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 .
Response to Amendment
Applicant's amendments and remarks filed on June 9, 2026 have been entered and considered. Claims 1 – 3 have been amended, claims 5 – 9 are added and claims 1 – 11 are pending. In view of Applicant’s amendment, the Examiner withdraws the 35 USC 102 rejection over Elfersy et al. (CA 2,292,005). The invention as currently claimed is not found to be patentable for reasons herein below.
Response to Arguments
Regarding Applicant’s arguments concerning the newly amended scope of m in claim 1 and the “consists of” language in claim 3, please see the newly applied 35 U.S.C. 103 as being unpatentable over Elfersy et al. (CA 2,292,005) (provided on IDS dated 5/28/2024 – 32 pages) in view of Eudy (US 4,282,366) below.
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.
Claim 5 is 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.
Regarding claim 5, the phrase “more preferred” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Also, the claim contains two periods thus two sentences. For purposes of examination, the Examiner will interpret the claim to require any of the listed compounds.
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.
Claims 1 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over Elfersy et al. (CA 2,292,005) (provided on IDS dated 5/28/2024 – 32 pages) in view of Eudy (US 4,282,366).
Elfersy et al. is directed to compositions and formulations containing organosilanes for commercial use (Abstract). Elfersy et al. teach that the compositions can be used to treat substrates and various articles to provide a long-lasting treatment against odors (page 1, lines 8 – 15).
Elfersy et al. teach a composition containing:
Constituent A: antimicrobial organosilane(s) of interest
Constituent B: silane stabilizer
Constituent C: water
Elfersy et al. teach that Constituent A can comprise antimicrobial silanes of interest having the general formula (I) or (II):
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Elfersy et al. teach, generally, these materials are quaternary ammonium salts of silanes. Elfersy et al. indicates that many of the silanes within the scope of the invention are known from the literature and includes US 4,282,366 among other patents. Elfersy et al. teach that the organosilanes described in the herein US patents and US patent applications may all be used as the organosilane of interest alone or in addition to the organosilanes specifically described herein. (last paragraph of page 12 and first paragraph of page 13).
Elfersy et al. teach that Constituent A can comprise a mixture of two or more organosilanes, may or may not be a quaternary ammonium compound and may have one or more amine groups with or without being an quarternary ammonium compound (page 10). Elfersy et al. teach amino containing organosilanes such as 3-aminopropyltriethoxysilane as required by claim 6 among others (page 10, second paragraph).
Elfersy et al. teach the claimed invention but fail to teach a formula where m is 6 to 11 as required by claim 1 and selected from the list of compounds listed in claim 5.
Eudy (US 4,282,366), which is specifically mentioned in Elfersy et al., is directed to antimicrobial agents of organosilicon quaternary ammonium compounds of the formula:
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It should be noted that m in Elfersy et al. is equivalent to m in Eudy and Eudy teaches m is 4 to 11 which significantly overlaps with Applicant’s formula. Eudy et al. teach that the compound can be impregnated to treat substrates, such as cellulose fabrics, so that the growth of disease-causing microorganisms in and on the substrates is inhibited (Abstract). One example of preferred example of organosilicon quaternary ammonium compounds of formula is N-(6trimethoxysilylhexyl)octadecyldimethylammonium chloride (column 2, lines 45 – 65)
as required by claim 5. Eudy notes that the compounds of the Eudy’s formula 1 have significant antimicrobial activity, and for that reason, are useful for the control of gram-positive and gram-negative bacteria, algae, yeast, fungi and other microorganisms (column 3, lines 15 – 20). Eudy also teaches that the compound can be applied so that it cannot be readily washed off or leached from the substrate (column 3, lines 50 – 60).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to organosilicon quaternary ammonium compounds of Eudy et al. with m equal to 4 to 11, specifically, N-(6trimethoxysilylhexyl)octadecyldimethylammonium chloride, in the composition of Elfersy et al. motivated by the desire to create an article with significant antimicrobial activity, and for that reason, are useful for the control of gram-positive and gram-negative bacteria, algae, yeast, fungi and other microorganisms (column 3, lines 15 – 20) and cannot readily be washed off or leached from the applied substrate (column 3, lines 50 – 60).
As to claims 2 and 7 - 9, Elfersy et al. teach that the compositions can contain 1 – 99.98% water, which is equated to Applicant’s “solvent”, and 0.01 – 15% silane of interest (page 14).
As to claim 3, as noted above, Elfersy et al. teach a composition containing:
Constituent A: antimicrobial organosilane(s) of interest, Constituent B: silane stabilizer and Constituent C: water. Elfersy et al. teach that it will be readily apparent to the ordinary skilled artisan to create a wide variety of aqueous formulations to achieve the cleaning and antimicrobial effects of the subject invention. Elfersy et al. indicate that sample formulations can be modified, as it is well-known in the art, to exclude incompatible compounds and to incorporate ingredients according to the invention (page 13). Regarding the “consists of” language, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to create a composition that consists of the elements in claim 3, because it would have been choosing from a finite number of identified, predictable solutions of an antimicrobial composition possessing long lasting treatment against odors (page 1 of Elfersey et al.).
As to claims 4, 10 and 11, Elfersy et al. teach that the compositions can be used to treat substrates and various articles to provide a long-lasting treatment against odors (page 1, lines 8 – 15).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER A BOYD whose telephone number is (571)272-7783. The examiner can normally be reached M-F 8 am - 5 pm with alternating Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786
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