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 .
Status of Application
The Preliminary Amendment filed on 02/05/24 is acknowledged.
Claims 1-16 were amended and are included in the prosecution.
Priority
This Application is a 371 of PCT/EP 2022/072527 filed on 08/11/22. This Application also claims foreign priority to PCT/CN21/112970 filed on 08/17/21 and EP 21199840.6 filed on 09/29/21. Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119 (a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 02/05/24 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement. Please see the attached copy of PTO-1449.
Claim Objections
Claim 1 is objected to because of the following informalities: In claim 1, the periods following the components a-c should be deleted. Please see MPEP 608.01(m) which states: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” Appropriate correction is required.
Notice for all US Patent Applications filed on or after March 16, 2013
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 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.
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 1-4 and 7-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Natsch (US 2008/0118591 A1).
Instant claim 1 is drawn to an antimicrobial composition comprising:
a perfume ingredient having a bactericidal effect of a 5.5 log reduction in an ethanol solution at a concentration of less than or equal to 0.1% in ethanol solution;
a surfactant; and
a hydrotrope.
Natsch teaches bactericidal formulations that come into contact with human body, particularly wash formulations including liquid soaps, comprising perfume ingredients active against gram-negative bacteria (Abstract, Examples 1-10, claims 1-16). Natsch teaches a formulation comprising (a) at least 0.2% (w/v) of one or more perfume ingredients having a sufficiently rapid bactericidal activity against gram-negative bacteria, (b) 4% to 20% (w/v) of a hydrotrope, and (c) 0.1% to 9% (w/v) of one or more surfactant selected from the group consisting of anionic, non-ionic and amphoteric surfactants, or combinations thereof (claims 1-10). A bactericidal perfume composition containing at least 70% (w/v) of at least 10 different bactericidal perfume ingredients, and optionally up to 30% of other non-bactericidal perfume ingredients is disclosed (claims 11-12). A method of providing rapid bactericidal consumer product formulations is disclosed (claims 13-16).
Regarding instant claim 1, the limitation of an antimicrobial composition is anticipated by the bactericidal formulations comprising perfume ingredients active against gram-negative bacteria (Abstract, Examples 1-10, claims 1-16), as taught by Natsch.
Regarding instant claim 1, the limitation of a perfume ingredient having a bactericidal effect of a 5.5 log reduction in an ethanol solution at a concentration of less than or equal to 0.1% in ethanol solution is anticipated by the perfume ingredients active against gram-negative bacteria (Abstract), wherein the perfume ingredient must have a reduction factor of bacterial viability of at least 20-fold when it is tested in a concentration of 0.2% in Mueller Hinton Broth with a contact time of 30 seconds ([0057]-[0058]), as taught by Natsch. The specific bactericidal effect recited in instant claim 1 is an inherent property of the perfume ingredient and inseparable from it. Please see MPEP 2112.01. A chemical composition and its properties are inseparable. 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.) The burden is shifted to Applicant to show that the prior art product does not possess or render obvious the same properties as the instantly claimed product.
Regarding instant claims 1 and 3-4, the limitations of a surfactant are anticipated by the surfactants ([0004], [0065], claims 1, 5, 8, 9, and 13) and cocamidopropyl betaine (TABLE 2, [0132]), as taught by Natsch.
Regarding instant claim 1, the limitation of a hydrotrope is anticipated by the hydrotrope (claims 1, 3, 8, 9, and 13) and toluene sulfonate, xylene sulfonate, cumene sulfonate, diisobutyl-sulfosuccinate, dipropyleneglycol-n-butyl-ether; or a combination of one or more of these hydrotropes ([0026], [0075]-[0078], TABLES 2, 8, 9, and 11), as taught by Natsch.
Regarding instant claim 2, the limitation of the perfume ingredient which is at least 0.001% (w/v) of the antimicrobial composition is anticipated by the formulation comprising at least 0.2% (w/v) of one or more perfume ingredients having a sufficiently rapid bactericidal activity against gram-negative bacteria ([0058], TABLES 2, 4-8, and 10), as taught by Natsch.
Regarding instant claim 7, the limitation of an additional agent active against gram-positive or gram-negative bacteria is anticipated by the additional agents such as triclosan or other phenolic biocides ([0001], [0046], [0081]-[0082], TABLE 4, claims 4 and 15), as taught by Natsch.
Regarding instant claim 8, the limitation of a chelating agent is anticipated by the chelating agents such as EDTA and CDTA ([0023], [0049], [0080], [0082], TABLES 6, 7, and 9, claims 2 and 14), as taught by Natsch.
Regarding instant claims 9-11, the limitations of the perfume ingredients are anticipated by the essential oils including peppermint, and perfume ingredients including 3-(4-methyl-3-cyclohexenyl)-butanol ([0018], [0043], [0059], [0060], [0095], claims 1, 11, 13, and 14), and 5-heptyldihydro-2(3H)-furanone ([0043], [0059], [0099], claim 11), as taught by Natsch.
Regarding instant claim 12, the limitation of a solvent is anticipated by the dipropylene glycol solvent (TABLE 2, Example 6 – [0130]-[0131]), as taught by Natsch.
