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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed June 26, 2026 in reply to the First Office Action on the Merits mailed March 27, 2026. Claims 1 and 6-8 have been amended; and claims 4, 5, 15-31 and 38-62 have been canceled. Claims 7-10, 13, 14, and 32-37 have been withdrawn. Claims 1-3, 6, 11, and 12 are under examination.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the First Office Action on the Merits mailed March 27, 2026 is hereby withdrawn.
Withdrawal of Prior Claim Objections
Claim 1 has been satisfactorily amended. Therefore, the objection to claim 1 presented in the First Office Action on the Merits mailed March 27, 2026 is hereby withdrawn.
Withdrawal of Prior Claim Rejections - 35 USC § 102(a)(1) and 102(a)(2) (I and II)
Premachandran et al. (U.S. Patent Application Pub. No. 2012/0171272) do not explicitly disclose that the composition contains one or more vicinal diols, as now stipulated in newly amended claim 1. Therefore, the 35 USC 102(a)(1) and 102(a)(2) rejections presented in the First Office Action on the Merits mailed March 27, 2026 are hereby withdrawn.
Partial Withdrawal of Prior Claim Rejections - 35 USC § 103
Premachandran et al. (U.S. Patent Application Pub. No. 2012/0171272) do not explicitly disclose that the composition contains one or more vicinal diols, as now stipulated in newly amended claim 1. Therefore, the 35 USC 103 rejection of claims 1-4 as being unpatentable over Premachandran et al. alone, presented in the First Office Action on the Merits mailed March 27, 2026, is hereby withdrawn.
Obviousness-Type 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 1, 2 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 11, 12, and 20 of U.S. Patent No. 11,566,140, in view of Winn (U.S. Patent Application Pub. No. 2007/0207105).
Applicant’s elected subject matter is directed to a biocidal composition comprising IPBC and zinc oxide in a weight ratio of 25:1 to 1:25, wherein the composition further comprises one or more vicinal diols, e.g. 1,2-hexanediol.
Claims 1-4, 11, 12, and 20 of U.S. Patent No. 11,566,140 disclose a biocidal composition comprising IPBC and an isothiazolinone-zinc oxide complex in a weight ratio of 25:1 to 1:25.
Winn discloses a biocidal composition comprising a biocidal agent (e.g. an isothiazolinone) and a vicinal diol, e.g. 1,2-hexanediol; wherein the vicinal diol can be present in an amount of up to 98 wt% and provides antimicrobial activity.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
1. U.S. Patent No. 11,566,140 discloses that the biocidal composition can further include a solvent.
2. Winn discloses that vicinal diols, such as 1,2-hexanediol, advantageously serve as the solvent for biocidal compositions since the vicinal diol itself provides significant antibacterial activity and can synergize with other biocidal agents for an enhanced antifungal activity.
3. The zinc oxide in the present claims does not exclude an isothiazolinone-zinc oxide complex. The present disclosure expressly provides that “other biocides…may be present in the biocidal compositions of the disclosure”, which include “5-chloro-2-methyl-2H-isothiazol -3-one/2-methyl-2H-isothiazol -3-one (“CMIT/MIT”)” (see US Pub., paragraph 0098).
Claim Rejections - 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 11 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 depends from claim 5, which is canceled. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
***Until further clarification, claim 11 is being interpreted as intended to be dependent from claim 1.
Claim 12 is indefinite for depending from an indefinite claim.
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 1-3, 6, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Premachandran et al. (U.S. Patent Application Pub. No. 2012/0171272), in view of Winn (U.S. Patent Application Pub. No. 2007/0207105).
Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising IPBC, zinc oxide, and a vicinal diol, e.g. 1,2-hexanediol; wherein the IPBC can be present in the amount of 10 wt%, or 1-25 wt%, the zinc oxide can be present in the amount of 5 wt%, or 1-25 wt%, and the vincinal diol can be present in the amount of 60 wt%, or 40-80 wt%; and wherein the zinc oxide can be in the form of nanoparticles.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Premachandran et al. disclose a biocidal composition comprising IPBC, a metal oxide, and a solvent; wherein the IPBC can be present in the amount of e.g. 10 wt%, or 1-40 wt%; wherein the metal oxide is preferably zinc oxide, is preferably in the form of sub-micron particles (i.e nano-particles), and can be present in the composition in the amount of e.g. 5 wt%, or 0.001-5 wt%; and wherein the solvent can include a diol or other alcohol present in the amount of e.g. 60 wt%, and can further include e.g. PEG400 (i.e. a “bacterial membrane disruptor”) (see e.g. abstract; paragraphs 0006, 0008-0010, 0021; examples 4, 16-19, and 21).
