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 .
Examiner of Record
The Examiner of record is now Christopher M. Babic
Status of the Claims
Applicant’s response dated 12/16/2025 has been entered. Claims 1–3, 6–17, 19, 26, 27, and 32–33 are pending in the application. Claims 1 and 6–9 have been amended, claims 32–33 have been newly added, and claims 4, 5, 18, 20–25, and 28–31 have been cancelled. This Office action is made non-final due to new grounds of rejection.
Claim Objections
Claims 11 and 12 are objected to because of informalities in the claim language. Each of claims 11 and 12 recites “comprising micelles have an average diameter…,” which is grammatically improper and renders the claim language unclear as a matter of form. The intended subject matter appears understandable from context; however, the claims contain informal language requiring correction.
Claim 17 is objected to because of an apparent typographical error. Claim 17 recites that “the carrier is a solid or a gaz.” The term “gaz” appears to be a typographical error. The intended meaning appears understandable from the specification, which refers to gaseous carriers and gas carriers; however, the claim contains informal language requiring correction.
Claim Rejections - 35 USC § 112 – Indefiniteness – New Grounds
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 10, 19, 32, and 33 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 10 recites “the molarity to volume ratio of cationic surfactant to the essential oil is equal to or less than 15:1.” The metes and bounds of this limitation are unclear because the claim recites a ratio between molarity and volume, which are different types of quantities having different units. It is unclear whether the claimed ratio is intended to mean: (1) the molar concentration of cationic surfactant divided by the volume of essential oil; (2) the moles of cationic surfactant divided by the volume of essential oil; (3) the molar concentration of cationic surfactant relative to the volume fraction or volume percent of essential oil; or (4) some other calculation. The specification does not provide sufficient clarity to resolve this ambiguity. The specification states that “[t]he molarity to volume ratio is calculated by dividing the molarity of one or more cationic surfactants by the volume percentage of the essential oil in the overall composition,” and that the ratio may be equal to or less than 15:1. However, the specification does not clearly define the units of the resulting ratio, whether “volume percentage” is to be expressed as a percent value or a decimal fraction, or how the ratio should be calculated where more than one cationic surfactant and/or more than one essential oil is present. Because different calculation methods may yield materially different results, one of ordinary skill in the art cannot determine the scope of claim 10 with reasonable certainty.
Claim 19 recites “[t]he antimicrobial composition of claim 18, being aerosolized and/or biodegradable.” However, claim 18 has been cancelled. Because claim 19 depends from a cancelled claim, the metes and bounds of claim 19 cannot be determined with reasonable certainty. Accordingly, claim 19 is indefinite.
Claim 32 recites “where the bacteria is Escherichia coli, Staphylococcus aureus, Salmonella spp., Listeria monocytogenes, Legionella pneumophila, Bacillus cereus, Streptococcus agalactiae, Staphylococcus epidermidis, Proteus vulgari, Klebsiella pneumoniae, Enterococcus faecalis, Listeria innocua, Pseudomonas putida, Clostridium perfringens, Shigella sonnei, Campylobacter jejuni or Pseudomonas aeruginosa.” However, there is no antecedent basis for “the bacteria” in claim 32 or in claim 26, from which claim 32 depends. Claim 26 recites “microbes” generally, but does not previously introduce “bacteria.” Therefore, it is unclear what previously recited bacteria is being referenced by “the bacteria,” and the metes and bounds of claim 32 cannot be determined with reasonable certainty. Accordingly, claim 32 is indefinite.
Claim 33 recites “wherein the virus is influenza virus, herpes simplex virus 1, coronavirus, rhinovirus, or rotavirus; or the fungi is Candida albicans, or Aspergillus fumigatus.” However, there is no antecedent basis for “the virus” or “the fungi” in claim 33 or in claim 26, from which claim 33 depends. Claim 26 recites “microbes” generally, but does not previously introduce “virus” or “fungi.” Therefore, it is unclear what previously recited virus or fungi is being referenced by “the virus” and “the fungi,” and the metes and bounds of claim 33 cannot be determined with reasonable certainty. Accordingly, claim 33 is indefinite.
Claim Rejections - 35 USC § 103 – Withdrawn
The prior rejection of claims 1–7, 10–17, 19, and 26–27 under 35 U.S.C. § 103 over Lucia et al. in view of Siddiquee et al. is withdrawn in view of applicant’s remarks. Applicant’s arguments regarding the distinction between the essential-oil components disclosed in Lucia et al. and the presently claimed “one or more essential oil,” as well as the absence in Lucia et al. of an antimicrobial essential-oil composition using the presently recited ionic-liquid surfactants, are persuasive as to the rejection as previously formulated.
