DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Note: Applicant has amended claims 1, 3-12, 14, and has cancelled claims 2, 13, 15-19 and 22. Furthermore, claims 23-26 are newly added.
Claim Objections
Pages of the claims are objected to because of the following informalities or typographic error. The printed serial number of this application on top-left of all pages (2-7) are 18/304,584 which is not correct. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 20-21 (dependent on claim 1) on the last line(s) recite the limitations of; "pH of the solution is less than 7 for citric acid”, "pH of solution is from about 7 to 10 for citric acid”, and “"pH of solution is greater than 7 for citric acid” correspondingly. There is insufficient antecedent basis for this limitation in the claims. Citric acid is naturally a solid and there is no “solution” limitation in claim 1. Furthermore, the composition is not claimed to be in liquid state form which causes the term solution for citric acid even more ambiguous. Applicant is required to correct/clarify these added limitations.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 5-6, 8-9, 14 and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Behal et al. (US 2009/0203570 A1) as additionally evidenced by Metcalfe et al. (WO 2018/0108466 A1).
Please note that; for the sake of simplicity the deleted formulas (I) and (II) are still represented by Behal reference which in fact render the instantly amended limitations obvious by inclusion of cationic biocidal actives (DDAC) and BKC in the instant claims 1, 6-7 and 11-12.
Regarding claims 1, 3, 5-6, 8-9 and 14, Behal teaches a fabric treatment composition (i.e. laundry); [9, 15], comprising; (i); 0.1-20% cationic fabric conditioner (cationic quaternary ammonium compounds are also classified a biocides) such as general cationic compound of R5 R6 (R7)2 N+ X- wherein R5 and R6 =C8-C24 alkyl and R7= C1-C3 alkyl which includes dialkyldimethyl ammonium chloride (DDAC); [27, 29], and (ii); general cationic compound of formula R2 R3 (R4)2 N+ X- , wherein R2 =C6-C18, R3= benzyl and R4= C1-C3 alkyl in the amounts of 0.1-5% (11, 39, claim 1), thus rendering alkyl dimethyl benzylammonium chloride (ADMBAC same as BKC) obvious; [39, table 1]. It is noted that cationic compounds of alkylammonium chloride and more specifically alkyl dimethyl benzalkonium chloride are both known as biocidal, antibacterial and sanitizing agents.. The selection of (DDAC) and (BKC) in laundry compositions with biocidal properties are well known as further evidenced by analogous art of Metcalfe; [pg.3: 18-19]. At the time before the effective filing date of invention, it would have been obvious (instant claim 8) to a person of ordinary skill in the art to select only the (DDAC) and (BKC) active agents as a functional equivalent alternative in the given general formulas above by Behal. Behal, also, teaches organic acid (instant claims 1, 5-6, 11-12) such as citric acid in the amounts of 1-10%; [47, 49, tables 2-3], and water; [53]. Behal teaches (instant claim 9) no bleaching agents.
Regarding claim 1, and the word “sanitizing” on the preamble, it is noted that: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is considered not a limitation rather an intended use for claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 11c 2 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (The claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim). please see [MPEP 2112.02].
Regarding claim 14, Behal teaches a method of treating (also construed as sanitizing with presence of cationic actives such as alkyldimethyl benzalkonium chloride) laundry and washing by adding 2.5 grams of composition to a liter of aqueous liquor of a laundry washing machine (i.e. automatic) for a certain period of time; [15, 64]. At the time before the effective filing date of invention it would have been obvious to add any amount of liquid biocidal composition as intended for disinfecting and removal of contaminating material from the fabric substrates.
Regarding claims 23, and 25-26, Behal teaches a laundry treatment composition comprising 0.1-20% cationic fabric conditioner (cationic quaternary ammonium compounds are also classified a biocides) such as DDAC; [27, 29], and biocidal alkyl dimethyl benzylammonium chloride (BKC) in amounts of 0.1-5%; [11, 39, claim 1], and citric acid in the amounts of 1-10%; [47, 49, tables 2-3]. Note that, The subject matter as a whole would have been obvious to one having ordinary skill in the art before the time the invention was made, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549.
Regarding claim 24, The Office realizes that all the claimed effects or physical properties (at least 4 log reduction of instantly claimed bacterial agents) are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. at least 4 log reduction of instantly claimed bacterial agents, would expectedly be achieved by a composition with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claims 4, 7, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Behal et al. (US 2009/0203570 A1) as applied to claim 1 and further in view of Eppler et al. (US 2018/0289601 A1).
Regarding claims 4, 7, and 11-12, Behal does not teach the citric acid salts with the instantly claimed cations. However, the analogous art of Eppler et al. teaches a similar sanitizing laundry treatment composition (10, 50, 57, 80, claims 19, 39) comprising citric acid, NaOH and thus its sodium salts (as pH adjusting or buffering agent) in the amounts 0.1-10%; [66]. At the time before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to add the NaOH of Eppel to Behal’s composition with the motivation of stabilizing the pH of solution for a further synergistic biocidal activity of the composition, as taught by Eppler above. Note that (instant claim 11) water of the composition is taught by Behal; [53].