Winn discloses a biocidal composition comprising a biocidal agent (e.g. an isothiazolinone) and a vicinal diol, e.g. 1,2-hexanediol; wherein the vicinal diol can be present in an amount of up to 98 wt% and provides antimicrobial activity.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Premachandran et al. do not explicitly disclose that the diol or other alcohol solvent is a vicinal diol, such as 1,2-hexanediol. This deficiency is cured by the teachings of Winn.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Premachandran et al. disclose a biocidal composition comprising IPBC, a metal oxide, and a solvent; wherein the IPBC can be present in the amount of e.g. 10 wt%, or 1-40 wt%; wherein the metal oxide is preferably zinc oxide, is preferably in the form of sub-micron particles (i.e nano-particles), and can be present in the composition in the amount of e.g. 5 wt%, or 0.001-5 wt%; and wherein the solvent can include a diol or other alcohol present in the amount of e.g. 60 wt%, and can further include e.g. PEG400 (i.e. a “bacterial membrane disruptor”). Since Winn discloses that vicinal diols, such as 1,2-hexanediol, advantageously serve as the solvent for biocidal compositions since the vicinal diol itself provides significant antibacterial activity and can synergize with other biocidal agents for an enhanced antifungal activity; and that the vicinal diol can be employed in an amount up to about 98 wt%; one of ordinary skill in the art would thus be motivated to employ a vicinal diol, e.g. 1,2-hexanediol, as the diol/alcohol solvent in the Premachandran et al. composition, in the amount of e.g. about 60 wt%, with the reasonable expectation that the resulting composition will successfully exhibit enhanced biocidal activity.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was 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.
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “there is no teaching or suggestion in either reference to specifically combine the IPBC/zinc oxide system with a vicinal diol”; and, moreover, “the claimed combination exhibits an unexpected synergistic effect” since the “level of antibacterial activity…is significantly greater than the sum of the individual components activities” and “a skilled artisan reading Premachandran and Winn would have had no reasonable expectation of such synergy”.
The Examiner, however, would like to point out the following:
1. While Premachandran does not individually anticipate the presently claimed subject matter under 35 USC 102, and does not recite Applicant’s present claims verbatim, Premachandran discloses a biocidal composition comprising IPBC, a metal oxide, and a solvent, wherein the metal oxide can be zinc oxide in nanoparticle form, and the solvent can be e.g. a diol present in the amount of e.g. 60 wt%. Indeed, one of ordinary skill in the art would know that vicinal diols are in fact diols and would be included within the purview of “a diol” disclosed in Premachandran.
2. However, Winn, the cited secondary reference, is also directed to a biocidal composition, and teaches specifically the use of vicinal diols, such as 1,2-hexanediol, as an advantageous solvent for biocidal compositions, since the vicinal diol itself provides significant antibacterial activity, and that the vicinal diol can be employed in an amount up to about 98 wt%. Hence, in stark contrast to Applicant’s assertion, the cited prior art does in fact teach the combination of IPBC, zinc oxide, and a diol, and would without question reasonably suggest in particular the combination of IPBC, zinc oxide, and a vicinal diol, for the advantages just discussed.
3. Moreover, Winn also teaches that the use of vicinal diols, such as 1,2-hexanediol, is an advantageous solvent for biocidal compositions, since the vicinal diol itself can synergize with other biocidal agents for an enhanced antifungal activity. Hence, in stark contrast to Applicant’s assertion, the combination of biocidal agents such as IPBC and zinc oxide with a vicinal diol such as 1,2-hexanediol would reasonably be expected to exhibit a synergistic effect. Indeed, Applicant has not pointed to where they have hard evidence of synergy due to the presence of the vicinal diol in their claimed composition, but even if they have formally established that such synergy exists, the synergy is not unexpected in view of the cited prior art.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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