Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 February 2026 has been entered.
Applicant’s amendment of 12 February 2026, in which claims 21 has been amended, and claim 31 has been cancelled, is acknowledged.
Claims 21-30, 32-33, 36-38 are pending in the instant application.
Claims 32-33, 36-38 are withdrawn as being drawn to a non-elected invention.
Claims 21-30 are being examined on their merits herein.
Response to arguments of 12 February 2026
In view of Applicant’s amendment of 12 February 2026, all the rejections to claim 31 are herein withdrawn. Claim 31 has been cancelled.
On 12 February 2026, Applicant has amended claim 21 to recite
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New rejections are made below, based on Applicant’s amendment of 12 February 2026.
Applicant argues (Remarks of 12 February 2026, pages 8-9) that the term “industrial-scale […] composition” is not indefinite, because it refers to a composition for bulk commercial storage and transport, as opposed to small laboratory containers. In response, claim 21 is drawn to a composition; a composition is defined by its constituents and their relative concentrations. It is unclear what exactly distinguishes the claimed “industrial scale composition” from a (regular) composition, other than the volume of the container in which the composition is stored. The fact that claim 21 recites that the composition is in a bulk container having a volume of at least 1000 liters does not change the fact that the claims are drawn to a composition.
Applicant’s arguments (pages 10-11) regarding an “interplay” allegedly described in the Specification are confusing. Applicant cites different portions of the Specification, but fails to amend the claim to define the amount of mineral acid present in the composition.
Applicant argues (page 11, last paragraph) that claim 21 is not indefinite because the Specification describes SADT testing. This is not the point. See the new rejection to the claims below.
Applicant argues (0page 12, last paragraph) that elevation of SADT is tied to the UN transport threshold described in the Specification and the testing protocol is described in examples. Applicant argues that a POSITA “would understand how to select amounts within the disclosed ranges to achieve the required SADT elevation”. This is not persuasive. There are no “select amounts” disclosed in claim 21; in fact, claim 21 discloses no amounts/no concentrations of ingredients in the composition. Claim 21 fails to disclose the SADT; it only states that the SADT of the stabilized composition is classified as reduced risk. The claim is indefinite because there is absolutely no way of determining what is actually being claimed.
Applicant argues (page 13) that the recitation “wherein a use solution of the composition has a pH below 4” does not introduce ambiguity into the claim. Applicant argues that the Specification provides a specific dilution example resulting in a pH of 2.8-2.9. In response, this is not the point. It is known that concentrates can be diluted. The point is what is actually being claimed- since claim 21 does not recite the concentration of its components- is it a concentrate- or, rather, the claim is drawn to a dilute composition- and how would one know the difference, since the claim provides no information about the concentration of peracid in the composition.
A new rejection is made below, based on Applicant’s amendment of 12 February 2026.
Applicant argues (page 15) that, by introducing the limitation of claim 31 (now cancelled) into claim 21, claims 21-22, 24-30 are no longer anticipated or rendered obvious by the prior art. In response, the reason why claim 31 was not previously included in the anticipation or obviousness rejections is that claim 31 was indefinite- the examiner could not understand the claim as written. Claim 31 had been rejected for this reason (as indefinite).
Applicant argues (page 15, last paragraph-page 17) that prior art does not disclose industrial scale compositions stabilized in a bulk container having a volume of at least about 1000 liters; and that there is no reasonable expectation of success in scaling to industrial volume (pages 16-17). In response, claim 21 is drawn to a composition; a composition is defined by its constituents and their relative concentrations. The fact that claim 21 recites that the composition is in a bulk container having a volume of at least 1000 liters does not change the fact that the claims are drawn to a composition.
Applicant argues (page 16, last paragraph) that none of the cited prior art discloses an industrial scale composition stable in a bulk container of 1000 liters with SADT greater or equal to 45 degrees Celsius. In response, “Products of identical chemical composition can not 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)
MPEP 2112.01 further states: "When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions (in the instant case: stability) are presumed to be inherent". "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPO2d 1655, 1658 (Fed. Cir. 1990)."
In this case, the instant claims are drawn to a composition which is anticipated or rendered obvious by the prior art. The property of such composition, namely SADT in bulk, is inherent to the composition.
For these reasons, the rejections are herein maintained.
