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 .
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 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.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I. Claims 1-13, drawn to a biofilm deactivating composition comprising: at least one biocide, wherein the biocide is a fatty acid, anionic surfactant and/or quaternary ammonium compound; and a hydronium ion source, wherein the hydronium ion source is a strong acid comprising one
or more of sulfuric acid, nitric acid, hydrochloric acid, phosphoric acid,
hydrobromic acid, hydroiodic acid, or methane sulfonic acid, wherein a use solution of the composition at a concentration of at least about 100 ppm
provides at least a 5-log reduction, classified in class A01N 29/10.
Group II. Claims 14-20, drawn to a method of method of deactivating, reducing and/or removing adhered bacteria or biofilm from a surface comprising: contacting a microbial population with the composition according to claim 1; and reducing and/or eliminating the microbial populations, classified in class A01N 59/00.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process of using that product, such as in removal of inorganic and/or organic soil from food processing equipment. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Election of Species
A. If applicant elects Invention I, the following species election is required: - the specific biocide, elected from:
a) fatty acid, reading on claims 2-4; or
b) anionic surfactant, reading on claims 5-8; or
c) quaternary ammonium compound, reading on claims 9-10.
B. If applicant elects Invention II, the following species election is required:
-specific surface to be treated, reading on:
a) water system, reading on claim 15; or
b) poultry, reading on claim 16; or
c) oil field drilling fluids and muds, reading on claim 17; or
d) petroleum recovery processes, reading on claim 17; or
e) mining pipelines, reading on claim 17; or
f) pipelines containing water, reading on claim 17; or
g) fire water, reading on claim 17; or
h) industrial lubricants, reading on claim 17; or
i) cutting fluids, reading on claim 17; or
j) heat transfer systems, reading on claim 17; or
k) cooling towers, reading on claim 17 or;
l) gas scrubber systems, reading on claim 17 or;
m) latex systems, reading on claim 17 or;
n)clay and pigment systems, reading on claim 17 or;
o) cooling system or cooling towers, reading on claim 17; or
p) food, beverage and industrial process waters, reading on claim 17 or;
q) pulp and paper mill systems, reading on claim 17 or;
r)brewery pasteurizers, reading on claim 17 or;
s) sweetwater systems, reading on claim 17 or;
t) air washer systems, reading on claim 17 or;
u) decorative fountains, reading on claim 17 or ;
v)water intake pipes, reading on claim 17 or ;
w) ballast water tanks, reading on claim 17 or;
x) ship reservoirs, reading on claim 17; or
y) drains, reading on claim 18.
The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election. The election of the species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species.
Should applicant traverse on the ground that the species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species. Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i). The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101,102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01
Telephonic Elections
During a telephone conversation with attorney Jill Link on 07/14/2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Applicant further elected the species of a fatty acid. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6, 9, 10, and 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Status
Claims 1-20 are pending.
Claims 5-10 and 14-20 are withdrawn.
Claims 1-4 and 11-13 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claims 1-4, 11, 12, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Richter (US 6,472.358).
Richter teaches a sanitizing composition comprising at least one aliphatic short chain antimicrobially effective C5 to C14 fatty acid or mixture thereof; at least one carboxylic weak acid; and a strong mineral acid which may be nitric or a mixture of nitric and phosphoric acids.
Richter teaches the amount of C5 to C14 fatty acid in a concentrate is from 3% to 12% (30,000 ppm to 120,000 ppm), and in the dilute, aqueous working solution is from 20 ppm to 300 ppm (col 15-16, claims 1 and 34). This teaching overlaps the recitations of fatty acid concentrations in claims 3 and 4; because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
Richter teaches the amount of nitric acid in a concentrate is from 5% to 50% (50,000 ppm to 500,000 ppm), and in the dilute, aqueous working solution is from 333 ppm to 5000 ppm (col 15-16, claims 1 and 34). It is noted that Richter teaches the dilution to a use solution is from 1:100 to 1:1500 (claim 34).
Regarding the claim 1 limitation of “provides at least a 5-log reduction,” Richter teaches “A sanitizing treatment applied to a cleaned food contact surface must result in a reduction in population of at least 99.999% (5 log) for specified microorganisms” (col 1: 40-42); as interpreted by the Examiner, this is a teaching that the claimed acid sanitizing and cleaning composition must meet the 5-log reduction in population of target microorganisms.
Richter teaches that the acid sanitizing and cleaning composition is configured for biofilm penetration (col 5: 52).
For claim 2, Richter teaches the fatty acid is a C5 to C14 fatty acid such as nonanoic acid or decanoic acid (Abstract; col 16, claims 10 and 11)
For claim 11, the Examiner calculates the concentration of hydronium ions of 0.003 M as a pH of about 2.52, where:
[AltContent: rect]pH = -log10[H+] pH = -log10[0.003] or 2.52.
Richter teaches the pH of the final solution is about 1-5 (col 5: 12-15), overlapping the claimed hydronium ion concentration.
Regarding claims 12 and 13, Richter teaches: “The addition of an anionic hydrotrope has been found useful for maintaining product stability” (col 8: 22-23), and also teaches the at least one carboxylic weak acid possessing 1-4 carbons, such as propionic, butyric and valeric acids, stabilizes the concentrated composition (col 2: 20-22).
The examiner acknowledges that some picking and choosing was used to arrive at the instantly claimed methods in view of Richter. However, the claimed combination of components, including the fatty acid and nitric acid, is taught as known and used for a biofilm deactivating composition wherein the composition is effective in the claimed concentration range, as defined in claim 1. It would have therefore been prima facie obvious to a person having ordinary skill in the art to utilize the claimed combination of ingredients, for deactivating a biofilm by applying the composition of Richter to a surface comprising a biofilm with a reasonable expectation of success that the treatment would be efficacious, as taught by Richter.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
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