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 Group I, claims 1-8, 10-12, 16, and 17 in the reply filed on September 8, 2026 is acknowledged. Applicant has not elected a species of A and a species of M; however in view of the art cited below, the species election requirements are hereby withdrawn.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 8, 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 4, 8, and 12 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 8 recites “composition has a low or is absent of a chlorine odor after contact with water for 24 hours”. The term “low” in claim 8 is a relative term which renders the claim indefinite. The term “low …chlorine odor” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification refers to “a low, or is absent of, a chlorine odor (e.g., 0 to 5 milligrams of chloride in 1 L of water)” (Specification para. [0010] (emphasis added)). Here the “e.g.,” renders the phrase as an example, non-defining, concentration, of “low”. Thus it is unclear whether a composition that comprises 6 mg of chloride in 1L of water comprises a “low” chlorine odor.
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 4 recites the broad recitation “thermoplastic polymer”, and the claim also recites "preferably polyethylene..." which is the narrower statement of the range/limitation. Claim 12 recites the broad recitation ”article of manufacture” and “a packing film”, and the claim also recites "preferably a packing film" and “a medical packing film” 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.
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.
Claim(s) 1-8, 10-12, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Langdo (US 2015/0125528) in view of Marek (US 3055889A).
Regarding claims 1, 3-7, 9-12, and 16, Langdo teaches an “apparatus …comprising one or more matrices contained within a shell, wherein the one or more matrices comprise between 1-99 wt % of a water-insoluble host material and between 1-99 wt % of a guest substrate, wherein the guest substrate comprises between 1-100 wt % of one or more disinfectant compounds” (abstract; see title; paras. 0005-08, 0045-49; Figs.1, 3B, and accompanying text). The “host material is a host polymer” (para.0048) specifically including those in instant claims 3 and 4, e.g., polyethylene (para.0055). The shell and the host polymers may be identical (para.0055). The “polymeric water-insoluble host material and the guest substrate, such as a disinfection compound, are homogeneously distributed throughout the one or more matrices” (para.0051).
The disinfectant is a halogen source specifically including sodium salt of dichloroisocyanuric acid (C3O3N3Cl2)- (para.0047; claim 5). The compositions are effective against E. coli among others (para.0092) via “controlled release of potentially dangerous disinfectant compounds in a prescribed dosage range over the lifetime of the apparatus”, exhibiting 99.99% reduction in bacterial load (paras. 0094-96). Although Langdo does not specifically refer to the JISZ 2801:2010 method in claim 7, the exact method of determining the efficacy is not considered to result in materially different results.
Langdo does not specifically teach the disinfectant comprising a metal complexed cyanurate composition having a general formula of Ax[My(C3O3N3Cl2)z], as defined in claims 1, 2, and 17.
Marek teaches complex compounds prepared by reacting an alkali or alkaline earth metal salt of dichlorocyanuric acid with a salt of cadmium, nickel or copper (title; col. 1 lines 9-18, col. 1 line 60-col. 2 line 10; see entire document including Examples 1-8).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to use Marek’s dichlorocyanurate complex salts in Langdo as the disinfectant because both are drawn to disinfecting compositions comprising dichlorocyanuric acid salts and Marek teaches that its “complexes contain available chlorine and are more stable than the dichlorocyanurates used in their preparation” (col.1 lines 12-14).
Regarding claims 5 and 16, Langdo’s apparatus comprises “between 1-99 wt % of a water-insoluble host material and between 1-99 wt % of a guest substrate, wherein the guest substrate comprises between 1-100 wt % of one or more disinfectant compounds” (abstract”). In some embodiments the matrix comprises 40-80 wt.% of the guest substrate (para.0046). These ranges overlap those in claims 5 and 16. For result-effective variables, in the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05 (citations omitted). Furthermore, optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted).
Regarding claim 6, Langdo teaches the “disinfection compound particles range from 1 to 1000 microns in diameter…10 to 600 microns”, e.g., 10 microns (para.0051).
Regarding claims 9-12, the matrices and apparatus that comprise the matrices are can be “injection molded, extruded, sintered, or cast”, “to create a limitless number of apparatus shapes (e.g., form factors) by standard polymer fabrication approaches” (para.0083; see paras. 0057, 0084-85).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614
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