Applicant argues (pages 17-18) against the rejections of the instant claims on the ground of nonstatutory obviousness-type double patenting over claims of U.S. patents 9,902,627; 9,321,664; 9,585,397; 8,822,719; 10,165,774; 9,288,992; 11,026,421, as well as over claims of U.S. Patent 10,893,674, claims of U.S. Patent 11,026,421, and claims of U.S. Patent 10,893,674. Applicant states that the pending claims differ from each of the cited patent documents in any one or more of design, operation, or effect. In response, Applicant has not explained how the claims differ in design, operation or effect, since the instant claims and the claims of the cited reference patents are all drawn to a composition comprising similar components as those of the instant composition, including a stabilizing agent picolinic acid or a compound of formula (IA) as stabilizing agent.
Claims 21-30 have been examined to the extent they read on the elected species: a stabilized equilibrium peracid composition comprising peroxyacetic acid, acetic acid, sulfuric acid, and a stabilizing agent of formula (IA), and the following new/modified rejections are made below, based on Applicant’s amendment of 12 February 2026.
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 21-27, 30 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 21 recites the broad recitation “a transition metal chelator”, and the claim also recites “a picolinic acid or a compound of formula (IA) […] or a compound of formula (IB)”, which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Appropriate correction is required.
Claims 21-30 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.
On 12 February 2026, Applicant has amended claim 21 to recite
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Claim 21 recites “a mineral acid in an amount sufficient to reduce the stability of the peroxycarboxylic acid composition”. This recitation renders the claim indefinite, because it creates confusion regarding what is actually being claimed. Claim 21 is drawn to a stabilized composition, yet the claimed composition -we learn- contains a mineral acid in an amount effective to reduce the stability of the composition. It is unclear how a stabilized composition contains an ingredient in an amount effective to reduce its stability- which begs the question, how can the composition still be stable/stabilized? The examiner notes that any skilled artisan with basic knowledge of organic chemistry knows that the role of the mineral acid in a peroxycarboxlic acid forming composition is that of a catalyst. The paragraph added to claim 21 does nothing to clarify the claim language; on the contrary, it makes claim 21 even more confusing. Amended claim 21 of 12 February 2026 now recites that “a mineral acid is present […] but the stabilizing agent is present […]”. The conjunction “but” is commonly used to connect two contrasting or opposing ideas, clauses or words. It is unclear why in claim 21 the amount of mineral acid in the composition is used to indicate an exception/a difference from the amount of stabilizing agent.
It is suggested that Applicant actually claims the amount of mineral acid present in the composition.
Further, claim 21 now recites “a transition metal chelator stabilizer” and a “stabilizing agent” in the same paragraph; it is unclear whether these two terms refer to the same compound or to different compounds.
Further, it is unclear how the decrease in stability/ “to reduce the stability of the composition by reducing the efficacy of the transition metal chelator stabilizer” is to be measured, as the claim fails to establish a standard or threshold level. For example, the decrease in stability of the composition could be relative to another composition that does not contain mineral acid (yet, mineral acid needs to be present in a peracid forming composition because it is a known catalyst in peracid formation). Alternatively, the decrease could be relative to another composition. Similarly, it is unclear how the reduction in the efficacy of the transition metal chelator stabilizer is to be measured, as the claim fails to establish a standard or threshold level.
Furthermore, claim 21 now recites that the composition is “classified as reduced risk”. The examiner acknowledges the text in [0010] Specification “In a particular aspect, the stabilized compositions which overcome the challenges associated with the SADT of conventional peroxycarboxylic acid compositions. In addition these stabilizer compositions may even affect the DOT classification, providing in some cases an exemption from the typical UN “5.2” class for organic peracids to the reduced risk “5.1” classification.” It is noted that classifications may change over time, and the claim does not explain what constitutes “reduced risk”; the metes and bounds of the present claims cannot be determined and one having ordinary skill in the art would not necessarily be reasonably apprised of the scope of the claims unless claim 21 recited the concentration of peracid in the composition and the SADT value. Claim 30, which depends on claim 21, recites that the SADT of the composition is elevated to greater than 50 degrees C. This recitation renders the claim confusing, because claim 21 does not recite the amount % of stabilizing agent picolinic acid in the composition, but rather attempts to define the amount of stabilizer as the amount effective to elevate SADT of the composition. Yet, it is known that the SADT depends on the concentration of peracid in the composition and is inversely proportional to the package size. Larger packages/containers will have a lower SADT. Claim 21 provides no information regarding the concentration of the ingredients in the composition; it recites that the composition is in a bulk container having a volume of at least 1000 liters. As such, it is unclear what is being claimed.
