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 .
Claim Status
The Amendment filed on 21 June 2024 has been entered; claims 1-24 remain pending.
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 15-17 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.
With respect to claims 15-17, 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 instances:
Claim 15 recites the broad recitation “0.01 to 100 ppm”, and the claim also recites “preferably 0.01 to 10 ppm, more preferably 0.01 to 2 ppm” which is the narrower statement of the range/limitation;
Claim 16 recites the broad recitation “0.01 to 1 ppm”, and the claim also recites “preferably 0.01 to 0.5 ppm, more preferably 0.05 to 0.2 ppm” which is the narrower statement of the range/limitation;
Claim 17 recites the broad recitation “0.01 to 5 ppm”, and the claim also recites “preferably 0.01 to 2 ppm, more preferably 0.01 to 1 ppm” which is the narrower statement 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
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.
Claims 1, 2, 4-6, and 8-23 are rejected under 35 U.S.C. 103 as being unpatentable over WO (2019/042984), hereinafter “WO (‘984)”.
With respect to claims 1, 2, and 4-6, WO (‘984) teaches an antimicrobial system comprising a) an antimicrobial compound 3-[(4- methylphenyl)sulphonyl]-2-propenenitrile or 4-amino-N-2-thiazolyl-benzene-sulphonamide, which are used in combination with other biocidal or antimicrobial agents including b) chlorine stabilized by an ammonium salt, urea, or dimethylhydantoin (see Page 9, line 32 through Page 10, line 21, “a reaction product of a reaction between active chlorine and a nitrogenous reactant selected from ammonium, urea and dimethylhydantoin”), wherein the compound 3-[(4- methylphenyl)sulphonyl]-2-propenenitrile satisfies Formula I when A = 2-propenenitrile, R2 = R3 = H, and R1 = methyl, and wherein the compound 4-amino-N-2-thiazolyl-benzene-sulphonamide satisfies Formula I when A = 2-thiazoleamine, R2 = R3 = H, and R3 = amino.
The Examiner acknowledges that WO (‘984) teaches additional/other biocidal or antimicrobial agents including non-oxidizing biocides, oxidizing biocides, and stabilized halogen compounds (including a few examples of each), and therefore the ordinary artisan would need to select the stabilized halogen compounds in order to meet the limitations of claim 1; however, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” stabilized chlorine for the other/additional biocidal or antimicrobial compound, as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
With respect to claims 8-10 and 21-23, WO (‘984) teaches a method for treating industrial process water, comprising administering to the water i) an antimicrobial compound 3-[(4- methylphenyl)sulphonyl]-2-propenenitrile or 4-amino-N-2-thiazolyl-benzene-sulphonamide, which are used in combination with other biocidal or antimicrobial agents including (ii) chlorine stabilized by an ammonium salt, urea, or dimethylhydantoin (see Page 9, line 32 through Page 10, line 21, “a reaction product of a reaction between active chlorine and a nitrogenous reactant selected from ammonium, urea and dimethylhydantoin”), wherein the compound 3-[(4- methylphenyl)sulphonyl]-2-propenenitrile satisfies Formula I when A = propenenitrile, R2 = R3 = H, and R1 = methyl, and wherein the compound 4-amino-N-2-thiazolyl-benzene-sulphonamide satisfies Formula I when A = 2-thiazoleamine, R2 = R3 = H, and R3 = amino, which reduces or prevents biofilm formation, or removes biofilm formation (see Page 6, line 26 through Page 7, line 17; Page 8, lines 5-14).
The Examiner acknowledges that WO (‘984) teaches additional/other biocidal or antimicrobial agents including non-oxidizing biocides, oxidizing biocides, and stabilized halogen compounds (including a few examples of each), and therefore the ordinary artisan would need to select the stabilized halogen compounds in order to meet the limitations of claim 8; however, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” stabilized chlorine for the other/additional biocidal or antimicrobial compound, as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
With respect to claim 11, WO (‘984) teaches that the biofilm comprises microorganisms/bacteria comprising Meithothermus, Deinococcus, and/or Pseudoxanthomonas (see Page 6, lines 16-23).
With respect to claims 12 and 13, WO (‘984) teaches that the industrial process water comprises cellulosic fibers, which is circulated within a papermaking system (see Page 5, lines 11-19).
With respect to claim 14, WO (‘984) teaches that the temperature of the water is at least 40°C, preferably at least 50°C (see Page 5, lines 1-6).
With respect to claims 15 and 16, WO (‘984) teaches that the antimicrobial compound is added to the water in an amount ranging from 0.01-100ppm, preferably 0.01 -10 ppm, more preferably 0.01-2ppm or 0.01-1 ppm, even more preferably 0.01-0.5 ppm or 0.01-003 ppm calculated as active ingredient (see Page 7, lines 9-13), wherein the “even more preferably” ranges of WO (‘984) meet the limitations of the recited ranges.
