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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 12, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1 – 16 are examined here-in.
Claim Objections
Claims 6 and 13 are objected to because of the following informalities:
Claim 6 has recites two instances of “vi” with “vi. 10 ppm to 9,000 ppm of phenoxyethanol” and “10 ppm to 200 ppm of 3-iodopropynyl N-butylcarbamate”. Based on the specification (page 9 line 29 to page 10 line 27), it appears that these should be two different, numerals, for example “vi” and “vii”.
Claim 13 recites “exterior paints, interior pants and interior and exterior wood paints” which repeats exterior paints and interior paints without distinguishing the secondary interior and exterior paints from the former.
Appropriate correction is required.
Rejections of “Use” Claims - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is directed to non-statutory subject matter. The claims does not fall within at least one of the four categories of patent eligible subject matter because "use of at least one pyrithione compound" is not a process, machine, manufacture, or composition of matter. According to MPEP 2173.05(q), “use” claims that merely recite a use without any active, positive steps delimiting how this use is actually practiced do not fall into one of the four categories of patent eligible subject matter.
For the purposes of this examination, claim 12 is interpreted as a method claim.
Rejections of “Use” Claims - 35 USC § 112(b)
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.
Claim 12 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The claim is written as “use of at least one pyrithione compound” which is indefinite because it merely recites a use without any active, positive steps delimiting how the use is practiced. See MPEP 2173.05(q).
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 non-obviousness.
Claims 1 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Baum (US 2019/0071575 A1, which also corresponds to US 10,633,547 B2). Citations are to US 2019/0071575.
Baum teaches a method for reducing microbial attack of products with 5-chloro-2-methyl-4-isothiazolin-3-one (abstract).
Baum teaches that aqueous products such as paints are frequently contaminated with microbes (paragraph 0002). Baum teaches the product may be a paint, lacquer, varnish, plaster, emulsion, lattice, polymer dispersion, sealant, bitumen emulsion, surfactant solution, or cosmetic product, among others (paragraphs 0017 – 0018).
Baum teaches the pH of the product is between 9 and 12 (paragraph 0038, claim 3).
Baum teaches a method for reducing microbial contamination by adding 1 to 100 ppm CMIT to a product (paragraphs 0010 – 0014, 0027 – 0034). Baum teaches the CMIT has a content of 0 to 2 wt% 2-methyl-4-isothiazolin-3-one, based on the total weight of CMIT (abstract, paragraphs 0001). Baum teaches the content of 2-methyl-4-isothazolin-3-one is in the range of 0 to 1 ppm based on the weight of the product (paragraph 0020).
Baum teaches that CMIT functions as a biocide and preservative of the product, however, is often the cause of allergic reactions, therefore it is necessary to break down the CMIT (paragraphs 0003, 0009, 0016).
Baum teaches sodium pyrithione is a compound for decomposing CMIT (paragraph 0034). Baum teaches that sodium pyrithione is added to the product having CMIT in an amount from 1 to 500 ppm (paragraphs 0010 – 0014). Baum teaches that after decomposition of CMIT, the product may not be protected against newly introduced microbes (paragraphs 0037, 0042), however sodium pyrithione may act as a biocide (paragraphs 0041 – 0042).
Baum teaches that inclusion of a zinc source in the product boosts the effectiveness of biocide (paragraph 0080). Baum teaches the inclusion of zinc oxide, zinc hydroxide, or zinc carbonate in an amount ranging from 10 to 5,000 ppm (paragraph 0081).
Baum teaches the following compounds in the following amounts are suitable as biocides (paragraphs 0014, 0039, 0041, 0044 – 0078, claims 1 and 2):
Compound
Amount
Sodium pyrithione, benzyl alcohol, 3-iodopropargyl-N-butylcarbamate, 2-n-octyl-4-isothiazolin-3-one, 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one, a silver source
1 to 500 ppm
1,2-benzisothiazolin-3-one, 2-methyl-1,2-benzisothiazolin-3-one
1 to 1,000 ppm
2,2-dibromomalonamide, tetramethylol acetylenediurea, formaldehyde, glutaraldehyde, phenoxyethanol, 2-bromo-2-nitropropan-1,3-diol
1 to 2,000 ppm
2,2-dibromo-3-nitrilopropionamide, zinc pyrithione
1 to 2,500 ppm
o-phenylphenol
1 to 10,000 ppm
Ethylhexylglycerin
1 to 20,000 ppm
Terbutryn, diuron, carbendazim, tebuconazole
10 to 2,000 ppm
Benzalkonium chloride, dimethyl didodecyl ammonium chloride
10 to 5,000 ppm
p-hydroxybenzoic acid propyl ester, sorbic acid, benzoic acid, ascorbic acid
10 to 10,000 ppm
1,2-octanediol, 1,2-hexanediol, 1,2-pentanediol, 1,2-decanediol
10 to 20,000 ppm
Claims 1- 16 are rendered prima facie obvious over the teachings of Baum, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., CMIT, zinc, pyrithione) were known in the prior art (e.g., antimicrobial compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a method for reducing microbial contamination in a product) to one of ordinary skill in the art (MPEP 2143(i)(a)).
