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, drawn to a storage stabilization agent and an aqueous preparation comprising the storage stabilization agent, in the reply filed on 08/17/2026 is acknowledged.
Applicant’s election of the species of (i) the ion sources of at least one water soluble or water dispersible sodium ion source and at least one water soluble or water dispersible magnesium ion source and (ii) calcium carbonate as the inorganic particulate material in the reply filed on 08/17/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/2026.
Claims 23-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/2026.
Claims 2, 5-6, and 12 are cancelled.
Claims 1, 3-4, 7-11, 13-16, and 21-22 are under current examination.
Priority
This application is a national stage entry of PCT/EP2023/066167, filed 06/15/2023. Foreign priority has been claimed to EP 22179197.3, filed 06/15/2022, and EP 23164277.8, filed 03/27/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/09/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-4, 7-11, 13-16, and 21-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more.
In accordance with MPEP § 2106, claims found to recite statutory subject matter (in the present claim, a composition of matter; Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature, or natural phenomenon (Step 2A, Prong One).
The instant claims recite a storage stabilization agent for stabilizing an aqueous composition comprising at least two different water soluble or water dispersable ion sources selected from sources of bismuth ions, magnesium ions, sodium ions, potassium ions, and zinc ions. The claims further recite that the storage stabilization agent comprises water, has a pH from 3 to 14, is free from lithium ions, and comprises additives selected from the group consisting of dispersing agents, viscosity agents, thickeners, rheological additives, and defoaming agents. The claims further recite an aqueous preparation comprising the storage stabilization agent that comprises at least one inorganic particulate material and/or at least one organic material, and that the storage stabilization agent is present in an amount such that the pH value is stabilized and the preparation is preserved against microorganisms.
The claims are directed to a judicial exception such as a natural phenomenon (e.g., product of nature) as the structural components of the claims are consistent with the naturally occurring product of seawater. As evidenced by Encyclopaedia Britannica (“seawater” https://www.britannica.com/print/article/531121), seawater is a complex mixture of water and salts (pg. 1, paragraph 1) including sodium, chloride, and magnesium ions (pg. 1, “Chemical and physical properties of seawater”, paragraph 1 and Table at pg. 3). The relatively high concentrations of total inorganic carbon and boron in seawater are sufficient to maintain the pH between 7.4 and 8.3 (pg. 6, paragraph 2), and thus the seawater acts as a storage stabilization agent against changes in pH. The ratio of sodium to magnesium ions is consistent with that recited in instant claim 9 (see Table at pg. 3). The high salinity of seawater affects the viscosity (pg. 2, paragraph 2). Seawater contains organic substances (pg. 2, paragraph 1) and particulates (pg. 2, paragraph 3).
Further, as evidenced by Parish (“How do salt and sugar prevent microbial spoilage?” Scientific American, 2006, https://www.scientificamerican.com/article/how-do-salt-and-sugar-pre/), salt, usually sodium chloride, is used to protect food such as meat, preserves, etc. from microbial spoilage; salt solutions in water (brine) are used in curing or pickling preservation processes (pg. 1, paragraph 1). Salt inhibits or prevents growth of food-borne pathogens such as Salmonella or Clostridium botulinum via osmosis and by interference with a microbe’s enzyme activity (see pg. 2); thus, sodium chloride-containing water is capable of preserving against microorganisms.
There is no indication of record that the omission of lithium ions recited in claims 10 and 22 has functionally changed the seawater from its naturally occurring counterpart, or has imparted a markedly different characteristic. Consequently, the claims are directed to a product of nature exception (Step 2A, Prong 1: YES).
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or
not (Step 2A, Prong 2). Here, the judicial exception is not integrated into a practical application because,
as noted above, there is no indication that the claims recite any element that has caused the nature-based product to have any functional characteristics that are different from the naturally occurring product. The claims recite structural elements and properties (pH stabilization and preservation against microorganisms) consistent with those naturally present in seawater. While claim 21 recites an amount of sodium ion source that is slightly lower in concentration than naturally occurring seawater (10,000 ppm claimed vs 10,679 ppm in the table at pg. 3 of Encyclopaedia Britannica) there is no evidence of record that minorly adjusting the naturally occurring sodium ion concentration has imparted any characteristics that are different from the naturally occurring product. See also MPEP 2106.04(d): “Because a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.” (Step 2A, Prong 2: NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if
the claims recite an inventive concept that provides significantly more than the judicial exception itself
(Step 2B).