With respect to claim 17, WO (‘984) teaches addition of stabilized chlorine to the water at a dosage of about 0.01 to about 20 ppm active chlorine (see Page 10, lines 14-21), which overlaps the recited range “0.1 to 5 ppm”.
WO (‘984) and the claims differ in that WO (‘984) does not teach the exact same proportions for the range of active chlorine added to the process water as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in active chlorine added taught by WO (‘984) overlaps the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in WO (‘984), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 18, WO (‘984) teaches that the antimicrobial compound is added continuously to the water (see Page 7, lines 19-25).
With respect to claims 19 and 20, WO (‘984) teaches that the antimicrobial compound can be added at the short loop and/or as the water is pumped into the long loop (“different locations”, “avoiding the short loop/headbox”) (see Page 8, line 21 through Page 9, line 26).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO (2019/042984) as applied to claim 1 above, and further in view of WO (2021/214385), hereinafter “WO (‘984)” and “WO (‘385)”.
With respect to claim 3, WO (‘984) does not specifically teach that A is represents the recited group.
WO (‘385) teaches an antimicrobial compound 3-((4-methylphenyl)sulphonyl)prop-2-enamide, which contains the group A = CHCHCONH2 (wherein R5 = R6 = H).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add 3-((4-methylphenyl)sulphonyl)prop-2-enamide as taught by WO (‘385) to the antimicrobial compounds of WO (‘984) because both references seek to remove bacterial/biofilms in aqueous suspensions comprising cellulosic fibers and process water within papermaking processes (see WO (‘385): Abstract, and see WO (‘984): Page 5, lines 11-19), and because WO (‘385) teaches using 3-((4-methylphenyl)sulphonyl)prop-2-enamide in addition to or as an alternative to 3-[(4-Methylphenyl)sulfonyl]-2-propenenitrile (see Claim 13 and Page 13, line 36 through Page 14, line 23), wherein 3-[(4-Methylphenyl)sulfonyl]-2-propenenitrile is disclosed by WO (‘984).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over WO (2019/042984) as applied to claim 6 above, and further in view of US Patent Publication 20200095730), hereinafter “WO (‘984)” and “US (‘730)”.
With respect to claim 7, WO (‘984) does not specifically teach that stabilized halogen/chlorine is monochloramine.
US (‘730) teaches monochloramine (Paragraph [0041]; Claim 15).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add monochloramine to the process water of WO (‘984) because both references seek to remove bacterial/biofilms in aqueous suspensions comprising cellulosic fibers and process water within papermaking processes (see US (‘730): Paragraph [0036], and see WO (‘984): Page 5, lines 11-19), and because WO (‘984) teaches that chlorine stabilized by ammonium (monochloramine is a reaction product of reacting chlorine with ammonia) can be used with the antimicrobial compounds disclosed (see WO (‘984): Page 9, line 32 through Page 10, line 21).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over WO (2019/042984) in view of US Patent Publication 20200095730, hereinafter “WO (‘984)” and “US (‘730)”.
With respect to claim 24, WO (‘984) teaches a method for treating industrial process water (Abstract), comprising administering to the water i) an antimicrobial compound 3-[(4- methylphenyl)sulphonyl]-2-propenenitrile or 4-amino-N-2-thiazolyl-benzene-sulphonamide, which are used in combination with other biocidal or antimicrobial agents including (ii) chlorine stabilized by an ammonium salt, urea, or dimethylhydantoin (see Page 9, line 32 through Page 10, line 21, “a reaction product of a reaction between active chlorine and a nitrogenous reactant selected from ammonium, urea and dimethylhydantoin”), wherein the compound 3-[(4- methylphenyl)sulphonyl]-2-propenenitrile satisfies Formula I when A = propenenitrile, R2 = R3 = H, and R1 = methyl, and wherein the compound 4-amino-N-2-thiazolyl-benzene-sulphonamide satisfies Formula I when A = 2-thiazoleamine, R2 = R3 = H, and R3 = amino, which reduces or prevents biofilm formation, or removes biofilm formation (see Page 6, line 26 through Page 7, line 17; Page 8, lines 5-14).
WO (‘984) does not specifically teach that stabilized halogen/chlorine is monochloramine.
US (‘730) teaches monochloramine (Paragraph [0041]; Claim 15).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add monochloramine to the process water of WO (‘984) because both references seek to remove bacterial/biofilms in aqueous suspensions comprising cellulosic fibers and process water within papermaking processes (see US (‘730): Paragraph [0036], and see WO (‘984): Page 5, lines 11-19), and because WO (‘984) teaches that chlorine stabilized by ammonium (monochloramine is a reaction product of reacting chlorine with ammonia) can be used with the antimicrobial compounds disclosed (see WO (‘984): Page 9, line 32 through Page 10, line 21).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/ Primary Examiner, Art Unit 1779 08 July 2026
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