Baum’s teaching for a method to reduce microbial contamination of aqueous products with a pH between 9 and 12 by adding: i) 1 – 100 ppm 5-chloro-2-methyl-4-isothiazolin-3-one, also known as CMIT, ii) a zinc source such as zinc oxide, zinc hydroxide, or zinc carbonate in an amount ranging from 10 to 5,000 ppm; and sodium pyrithione in an amount from 1 to 500 ppm in order to decompose CMIT (abstract, paragraphs 0002, 0010 – 0014, 0017 – 0018, 0027 – 0034, 0038, 0080 – 0081, claim 3) reads on instant claim 1.
Baum’s teaching that the aqueous product has a pH between 9 and 12 (paragraphs 0002, 0017 – 0018, 0038, claim 3) overlaps on the instantly claimed range of 7.0 to 9.5 as recited in claim 1 part a. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Baum’s teaching for 1 to 100 ppm CMIT (paragraphs 0010 – 0014, 0027 – 0034) overlaps on the instantly claimed range of 25 to 100 ppm CMIT as recited in claim 1 part a section i.
Baum’s teaching for zinc oxide, zinc hydroxide, or zinc carbonate in an amount ranging from 10 to 5,000 ppm (paragraphs 0080 – 0081) overlaps on the instantly claimed range of 50 to 1,000 ppm as recited in claim 1 part a section ii.
Baum’s teaching to add sodium pyrithione in an amount from 1 to 500 ppm to decompose CMIT (paragraphs 0010 – 0014, 0034) overlaps on the instantly claimed range of 25 to 500 ppm as recited in claim 1 part b.
Baum’s teaching that the addition of CMIT, a zinc compound, and a pyrithione compound to a product leads to a shelf life of at least 6 months (paragraphs 0038, 0100) overlaps on the instantly claimed range of up to 9 months as recited in claim 1 part c.
Baum teaches that CMIT is decomposed within 24 hours following the time of exposure to a CMIT-decomposing compound, such as sodium pyrithione (paragraphs 0031, 0034), which overlaps on the instantly claimed range of 6 to 336 hours as recited in claim 2.
Baum’s teaching that the aqueous product has a pH between 9 and 12 (paragraphs 0002, 0017 – 0018, 0038, claim 3) overlaps on the instantly claimed range of 7.5 to 9.0 as recited in claim 3. Overlapping endpoints of ranges, in this case Baum’s 9 as lower endpoint overlapping with the instantly claimed 9.0 as an upper endpoint, are prima facie obvious in the absence of a showing of criticality of a claimed range according to MPEP 2144.05(i).
Baum’s teaching that the zinc compound may be zinc oxide in an amount ranging from 10 to 5,000 ppm (paragraphs 0080 – 0081) overlaps on the instantly claimed range of 50 to 1,000 ppm as recited in claim 4.
Baum’s teaching to add sodium pyrithione in an amount from 1 to 500 ppm to decompose CMIT (paragraphs 0010 – 0014, 0034) overlaps on the instantly claimed range of 25 to 250 ppm as recited in claim 5.
Baum teaches the following compounds in the following amounts are suitable as biocides (paragraphs 0014, 0039, 0041, 0044 – 0078, claims 1 and 2), which overlaps on claim 6 as shown in the table below.