Further, it is unclear what is meant in claim 21 by the text “wherein a use solution of the composition has a pH below about 4”. It is understood that a concentrated composition can be diluted to form a use solution; yet, it is unclear what is being claimed in instant claim 21. Since claim 21 recites a composition, without reciting any concentrations of ingredients present, it is unclear whether such composition is a concentrate. It is unclear whether claim 21 is drawn to a concentrate, or rather to a diluted/use solution obtained by dilution of the concentrate. Appropriate clarification of the claim language is required.
Appropriate clarification is required.
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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim interpretation: 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 not considered a limitation and is of no significance to 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, 112 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”). See MPEP 2111.02. In this case, the body of claims 21-30 fully and intrinsically set forth all the limitations of the claimed invention, namely a composition comprising the listed components; the preamble only states that the composition is stabilized in a container having a certain volume. This limitation does not appear to further limit the structural components of the composition. Thus, the preamble is not given any patentable weight.
"[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,809 (Fed. Cir. 2002).
“Products of identical chemical composition can not 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)
MPEP 2112.01 further states: "When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions (in the instant case: stability) are presumed to be inherent". "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPO2d 1655, 1658 (Fed. Cir. 1990)."
Claims 21, 22, 24-30 are rejected under 35 U.S.C. 102(b) as being anticipated by Kurschner et al. (US 5,632,676 of 27 May 1997, cited in IDS).
Kurschner teaches (Example 4, column 6, Example 5, column 7, Table 1) an equilibrium solution of 35.5% peracetic acid (PAA), 39.3% acetic acid HOAc, 6.8% hydrogen peroxide H2O2, 1% sulfuric acid H2SO4, and 0.05% dipicolinic acid stabilizer (the examiner notes that dipicolinic acid is a compound of instant formula (IA) for which the following definitions apply: R1 = R2 = OH, n = 0), wherein said composition has a pH below 4 (Table 1, column pH unadjusted) which satisfies the limitations of instant claims 21, 22 and 24-29.
While Kurschner does not specifically teach that the dipicolinic acid stabilizer delays or prevents the peroxycarboxylic acid in the composition from exceeding its self-accelerating decomposition temperature, or that dipicolinic acid is a stabilizing agent that increases SADT of the peroxycarboxylic acid to form a stabilized peroxycarboxylic acid composition having a SADT of at least 45 °C, or greater than 50 °C, as in instant claim 21, 30, such a property is inherent to the dipicolinic acid in the peroxcarboxylic acid composition. Since Kurschner teaches the very same peroxycarboxylic acid composition, containing all the components listed in instant claim 21, the property (SADT of at least 45 °C, or greater than 50 °C) of such a composition will also be present, since the composition is inseparable from its properties. Therefore, if the prior art teaches the composition, then the properties are also taught by the prior art. In re Spada, 911 F.2d 705, 709, 15 USPQ 1655, 1658 (Fed. Cir. 1990.) See MPEP 2112.01. The burden is shifted to Applicant to show that the prior art product does not possess or render obvious the same properties as the instant product. It is noted that current methodologies exist to determine SADT according to the recommendations on the transportation of dangerous goods (Transport of Dangerous Goods: Extracts from Recommendations Prepared by the United Nations Committee of Experts on the Transport of Dangerous Goods, As Amended by the United Nations Committee of Experts for Further Work on the Transport of Dangerous Goods. New York: United Nations, 2005, cited in PTO-892).
Kurschner also teaches use solutions prepared by diluting the above concentrated solution. Kurschner teaches that the above concentrated solution is diluted to a concentration of 100, 500 or 1000 ppm peracetic acid (column 4, lines 17-18) to be used as an antibacterial composition for sanitizing fowl (turkey, chicken, column 1, lines 6-9) in meat processing plants.
Thus, a composition of instant claims 21, 22 and 24-30 is anticipated by Kurschner.
