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.
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CPR 1.114, including the fee set forth in 37 CPR l.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CPR 1.114, and the fee set forth in 37 CPR 1.17 (e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR l.114. Applicant's submission filed on February 2, 2026 has been entered.
Status of Claims
Cancelled
Currently Amended
Previously Presented/Original
Pending and Examined
5
1, 10 and 17
2-4, 6-9, 11-16 and 18-20
1-4 and 6-20
All claims are drawn to an apparatus.
Status of Previous Objections / Rejections
At this juncture, Examiner withdraws the previous Office action’s (OA) (i.e, 12/02/2025) 35 USC §103 rejections in view of amendments to the claims, Applicant's arguments and a reconsideration of the pertinent rejections. However, after careful reconsideration of the claims, Examiner believes new 35 USC §103 rejections, as well as and a new Double Patenting rejection, are appropriate and has applied such rejections to the noted claims.
Response to Amendment
In their reply dated February 2, 2026, Applicant amended the claims to address the rejections and claim interpretations of the prior Office or Advisory action (OA or AA) and to potentially advance prosecution. More specifically, Applicant amended the independent claims to include a negative limitation regarding the composition not containing chlorine. No new matter is added and the amendments are in proper form.
Claim Objections
Claims 1-4 and 6-20 are objected to because of the following informalities: Claim 1 appears to be missing the conjunctive (‘and’) before the last ‘wherein’ clause. Appropriate correction is required.
Claims 2-4 and 6-20 depend on 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 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.
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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rovison Jr. et al. (US20150218437; Rovison)(of record) in view of Oakes et al. (US5,314,687; Oakes).
Regarding claims 1-4 and 6-20, Rovison discloses a method for reducing and/or eliminating microbial populations in a water system (Abstract, [0043], [0053]) comprising:
applying a peracid composition to the water system ([0008], where the summary discusses potential application to industrial water treatment systems such as a cooling tower),
wherein the peracid composition is at a concentration in the water system of less than about 15 ppm ([0053], where a potential concentration range of 1-10 ppm is noted as an example; this exemplary range anticipates the claimed less than about 15 ppm range),
wherein the peracid composition comprises a short chain peracid and a medium chain peracid ([0050]; examples are peracetic acid and peroctanoic acid, as noted below),
wherein the short chain peracid has a carbon chain length between 1 and 4 carbons ([0048]),
wherein the peracid composition does not comprise chlorine (Rovison does not use chlorine),
wherein the medium chain peracid has a carbon chain length between 5 and 22 carbons ([0049]), and
wherein the water system is one or more of the following water systems: power plant cooling towers ([0008], where there is at least some suggestion of effective use with pulp and paper or cooling tower operations, and where the same composition within the same range will have the same effect on the intended microorganisms), power plant cooling basins, ballast water tanks, and ship reservoirs.
Rovison notes that sulfate-reducing bacteria are normally sessile bacteria, i.e., they attach themselves to solid surfaces, as opposed to being free-floating in the aqueous fluid and are generally found in combination with slime-forming bacteria, in films consisting of a biopolymer matrix embedded with bacteria ([0064]). Rovison further notes that the peracid biocides of their invention provides significant advantages and is capable of treating both types of bacteria (i.e., planktonic and sessile)([0068], [0069], [0080], [0090], [0092]).
Therefore, Rovison discloses the claimed invention, except
wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1;
reducing both a planktonic (living freely in aqueous fluid) and a sessile (attached directly to surfaces, such as biofilm) microbial populations by at least a 4-log reduction; and
the water system is one or more of the following water systems: power plant cooling towers; power plant cooling basins; ballast water tanks; and ship reservoirs.
Examiner notes at the outset that one could interpret item ii) as merely a result achieved by employing the mixed peracid composition in the recited ratio outlined in item i). Item iii) is the particular type of water system where one can employ the composition, which is typically very broad and usually encompasses numerous such systems, even if a particular reference does not specify these specifically recited water systems.
With respect to item i), or the claimed ratio of the short chain peracid (peracetic acid) to the medium chain peracid (peroctanoic acid), one of ordinary skill would recognize that one can achieve a workable ratio based on routine experimentation, with the optimum ratio dependent on the intended use and the desired outcome.
