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
This application is a continuation of U.S. Application No. 19/197,334 filed on 05/02/2025 which is a continuation of PCT/US2024/038086 filed on 07/15/2024 which claims the benefit from U.S. provisional Application No. 63/514,293 filed on 07/18/2023.
Response to Amendment
Applicant’s amendment filed on January 15, 2026 amending claims 1, 5-9 and 11-22 has been entered. Claims 1-22 are currently pending.
Response to Arguments
Due to Applicant’s amendments to the claims, the previous rejection of claims 1-22 under 35 U.S.C. 112(b) is hereby withdrawn.
Due to Applicant’s amendments to the claims the previous statutory double patenting rejection under 35 U.S.C. 101 as claiming the same invention as that of claims 1-22 of copending Application No. 19/197,334, is hereby withdrawn. However, due to Applicant’s amendments to the claims, the rejection is now converted to a non-statutory double patenting rejection as detailed below.
Due to Applicant’s amendments to the claims, specifically excluding buffering agents, the previous rejection of claims 1, 7, 8, 13, 16-19 and 22 under 35 U.S.C. 102(a)(1) over Kurtz is hereby withdrawn. Applicant’s arguments with respect to said rejection are moot in view of the withdrawal of the rejection.
Due to Applicant’s amendments to the claims, specifically excluding buffering agents, the previous rejection of claims 2-6, 9-12, 14, 15, 20 and 21 under 35 U.S.C. 103 over Kurtz is hereby withdrawn. Applicant’s arguments with respect to said rejection are moot in view of the withdrawal of the rejection.
In view of Applicant’s amendments to the claims, specifically excluding buffering agents, a new rejection under 35 USC 112(a) is detailed below. Accordingly, this action is FINAL.
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 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 19/197,334 (U.S. Publication No. 2025/0351824 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application and the cited claims of copending ‘334 are drawn to an aqueous disinfectant composition comprising: thymol from at least about 0.10% to about 1.0% by weight; surfactant from at least about 0.30% or 0.40% by weight sufficient to form a solution of dissolved thymol in water; from at least about 0.30% to about 3% by weight citric acid; and water to make a 100% weight solution that is free of other solvents and buffering agents.
Thus the cited claims of the instant application would be anticipated over the cited claims of copending ‘334
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-22 of the instant application claim an aqueous disinfectant composition comprising:
thymol from at least about 0.10% to about 1.0% by weight;
surfactant from at least about 0.30% or 0.40% by weight sufficient to form a solution of dissolved thymol in water;
from at least about 0.30% to about 3% by weight citric acid; and
water to make a 100% weight solution, wherein the composition is free of other solvents and buffering agents.
The claims are rejected since the instant specification does not disclose a buffering agent. The instant specification does not disclose including or excluding a buffering agent. Thus the newly added limitation of free of buffering agents represents new matter.
Any negative limitation or exclusionary proviso must have basis in the original disclosure see MPEP 2173.05(i). MPEP2173.05(i) states “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion.. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. See MPEP § 2163 - § 2163.07(b) for a discussion of the written description requirement of 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.”
In the instant case, the claims of the instant application currently recite buffering agents. The instant specification provides no disclosure of any buffering agent. Thus, the negative limitation in the instant claims represents new matter. As detailed above, a written description requirement issue generally involves the question of whether the subject matter of a claim is supported by [conforms to] the disclosure of an application as filed. In the instant case, the current claims are not supported by the disclosure of the application as originally filed since there is no mention of buffering agents in the instant disclosure of the application as originally filed.
In addition, Applicant does not identify, any specific reason in the instant specification to exclude buffering agents. Although the working examples in the specification do not happen to have buffering agents, this does not provide descriptive support for the language in the rejected claims which recite "free of buffering agents" because the rejected claims of the instant application utilize "comprising" language and therefore are open to literally any ingredient that exists, and is not limited to components recited in Applicant's examples. The transitional term "comprising" is "inclusive or open-ended and does not exclude additional, unrecited elements." Georgia-Pacific Corp. V. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999). Applicant's examples do not provide descriptive support to "add anything except buffering agents." Rather, the examples only show particular compositions, and therefore cannot both allow the exclusion of buffering agents while allowing the inclusion of any other component. For this reason, a particular example does not support the exclusion of an unrecited and absent element in a comprising claim. The instant situation does not fall into the safe harbor where "[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation." Santarus, Inc. V. Par Pharm. Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). The Specification here provides no reason to exclude buffering agents. Instead, MPEP § 2173.05(i) states "[t]he mere absence of a positive recitation is not basis for an exclusion." This is consistent with Novartis Pharms. Corp. V. Accord Healthcare, Inc., 38 F.4th 1013, 1019 (Fed. Cir. 2022), which states a "patent is not presumed complete such that things not mentioned are necessarily excluded." Novartis explains "[w]hile silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Id. at 1020.
Accordingly, the claims are properly rejected under 35 USC 112 (a) for new matter.
Conclusion
Claims 1-22 are rejected. No claims are allowed.
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 KARA R. MCMILLIAN whose telephone number is (571)270-5236. The examiner can normally be reached Tuesday-Friday 12:00 PM-6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C. Milligan can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARA R. MCMILLIAN/Primary Examiner, Art Unit 1623
KRM