Claims 21, 22, 24-30 are rejected under 35 U.S.C. 102(b) as being anticipated by Holzhauer et al. (US 5,435,808 of 25 July 1995, cited in IDS).
Holzhauer teaches (column 4, lines 17-31) that peracetic acid in concentrated compositions is explosive, and for this reason the Department of Transportation limits the concentration of peracetic acid in shipments to 42 wt. % or less. Because of its explosive and corrosive characteristics, it is usually manufactured as an aqueous mixture, in thermodynamic equilibrium or kinetically stabilized (the genus of peracetic acid stabilizers taught by Holzhauer is small: picolinic acid, phosphonic acid derivatives or another sequestering agent that tightly binds trace metals, column 4, lines 67-68, column 5, lines 1-2) for its intended application, of peracetic acid, hydrogen peroxide, acetic acid, and a catalytic acid, usually mineral acids, the most common being sulfuric acid. Thus, Holzhauer implicitly teaches a composition comprising peracetic acid, hydrogen peroxide, acetic acid, sulfuric acid and a stabilizer such as picolinic acid.
Holzhauer specifically teaches (Example 1, column 7) a composition consisting of:
10 wt % acetic acid;
15-20 wt. % peracetic acid;
17 wt. % hydrogen peroxide;
5 wt. % phosphoric acid as mineral acid;
0.1-1 wt. % picolinic acid; and
balance water.
Holzhauer teaches phosphoric, sulfuric, or hydrochloric acid as mineral acids to be used in the composition; sulfuric acid may be preferred because of its price (column 6, lines 40-42).
Holzhauer does not teach the pH of the composition of Example 1; however, the pH of such composition is expected to be well below 4 (can be calculated), based on the concentration of strong acid present in combination with other acids. The pH is an inherent property of the composition.
While Holzhauer does not specifically teach that the picolinic acid stabilizer delays or prevents the peroxycarboxylic acid in the composition from exceeding its self-accelerating decomposition temperature (SADT at least 45 °C in instant claim 21, or SADT greater than 50 °C in instant claim 30), as in instant claims 21, 30, such a property is inherent to the picolinic acid in the peroxcarboxylic acid composition. Since Holzhauer teaches the very same composition as instantly claimed, the picolinic acid will inherently act to prevent the peroxycarboxylic acid from exceeding SADT, as claimed.
Thus, a composition of instant claims 21, 22 and 24-30 is anticipated by Holzhauer.
Claims 21, 22, 24-30 are rejected under 35 U.S.C. 102(b) as being anticipated by Granger et al. (US 5,382,571 of 17 January 1995, cited in IDS).
Granger teaches (Example 1, column 6) an antibacterial composition comprising an equilibrium solution of peracetic acid (PAA), acetic acid HOAc, hydrogen peroxide H2O2, sulfuric acid H2SO4, and dipicolinic acid stabilizer, wherein said composition has a pH below 4, or below about 3 (can be calculated), which satisfies the limitations of instant claims 21 and 24-30. While Granger does not specifically teach that the dipicolinic acid stabilizer delays or prevents the peroxycarboxylic acid in the composition from exceeding its self-accelerating decomposition temperature, as in instant claims 21, 30, such a property is inherent to the dipicolinic acid in the peroxcarboxylic acid composition. Since Granger teaches the very same composition as instantly claimed, the dipicolinic acid will inherently act to prevent the peroxycarboxylic acid from exceeding SADT, as claimed.
Granger teaches (Example 1) that the equilibrium peracid composition contains 37.5% PAA, 22.5% H2O2, 10% HOAc, prepared by mixing 10 g pure acetic acid to which 1.225 g/l dipicolinic acid and 1g H2SO4 98% mixed with 14 g H2O2 70% are added, which satisfies the limitations in instant claim 22.
Thus, a composition of instant claims 21, 22, 24-30 is anticipated by Granger.
Claim Rejections- 35 USC 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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.
Claims 21-30 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kurschner et al. (US 5,632,676 of 27 May 1997, cited in IDS) as applied to claim 21 above, in view of Holzhauer et al. (US 5,435,808 of 25 July 1995, cited in IDS), in further view of Hilgren et al. (US 6,627,657 of 30 September 2003, cited in IDS).