Oakes, for example, discloses a peroxyacid antimicrobial concentrate and use composition comprising a C1 to C4 peroxycarboxylic acid, and a C6 to C18 peroxyacid and notes that the combination of these acids produces a synergistic effect, and provides a much more potent biocide than one can obtain by using these components separately (Abstract). An effective antimicrobial use solution is formed at low concentrations when the concentrate composition is diluted with water to a pH in the range of about 2 to 8 (Id.). Sanitizing of substantially fixed, "in-place" processing lines in dairies, breweries, and other food processing operations is one utility of the composition (Id.). The concentration of the blend can also be relatively low (col. 3, lines 5-15). Oakes also teaches a 5-log reduction with use of the peracid (col. 2, line 62 – col. 3, ln. 4). In Oakes, the biocide is employed principally on surfaces, implying the destruction of sessile bacteria which is typically more resistant than planktonic bacteria (col. 1, lns 9-15; col. 2, lns 47-53; col. 7, lns. 26-40). Also, the ratio of short chain peracid to medium chain peracids is 15:1 to 3:1 (col. 4, lns 16-28; claims 7, 21), which encompasses the claimed 5:1 to 7:1 ratio with sufficient specificity to render the claimed ratio prima facie obvious.
Examiner notes that Staphylococcus aureus (S. aureus), Escherichia coli (E. coli), mentioned in Oakes (col. 10, starting at line 46 – col. 11, through Table IV), and indeed most bacteria are capable of being both planktonic and sessile. S. aureus and E. coli, in particular, are highly adaptable bacteria that alternate between these two modes of growth, depending on environmental conditions, nutrient availability and other factors related to the particular environment. Moreover, Oakes mentions effective use of the biocide on surfaces, which is a typical habitat for the sessile mode.
Regarding item ii), or reducing both planktonic and sessile microbial populations by at least a 4-log reduction, Examiner interprets this reduction as implicit to the use of the claimed composition in the recited concentration and ratio. That is, if the other claimed features are met, the same composition will have the same reducing effect on the both planktonic and sessile microbial populations in the given environment. This claimed reduction is also fully met with the above noted at least 5-log reduction recited in Oakes (col. 2, line 62 – col. 3, ln. 4 & col. 8, lines 26-37). The Oakes composition can treat both planktonic and sessile bacteria, and does not require chlorine.
Alternatively, it would have been obvious to routinely experiment with an appropriate ratio and concentration such that one can reduce both planktonic and sessile microbial populations to a desired level such as by at least a 4-log reduction.
Regarding item iii) or the particular water system, it is known to use biocides, including peracids in industrial operations, such as power plant cooling towers (Rovison, [0008]).
Rovison also discusses the known use of equilibrium peracid compositions as biocides ([0025], [0026]). Rovison also states that “aqueous peracetic acid seeks a dynamic equilibrium with hydrogen peroxide and acetic acid, according to a given reaction (Rovison, [0025]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the biocide mixture in any desired environment, including one or more of the claimed water systems.
Moreover, since Rovison mentions a preference for combining peracetic acid with peroctanoic acid, for improved antimicrobial efficacy ([0050]), which has potential synergistic effects (Oakes, Abstract), when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to routinely experiment with various composition ratios for the biocide mixture, or each of these noted components, to determine an optimal mixture percentage range based on the operator’s intended use and a desired outcome, including mixing the components in the claimed ratio range. Examiner further notes that Oakes suggestion fully encompasses the claimed range, or the limitation wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1, with sufficient specificity, and thereby renders that claimed limitation prima facie obvious.
Additional Disclosures Included: Claim 10: Claim 10 is an independent method claim that includes many of the same or similar major elements as those recited in claim 1. Similarly, claim 17 is an independent product claim. As such, in the interest of convenience and brevity, Examiner applies portions of the claim 1 analysis and rationale herein, without repeating all text and/or claim mapping in their entirety.