Claim Rejections - 35 USC § 103 – New Grounds
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, 2, 6, 7, 10-12, 14–17, 19, 26, 27, 32, and 33 are rejected under 35 U.S.C. § 103 as being unpatentable over Madhavan et al. (WO 2013/075921 A1; “Madhavan”) in view of Siddiquee et al., Journal of Molecular Liquids 2020, 115125 (“Siddiquee”), and further in view of Daigle et al. (US 2014/0142197 A1; “Daigle”).
Regarding claim 1, Madhavan teaches an oil-in-water antimicrobial microemulsion composition comprising 0.1–10 wt% surfactant, 0.05–10 wt% essential oil active comprising thymol, terpineol, eugenol, or mixtures thereof, 0.1–5 wt% polyphenol, and 80–98 wt% water. See Madhavan, Summary of the Invention, p. 4; claim 1. Madhavan explains that essential oils are natural antimicrobial agents but are insoluble in water and therefore must be formulated in water using emulsifiers or surfactants. Madhavan further teaches that microemulsions provide transparent or translucent aqueous compositions containing essential-oil materials, wherein droplets containing the essential oils/actives remain dispersed in the aqueous phase. See Madhavan, Background; Detailed Description, pp. 5–6, “Oil-in-water micro-emulsion.” Madhavan also teaches that the dispersed phase particles are preferably less than 100 nm, more preferably less than 90 nm, and still more preferably less than 50 nm. See Madhavan, Detailed Description, pp. 5–6, “Oil-in-water micro-emulsion.”
Madhavan further teaches that the surfactant may be cationic, including benzalkonium chloride, alkyl pyridinium chloride, or cetyl trimethyl ammonium bromide, and exemplifies stable antimicrobial microemulsions containing cationic surfactants and essential-oil actives. See Madhavan, Detailed Description, p. 6, “Surfactant”; Example 4, Table 3; claims 6–8. Madhavan does not expressly teach that the cationic surfactant is an imidazolium-based ionic-liquid surfactant. However, Siddiquee teaches imidazolium-based ionic liquids, including 1-butyl-3-methylimidazolium chloride (C4mimCl) and 1-decyl-3-methylimidazolium chloride (C10mimCl), and teaches that such ionic liquids are amphiphilic, surface-active, self-assemble in aqueous media, form micelles, and exhibit antibacterial activity against E. coli and S. aureus. See Siddiquee, Abstract; Scheme 1; Introduction; §3.2; §3.3; Tables 1–3.
To the extent Madhavan’s disclosure of thymol, terpineol, and eugenol is considered a disclosure of essential-oil actives rather than whole essential oils, Daigle expressly teaches antimicrobial aqueous disinfectant formulations comprising whole essential oils, including oregano oil, rosemary oil, thyme oil, lavender oil, clove oil, tea tree oil, eucalyptus oil, peppermint oil, and other essential oils. See Daigle ¶¶ [0050]–[0052]. Thus, Madhavan and Daigle together teach or suggest an antimicrobial aqueous micellar or microemulsion composition comprising essential-oil material, including whole essential oils, dispersed in an aqueous carrier by a surfactant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use the imidazolium-based ionic-liquid surfactant of Siddiquee as the cationic surfactant in the antimicrobial essential-oil microemulsion of Madhavan because Madhavan teaches using cationic surfactants to disperse hydrophobic antimicrobial essential-oil materials in water, while Siddiquee teaches cationic imidazolium ionic liquids having the same relevant surfactant and micellization properties, as well as antibacterial activity. The substitution would have predictably provided an antimicrobial composition comprising micelles or microemulsion particles in an aqueous carrier, with hydrophobic essential-oil material in the core and covered at least in part by a cationic imidazolium-based ionic-liquid surfactant.
Regarding claim 2, Madhavan teaches essential-oil antimicrobial actives including thymol, terpineol, eugenol, and mixtures thereof. See Madhavan, Summary of the Invention; Detailed Description, “Essential oil active”; claim 1. Daigle further teaches aqueous disinfectant formulations comprising essential oils and expressly lists numerous essential oils useful in antimicrobial formulations, including anise oil, lemon oil, orange oil, oregano oil, rosemary oil, wintergreen oil, thyme oil, lavender oil, clove oil, tea tree oil, citronella oil, lemongrass oil, cinnamon oil, eucalyptus oil, peppermint oil, basil oil, fennel oil, sage oil, chamomile oil, ginger oil, grapefruit oil, jasmine oil, lime oil, mandarin oil, marjoram oil, myrrh oil, neroli oil, patchouli oil, pine oil, spearmint oil, vetiver oil, and ylang ylang oil. See Daigle ¶¶ [0050]–[0052]; claims 10–17. Daigle also teaches that essential oils and phenolic compounds of natural origin provide antimicrobial activity. See Daigle ¶¶ [0012], [0029]–[0034], [0050]–[0052], [0066]–[0072].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use one of the essential oils taught by Daigle in the antimicrobial microemulsion system of Madhavan because both references teach aqueous antimicrobial/disinfectant formulations using hydrophobic essential-oil antimicrobial materials and surfactants to disperse such materials in water.
