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 .
Priority
Acknowledgement is made of the Applicant’s claim of domestic priority to provisional US application 62/705,320 filed 22 June 2020.
Examiner's Note
Applicant's amendments and arguments filed 9 April 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant's response, filed 9 April 2026, it is noted that claims 1 and 8 have been amended and no new matter or claims have been added. Support can be found in the specification at [0019].
Status of the Claims
Claims 1-10 are pending.
Claims 1-10 are rejected.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hammond et al. (US 5,223,617) in view of Elfersy et al. (WO 2006/086271) in view of Smith et al. (US 2011/0059882) in view of Blehm Blank (US 4,921,701) in view of Toreki et al. (US 2010/0330261).
Hammond teaches producing polychloroisocyanuric acid compounds that can be used in laundry, bleaching, and sanitizing applications (col 1, lns 9-13). In the process of Hammond, cyanuric acid is admixed with hypochlorous acid solution (HOCl) (col 2, lns 64-67; Col 4, lns 25-30). While Hammond does not state how much HOCl is used, to convert cyanuric acid to dichloroisocyanuric acid, two molar equivalents of chlorine (i.e. HOCl) would be needed. Therefore, for 200 grams of cyanuric acid monohydrate (MW: 129.07 g/mol; 1.55 moles) one would need 3.10 moles of HOCl (MW: 52.46 g/mol), which is 162 grams or 48 wt% wherein the cyanuric acid is about 52 wt%.
Hammond does not teach further including a silane quaternary ammonium ion. Hammond does not teach the claimed concentration of HOCl.
Elfersy teaches a composition having disinfectant and antimicrobial activity wherein the composition comprises an organosilane quaternary compound and a quaternary ammonium compound (abstract). The compositions of Elfersy are useful for cleaning and disinfecting surfaces and in surface cleansers such as laundry detergents (pg 16, lns 19-26). The organosilane compound can be 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride and can be used in a range of about 0.01-10% by weight (pg 8, lns 4-8; pg 10, lns 25-33).
Smith teaches that the nature of the application or use of a cleaning composition comprising hypochlorous acid influences the concentration thereof wherein when used as a laundry composition, about 5-1000 ppm should be released [0098].
Blehm Blank teaches that most surfaces are negatively charged and that cationic surface agents are thus readily adsorbed to said surfaces (col 3, lns 34-36). One such cationic surface agent is 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride, which is an antimicrobial agent that imparts a durable, wash resistant, broad spectrum antimicrobial finish to a surface (col 3, lns 37-48).
Toreki teaches that silane-based QACs such as 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride attach to substrates via a siloxane bond [0008].
It would have been prima facie obvious to the person of ordinary skill in the art to combine the laundry sanitizing composition of Hammond with the laundry detergent disinfectant composition of Elfersy to prepare a new laundry composition capable of disinfecting. The composition would comprise a mixture of hypochlorous acid and cyanuric acid wherein 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride is further included as a disinfecting agent. The prior art does not teach or suggest that the silicon atoms are not free to bond or are otherwise hindered. As such, it would have been obvious to use 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride in its natural form with free silane groups when combining with the invention of Hammond. Generally, it is prima facie obvious to combine/substitute two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. The idea for combining them flows logically from their having been individually taught in the prior art. (see MPEP § 2144.06; In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)). Blehm Blank teaches that 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride is positively charged and necessarily adsorbs to a negatively charged surface, which is most surfaces, therefore the ability for the QAC to bind to the surface is taught in the art as being an inherent property thereof. The bonding that occurs can be via the silane groups to form siloxane bonds, as taught in Toreki. Moreover, the ability of said QAC to impart residual antimicrobial activity is also an inherent property thereof. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
Regarding the instant claims, the term “disinfecting” is an intended use of the claimed composition, does not provide a structural difference over the prior art, and is given minimal patentable weight (see MPEP 2111.02 (II)).
Regarding the concentration of HOCl, Hammond does not teach the amount used but does teach the formation of dichloroisocyanuric acid. It would be obvious to dilute or adjust the concentration of the mixture that is to use as a laundry agent (see col 1, lns 26-33). That being said and in lieu of objective evidence of unexpected results, the concentration of HOCl can be viewed as a variable which achieves the recognized result of preparing dichloroisocyanuric acid and then being useful as a laundry agent. The optimum or workable range of HOCl can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). Regarding the cyanuric acid, Hammond teaches 200 g but does not teach what percentage of the composition this comprises. Based on the molar requirements of the reaction, it would have been obvious to use about 50% of each agent in the composition. The optimum or workable range of cyanuric acid can also be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Optimization so that from 5-1000 ppm is released would have been obvious based on Smith. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
As such, the prior art renders obvious instant claims 1-10.
Response to Arguments
Applicant's arguments filed 9 April 2026 have been fully considered but they are not persuasive. The Applicant argues, on pages 4-6 of their remarks, that Hammond does not teach a disinfecting solution that provides residual activity after the hypochlorous acid has reacted nor does it teach silane quaternary ammonium ions that bond to the surface via silane groups.
In response, the prior art teaches that it would have been obvious to combine the laundry sanitizing composition of Hammond with the laundry detergent disinfectant composition of Elfersy to prepare a new laundry composition capable of disinfecting. The composition would comprise a mixture of hypochlorous acid and cyanuric acid wherein 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride is further included as a disinfecting agent. Blehm Blank teaches that 3-(trimethoxysilyl)propyldimethyloctadecyl ammonium chloride has the inherent property of bonding to the surface of a negatively charged substrate and Toreki teaches that bonding occurs via silane groups to form siloxane bonds. Since this QAC is bound to the surface, there is no reason that it would not continue imparting antimicrobial activity even when the hypochlorous acid has reacted.
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 ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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