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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-11 and 18-20 in the reply filed on 7/7/26 is acknowledged.
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 2 and 7-9 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 2 recites “the photosensitizer is at least one of … or their derivatives” and the scope of what is included as the photosensitizer cannot be determined. The claim recites a plurality of alternative which are included in combination and not in combination and the full scope of every combination and derivatives thereof that are included by the claim cannot be determined. The specification provides no further limitation or definition for what this limitation “or their derivatives” can and cannot include. Therefore, the scope of the claim cannot be determined and the claim is indefinite. For the purpose of examination, it is interpreted the photosensitizer is at least one of the claimed substances.
The remaining claims are rejected for depending from claim 2.
Claim Rejections - 35 USC § 102
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.
Claims 1-6 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sehgal (US 2012/0125847).
Regarding claim 1, Sehgal (US 2012/0125847) teaches –
A light activated cleaning composition (par. 60 discloses a photosensitizer composition for activation under light to inactivate pathogens) comprising:
a photosensitizer (par. 61 discloses riboflavin, which is a preferred photosensitizer of the claimed invention according to claim 2 and fig. 5 in the instant disclosure); and
a singlet oxygen quenching molecule (par. 61 discloses pyrrole which is a singlet quenching molecule according to instant claim 4, par. 60 of Sehgal teaches that “one or more” of the listed photosensitizers are added and therefore the reference teaches both riboflavin and pyrrole in combination; par. 68, 113 also teaches sodium ascorbate).
Regarding claim 2, Sehgal teaches the photosensitizer is riboflavin (par. 61).
Regarding claims 3 and 4, Sehgal teaches the singlet oxygen quenching molecule comprises molecules having conjugated dienes wherein the molecules including conjugated dienes are a pyrrole (par. 61).
Regarding claim 5, Sehgal teaches the singlet oxygen quenching molecule is sodium ascorbate (par. 68, 113).
Regarding claim 6, Sehgal teaches the singlet oxygen quenching molecule comprises molecules having an allylic hydrogen (par. 61 teaches pyrrole which according to p. 6 line 30 - p. 7 line 4 of the instant specification as filed reads on this limitation, par. 68 also discloses tryptophan and ascorbate which include a allylic carbon and allylic hydrogen).
Regarding claim 18, Sehgal teaches –
A light activated cleaning composition comprising:
a photosensitizer (par. 60-61); and
sodium ascorbate (par. 113).
Claims 1-6, 11, and 18-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nakamura (US 2023/0174889).
Regarding claim 1, Nakamura (US 2023/0174889) teaches –
A light activated cleaning composition (par. 23 describes the use of a photosensitizer composition in a sterilizing method) comprising:
a photosensitizer (par. 23, 41, 59, and 64 disclose a photosensitizer composition including specifically riboflavin-5-phosphate sodium); and
a singlet oxygen quenching molecule (pars. 68-70 disclose the inclusion of sodium ascorbate in the composition).
Regarding claims 2-3 and 5-6, Nakamura further teaches
(claim 2) riboflavin (par. 64)
(claims 3 and 4) a singlet oxygen quenching molecule including conjugated dienes that includes benzimidazole (table 3 discloses a benzimidazole compound being used in the composition).
(claim 5) the singlet oxygen quenching molecule is sodium ascorbate (par. 70).
(claim 6) the singlet oxygen quenching molecule comprises molecules having an allylic hydrogen (par. 70 teaches sodium ascorbate).
Regarding claim 11, Nakamura teaches a surfactant that is an anionic or nonionic surfactant (par. 84).
Regarding claim 18, Nakamura teaches –
A light activated cleaning composition (par. 23 describes the use of a photosensitizer composition in a sterilizing method) comprising:
a photosensitizer (par. 23, 41, 59, and 64 disclose a photosensitizer composition including specifically riboflavin-5-phosphate sodium); and
sodium ascorbate (pars. 68-70 disclose the inclusion of sodium ascorbate in the composition).
Regarding claim 19, Nakamura further teaches the photosensitizer is riboflavin 5-phosphate sodium salt (par. 64).
Claim Rejections - 35 USC § 103
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.
Claims 7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 2023/0174889).
Regarding claim 7, Nakamura is set forth with regards to claim 2 above. Nakamura further teaches the riboflavin-5-phosphate sodium salt in an amount of 20-1000 ppm, which overlaps with the claimed amount of 100-1000 ppm, rendering the claimed range obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, the modification of the prior art to arrive at the claimed range would be nothing more than the result of routine optimization, MPEP 2144.05(II). One would be motivated to optimize the amount of photosensitizer in a photosensitizing composition to improve photoactivity and sterilizing or cleaning performance.
Regarding claim 20, Nakamura is set forth above with regards to claim 19 but appears to be silent with regards to the specific claimed ratio of riboflavin to ascorbate, however the modification of the prior art to arrive at the claimed range would be nothing more than the result of routine optimization, MPEP 2144.05(II). One would be motivated to optimize the composition of photosensitizer and oxygen quencher in a photosensitizing composition to improve photoactivity and sterilizing or cleaning performance.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 2023/0174889) as applied to claims 1 and 7 above and further in view of Willey (WO 2006/002363).
Regarding claim 8, Nakamura is set forth above with regards to claim 7 but appears to be silent with regards to imidazole.
Willey (WO 2006/002363) (cited on IDS, present in file wrapper) teaches a photosensitizer composition (abstract) including riboflavin and an imidazole (p. 5 last par. teaches imidazole, the par. before teaching riboflavin) in the amount of 100 to 1000 ppm (claim 3 teaches 500 -2000 ppm, overlapping with and rendering the claimed range obvious). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Nakamura such that the composition includes an imidazole in the claimed amount as taught by Willey to arrive at the claimed invention. One would have been motivated to do so to use a known oxygen reactive substance to arrive at an improved photosensitive composition. The combination of familiar prior art elements, including photosensitizers and oxygen quenchers, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Regarding claim 9, Willey further teaches (p. 3 “Photobleaching compositions”) 10-50% imidazole and .1-50% photosensitizer, which overlaps with the claimed range of 1:1 to about 1:1000, rendering the claimed range obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10, Willey further teaches a polymer, wherein the polymer is at least one of polyamines or polyethyleneimine (p. 7 “builders” teaches polyacetic acids including a poly ethylenediamine tetraacetic acid). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Nakamura such that it includes a polymer of polyethyleneimine as taught by Willey to arrive at the claimed invention. One would have been motivated to do so to more effectively clean the workpiece to arrive at an improved cleaning composition. The combination of familiar prior art elements according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDAN A HENSEL whose telephone number is (571)272-6615. The examiner can normally be reached Mon-Thu 8:30 - 7pm;.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at (571) 270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDAN A HENSEL/ Examiner, Art Unit 1758
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