Regarding claim 6, Siddiquee teaches imidazolium-based ionic liquid surfactants, including 1-butyl-3-methylimidazolium chloride and 1-decyl-3-methylimidazolium chloride. See Siddiquee, Abstract; Scheme 1; Materials and Methods §2.1; §3.3; Table 2.
Regarding claim 7, Siddiquee expressly teaches 1-decyl-3-methylimidazolium chloride, which corresponds to a 1-decyl-3-methylimidazolium salt as recited in the claim. See Siddiquee, Abstract; Scheme 1; Materials and Methods §2.1. Siddiquee further teaches that the longer alkyl-chain imidazolium ionic liquid has a lower CMC and greater antibacterial activity than the shorter-chain analog, thereby providing additional reason to select the 1-decyl-3-methylimidazolium salt for use in an antimicrobial composition. See Siddiquee §3.2; §3.3; Tables 1–3.
Regarding claim 10, to the extent the limitation can be understood notwithstanding the separate rejection under 35 U.S.C. § 112(b), Madhavan teaches antimicrobial microemulsion compositions comprising 0.1–10 wt% surfactant and 0.05–10 wt% essential oil active, and exemplifies cationic-surfactant microemulsions containing 4 wt% benzalkonium chloride or 3 wt% cetyl trimethyl ammonium bromide with 1.5 wt% essential oil active. See Madhavan, Summary of the Invention; Example 4, Table 3; claims 1 and 6–8. Siddiquee teaches imidazolium-based ionic-liquid surfactants, including 1-decyl-3-methylimidazolium chloride, having surfactant and micellization properties. See Siddiquee, Abstract; Scheme 1; §3.3; Table 2. It would have been obvious to use the imidazolium-based ionic-liquid surfactant of Siddiquee in amounts within the surfactant ranges taught by Madhavan, because Madhavan teaches that surfactant amount is selected to form/stabilize the antimicrobial essential-oil microemulsion, and Siddiquee teaches the substituted ionic liquid has the same relevant surfactant/micellization function. Using ordinary formulation amounts within Madhavan’s disclosed ranges would result in a molarity-to-volume ratio equal to or less than 15:1, when calculated according to the specification’s apparent method of dividing surfactant molarity by the volume percentage of essential oil. For example, substituting an imidazolium ionic-liquid surfactant for Madhavan’s cationic surfactant at concentrations comparable to Madhavan’s Example 4, with about 1.5 wt% essential oil active, would have rendered obvious routine adjustment of the surfactant and essential-oil amounts to values satisfying the claimed ratio, particularly because Madhavan teaches overlapping surfactant and essential-oil ranges and teaches that surfactant concentration is selected to form and stabilize the microemulsion.
Regarding claim 11, Madhavan teaches that the dispersed phase particles of the antimicrobial microemulsion are preferably less than 100 nm, more preferably less than 90 nm, and still more preferably less than 50 nm. See Madhavan, Detailed Description, “Oil-in-water micro-emulsion.” A particle size of less than 100 nm necessarily satisfies the recited average diameter of 1000 nm or less.
Regarding claim 12, Madhavan teaches that the dispersed phase particles of the antimicrobial microemulsion are preferably less than 100 nm, more preferably less than 90 nm, and still more preferably less than 50 nm. See Madhavan, Detailed Description, “Oil-in-water micro-emulsion.” Thus, Madhavan teaches particles within the recited average diameter of 100 nm or less.
Regarding claim 14, Madhavan teaches antimicrobial microemulsion compositions comprising 80–98 wt% water, thereby teaching that the carrier is an aqueous solution. See Madhavan, Summary of the Invention; Detailed Description, “Oil-in-water micro-emulsion”; claim 1.