Baum’s Prior Art Teachings
Instant claims
Compound
Amount
3-iodopropargyl-N-butylcarbamate
1 to 500 ppm
Claim 6 section vi recites
10 to 200 ppm
3-iodopropynyl N-butylcarbamate
1,2-benzisothiazolin-3-one,
2-methyl-1,2-benzisothiazolin-3-one
1 to 1,000 ppm
Claim 6 section iii recites
5 to 200 ppm
1,2-benzisothiazolin-3-one,
2-methyl-1,2-benzisothiazolin-3-one
Phenoxyethanol
1 to 2,000 ppm
Claim 6 section vi recites
10 to 9,000 ppm
phenoxyethanol
Ethylhexylglycerin
1 to 20,000 ppm
Claim 6 section v recites
10 to 2,000 ppm
ethylhexylglycerol
1,2-octanediol
10 to 20,000 ppm
Claim 6 section iv recites
10 to 2,000 ppm
1,2-octanediol
Baum’s teaching for 1 to 100 ppm CMIT, wherein the CMIT has a content of 0 to 2 wt% 2-methyl-4-isothiazolin-3-one, based on the total weight of CMIT (abstract, paragraphs 0001, 0010 – 0014, 0027 – 0034) overlaps on the instantly claimed amount of 25 to 100 ppm CMIT having a content of 2-methyl-4-isothiazolin-3-one in a range from 0 to 2% by weight based on the total weight of CMIT as recited in claim 7.
Baum’s teaching that the product may be a paint, lacquer, varnish, plaster, emulsion, lattice, polymer dispersion, sealant, bitumen emulsion, surfactant solution, or cosmetic product, among others (paragraphs 0017 – 0018) reads on instant claims 8, 9, 13, and 14.
Baum’s teaching that the content of 2-methyl-4-isothazolin-3-one is in the range of 0 to 1 ppm based on the weight of the product (paragraph 0020) overlaps on the instantly claimed ranges of less than 10 ppm, less than 5 ppm, and from 0 to 1 ppm as recited in instant claims 10, 15, and 16, respectively.
Baum’s teaching for a method to degrade CMIT in a product that contains 1 – 100 ppm CMIT and 10 to 5,000 ppm of a zinc source by adding 1 to 500 ppm sodium pyrithione (abstract, paragraphs 0002, 0010 – 0014, 0017 – 0018, 0027 – 0034, 0038, 0080 – 0081, claim 3) reads on instant claims 11 and 12.
Baum’s teaching for 1 to 100 ppm CMIT (paragraphs 0010 – 0014, 0027 – 0034) overlaps on the instantly claimed range of 25 to 100 ppm CMIT as recited in claim 11 part a section I and claim 12 part i.
Baum’s teaching for zinc oxide, zinc hydroxide, or zinc carbonate in an amount ranging from 10 to 5,000 ppm (paragraphs 0080 – 0081) overlaps on the instantly claimed range of 50 to 1,000 ppm as recited in claim 11 part a section ii and claim 12 part ii.
Baum’s teaching to add sodium pyrithione in an amount from 1 to 500 ppm to decompose CMIT (paragraphs 0010 – 0014, 0034) overlaps on the instantly claimed range of 25 to 500 ppm as recited in claim 11 part b and claim 12.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Double Patenting over U.S. 10,633,547
Claims 1 – 16 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 9 of U.S. Patent No. 10,633,547.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a method for reducing microbial contamination of an aqueous industrial product, by providing an aqueous industrial product having a pH in the range of 7 to 9.5 containing 25 to 100 ppm of CMIT and 50 to 1,000 ppm zinc compound, then decomposing a portion of CMIT by the addition of at least one pyrithione compound in an amount of 25 to 500 ppm, and storing the industrial product for a period of up to 9 months.
Conflicting claim 1 is drawn to a method for reducing microbial attack of a product, by providing a product and adding 1 to 100 ppm CMIT then decomposing the CMIT by the addition of a CMIT-decomposition compound, and adding at least one additional biocide from a select list.
The instant and conflicting claims differ because conflicting claim 1 does not recite the pH of the product or the inclusion of a zinc compound in the amount of 50 to 1,000 ppm. However, conflicting claim 3 recites the product has a pH from 9 to 12, which overlaps on the range recited in instant claim 1. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Further, conflicting claims 4 and 5 recite the inclusion of a zinc source in the amount of 10 to 5,000 ppm which may be zinc oxide, zinc hydroxide, or zinc carbonate, reading on the inclusion of 50 to 1,000 ppm zinc compound recited in instant claim 1.
The biocides recited in conflicting claim 2 read on instant claim 6.
Conflicting claim 7 reads on instant claims 1 and 5.
Conflicting claim 8 reads on instant claims 10, 15, and 16.
Conflicting claim 9 reads on instant claims 8, 9, 13, and 14.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612