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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/083,668
`
`10/29/2020
`
`Matthew T. Scholz
`
`59889US018
`
`5906
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`PURDY, KYLE A
`
`PAPER NUMBER
`
`ART UNIT
`
`1611
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/31/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/083, 668
`Examiner
`KYLE A PURDY
`
`Applicant(s)
`Scholz etal.
`Art Unit
`1611
`
`AIA (FITF) Status
`No
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 2/9/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`102-109 and 111-122 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)__ is/are allowed.
`Claim(s) 102-109 and 111-122 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C} Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220325
`
`

`

`Application/Control Number: 17/083,668
`Art Unit: 1611
`
`Page 2
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`DETAILED ACTION
`
`Status ofApplication
`1. The Examiner acknowledges receipt of the amendments filed on 2/9/2022 wherein claims
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`102, 111 and 118-120 have been amended and claim 122 has been added.
`
`2. Claims 102-109 and 111-122 are presented for examination on the merits. The following
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`rejections are made.
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`Response to Applicants’ Arguments
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`3. Applicants amendments filed 2/9/2022 overcome the rejection of claims 103, 106, 107,
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`110, 112, 113, 117, 120 and 121 made by the Examiner under 35 USC 112(b). This rejection is
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`withdrawn.
`
`4, Applicants arguments filed 2/9/2022 regarding the rejection of claims 102-109 and 111-
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`121 made by the Examiner under 35 USC 103 over Weiet al. (US 2002/0098159; of record) in
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`view of Scholz (US 5908619) and Wilkins, Jr (US 2004/0131567; of record) have been fully
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`considered but they are not found persuasive and is MAINTAINEDforthe reasons of record in
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`the office action mailed on 11/9/2021.
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`5. In regards to the 103(a) rejection, Applicant asserts the following:
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`A) The claims have been amendedto recite the method as being inhibitory against S. aureus.
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`6. In response to A, Wei contemplates that their method be useful against both gram positive
`
`and gram negative bacteria. Wei teaches that S. aureus is a gram positive bacteria (see [0008]).
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`Thus, it would have been obvious to use the method of Wei to inhibit such a microbe with a
`
`reasonable expectation for success.
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`

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`Application/Control Number: 17/083,668
`Art Unit: 1611
`
`Page 3
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`Claim Rejections - 35 USC § 103
`
`7. The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the inventionis not identically disclosed or described as set forth in section
`102 of thistitle, if the differences between the subject matter sought to be patented and theprior art are such that the
`subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in
`the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`8. 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 determming obviousness under 35
`
`U.S.C. 103(a) are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`2. Ascertaining the differences betweenthe 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.
`
`9. Claims 102-109 and 111-121 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Wei et al. (US 2002/0098159; of record) in view of Scholz (US 5908619)
`
`and Wilkins, Jr (US 2004/0131567; ofrecord).
`
`10. Wei provides antimicrobial compositions and methods of using such compositions.
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`11. Methods involve applying the antimicrobial composition to the skin to achieve a
`
`disinfecting benefit (see [0321]). The amount of the antimicrobial formulation, and the frequency
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`applied, and the period applied vary depending on the disinfection and cleansing desired.
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`Preferably the composition is applied at least once per day, and more preferably at least three
`
`time per day.
`
`Inhibition of §. aureus is contemplated (see [0008]) (see instant claim 102).
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`12. The composition used in the methods may comprise lauric acid (see [0313]) (see instant
`
`claim 102, 104 and 105) in an amount ranging from 0.1-10% (see [0302]) (see instant claim
`
`111). It’s noted that Wei uses lauric acid asa stabilizer. However, as Wei’s lauric acid is
`
`

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`Application/Control Number: 17/083,668
`Art Unit: 1611
`
`Page 4
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`chemically identical to the lauric acid of the claims,
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`it would necessarily possess antimicrobial
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`activity, despite being used for a different purpose (by Wei).
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`13. Wei teaches including an aqueous componentthat includes water, water soluble alcohols
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`such as ethanol, propanol or isopropanol, and mixtures thereof (see [0091]) in amounts ranging
`
`from 10-38 % (see [0093]) (see instant claims 106 and 111). It is noted that ethanol, propanol and
`
`isopropanol are all C1-C10 alkyl alcohols (see instant claim 113).
`
`14. Weialso includes a surfactant such as alkyl aryl sulfonates and alkyl phosphates (see
`
`[0046]) (see instant claim 112).
`
`15. Exemplified antimicrobials include quaternary ammonium compounds such as
`
`benzalkonium chloride and benzethonium chloride (see [0098] and [0101], respectively) (see
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`instant claims 107-109). It’s noted that these are “hydrophilic compounds” (see instant claim
`
`103)
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`16. Wei also exemplifies natural oils suchas limonene (see [0256]) (see instant claim 115).
`
`It is noted that limonene is a “hydrophobic compound” (see instant claim 103). Wei’s also
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`contemplates addition of hydrocarbon oils and waxes suchaspetrolatum (see [0265] (see instant
`
`claim 117).
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`17. Wei’s method utilizes mildness enhancers which provide a moisturizing benefit to the
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`end user. Exemplified mildness enhancers include lipophilic skin conditioning agents such
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`as petrolatum and mineral oil (see [0265]) (see instant claim 117).
`
`18. Wei teaches that their composition may comprise polyols such as glycerine and sorbitol
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`(1.e. polyhydric alcohols) (see [0091]) (see instant claim 116).
`
`19. Typical amounts of the composition used in the method range from 0.1-20 mg/cm (see
`
`[0312]) (see instant claim 118). See MPEP 2144.05() regarding overlapping ranges.
`
`