The claims do not recite anything, compositionally or functionally, which provides an inventive concept that departs from merely reciting a composition containing all naturally occurring components contained in seawater, the composition having properties that are consistent with the naturally occurring counterparts of the components of the composition. While claim 21 recites an amount of sodium ion source that is slightly lower in concentration than naturally occurring seawater (10,000 ppm claimed vs 10,679 ppm in the table at pg. 3 of Encyclopaedia Britannica), there is no evidence of record that merely minorly adjusting the amounts of naturally occurring sodium ions rises to the level of an inventive concept that provides significantly more than the judicial exception (Step 2B: NO).
Therefore, the claims are not patent eligible subject matter under 35 USC § 101.
Claim Rejections - 35 USC § 112(b)
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.
Claims 9 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 9 recites “wherein the weight ratio of the at least two different water soluble or water dispersible ion sources is from 100:1 to 1:100”. “At least two” is inclusive of two, three, four, or more ion sources, and it is unclear how the recited ratio of 100:1 to 1:100 applies to situations where more than two ion sources are present.
Claim 11 recites (emphasis added) “the storage stabilization agent comprises further additives…” which renders the claim indefinite as no additives are previously recited, and it is unclear if the claim requires that the storage stabilization agent comprises another additive in addition to those recited in claim 11 or not. It is suggested that Applicant can omit the word “further” from the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-4, 7-9, 13, 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Glaubitz et al. (EP 3403505 A1, published November 21, 2018; included on IDS submitted 12/09/2024), hereafter, “Glaubitz”.
Regarding instant claim 1, Glaubitz discloses an antimicrobial composition comprising at least one water soluble or water dispersable source of zinc ions in combination with at least one water soluble or water dispersable source of lithium ions and optionally at least one water soluble or
water dispersable source of magnesium ions and/or at least one water soluble or water dispersable source of sodium ions, an aqueous preparation, and a process for preserving an aqueous preparation against microorganisms (see entire document, particularly abstract and claim 1).
Regarding instant claim 3, Glaubitz discloses that the at least one water soluble or water dispersable source of magnesium ions is at least one magnesium salt (claim 4).
Regarding instant claim 4, Glaubitz discloses that the at least one water soluble or water dispersable source of sodium ions is at least one sodium salt (claim 6).
Regarding instant claim 7, Glaubitz discloses that the antimicrobial composition comprises water (claim 2) and discloses an aqueous (water-comprising) preparation comprising the antimicrobial composition (claim 11).
Regarding instant claim 8, Glaubitz discloses that the aqueous preparation has a preferable pH from 7 to 10.5 (claim 13).
Regarding instant claim 9, Glaubitz discloses that the weight ratio of the at least one water soluble or water dispersable source of sodium ions to the at least one water soluble or water dispersable source of magnesium ions [Na/Mg] is from 100:1 to 1:100 (claim 7).
Regarding instant claim 13, as noted above, Glaubitz discloses an aqueous preparation comprising the antimicrobial composition (claim 11).
Regarding instant 15, Glaubitz discloses that the aqueous preparation further comprises at least one inorganic particulate material, most preferably comprising natural ground calcium carbonate and/or synthetic precipitated calcium carbonate (claim 12).
Regarding instant claim 16, Glaubitz discloses that the aqueous preparation has (i) a pH value of from 2 to 12, preferably from 6 to 12 and more preferably from 7 to 10.5, and/or (ii) a solids content of up to 85.0 wt.% based on the total weight of the aqueous preparation (claim 13).
Claims 1, 7-10, 13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al. (US 2020/0154728 A1, published May 21, 2020), hereafter, “Lin”.
Regarding instant claim 1, Lin discloses a water concentrate comprising magnesium ions and sodium ions (see entire document, particularly claim 1). Regarding the recitation of a “storage stabilization agent for stabilizing an aqueous composition upon storage”, given that the water concentrate of Lin is structurally the same as the instantly claimed storage stabilization agent, it must necessarily possess the same properties, and is therefore capable of functioning as a storage stabilization agent for stabilizing an aqueous composition. Per MPEP 2112.01 II., “"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id.” See also MPEP 2111.02 II., “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”.
Regarding instant claim 7, as noted above, Lin discloses a water concentrate (claim 1); Lin further discloses that the concentrate can be diluted with a water-based diluent (paragraph [0018] and Example 1 at paragraph [0025]).
Regarding instant claim 8, Lin discloses that the water concentrate has a pH in a range from 6 to 9 (claim 1).
Regarding instant claim 9, Lin exemplifies a water concentrate with 14,105 ppm magnesium ion and 467 ppm sodium ion (Example 1 at paragraph [0025]), resulting in a weight ratio of magnesium ion to sodium ion of 30.2:1.