Therefore, regarding claim 10, Rovison and Oakes together discloses or suggests a method of removing biofilm and/or preventing buildup of a biofilm, said biofilm being formed by at least one sessile microorganism in a water system (Rovison, Abstract, [0063]) comprising:
contacting the water system comprising the biofilm and/or sessile microorganism with a composition comprising a short chain peracid and a medium chain peracid (claim 1 analysis);
wherein the short chain peracid has a carbon chain length between 1 and 4 carbons (claim 1 analysis),
wherein the medium chain peracid has a carbon chain length between 5 and 22 carbons (claim 1 analysis);
wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1 (claim 1 analysis); and
wherein the concentration of peracid composition in the water system is less than about 15 ppm (claim 1 analysis); and
wherein the peracid composition does not comprise chlorine (claim 1 analysis).
Regarding claim 17, Rovison and Oakes together discloses a treated cooling water having efficacy against bacterial growth comprising:
a peracid composition comprising:
a short chain peracid having a carbon chain between 1 and 4 carbons (claim 1 analysis), wherein the short chain peracid is in a concentration of between about 7 ppm and about 14 ppm in the treated cooling water (Rovison, [0053]; claim 1 analysis, where this range overlaps the noted 1 ppm to 10 ppm, and where the reference suggests that one can apply any of the peracids in the stated concentration range; it would have been obvious to routinely experiment with different concentration ranges for the short chain vs the medium chain peracid); and
a medium chain peracid having a carbon chain between 5 and 22 carbons (claim 1 analysis),
wherein the medium chain peracid is in a concentration of between about 2 ppm and about 5 ppm in the treated cooling water (Rovison’s 1 ppm to 10 ppm range fully encompasses the claimed range with sufficient specificity and the reference suggests that one can apply any of the peracids in the stated concentration range; moreover, it would have been obvious to routinely experiment with different concentration ranges for the medium chain vs. the short chain);
wherein the peracid composition does not comprise chlorine (claim 1 analysis); and
a cooling water in a cooling system, wherein said cooling system is one or more of the following: a cooling tower, a cooling basin, a reactor cooling system, and a pulp and paper mill system;
wherein the peracid composition is in a concentration in the treated cooling water of between about 3 ppm and about 15 ppm (claim 1 analysis; with respect to the different concentration ranges for the short and medium chain peracids and the peracid composition, absent any additional and more specific information in the prior art, a prima facie case of obviousness exists since the prior art overlaps the claimed ranges with sufficient specificity. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05);
wherein the short chain peracid and the medium chain peracid are in a ratio of 5:1 to 7:1 (claim 1 analysis); and
wherein the treated cooling water has a pH of between about 7 and about 9 (Rovison, [0043], [0044], where a disclosed pH of 8.2, for example, anticipates the recited range; the noted pH of about 7 will also satisfy the range).
Additional Disclosures Included: Claims 2, 14 and 18: The medium chain peracid has a carbon chain length between 5 and 18 carbons (Rovison, [0049]); Claims 3 and 15: The medium chain peracid has a carbon chain length between 5 and 12 carbons (Rovison, [0049]);
Claim 4: The peracid composition is in the form of a water solution (Rovison, [0037], [0096]);
Claim 5: Said water system is one or more of the following cooling system; food, beverage and industrial process waters; pulp and paper mill systems; brewery pasteurizers; sweetwater systems; air washer systems; oil field drilling fluids and muds; petroleum recovery processes; industrial lubricants; cutting fluids; heat transfer systems; gas scrubber systems; latex systems; clay and pigment systems; decorative fountains; water intake pipes; ballast water tanks; and ship reservoirs (claim 1 analysis);
Claim 6: The peracid composition and/or reduction of microbial population restores or maintains proper water system processes (this is either obvious or implicit result of prior steps rather than a manipulative step per se, in the claim 1 analysis);
Claims 7 and 16: The peracid composition includes peracetic acid and peroctanoic acid [claim 7], or wherein said short chain peracid is peracetic acid and wherein said medium chain peracid is peroctanoic acid [claim 16] (Rovison, [0050]; “Peroctanoic acid is the most preferred percarboxylic acid for use in combination with peracetic acid.”);
Claim 8: The water system is a cooling system (claim 1 analysis);
Claim 9: The water system is a cooling tower or cooling basin (claim 1 analysis);
Claim 11: Said microorganism is a bacterium (Rovison, [0063]-[0065], [0092], [0096]);
Claim 12: Said short chain peracid and medium chain peracid are in a ratio of 6:1; and wherein the concentration of peracid composition in the water system is between about 3 ppm and about 12 ppm [claim 12], or wherein said short chain peracid is peracetic acid and wherein said medium chain peracid is peroctanoic acid [claim 19] (claim 1 and 10 analyses, where during experimentation, one can readily adjust the amount of each component to meet this limitation, such as by increasing the amount of peracetic acid or reducing the amount of peroctanoic acid as necessary); and
Claim 20: The treated cooling water further comprises a stabilizer (Rovison, [0038]) in a concentration of between about 100 ppm and about 5 wt.% of the treated cooling water (it would have been obvious to routinely experiment and to use a suitable concentration of stabilizer).