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`Application/Control Number: 17/083,668
`Art Unit: 1611
`
`Page 5
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`20. Meansfor providing the method includes sprays, lotions, powders and wipes (see claim
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`21 and [0318]) (see instant claims 120 and 121)
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`21. Wei’s method fails to include a (C8-C36) alkyl or alkenyl ester of a (C8-C18) alkyl or
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`alkenyl alcohol.
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`22. Scholz is directed to hydroalcoholic compositions to be used for topical disinfection. The
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`composition is to comprise an emollient which is a material that improves the moisture level of
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`the targeted tissue (see column 3, lines 45-48). Exemplified emollients include C8-C36 alkyl or
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`alkenyl esters of long or straight or branched chain alkyl or alkenyl alcohols. It is noted that
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`Scholz identifies long chain straight alkyls as being C8-C36 (see column 15, line 30-50).
`
`Therefore, given that Wei contemplates inclusion of anemollient (see [0092]), it would have
`
`been obvious to use other well-known emollients such as those exemplified by Scholz with a
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`reasonable expectation for success in providing a moisturizing benefit.
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`23. Wei’s method fails to apply the antimicrobial composition to the nasal cavity, anterior
`
`nares or nasopharynx.
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`24. Wilkins provides antibacterial topical limonene formulations and methods of use
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`wherein the antibacterial formulation is used in methods of killing/inhibiting growth of
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`bacterial externally on the skin or within the nasal cavity by applying the antibacterial
`
`formulation to the skin or the nasal cavity (see claim 1).. One would reasonable expect that
`
`modifying Wei such that the method applied the composition to nasal cavity would achieve the
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`desired result of killing unwanted microorganisms. The substitution of one known technique
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`(disinfect nasal tissue, Wilkins) for another (disinfect skin, Wei) to obtain predictable results is
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`indicia of obviousness. See MPEP 2143. Such an expected outcome is bolstered given that
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`Wilkins,
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`like Wei, teaches using similar actives (e.g. limonene).
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`

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`Application/Control Number: 17/083,668
`Art Unit: 1611
`
`Page 6
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`25. As to the length of time the composition is applied on to the target tissue and dose
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`applied,
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`these are parameters that one would identify to manipulate so as to provide effective
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`inhibition of unwanted microorganisms. Moreover,it is noted that applying the composition into
`
`the nasal cavity would necessitate applying the composition to the inside of the nose where the
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`composition, post application, would remain.
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`26. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill
`
`in the
`
`art at the time the invention was made, as evidenced by the references, especially in absence of
`
`evidence to the contrary.
`
`27. Claim 122 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wei
`
`et al. (US 2002/0098159; ofrecord) in view of Scholz (US 5908619) and Wilkins, Jr (US
`
`2004/0131567; of record) as applied to claims 102-109 and 111-121 above, and further in
`
`view of Watanabe et al. (Kansenshogaku Azsshi, 1995, 69, abstract).
`
`28. Weifails to teach the S. aureus as being methicillin resistant.
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`29. Watanabe teaches that composition of benzalkonium chloride and ethanol are effective at
`
`kiling methicillin resistant S$. aureus. Thus, it would have been obvious to modify Weis method
`
`to target such a species with a reasonable expectation for success.
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`30. Therefore, the invention asa whole is prima facie obvious to one of ordinary skill
`
`in the
`
`art at the time the invention was made, as evidenced by the references, especially in absence of
`
`evidence to the contrary.
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`

`

`Application/Control Number: 17/083,668
`Art Unit: 1611
`
`Page 7
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`31. Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Conclusion
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`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).
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`32. A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHSfrom the mailing date of this action.
`
`In the event a first reply is filed within TWO
`
`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTHshortenedstatutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHSfrom the date of this
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`final action.
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`33. Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KYLE A PURDYwhosetelephone numberis (571)270-3504.
`
`The examiner cannormally be reached from 9AM to 5PM.
`
`34. If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
`
`35. Information regarding the status of an application may be obtained from the Patent
`Application Information Retrieval (PAIR) system. Status information for published applications
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`applications is available through Private PAIR only. For more information about the PAIR
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`/KYLE A PURDY/
`Primary Examiner, Art Unit 1611
`
`