Regarding instant claim 10, the water concentrate disclosed by Lin is free of water soluble and water dispersible sources of lithium ions.
Regarding instant claim 13, as noted above, Lin discloses a water concentrate (claim 1); Lin further discloses that the concentrate can be diluted with a water-based diluent (paragraph [0018] and Example 1 at paragraph [0025]).
Regarding instant claim 16, as noted above, Lin discloses that the water concentrate has a pH in a range from 6 to 9 (claim 1).
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.
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, 3-4, 7-9, 11, 13-16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Glaubitz et al. (EP 3403505 A1, published November 21, 2018; included on IDS submitted 12/09/2024), hereafter, “Glaubitz”.
Regarding instant claim 1, Glaubitz teaches an antimicrobial composition comprising at least one water soluble or water dispersable source of zinc ions in combination with at least one water soluble or water dispersable source of lithium ions and optionally at least one water soluble or
water dispersable source of magnesium ions and/or at least one water soluble or water dispersable source of sodium ions, an aqueous preparation, a process for preserving an aqueous preparation against microorganisms (see entire document, particularly abstract and claim 1).
Regarding instant claim 3, Glaubitz teaches that the at least one water soluble or water dispersable source of magnesium ions is at least one magnesium salt (claim 4).
Regarding instant claim 4, Glaubitz teaches that the at least one water soluble or water dispersable source of sodium ions is at least one sodium salt (claim 6).
Regarding instant claim 7, Glaubitz teaches that the antimicrobial composition comprises water (claim 2) and an aqueous (water-comprising) preparation comprising the antimicrobial composition (claim 11).
Regarding instant claim 8, Glaubitz teaches that the aqueous preparation has a preferable pH from 7 to 10.5 (claim 13).
Regarding instant claim 9, Glaubitz teaches that the weight ratio of the at least one water soluble or water dispersable source of sodium ions to the at least one water soluble or water dispersable source of magnesium ions [Na/Mg] is from 100:1 to 1:100 (claim 7).
Regarding instant claim 11, Glaubitz teaches that additives such as dispersing agents can be included to keep inorganic particulate materials dispersed in an aqueous preparation and ensure that the viscosity of the preparation remains substantially the same over time (paragraph [0164]).
Regarding instant claim 13, Glaubitz teaches an aqueous preparation comprising the antimicrobial composition (claim 11).
Regarding instant claim 14, Glaubitz teaches that the antimicrobial composition is effective against microorganisms (claim 8). Glaubitz demonstrates that compositions comprising MgCO3 and compositions comprising Na2CO3 achieve antimicrobial efficiency for at least six weeks (see paragraphs [0210]-[0213], particularly E6-E8 at Tables 2-3). Glaubitz further teaches that contamination by microorganisms can lead to changes in pH (paragraph [0003]), suggesting that by stabilizing compositions against microorganism growth, the pH will also be stabilized.
Regarding instant 15, Glaubitz teaches that the aqueous preparation further comprises at least one inorganic particulate material, most preferably comprising natural ground calcium carbonate and/or synthetic precipitated calcium carbonate (claim 12).
Regarding instant claim 16, Glaubitz discloses that the aqueous preparation has (i) a pH value of from 2 to 12, preferably from 6 to 12 and more preferably from 7 to 10.5, and/or (ii) a solids content of up to 85.0 wt.% (claim 13).
Regarding instant claim 21, Glaubitz teaches that the composition comprises water and that the magnesium and sodium ion sources are present most preferably from 750 to 5000 ppm (claim 2, paragraph [0102]), overlapping the claimed ranges.
Glaubitz does not teach the inclusion of dispersing agent additives (instant claim 11) or the stabilization of instant claim 14 with sufficient specificity to anticipate, but rather renders obvious the claims. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the prior art elements of Glaubitz of a dispersing agent and amounts of magnesium and sodium ions effective to stabilize the aqueous preparation according to known methods to yield predictable results.
As noted above, Glaubitz teaches that additives such as dispersing agents can be included to keep inorganic particulate materials dispersed in an aqueous preparation and ensure that the viscosity of the preparation remains substantially the same over time (paragraph [0164]). Glaubitz further demonstrates that both magnesium and sodium ion source-containing compositions are stable against microorganisms for several weeks and suggests their combination to further improve antimicrobial efficiency (paragraph [0213]). Rearrangement of the prior art elements taught by Glaubitz to reach the storage stabilization agent and aqueous preparation of the instant claims is within the purview of a person of ordinary skill in the art who is not an automaton and would predictably result in compositions with antimicrobial efficiency for multiple weeks and stability toward changes in viscosity. Further, from MPEP 2141 I., "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when 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." Id. at 417, 82 USPQ2d at 1395-96 (Internal quotations omitted.)”.