Kurschner teaches (Example 4, column 6, Example 5, column 7, Table 1) an equilibrium solution of 35.5% peracetic acid (PAA), 39.3% acetic acid HOAc, 6.8% hydrogen peroxide H2O2, 1% sulfuric acid H2SO4, and 0.05% dipicolinic acid stabilizer (the examiner notes that dipicolinic acid is a compound of instant formula (IA) for which the following definitions apply: R1 = R2 = OH, n = 0), wherein said composition has a pH below 4 (Table 1, column pH unadjusted). While Kurschner does not specifically teach that the dipicolinic acid stabilizer delays or prevents the peroxycarboxylic acid in the composition from exceeding its self-accelerating decomposition temperature, as in instant claim 21, such a property is inherent to the dipicolinic acid in the peroxcarboxylic acid composition. Since Kurschner teaches the very same composition as instantly claimed, the dipicolinic acid will inherently act to prevent the peroxycarboxylic acid from exceeding SADT, as claimed.
Kurschner teaches teaches that the above concentrated solution is diluted to a concentration of 100, 500 or 1000 ppm peracetic acid (column 4, lines 17-18) to be used as an antibacterial composition for sanitizing fowl (turkey, chicken, column 1, lines 6-9) in meat processing plants. Kurschner teaches optimizing the concentration of peracetic acid and hydrogen peroxide in the antibacterial composition for the particular use: sanitizing fowl without adverse effects such as bloating, discoloration, change in texture (column 2, lines 41-65).
Kurschner does not teach a hydrotrope as an additional agent in the composition, as in instant claim 23.
Holzhauer et al. (US 5,435,808) is as above. Holzhauer further teaches the concentrated peracetic acid composition is added to brine to generate a 250 ppm active peracetic acid solution which is used in curing animal hides in meat-packing plants.
Hilgren (US 6,627,657) teaches a concentrate composition intended for dilution which includes 34.1 wt. % peracetic acid POAA, 7.13 wt. % H2O2, 36.1 wt. % acetic acid (Example 1, column 17, Example 2, column 19). Hilgren teaches that the composition is then diluted with water to achieve a use solution containing 150 ppm peracetic acid, having a pH of less than 4 (Table 1, column 18). Hilgren also teaches that strong inorganic acids, such as, for example sulfuric acid (column 14, line 31) may be useful in compositions of the invention; the strong inorganic acids may be used as catalysts to speed equilibration of the compositions and/or to serve as strong acidulants to dissolve inorganic and inorganic-organic soil matrices such as hard water films, milk-stone, and beer-stone from surfaces (column 14, lines 30-39).
Hilgren teaches (column 1, lines 36-41) that typical peracid materials include an equilibrium mixture of acetic acid, hydrogen peroxide, peroxyacetic acid and a stabilizer such as a chelant or sequestrant. Hilgren teaches that stabilizing agents reduce the likelihood of decomposition of the composition (column 12, lines 1-6); examples of suitable stabilizing agents include, for example, dipicolinic acid (column 12, line 8), as in instant claims 28-29.
Hilgren explores different concentration ranges of the carboxylic acid, hydrogen peroxide, and peroxycarboxylic acid in the composition and classifies compositions as useful, preferred and more preferred, based on the range of ingredients in the composition resulting in improved antimicrobial activity (column 15, lines 20-27, 47-62).
Hilgren teaches (column 3, lines 19-23) that a composition can also include additives such as, for example, a hydrotrope (which can facilitate solubilization of the ingredients in a use solution, column 12, lines 66-67), as in instant claim 23, or a surfactant (column 5, lines 38-45) such as, for example, an anionic surfactant (column 13, line 43). Hilgren teaches (column 13, lines 8-12) that xylene, cumene, toluene sulfonic acids, alkyl benzene sulfonic acids, napthalenesulfonic acids, alkyl and dialkyl naphthalenesulfonic acids and their alkali metal salts are examples of hydrotropes to be included in the composition.
Hilgren teaches that a composition of the invention can be used to treat a variety of substances for which it can be desirable to reduce microbial contamination, for example general premise surfaces, specific equipment surfaces, textiles, wool and paper, soil, animal carcases (meat), foodstuff and water.