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 claims at issue 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); and 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 1-4 and 6-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 7, 10, 11, 13, 14, 21 and 22 of copending Application No. 16/140,100 (100-application). Although the claims at issue are not identical, they are not patentably distinct from each other because the applications recite the same or similar limitations relating to reducing and/or eliminating microbial populations in a water system, and removing biofilm or preventing biofilm buildup with use of a mixed peracid composition in certain concentration range and ratios and pH. There is significant overlap between the claims such that it would have been obvious to one of ordinary skill in the art at the time the invention was made to uncover one invention based on the other’s set of claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 02-26-2026 have been fully considered. In view of the claim amendments, Examiner has modified and attempted to clarify the rejections in the above modified patentability analysis, such that one or more arguments may no longer be applicable. More specifically, the arguments with respect to Bolduc, Verkaar and Giambrone are moot in light of the modified rejections. Nevertheless, Examiner will address certain Applicant contentions related to these references as they apply to the newly applied Oakes reference.
Applicant states that Bolduc only applies to planktonic microbes, specifically S. aureus and E. Coli microorganisms. These are not strictly planktonic microbes since they can alternate between different modes. For example, Oakes mentions these same microbes, which appear to be in a sessile state since Oakes concentrates on surfaces. The sessile state is typically the more resistant state for a microorganism, so a biocide that can treat a specific microbe in its sessile state will generally be also able to treat the same microbe in its planktonic state. Alternately, if the planktonic mode is more resistant for certain bacteria, one would know to routinely experiment with the same composition concentrations and ratios, as at least a starting stage. If the claimed ranges of concentration, ratio, pH etc. are strongly suggested by the references, for either the planktonic or sessile microbe phases (planktonic or sessile), then the references meet the claimed limitations because the composition will already be on hand to attempt microbe reduction for either or both phases.
Additionally, Rovison already mentions that the peracid biocides of their invention provide significant advantages and are capable of treating both types of bacteria (i.e., planktonic and sessile/biofilm)(Rovison, [0064], [0068], [0069], [0080], [0090], [0092]), so Bolduc and Verkaar, for example, or Oakes in the present analysis, need not confirm this issue. Bolduc and Verkaar were employed for the routine optimization aspect and the claimed specific ratio of short to medium chain peracids. Oakes is now employed for these same reasons, as well as for confirmation of the log reduction.
Moreover, Verkaar does mention that one can employ their formulation with biofilm (Verkaar, [0004], [0005], [0071]). And, Bolduc does mention that one may use the various peracid components in any suitable combination and/or concentration depending on the intended use (Bolduc, [0076]). The same analysis applies to the new Oakes reference.
With respect to the at least 4-log reduction level, Examiner has removed Giambrone based on the new negative limitation regarding chlorine. However, Oakes meets this limitation, as described above. Moreover, if use of the claimed composition is obvious, that recited composition would be expected to inherently provide at least the expected 4-log reduction and would also be capable of reducing both planktonic and sessile microorganisms.
In summary, contrary to Applicant’s assertion, the synergistic effect of mixed peracids, and specifically short and medium chain peracids and its reductive effect when used on both planktonic and sessile (biofilm) bacterial populations is well appreciated and shown to be obvious by the combined references.
With respect to the amended claims, Examiner has added a reference and attempted to clarify the obviousness rationales. As such, Examiner believes all claim limitations as well as each of Applicant’s relevant arguments are fully and properly addressed either in this section or in the modified patentability analysis above.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571)270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM..
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication. Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (EFS-Web). Otherwise, a handwritten signature is required. In addition to EFS-web, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
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If attempts to reach the Examiner are unsuccessful, Applicant may reach one of Examiner’s supervisor Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/
Examiner, AU 1779