Glaubitz does not teach the concentrations of ion sources of instant claim 21 with sufficient specificity to anticipate the claim, but rather renders them obvious. As noted above, Glaubitz teaches concentrations overlapping the claimed ranges, and per MPEP 2144.05 I., “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claims 1, 7-10, 13, 16, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2020/0154728 A1, published May 21, 2020), hereafter, “Lin”.
Regarding instant claim 1, Lin teaches a water concentrate comprising magnesium ions and sodium ions (see entire document, particularly claim 1). Regarding the recitation of a “storage stabilization agent for stabilizing an aqueous composition upon storage”, given that the water concentrate of Lin is structurally the same as the instantly claimed agent, it must necessarily possess the same properties and is therefore capable of functioning as a storage stabilization agent for stabilizing an aqueous composition. Per MPEP 2112.01 II., “"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id.” See also MPEP 2111.02 II., “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”.
Regarding instant claim 7, as noted above, Lin teaches a water concentrate (claim 1); Lin further teaches that the concentrate can be diluted with a water-based diluent (paragraph [0018] and Example 1 at paragraph [0025]).
Regarding instant claim 8, Lin teaches that the water concentrate has a pH in a range from 6 to 9 (claim 1).
Regarding instant claim 9, Lin exemplifies a water concentrate with 14,105 ppm magnesium ion and 467 ppm sodium ion (Example 1 at paragraph [0025]), resulting in a weight ratio of magnesium ion to sodium ion of 30.2:1.
Regarding instant claim 10, the water concentrate taught by Lin is free of water soluble and water dispersible sources of lithium ions.
Regarding instant claim 13, as noted above, Lin teaches a water concentrate (claim 1); Lin further teaches that the concentrate can be diluted with a water-based diluent (paragraph [0018] and Example 1 at paragraph [0025]).
Regarding instant claim 16, as noted above, Lin teaches that the water concentrate has a pH in a range from 6 to 9 (claim 1).
Regarding instant claim 21, Lin teaches that the water concentrate comprises between 200 and 20,000 ppm of magnesium ion and between 30 and 1,000 ppm of sodium ion (claim 1), overlapping the claimed ranges.
Regarding instant claim 22, as noted above, the water concentrate of Lin is free of water soluble and water dispersible sources of lithium ions.
Lin does not teach the concentrations of ion sources of instant claim 21 with sufficient specificity to anticipate the claim, but rather renders them obvious. As noted above, Lin teaches concentrations overlapping the claimed ranges, and per MPEP 2144.05 I., “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-4, 7-11, 13-16 and 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13, 20-25, and 27 of copending Application No. 18/867,055 in view of Glaubitz et al. (EP 3403505 A1, published November 21, 2018; included on IDS submitted 12/09/2024), hereafter, “Glaubitz”.
Both the instant claims and those of copending Application No. 18/867,055 recite a storage stabilization agent for stabilizing an aqueous composition comprising a water dispersible source of magnesium ions, particularly magnesium salts (MgCO3 recited in copending Application No. 18/867,055) and a water soluble or water dispersible source of alkali ions, particularly sodium salts (see copending claim 20) and an aqueous composition comprising the storage stabilization agent. The claims of copending Application No. 18/867,055 recite amounts and ratios of the ion sources consistent with the instant claims and the inclusion of additive selected from the group consisting of dispersing agents, viscosity agents, thickeners, rheological additives, and defoaming agents. The claims of copending Application No. 18/867,055 recite the inclusion of at least two different ion sources (see copending claim 11), and thus do not require that lithium ion sources are present. Both sets of claims recite that the storage stabilization agent is present in an amount such that the aqueous preparation is preserved against microorganisms for at least 15 days.
The claims of copending Application No. 18/867,055 do not recite the pH value of instant claims 8 and 16 and do not teach the inclusion of the elected calcium carbonate inorganic particulate material of instant claim 15.