Regarding claim 15, Madhavan teaches that preferred compositions include less than 1%, preferably less than 0.5%, more preferably less than 0.1% C1–C3 alcohol, and that in optimal compositions such alcohol is absent. See Madhavan, Detailed Description, “Electrolytes.” Thus, Madhavan teaches antimicrobial aqueous microemulsion compositions that may lack an organic alcohol solvent. To the extent the claim broadly recites absence of an organic solvent generally, the absence of low-molecular-weight alcohol solvent is at least suggested by Madhavan’s teaching that the formulation can be made with reduced or absent C1–C3 alcohol.
Regarding claim 16, Madhavan expressly teaches that the antimicrobial composition is an oil-in-water microemulsion. See Madhavan, Summary of the Invention; Detailed Description, “Oil-in-water micro-emulsion”; claim 1.
Regarding claim 17, Madhavan teaches that the antimicrobial composition may be executed in the form of wipes, meaning disposable towels incorporating the microemulsion, thereby teaching use of the antimicrobial composition with a solid carrier. See Madhavan, Detailed Description, pg. 9-10, “Formats.” Daigle further teaches that disinfectant formulations may be applied using a diffuser or mist blower and may be formulated into aerosol formulations, thereby evidencing that antimicrobial essential-oil disinfectant formulations were known to be delivered in aerosolized/gaseous delivery formats. See Daigle ¶ [0059].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to provide the antimicrobial composition in a solid-carrier format such as a wipe or in an aerosolized/gas-delivery format because the cited art teaches these as known delivery forms for antimicrobial essential-oil formulations.
Regarding claim 19, to the extent the claim can be understood notwithstanding its improper dependency from cancelled claim 18, Daigle teaches that disinfectant formulations may be formulated into aerosol formulations and further teaches biodegradable disinfectant formulations comprising naturally occurring disinfectant materials such as thymol, carvacrol, and essential oils. See Daigle ¶¶ [0041], [0059]–[0060]. Accordingly, aerosolized and/or biodegradable forms of antimicrobial essential-oil disinfectant compositions would have been obvious. Claim 19 is separately rejected under 35 U.S.C. § 112(b) because it depends from cancelled claim 18.
Regarding claim 26, Madhavan teaches a method of disinfecting a surface by applying the antimicrobial microemulsion composition to a desired surface and removing the composition after a predetermined time period. See Madhavan, Summary of the Invention; Detailed Description, “Method of disinfecting a surface”; claims 11–13. Madhavan teaches use for disinfecting external surfaces of a human or animal body, soft and porous substrates such as fabric, and hard surfaces. See Madhavan, Detailed Description, “Method of disinfecting a surface” and “Formats”; claim 11. Because claim 26 is written in the alternative and includes contacting the antimicrobial composition with a solid, Madhavan’s teaching of applying antimicrobial microemulsion compositions to hard surfaces, soft surfaces, fabric, and external body surfaces teaches or suggests the claimed method at least with respect to a solid.
Regarding claim 27, Madhavan’s Example 4 reports antimicrobial compositions having a log reduction of 7.0. See Madhavan, Example 4, Table 3. Daigle likewise teaches disinfectant formulations providing substantial log reductions of Staphylococcus aureus, including reductions greater than 7 logs for formulations containing thymol, carvacrol, or origanum oil. See Daigle ¶¶ [0068]–[0072], Table 3. Therefore, achieving at least a one-log reduction after contact with the antimicrobial composition would have been expected and would have been an obvious result of using the antimicrobial compositions taught by the cited art.
Regarding claim 32, to the extent the claim can be understood notwithstanding the separate rejection under 35 U.S.C. § 112(b), Siddiquee teaches evaluating antibacterial activity of imidazolium-based ionic liquids, including 1-butyl-3-methylimidazolium chloride and 1-decyl-3-methylimidazolium chloride, against Escherichia coli and Staphylococcus aureus. See Siddiquee, Abstract; §2.1, “Materials”; §2.2.2, “Antimicrobial activity”; §3.2, “Antibacterial activity”; Table 1. Daigle likewise teaches antimicrobial efficacy against Staphylococcus aureus and Salmonella cholerasuis. See Daigle ¶¶ [0067]–[0072], Tables 3–4. Accordingly, the combined teachings of Madhavan, Siddiquee, and Daigle render obvious the method of claim 26 wherein the bacteria is at least Escherichia coli, Staphylococcus aureus, or Salmonella spp., as recited in claim 32.
Regarding claim 33, to the extent the claim can be understood notwithstanding the separate rejection under 35 U.S.C. § 112(b), Daigle teaches that the disinfectant formulations exhibit antiviral and antifungal properties. See Daigle ¶¶ [0033]–[0039]. Daigle further teaches biological efficacy of a disinfectant formulation against Influenza A virus using an ASTM virucidal efficacy test. See Daigle ¶¶ [0071]–[0072], Table 4. Accordingly, the combined teachings of Madhavan, Siddiquee, and Daigle render obvious the method of claim 26 wherein the virus is influenza virus, as recited in claim 33. Because claim 33 is written in the alternative, the teaching of influenza virus is sufficient to meet the recited viral alternative.
