiazolinone with polymeric cyanoguanidine. It’s also known cyanoguanidine is one of the most widely used antimicrobial nitrification inhibitor as taught by O’Callaghan. A skilled artisan would be motivated to explore cyanoguanidine in combination with 4-isothiazolin-3-one and reasonably expect the combination of isothiazolinone with cyanoguanidine would exhibit enhanced biocidal efficacy.
As stated in MPEP 2144.05, " It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions". In instant case, cyanoguanidine is considered as guanidine equivalent due to structural similarity. It’s also known cyanoguanidine is one of the most widely used antimicrobial nitrification inhibitor as taught by O’Callaghan. A skilled artisan would reasonably expect the combination of isothiazolinone with cyanoguanidine would exhibit enhanced biocidal efficacy.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention based on the combined teachings of prior art together with optimization based on general knowledge of biocidal composition. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/026,204(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference claims are directed to a biocidal composition, comprising: a 4-isothiazolin-3-one biocidal active compound; and a guanidine enhancer, wherein the guanidine enhancer is one or more of 1-cyanoguanidine, a salt of 1- cyanoguanidine, 2-cyanoguanidine, and a salt of 2-cyanoguanidine.
Regarding instant claims 10, reference claims 2-3 recite the 4-isothiazolin- 3-one biocidal active compound is one or more of 1,2-benzisothiazolin-3-one, N-(n- butyl)-1 ,2-benzisothiazolin-3-one, etc.
Regarding instant claim 11, reference claim 6 recite weight ratio of the guanidine enhancer to the 4-isothiazolin-3-one biocidal active compound in the biocidal composition is no greater than about 800:1 and no less than about 1:1.
Regarding instant claim 12, reference claim 9 recite aqueous dispersion has a water content no less than twenty percent and no greater than ninety-five percent by weight of the biocidal composition.
Regarding instant claim 13-15, reference claim 11-17 recite a product comprising the biocidal composition comprising similar amount of 4-isothiazolin-3-one biocidal active compound and guanidine enhancer.
Regarding instant claim 16-17, reference claim 18-19 recite the product is a paint, a coating, an aqueous mineral slurry, etc.
The difference between reference claim 1 and instant claim 9 is the limitation wherein the guanidine enhancer is crystalized around an inert inorganic mineral which does not necessarily further limit the components of the composition. Thus, reference claims anticipates or at least overlaps with instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 1. Smutek et al. (US 4560796A). Smutek teaches process for the modification of the crystal form of dicyandiamide, wherein dicyandiamide was crystallized from water in presence of different agent(See abstract, Col. 2, Examples 1-31, Table 1-3, claims 1-11). Smutek teaches dicyandiamide is an important technical product with a large number of uses, e.g. intermediate for the production of guanidine derivatives, as well as for the synthesis of pharmaceuticals, as starting material for flame-protection agents and dicyandiamide resins which are preponderantly uses as paper, textile and dyeing adjuvants. Furthermore, dicyandiamide is used as an additive for polymeric compounds and, not least, as a nitrification inhibitor in agriculture.
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/L.M./Examiner, Art Unit 1628
/JARED BARSKY/Primary Examiner, Art Unit 1628
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