Response to Arguments
Applicant's arguments filed 2026/06/04 have been fully considered but they are not persuasive. Note that for the sake of brevity the applicant’s repetitious argument, on different pages, are only responded to once. Also note that some of the stated arguments are addressed in the revised body of the final action (i.e. claim 1-preamble) above.
In response to applicant’s argument (8-12) that: 1)- “Furthermore, Applicant respectfully submit that Behal's fabric softening objectives are not pertinent to the bacteria reduction goals of the present application. The Paper fails to disclose why an inventor seeking to obtain germ kill would turn to Behal for guidance. MPEP 2141.0l(a)(I), citing Donner Tech, LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed Cir. 2020)”, on page 9. 2)- “Applicant further respectfully submits that nothing in Behal' s disclosure would motivate one of ordinary skill in the art to arrive at the currently claimed combination.”, on page 10. and; 3)- “1) Behal never expressly disclose any biocides or any germ kill results. Rather, Behal combines a cationic fabric conditioner active with an anion quencher to provide improved fabric softening and enable retention of fragrance on the fabric.”, on page 11. and; “As discussed above and evidenced by para 0064 as well as the whole document, Behal does not disclose any bacteria reduction properties. Therefore, para 0064 Behal does not disclose claim 14's method of sanitizing a laundry (by washing). Withdrawal of this rejection is respectfully requested.”, on page 14. It is noted that the response for these remarks is already stated above on claim 1 rejection regarding the interpretation of the claim preamble(s). Also, it should be noted that contrary to applicant’s assertion above the instant claims are directly related to a specific composition being used on conditioning and treating laundry material which is also construed as sanitizing the fabric by virtue of having the same composition as instantly claimed. Applicant appears to use a discontinued paragraphs of prior art’s teaching without considering the totality of its teaching, which is not persuasive. In short, the prior art of Behal teaches (regardless of the names) exactly the very same active agents that applicant has claimed as “sanitizing compound(s)” and renders the argument unpersuasive. It should be noted that chemical compounds almost always possess different characteristics or properties (multi-properties) which behave or react differently under different circumstances. Again, BKC is a well-known antibacterial and biocide agent which is fully capable of sanitizing laundry substrates.
In response to applicant’s argument (page 11) that; “The only efficacy Behal claims is softness and fragrance retention; these are not relevant to antimicrobial efficacy. Any finding of any biocidal disclosures in Behal is improper, as only such arrived at by (impermissible) hindsight reconstruction based on the claims of the present invention. The jurisprudence recognizes this: "To draw on hindsight…..”, on page 11. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument (page 11) that: “It is impermissible within the framework of section 103 to pick and choose from anyone but to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art." In re Wesslau, 353 f.2d 238, 241 (CCPA 1965)”. Correspondingly, it is noted; Behar teaches identical active agents as applicant has claimed and any other component present in prior art and absent in instant claims cannot be construed as rendering the prior art ineffective and unobvious. Applicant’s argument would be of merit in the claim language was (consisting of” instead of present “comprising”.
In response to applicant’s argument (page 13) that; “Furthermore, nothing in Behal would motivate one of ordinary skill in the art to select DDAC from the incredibly large number of optional fabric softener compounds disclosed by Behar.”, it is noted that; “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), [MPEP 2141.02].
In response to applicant’s argument (page 18) that: “Applicant respectfully notes that none of these citations include any reference to laundry sanitizer compositions. At best, Eppler discloses, amongst a lot of other formulations, Applicant respectfully notes that none of these citations include any reference to laundry sanitizer compositions. At best, Eppler discloses, amongst a lot of other formulations, laundry pre-spotters that may contain antibacterial and/or antifungal additives. But such laundry pre-spotters are not laundry sanitizers and are also not laundry softeners. A proper analysis of Eppler under 35 USC 103 would reveal that it discloses compositions, methods, and products containing bio-based farnesane or compounds derived therefrom and their use in consumer and industrial products (para 0002). laundry pre-spotters that may contain antibacterial and/or antifungal additives. But such laundry pre-spotters are not laundry sanitizers and are also not laundry softeners. A proper analysis of Eppler under 35 USC 103 would reveal that it discloses compositions, methods, and products containing bio-based farnesane or compounds derived therefrom and their use in consumer and industrial products (para 0002).”. please note that; (I)- Chemicals such as NaOH and Na-citrate are used in many and different types of compositions wherein Na-hydroxide is pH lowering agent and Na-citrate has a pH balancing, or buffering, properties. Therefore, applicant’s argument that Eppel is not a sanitizing composition is not persuasive even if Eppler and Behal were not in the same or related field of endeavor, which is not the case. (II)- It has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. It is submitted that the applied references are therefore at least reasonably similar to applicant’s field of endeavor. (III)- Note that; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
It is, respectfully, suggested that perhaps a more concise and distinct amendment of instant claim(s) would, probably, be more effective in further distinguishing the claims from the teaching of the prior arts of record.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 8 PM Flex..
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/M.R.A./
Examiner, Art Unit 1767
2026/08/29
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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