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 .
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is arranged as two paragraphs with intervening headings, instead of as a single paragraph in narrative form. 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).
Specification
The disclosure is objected to because of the following informalities: The specification filed February 24, 2025 as the most recent English translation of the original specification filed in Japanese as part of PCT/JP2022/044506 contains a heading at the top of page 1 that reads “[Document Name] Description”. This heading appears to be extraneous text and should be deleted. Appropriate correction is required.
Claim Objections
The claims are objected to because of the following informalities:
The claim set filed February 24, 2025 as the most recent English translation of the original claims filed in Japanese as part of PCT/JP2022/044506 contains a heading that reads “[Document Name] Claims”. The “[Document Name]” portion appears to be extraneous text and should be deleted.
Claims 1 and 2 recite “a pH of 0.5 or more and 4 or less”. This style of recitation is rather awkward with the use of the word “and” as part of the range recitation. The range would be clearer if recited as “a pH of 0.5 to 4” or “a pH from 0.5 to 4”.
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.
Claim 3 is 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.
The scope of the claim is unclear in regard to which portion is the body of the claim that contains its active steps, and which portion is the preamble. The claim recites “A method of destroying biofilms using the solution for destroying biofilms of Claim 1, by adjusting the pH according to the types of bacteria producing biofilms.” It is not clear if the claim reads such that 1) the preamble is “A method of destroying biofilms” while the body is “using the solution for destroying biofilms of Claim 1, by adjusting the pH according to the types of bacteria producing biofilms” or 2) the preamble is “A method of destroying biofilms using the solution for destroying biofilms of Claim 1,” while the body is “by adjusting the pH according to the types of bacteria producing biofilms”.
Both interpretations of the recitations discussed above contain further issues in regard to the scope of the actions in the claim and how they fulfill the preamble. When considered as part of the preamble, the recitation “using the solution for destroying biofilms of Claim 1” is an intended use/outcome that is not attached to any particular action, thus it is not at not limiting. When considered as part of the body of the claim, the recitation “using the solution for destroying biofilms of Claim 1” would be a step of “using”. An active step of “using” is non-descript because the particular actions it requires are not clear. The beginning of the preamble recites a method of destroying biofilms, however, there are no active steps that clearly require interaction between the solution and a biofilm. It is not clear how the recited step of “adjusting the pH according to the types of bacteria producing biofilms” destroys biofilms, in the absence of a requirement that the solution contact the biofilm. Further, there is no recitation detailing in what way the pH is to be “adjusted” in consideration of the type of bacteria producing biofilms. Therefore the scope of the claim is unclear.
For the sake of compact prosecution and the application of prior art, the claim limitations will be considered met by a teaching that modifies the pH of a solution comprising water and deuterated sulfuric acid such that it has a pH of 0.5 or more and 4 or less.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (JP 2014100700 – English translation referenced for citations).
Tanaka et al disclose a solution composed of deuterium (deuterated) sulfuric acid and water at a 1:9 volume ratio (see paragraph 22; instant claims 1 and 2). They additionally disclose preparing the solution by mixing the two components together and adjusting the pH of the resulting solution to be in the range of 1 to 2.5 (see paragraph 22; instant claims 1-3). The instant claims recite the solution to have an intended use such that it is “for destroying biofilms”. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The instant disclosure does not detail any particular proportion of deuterated sulfuric acid in the claimed solution as necessary to destroy biofilms, but instead details pH as the determining feature to qualify a solution of water and deuterated sulfuric acid as being “for destroying biofilms” (see specification paragraphs 41-52). The disclosure notes biofilms formed from bacteria without acid-resistance as susceptible to destruction at pH values through the entire claimed range of 0.5 or more to 4 or less (see specification paragraphs 45-51). They also note that at least some biofilms from acid resistant bacteria are susceptible to destruction at lower pH values within the instantly claimed range (see paragraphs 41-44). The applicant’s assessment of biofilm destruction included treatments of biofilms already formed as well as those in the process of forming (see paragraphs 41-52). Thus a solution of water and deuterated sulfuric acid with a pH of 0.5 or more to 4 or less qualifies as being capable of destroying films made from some type of bacteria and the solution of Tanaka et al. meets this criteria and the intended use. Therefore claims 1-3 are anticipated by Tanaka et al.
Additional Relevant Prior Art
Additional references and teachings are relevant to a method of destroying biofilms with a solution of water and deuterated sulfuric acid. The intent of Tanaka et al. is decontamination of soil, where the soil is treated with their solution of water and deuterated sulfuric acid. The soil is envisioned to include that of farmland, parks, and forests. Kawasaki et al. (see US Patent No. 5,776,422) detail the recognition of the presence of bacteria in soil such as topsoil, sand box courts (parks), and agricultural soil. Smithyman et al. (US PGPub No. 2010/0233289) discuss that aqueous sulfuric acid solutions at a pH of about 1 to about 2.2 were known for eliminating microorganisms due to surface applications. Further, Miller at el. (US PGPub No. 2022/0204463) discuss deuteration of some antimicrobial compounds improving their efficacy.
Conclusion
No clam is allowed.
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/CARALYNNE E HELM/ Examiner, Art Unit 1615
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