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 .
Claim Status
Applicants election with traverse of Group I claims 1-8 and 16-18 and the species of citric acid (carboxylic acid), percitric acid (mono and di ) as the peroxycarboxylic acid and H2SO4 (sulfuric acid) as the inorganic acid in the reply filed on 06/18/2026 is acknowledged.
The traversal is on the ground(s) that the Examiner has not explained how the process of preparing an antimicrobial composition fails to contribute over the cited reference.
This is not found persuasive because per the teachings of Oosterman a mixture of hydrogen peroxide (H2O2), lower aliphatic carboxylic acid RCO2H and corresponding carboxylic peracid RCO3H is obtainable in having either H2O and RCO3H or H2O2 and RCO2H together in H2O, provided that hydrogen peroxide is in the prerequisite excess relative to the RCO3H/RCO2H mixture at paragraph [0026]. The he manufacturing method of Oosterman is preferably performed under atmospheric pressure and within a temperature range from about 10° C. to about 40° C at paragraph [0042]. The composition cis stored up to years at temperatures between 4-25 degrees Celsius which meets aging, see paragraph [00068] and paragraphs [0020]-[0024], [0033], [00070]-[0079]. Lack of unity of invention can be made a posteriori after considering claims in relation to the art. In the instant case, the common technical feature of an aqueous product of claim 9 is met by the teachings of Oosterman utilizing the product by process of claim 1.
With regards to the species Applicants argue that the species represent distinct characteristics is conclusory and that the Examiner has not explained why the elected species lack a single inventive concept.
This is not found persuasive because Oosterman teaches making peracids. Tartaric acid, silver nitrate, water, phosphoric acid are mixed at 20 degrees Celsius, then mixed with peracetic acid hydrogen peroxide, acetic acid and water encompassing ageing up to a year at 50 degrees Celsius. Thus, Oosterom teaches aqueous antimicrobial compositions comprising the components of claim 1. As the species claimed are disclosed in the prior art they lack unity of invention. In addition, the prior art cited below further provides lack of unity of invention as the methods of claim 1 are provided by the teachings of Wilson, Mcsherry and ECA Academy.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-15 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/18/2026 is acknowledged.
Claims 1-8 and 16-18 are under current examination.
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 01/08/2024 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
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 1-8 and 16-18 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 includes step a) mixing of carboxylic acid and hydrogen peroxide and inorganic acid to obtain a first mixture, then step b) is reacting the first mixture to form a percarboxylic acid. It is unclear if the step of “reacting” is synonymous with “mixing” to form a first mixture or if reacting is meant to encompass an alternative reaction after the mixture of the ingredients in step a). In other words, it is unclear how mixing in step a of the particular ingredients is meant to encompass a different step than reacting as it appears that simply mixing is reacting. Dependent claims 2-8 and 16-18 do not rectify the deficiency of claim 1.
Claim 2 recites that the duration of b) is selected so that a concentration of the percarboxylic acid in the second mixture deviates by at most 20% from a maximal concentration achievable in the second mixture. It is unclear if claim 2 is claiming a concentration of percarboxylic acid or a time period for which the reaction is occurring. The deviates by at most a 20% from a maximal concentration renders the scope of the claim indefinite as it is unclear what concentration is required by the claim and whether any concentration is even required. Thus, the metes and bounds as to the process step of claim 2 cannot readily be ascertained. For the purpose of examination, claim 2 will be interpreted as reacting to form percarboxylic acid to a maximal concentration.
Claim 5 recites an employed aqueous hydrogen peroxide solution has a concentration of at least 25% by weight of H2O2. Claim 17 recites the employed aqueous hydrogen peroxide solution. It is unclear if an employed aqueous hydrogen peroxide solution is referring to the mixture of part a) or a separate additional hydrogen peroxide solution. For the purpose of examination claim 5 will be interpreted as the mixture of claim 1 part a).
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 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 1-8 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et al. (WO1993005016) in view of Mcsherry et al. (EP2878593) and ECA Academy (What are the regulatory definitions for “Ambient”, “Room Temperature” and “Cold Chain”?)
Wilson et al. teach preparation of aqueous solutions comprising mixing aqueous solution (i.e. comprising water) of carboxylic acid with hydrogen peroxide and preferably employing a mineral acid catalyst until the concentration of peracid has attained a maximum, see abstract pages 8-9 and claims 1-2. The mineral acid catalyst includes sulphonic acid, see page 5. The reaction forms a percarboxylic acid, see claim 1 abstract and page 5. The solutions can be stored (i.e. aged) for 6 weeks at ambient temperature, see examples 1-3. The carboxylic acid is inclusive of citric acid, see claims 1 and 2. The hydrogen peroxide solution includes at least 50% w/w rendering obvious at least 25% w/w and a range of 30-75% by weight, see pages 1-7. The carboxylic acid which is inclusive of citric acid can comprise at least 30% by weight or more rendering obvious at least 20% by weight and includes di or mono or tri carboxylic (i.e. citric acid), or 50% or more, see claims 1-3 and pages 6-7. The molar ratio of hydrogen peroxide to carboxylic acid includes 0.5:1, see claim 6. The reaction mixture can be diluted with water such that three is 0.5-2% w/w peracid (5000-20000ppm), see claim 8 and entire document . Wilson teaches that the extent of dilution is at the discretion of the process operator, see page 9. The peracid composition is taught to be antimicrobial and reduces the concentration of bacteria, see peracid composition at pages 14- 15. As taught by ECA Academy, ambient temperature means room temperature and is inclusive of 15-25 degrees Celsius or up to 30 degrees Celsius, see pages 1-3. Thus, the ambient temperature of Wilson is inclusive of 25 degrees Celsius. The peracid concentration maximum can be attained from 45 mins to 3 hours, see claim 8. A concentrated aqueous solution of the hydroxyaliphatic carboxylic acid is mixed with a concentrated hydrogen peroxide solution containing greater than one mole hydrogen peroxide per molar equivalent of carboxylic acid in the presence, if necessary, of a catalytic amount of a strong acid, in a second step the mixture is stored (i.e. aged) until the concentration of peroxyacid has closely approached its maximum, see claim 1 and entire document.
Wilson does not teach that the mineral acid used is sulfuric acid.
However, Mcsherry et al. teach methods of making aqueous antimicrobial compositions comprising percarboxylic acid wherein an acidulant is added to act as a catalyst for conversion of carboxylic acid plus hydrogen peroxide composition to peroxycarboxylic acid, wherein the catalyst includes sulfuric acid in the alternative to sulfonic acid, see paragraphs [0168],[0256], [0279] and claims 1 and 5. Suitable carboxylic acid includes citric, see paragraph [0262].
It would have been prima facie obvious to substitute the sulfonic acid of Wilson et al. for sulfuric acid.
One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because both Wilson and Mcsherry teach that catalysts are used to convert the citric acid and hydrogen peroxide containing composition to percarboxylic acid, and according to Mcsherry suitable catalysts include sulfuric acid in the alternative to sulfuric acid.
Conclusion
Currently, no claims are allowed and all claims are rejected.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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