Regarding instant claim 13, the limitation of chelators is anticipated by the chelating agents such as EDTA and CDTA ([0023], [0049], [0080], [0082], TABLES 6, 7, and 9, claims 2 and 14), and the limitation of essential oils is anticipated by the essential oils including peppermint ([0010]), as taught by Natsch.
Regarding instant claim 14, the limitation of a malodor neutralizing system is anticipated by the neutralizing solution ([0058], [0089], [0108]-[0110]), as taught by Natsch.
Regarding instant claims 15 and 16, the limitations of a consumer product (instant claim 15) and a method for eliminating the number of microbes on a surface or body part (instant claim 16) are anticipated by the wash formulations including liquid soaps (Abstract), consumer products, personal care products, wash formulations for the human or animal body, in particular the skin, scalp or hair, hand wash formulations, aqueous soap formulations, shower gels, shampoos, pet shampoos, disinfectant formulations for disinfection and/or cleaning of inert surfaces, formulations for oral application, oral care products, mouth wash, tooth paste ([0041], [0085]-[0086], TABLE 2, claims 10, and 13-16), as taught by Natsch.
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 of this title, 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 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Natsch (US 2008/0118591 A1), as applied to claims 1-4 and 7-16 above, in view of Heckert et al. (US 4,005,028 – “Heckert”).
Instant claim 5 is drawn to the antimicrobial composition of claim 1, wherein the antimicrobial composition comprises less than 4% hydrotrope.
The teaching of Natsch is discussed above.
Natsch does not expressly teach less than 4% hydrotrope.
Heckert teaches a detergent composition (Abstract) including a light duty liquid detergent composition used for hand washing of cooking utensils and tableware which contains a hydrotrope, e.g., toluene sulfonate, cumene sulfonate or xylene sulfonate at a level of from 1% to 20% (Col. 21, lines 18-29 and 37-41).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a bactericidal formulation that come into contact with human body, particularly wash formulations including liquid soaps, comprising perfume ingredients active against gram-negative bacteria, a surfactant and a hydrotrope, as taught by Natsch, in view of the light duty liquid detergent composition used for hand washing of cooking utensils and tableware which contains a hydrotrope, e.g., toluene sulfonate, cumene sulfonate or xylene sulfonate at a level of from 1% to 20%, as taught by Heckert, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because both references teach liquid wash compositions that are used by hand for cleaning and contain the same hydrotropes toluene sulfonate, cumene sulfonate or xylene sulfonate, and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A). Furthermore, the range of the hydrotrope taught by Heckert, i.e., 1% to 20%, overlaps and renders obvious the claimed range of the hydrotrope, i.e., less than 4%. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding instant claims 5 and 6, the limitation of less than 4% hydrotrope (instant claim 5) and the hydrotrope (instant claim 6) would have been obvious over the hydrotrope (claims 1, 3, 8, 9, and 13), toluene sulfonate, xylene sulfonate, cumene sulfonate, diisobutyl-sulfosuccinate, dipropyleneglycol-n-butyl-ether; or a combination of one or more of these hydrotropes ([0026], [0075]-[0078], TABLES 2, 8, 9, and 11), as taught by Natsch, in view of the hydrotrope, e.g., toluene sulfonate, cumene sulfonate or xylene sulfonate at a level of from 1% to 20% (Col. 21, lines 18-29 and 37-41), as taught by Heckert.
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 1-16 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 5, 8, 13, 20, 29, 39, 43, 45, 47, 49, 51, 53, 55, 58-59, and 61-62 of copending Application No. 17/799,856 (“the ‘856 Application”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to an antimicrobial composition comprising: a perfume ingredient having a bactericidal effect of a 5.5 log reduction in an ethanol solution at a concentration of less than or equal to 0.1% in ethanol solution; a surfactant; and a hydrotrope, and therefore, encompass overlapping or coextensive subject matter.
The difference is that instant claim 1 recites a perfume ingredient having a bactericidal effect of a 5.5 log reduction in an ethanol solution at a concentration of less than or equal to 0.1% in ethanol solution, whereas claim 1 of the ‘856 Application recites a perfume ingredient having a log P of less than or equal to 3.5, and a bactericidal effect of a 5.5 log reduction in an ethanol solution at a concentration of less than or equal to 0.5% in ethanol solution. However, since both sets of claims recite the same perfume ingredients, for example, 1-pheynylethyl acetate and (2E)-2-methyl-3-phenyl-2-propenal (instant claim 9 and claim 1 of the ‘856 Application), the same properties of these perfume ingredients, e.g., bactericidal effects including the log P limitation and the log reduction in different concentrations of ethanol solutions are also inherently present in both sets of claims.
Another difference is that claim 29 of the ‘856 Application recites that the perfume ingredient is an aldehyde, a primary alcohol, a phenol or an oxime, whereas instant claims do not recite these limitations. However, as discussed above, the same perfume ingredients are recited in both sets of claims. Therefore, the type of perfume ingredient is also recited in instant claims.
Regarding the specific combinations of perfume ingredients in claims 45, 47, 49, and 51 of the ‘856 Application, since instant claims 9-11 recite the perfume ingredients and combinations thereof, the specific mixtures are also present in the instant claims.
Therefore, instant claims are obvious over claims of the ‘856 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
No claims are allowed.
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615