Glaubitz teaches an antimicrobial composition comprising at least one water soluble or water dispersable source of zinc ions in combination with at least one water soluble or water dispersable source of lithium ions and optionally at least one water soluble or water dispersable source of magnesium ions and/or at least one water soluble or water dispersable source of sodium ions, an aqueous preparation, a process for preserving an aqueous preparation against microorganisms (see entire document, particularly abstract and claims 1, 4, and 6). Glaubitz teaches that the antimicrobial composition comprises water (claim 2) and an aqueous (water-comprising) preparation comprising the antimicrobial composition (claim 11), and that the aqueous preparation has a preferable pH from 7 to 10.5 (claim 13). At alkaline pH, the composition is effective against microorganisms (paragraphs [0147]-[0149]). Glaubitz teaches that the aqueous preparation further comprises at least one inorganic particulate material, most preferably comprising natural ground calcium carbonate and/or synthetic precipitated calcium carbonate (claim 12).
It would have been prima facie obvious to one of ordinary skill in the art to modify the pH of the storage stabilization agent and aqueous composition recited in copending Application No. 18/867,055 with the alkaline pH range of from 7 to 10.5 of Glaubitz, overlapping that of the instant claims, in order to achieve a pH that is effective against microorganisms (see Glaubitz, paragraphs [0147]-[0149]). It would further have been prima facie obvious to one of ordinary skill in the art to incorporate a calcium carbonate particulate material, as suggested by Glaubitz, in order to incorporate fillers or pigments to make a slurry or dispersion according to the desired form of the final aqueous preparations (see Glaubitz, paragraphs [0002] and [0163]).
Given the subject matter of the instant claims is obvious and substantially overlaps the subject
matter of copending Application No. 18/867,055, the instant claims are rejected on the ground of nonstatutory double patenting. This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-4, 7-11, 13-16, and 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 12-14, and 16 of copending Application No. 18/555,335 in view of Glaubitz et al. (EP 3403505 A1, published November 21, 2018; included on IDS submitted 12/09/2024), hereafter, “Glaubitz”.
Both the instant claims and those of copending Application No. 18/555,335 recite a storage stabilization agent (buffer) for stabilizing (maintaining the pH of) an aqueous composition comprising a water soluble or water dispersible source of magnesium ions, particularly magnesium salts (see copending claim 3) and a water soluble or water dispersible source of alkali ions, particularly the sodium salts sodium carbonate or sodium bicarbonate (see copending claims 1-2) and an aqueous composition comprising the storage stabilization agent. The claims of copending Application No. 18/555,335 recite amounts and ratios of the ion sources consistent with the instant claims, a pH range consistent with the instant claims, the inclusion of dispersing agents, and the inclusion of particulate calcium carbonate. The claims of copending Application No. 18/555,335 do not require that lithium ion sources are present.
The claims of copending Application No. 18/555,335 do not recite that the storage stabilization agent is present in an amount such that the aqueous preparation is preserved against microorganisms, viruses and/or bacteriophages for at least 15 days (instant claim 14).
Glaubitz teaches an antimicrobial composition comprising at least one water soluble or water dispersable source of zinc ions in combination with at least one water soluble or water dispersable source of lithium ions and optionally at least one water soluble or water dispersable source of magnesium ions and/or at least one water soluble or water dispersable source of sodium ions, an aqueous preparation, a process for preserving an aqueous preparation against microorganisms (see entire document, particularly abstract and claims 1, 4, and 6). Glaubitz teaches that the antimicrobial composition comprises water (claim 2) and an aqueous (water-comprising) preparation comprising the antimicrobial composition (claim 11), and that the aqueous preparation has a preferable pH from 7 to 10.5 (claim 13). At alkaline pH, the composition is effective against microorganisms (paragraphs [0147]-[0149]). Glaubitz teaches that the antimicrobial composition is effective against microorganisms (claim 8) and demonstrates that compositions comprising MgCO3 and compositions comprising Na2CO3 achieve antimicrobial efficiency for at least six weeks (see paragraphs [0210]-[0213], particularly E6-E8 at Tables 2-3).
It would have been prima facie obvious to one of ordinary skill in the art to modify the aqueous preparation recited in copending Application No. 18/555,335 to include the storage stabilization agent (buffer) in an amount that preserves the preparation against microorganisms for at least 15 days, as suggested by Glaubitz. One of ordinary skill would have been motivated to do so in order to protect the aqueous formulations from negative side effects of microorganism growth such as changes in viscosity, discoloration, and risk to humans (see Glaubitz, paragraph [0003]), particularly as Glaubitz teaches that at alkaline pH ranges, consistent with the instant and copending claims, the compositions are effective against microorganisms.
Given the subject matter of the instant claims is obvious and substantially overlaps the subject
matter of copending Application No. 18/555,335, the instant claims are rejected on the ground of nonstatutory double patenting. This is a provisional nonstatutory double patenting rejection.
Conclusion
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
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