It would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the teachings of Kurschner, Holzhauer and Hilgren in a peracetic acid concentrate composition comprising peracetic acid, acetic acid, hydrogen peroxide, a mineral acid and dipicolinic acid, and optimize the relative amounts of each ingredient in the composition to achieve the best antibacterial/antimicrobial results for the specific use, and the best stability (SADT).
It would have been obvious for the person of ordinary skill in the art to dilute the peracid concentrate and add at least one additional agent, such as a hydrotrope, because Hilgren teaches such additives in the antimicrobial composition obtained by diluting the peracid concentrate; such additive agents are chosen based on the intended use of the diluted composition.
As such, claims 21-30 are rejected as prima facie obvious.
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 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of U.S. patent 9,902,627 (cited in IDS). Claims 1-7 of U.S. patent 9,902,627 are drawn to a composition comprising similar components as those of the instant composition, including a first stabilizing agent picolinic acid or a compound of formula (IA), and wherein the composition has a pH of 4 or less.
As such, claims 1-7 of U.S. patent 9,902,627 render obvious instant claims.
Claims 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7, 20 of U.S. Patent 9,321,664 (cited in IDS). Claims 1-7, 20 of U.S. Patent 9,321,664 are drawn to a composition comprising similar components as those of the instant composition, including a first stabilizing agent picolinic acid or a compound of formula (IA) and a second stabilizing agent HEDP. It would have been obvious to use only the first stabilizing agent in a composition of claims 1-7, 20 of U.S. Patent 9,321,664, to arrive at the instant composition. Therefore, although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-7, 20 of U.S. Patent 9,321,664 render obvious instant claims.
Claims 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 5 of U.S. Patent 9,585,397 (cited in IDS). Claim 5 of U.S. Patent 9,585,397 is drawn to a composition comprising similar components as those of the instant composition, including a peroxycarboxylic acid stabilizing agent a picolinic acid or a compound of formula (IA). Therefore, although the conflicting claims are not identical, they are not patentably distinct from each other at least because claim 5 of U.S. Patent 9,585,397 renders obvious instant claims.
Claims 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claim 12 of U.S. Patent 8,822,719 (cited in IDS). Claim 12 of U.S. Patent 8,822,719 is drawn to a method for detecting a concentration of peroxycarboxylic acid in a sanitizing composition comprising similar components as those of the instant composition, including a peroxycarboxylic acid stabilizing agent a picolinic acid or a compound of formula (IA). Thus, the instant composition is rendered obvious by the method in claim 12 of U.S. Patent 8,822,719.
Claims 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable at least over claims 9-16 of U.S. Patent 10,165,774 (cited in IDS). Claims 9-16 of U.S. Patent 10,165,774 are drawn to a composition comprising similar components as those of the instant composition, including a stabilizing agent a picolinic acid or a compound of formula (IA). Therefore, although the conflicting claims are not identical, they are not patentably distinct from each other because claims 9-16 of U.S. Patent 10,165,774 render obvious instant claims.
Claims 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent 9,288,992 (cited in IDS). Claims 1-10 of U.S. Patent 9,288,992 are drawn to a composition comprising similar components as those of the instant composition, including a stabilizing agent which is 2,6-pyridinecarboxylic acid, which is a compound of instant formula (IA). Thus, the instant composition is rendered obvious by the composition of 1-10 of U.S. Patent 9,288,992.
Claims 21-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent 11,026,421, as well as over claims of U.S. Patent 10,893,674. Claims of U.S. Patent 11,026,421, and claims of U.S. Patent 10,893,674 are drawn to a composition comprising similar components as those of the instant composition, including a first stabilizing agent picolinic acid or a compound of formula (IA) and a second stabilizing agent HEDP (the composition contains picolinic acid or a compound of formula (IA) as stabilizing agent and “does not contain phosphonic acid stabilizers as the only stabilizing agent”). It would have been obvious to use only the first stabilizing agent in a composition of claims of U.S. Patent 10,893,674, to arrive at the instant composition. Therefore, although the conflicting claims are not identical, they are not patentably distinct from each other because claims of U.S. Patent 10,893,674, and claims of U.S. Patent 11,026,421 render obvious the instant claims.
Conclusion
Claims 21-30 are rejected.
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/IRINA NEAGU/Primary Examiner, Art Unit 1629