Response to Arguments
Applicant’s arguments concerning alleged synergistic antimicrobial activity, relative non-toxicity, and biodegradability are not persuasive because claim 1 does not require synergy, any minimum log reduction, non-toxicity, biodegradability, any particular essential oil, any particular ionic liquid species, any concentration, or any test organism. The evidence relied upon by Applicant is limited to selected combinations of particular essential oils and particular ionic liquids against particular bacteria and is not commensurate in scope with the breadth of claim 1.
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Madhavan et al. (WO 2013/075921 A1; “Madhavan”) in view of Siddiquee et al., Journal of Molecular Liquids 2020, 115125 (“Siddiquee”), further in view of Daigle et al. (US 2014/0142197 A1), and further in view of Lamb et al. (WO 2016/004326 A1).
Regarding claim 3, Madhavan, Siddiquee, and Daigle do not expressly teach that the essential oil is specifically Myrtus communis oil, Thymus capitatus oil, Mentha pulegium oil, or Eucalyptus cinerea oil.
Lamb et al. teaches essential-oil compositions comprising thyme essential oil, wherein “thyme essential oil” refers to natural thyme oil derived from plants in the Thymus genus. See Lamb et al. ¶ [0026]. Lamb et al. further teaches that suitable species within the Thymus genus include Thymus capitatus. See Lamb et al. ¶ [0066]; claims 5 and 21. Lamb et al. also teaches that essential-oil compositions may be provided as emulsions with water carriers and emulsifiers, and that such compositions provide bioactive properties, including pesticidal and fungicidal benefits. See Lamb et al. ¶¶ [0029]–[0030], [0060]–[0062], [0082]–[0089], [0091], [0124].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use Thymus capitatus oil as the essential oil in the antimicrobial microemulsion composition of Madhavan, as modified by Siddiquee and Daigle, because Madhavan teaches antimicrobial microemulsions comprising essential-oil materials including thymol and teaches that essential oils are natural antimicrobial agents, Daigle teaches antimicrobial disinfectant formulations comprising thyme oil, and Lamb et al. teaches that thyme essential oil may be derived from Thymus capitatus and used in emulsified bioactive compositions. The selection of Thymus capitatus oil would have amounted to using a known thyme essential oil species in a known essential-oil antimicrobial/emulsion formulation for its known bioactive properties.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Madhavan et al. (WO 2013/075921 A1; “Madhavan”) in view of Siddiquee et al., Journal of Molecular Liquids 2020, 115125 (“Siddiquee”), further in view of Daigle et al. (US 2014/0142197 A1), and further in view of Lucia et al. (PeerJ, 20 April 2017).
Regarding claim 13, Madhavan, Siddiquee, and Daigle do not expressly teach a first population of micelles having a first average diameter and a second population of micelles having a second average diameter, wherein the first average diameter is different from the second average diameter. Lucia teaches amphiphilic copolymer micelles containing essential-oil cores and further teaches micellar formulations having monomodal or bimodal diameter distributions. See Lucia, Fig. 1; Fig. 3; Materials and Methods. Lucia is relied upon only for its teaching of micellar formulations having monomodal or bimodal diameter distributions, and not for teaching the essential-oil or ionic-liquid surfactant limitations of claim 1.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to provide the antimicrobial essential-oil micellar/microemulsion composition of Madhavan, as modified by Siddiquee and Daigle, with first and second micelle populations having different average diameters, as taught by Lucia, because Lucia demonstrates that essential-oil-containing micellar formulations can be prepared with bimodal particle-size distributions. The use of such a bimodal distribution would have amounted to applying a known micellar particle-size distribution format to a known essential-oil micellar/emulsion composition with a reasonable expectation of success.
Allowable Subject Matter
Claims 8 and 9 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.
Claims 8-9 differ from the invention made obvious as set forth above in that the use of 1,12-Bis((1-methylbenzimidazolium)-3-yl)dodecane salt or the surfactant with a cleavable ester, ether, amide or hydroxyl functional group present in a hydrophobic chain would not have been obvious to a person of ordinary skill in the art from the cited references, when taken individually or in any combination.
Conclusion
No claims are allowed.
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/CHRISTOPHER M BABIC/ Supervisory Patent Examiner, Art Unit 1633
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