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 papers filed February 3, 2026. Applicant’s reply to the restriction/election requirement of December 4, 2025 has been entered. Claims 15-31 and 38-62 have been canceled. Claims 1-14 and 32-37 are pending.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/US2021/065580, filed December 29, 2021 under 35 U.S.C. 365(c), which claims the benefit of prior-filed U.S. Provisional Patent Application No. 63/132,315, filed December 30, 2020 under 35 U.S.C. 119(e), is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, is acknowledged. Applicant’s election of i) “1,2-hexanediol” as the species of further constituent is hereby also acknowledged. The Examiner has determined that claims 1-6, 11, and 12 read on the elected subject matter.
Accordingly, claims 7-10, 13, 14, and 32-37 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected subject matter, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on February 3, 2026. Claims 1-6, 11, and 12 are currently under examination.
Abstract
The abstract of the disclosure is objected to because of the following:
1. The abstract should be a concise summary of the key technical aspects of the invention which are new to the art to which the invention pertains. If the invention is a composition, the abstract should recite the key requisite ingredients. If the abstract is a method, the abstract should recite the key active steps.
2. The present abstract appears to ramble on with redundant information and is at time a bit incoherent. For example, the abstract first introduces what appears to be Applicant’s inventive composition that contains IPBC, zinc oxide, and a “bacterial membrane disruptor”, but then proceeds to introduce a “working” composition that contains IPBC, zinc oxide, a “bacterial membrane disruptor”, water, and an organic compound. Not only is this redundant, but it’s also unclear which composition is the actual invention, and why one appears to “work” and presumably the other does not. Applicant thus fails to convey to the reader in clear and concise terms what the actual invention is, and what the key ingredients are.
3. Further, the method recited is incoherent and redundant. The method appears to be “enhancing the antibacterial activity of IPBC”, and involves “treating the working composition with IPBC in the presence of zinc oxide and a “bacterial membrane disruptor”. However, the “working composition” was already defined earlier in the abstract and this composition contains (as best can be discerned) IPBC, zinc oxide, a “bacterial membrane disruptor”, water, and an organic compound. Hence, one of ordinary skill in the art cannot make heads or tails out of this “method”, i.e. treating a working composition containing IPBC, zinc oxide, a “bacterial membrane disruptor”, water, and an organic compound with IPBC while in the presence of zinc oxide and a “bacterial membrane disruptor”. Indeed, this appears to be nothing more than an attempt to patent a property of the so-called “working composition” when compared with some undefined reference composition. However, Applicant is advised that in the United States, patents are granted for new and non-obvious methods of using a composition and new and non-obvious methods of making a composition, but not for a property, even a newly discovered property, of a composition.
4. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art, e.g. “effective for wet-state and dry-film preservation”.
5. The acronym “IPBC” should first be spelled out by its formal chemical name or structure, and then the acronym can be subsequently employed. Moreover, there is an extraneous comma between “a biocidal composition” and “comprising”. Moreover, there appear to be multiple separate and complete sentences joined by commas that are more appropriately presented as individual, separate sentences with periods at the end.
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
Claim 1 is objected to because of the following:
i) In claim 1, there is an extraneous comma between “a biocidal composition” and “comprising”
Appropriate correction is required.
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 and 2 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.
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.
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.
Although the claims at issue are not identical, they are not patentably distinct from each other because the zinc oxide in the present claims do 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 1-6, 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 1 recites the acronym “IPBC”, which is not defined by the claim. Claims must stand alone to define the invention, and should not rely on the specification, drawings, or extraneous materials to give them meaning. Applicant is advised to first define “IPBC” by its formal chemical name or structure, and then the acronym can be subsequently employed.
Claims 2-6, 11, and 12 are indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 102(a)(1) and 102(a)(2) (I and II)
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
I. Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Premachandran et al. (U.S. Patent Application Pub. No. 2012/0171272).
The present claims are directed to a biocidal composition comprising IPBC and zinc oxide, wherein the IPBC to zinc oxide weight ratio is 25:1 to 1:25.
Premachandran et al. disclose a biocidal composition comprising 20 wt% IPBC and 4 wt% zinc oxide (see example 3). The IPBC to zinc oxide weight ratio is this 5:1.
Therefore, Premachandran et al. anticipate the subject matter of claims 1 and 2.
II. Claims 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Premachandran et al. (U.S. Patent Application Pub. No. 2012/0171272).
The present claims are directed to a biocidal composition comprising IPBC, zinc oxide, and a “bacterial membrane disruptor”; wherein the zinc oxide comprises zinc oxide nanoparticles.
Premachandran et al. disclose a biocidal composition comprising IPBC, zinc oxide, and PEG400 (i.e. a “bacterial membrane disruptor”); wherein the zinc oxide comprises sub-micron sized zinc oxide particles (i.e. zinc oxide nanoparticles) (see e.g. example 16).
Therefore, Premachandran et al. anticipate the subject matter of claims 1, 3, and 4.
Claim Rejections - 35 USC § 103 (I and II)
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.
I. Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Premachandran et al. (U.S. Patent Application Pub. No. 2012/0171272).
I. Applicant Claims
Applicant’s elected subject matter is directed to a biocidal composition comprising IPBC, zinc oxide, and a “bacterial membrane disruptor”; wherein the IPBC to zinc oxide weight ratio can be 25:1 to 1:25; and wherein the zinc oxide can be in the form of nanoparticles.
I. 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 PEG400 (i.e. a “bacterial membrane disruptor”); wherein the IPBC can be present in the amount of e.g. 10 wt%, or 1-40 wt%; and 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% (see e.g. abstract; paragraphs 0006, 0008-0010, 0021; examples 4, 16, and 18).
I. 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 IPBC to zinc oxide weight ratio is 25:1 to 1:25. This deficiency is cured by the teachings of Premachandran et al.
I. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to employ the teachings of Premachandran et al., outlined supra, to devise Applicant’s presently claimed composition.
Premachandran et al. disclose a biocidal composition comprising IPBC, a metal oxide, and PEG400 (i.e. a “bacterial membrane disruptor”); wherein the IPBC can be present in the amount of e.g. 10 wt%, or 1-40 wt%; and 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%; wherein the composition can provide UV protection and biocidal activity. One of ordinary skill in the art would thus be motivated to combine IPBC in the amount of 10 wt%, and zinc oxide in the amount of 5 wt%; with the IPBC to zinc oxide weight ratio being 2:1; with the reasonable expectation that the resulting composition will successfully provide UV protection and also 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.
II. Claims 5, 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)
II. 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.
II. 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.
II. 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.
II. 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.
Conclusion
No claims are allowed.
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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/DAVID BROWE/Primary Examiner, Art Unit 1617