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 .
Status of Claims
Claims 1, 3-15, 18, 20-21, 23-24 and 26 are pending in the instant application. Claims 18, 20-21 and 23-24 are amended and claims 2, 16-17, 19, 22, 25 and 27-31 are cancelled via the amendment filed May 15th, 2024.
Priority
This is a 35 U.S.C. 371 National Stage filing of Application No. PCT/US22/80024 filed November 17th, 2022 which claims priority to 63280571, filed November 17th, 2021.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed 05/15/2024, 10/08/2024 and 12/10/2025 were considered by the Examiner.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain
meaning of the claim language in light of the specification as it would be understood by one of ordinary
skill in the art. Claim 1 recites “for deterring intruders…” which is intended use and the claim limitation is presumed met by a solution comprising an organic acid having a pKa of 6 or less; and water; wherein the solution has a pH between about 4.5 and about 6.5.
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.
Claim(s) 1, 3-4, 6-9, 13-14, 18, 20-21, 24 and 26 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Crowe et al (US 2017/0045336 A1, published February 16th, 2017, as cited on the IDS dated 05/15/2024).
Regarding claim 1, Crowe teaches a composition comprising propionic acid, ammonia and water, in a pH range from approximately 5.60 to 5.80 (claim 6). Claim 1 recites “for deterring intruders” which is intended use and the claim limitation is presumed met by the solution of claim 1.
Regarding claim 3, as seen above, Crowe teaches that the composition has a pH of approximately 5.60 to 5.80.
Regarding claim 4, propionic acid is of formula (I), wherein A is alkyl and B is alkyl.
Regarding claims 6-7, A is alkyl.
Regarding claims 8-9, B is alkyl.
Regarding claim 14, Crowe also teaches that the composition comprises citric acid (claim 3). Regarding claim 13, citric acid is a tricarboxylic acid.
Regarding claim 18, as seen above, Crowe teaches that ammonia is also in the composition.
Regarding claims 20-21, Crowe further teaches that ethoxylated alcohol is also in the composition (claim 2). Ethoxylated alcohol is a narrow range ethoxylate (NREs), as evidenced in paragraph [0031] of the instant specification.
Regarding claim 24, Crowe further teaches that the composition also includes a dye (claim 3).
Regarding claim 26, Crowe further teaches that the composition further comprises a propellant. Crowe teaches that the system is a stand-alone deterrent system with a tank having pressurized gas therein to cause the fluid to be dispersed through the nozzle (paragraph [0041]).
Claim(s) 1-2, 4-5, 10-11 and 15 rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Reo et al (US 2018/0326069 A1, published November 15th, 2018)
Regarding claim 1, Reo teaches a solution comprising water and formic acid at a pH of 3.5-5.0 (claims 1 and 11). Claim 1 recites “for deterring intruders” which is intended use and the claim limitation is presumed met by the solution of claim 1.
Regarding claim 2, as seen above, Reo teaches that the solution is at a pH of 3.5-5.0.
Regarding claims 4-5, formic acid is of Formula I, wherein A is bond and B is hydrogen.
Regarding claim 10, B is hydrogen.
Regarding claim 11, formic acid is a fatty acid.
Regarding claim 15, Reo also teaches that the solution comprises ethylene glycol.
Claim(s) 1, 4, 10, 12, 14 and 23 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Marcq et al (US 2014/0271999 A1, published September 18th, 2014).
Regarding claim 1, composition comprising water (claim 7), pectin (claim 11), and oxalic acid (claim 15) at a pH of about 2 to about 5).
Regarding claims 4 and 10, A is bond and B is carboxyl.
Regarding claim 12, oxalic acid is dicarboxylic.
Regarding claim 14, as seen above, the acid is oxalic acid.
Regarding claim 23, as seen above, pectin is included in the composition.
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, 3-4, 6-9, 13-14, 18, 20-21 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10168125 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The patent claims a composition comprising: propionic acid; ammonia; and water, a content of water in the composition being at least approximately 60% by weight, and a content of propionic acid in the composition being at least approximately 17.5% by weight (claim 1). The patent further claims that the pH of the composition is approximately 5.60 to 5.80 (claim 6). The patent also claims that the composition further comprises citric acid and ethoxylated alcohol (Claim 2).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Grace Kuckla whose telephone number is (703)756-5610. The examiner can normally be reached Monday-Friday 7:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
Prosecution Insights