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 Application
The Examiner acknowledges receipt of the amendments filed 07/23/2026 wherein claims 1-2 have been amended and claim 4 has been cancelled.
Claims 1-3 and 5 are presented for examination on the merits. The following rejections are made.
Priority
Acknowledgement is made of applicant’s claim for foreign priority based on JP2022-058632 filed 03/31/2022, and that the application is a 371 of PCT/JP2023/012670 filed 03/28/2023.
Specification
Applicant’s amendments filed 07/23/2026 overcome the objections to the abstract and title made by the Examiner. The objection is withdrawn.
Modified Rejections Following Amendments
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.
Claim(s) 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (JP 2009209140A; cited in IDS of 9/26/2024), evidenced by Applicant’s specification.
Regarding claims 1-2, Fukushima discloses a multipurpose solution, containing a chlorite compound (i.e. halous acid ion, see claim 4) and at least one component selected from the group consisting of menthol and menthone (see claim 1). Fukushima further teaches that the composition can comprise cationic surfactants such as alkyl quaternary ammonium salts such as benzalkonium chloride, benzethonium chloride, and cetylpyridinium chloride (para. [0048]). While Fukushima does not teach that the ammonium salts act as radical catalysts, as defined in instant specification, the radical generation catalyst can be a quaternary ammonium-type cationic surfactant such as benzalkonium chloride, benzethonium chloride, or cetylpyridinium chloride (para. [0037]).
Regarding claim 3, the ammonium salt taught in Fukushima would have a Lewis acidity of 0.4 eV or more as taught in instant claim 3, since 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.
Regarding claim 5, Fukushima teaches that the composition is aqueous (see claim 1) and has sufficient bactericidal and cleaning powder at approximately neutral pH levels (i.e. non-acidic, para. [0039]).
Fukushima does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Fukushima with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method of the instant claims with predictable results.
Response to Applicant’s Arguments
Applicant asserts the following:
Claim 1 is amended to include the features of claim 4. Claims 2, 3, and 5 depend on claim 1, and as such the prior rejection under 35 U.S.C. 102(a)(1) is now moot.
Unlike the composition of Okada, the present claimed invention is to provide a composition in which an additive component other than a radical generation source and a radical generation catalyst, where the additive is stable for a long period of time and hard to decompose. The menthol additive of the present specification is stable, whereas in Okada the alcohol of the menthol is oxidized into a ketone. Nothing in Okada teaches or suggests a composition that contains a radical generation source as recited in instant claim 1, which prevents an additive such as menthol from degradation in the composition.
Fukushima is directed to provide a chlorite compound aqueous solution with significantly enhanced sterilizing power. It would not be obvious to modify the composition in Okada to further include chlorous acid as a radical generation source since Fukushima teaches that chlorous acid is effective for sterilization. Okada teaches oxidizing alcohols into ketones using sodium hypochlorite pentahydrate. The oxidizing process includes forming a reaction composition formed by mixing the alcohol, sodium hypochlorite pentahydrate, and other components. The composition in Okada containing the alcohol and sodium hypochlorite pentahydrate is present only briefly as a reacting composition. Nothing in Okada teaches or suggests its reaction composition is likely to be exposed to an unclean environment where sterilization would be necessary. Therefore, chlorous acid being effective for sterilization would not provide a reasonable basis to add it to the reaction composition of Okada, as suggested in the rejection.
The advantageous effect of the claimed composition is the claimed additive component remaining stable over a long period of time and being resistant to decomposition. This would include resistance to changes such as oxidation. Stability and resistance to decomposition is directly contrary to the objective of Okada, where oxidation of the alcohol occurs.
Okada and Fukushima do not teach or suggest a composition comprising a radical generation catalyst, an additive component, and a radical generation source, where the radical generation source is at least one of a halous acid, a halous acid ion, and a halous acid salt.
Regarding argument A, amendments of claim 1 to incorporate components of claim 4 overcome the prior rejection under 35 U.S.C. 102(a)(1) and as such this rejection has been withdrawn. Claim 1 remains rejected under 35 U.S.C. 103 under modified rejections above.
In response to arguments B, D, and E, as described above, each component of the claims is taught in the composition of Fukushima. Since each component of instant claims are in Fukushima, and 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 response to argument C, as described above in the modified rejections under 35 U.S.C. 103, Fukushima teaches each element of the claimed invention.
Examiner thanks Applicant for the amendments and their arguments, but the rejections of claims 1-3 and 5 under 35 U.S.C. 103 are maintained.
Double Patenting
The terminal disclaimer filed 07/23/2026 for Application Number 18/686,241 overcomes the prior double patenting rejection. The prior statutory double patenting rejection has been withdrawn.
Conclusion
The rejections of claims 1-3 and 5 are maintained.
THIS ACTION IS MADE FINAL. 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.
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/M.R.M./Examiner, Art Unit 1611
/KYLE A PURDY/Primary Examiner, Art Unit 1611
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