DETAILED ACTION
Status of the Claims
Claims 9, 16, 18-20, 22 and 23 are pending in the instant application and are being examined on the merits in the instant application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 01, 2025 has been entered.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The U.S. effective filing date has been determined to be 04/26/2013, the filing date of document DE 10 2013 104 284.8.
Claim Objections
Claim 9 is objected to because Applicant has two commas in line 5 “2.5<z<3, , and”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 16, 18-20, 22 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 is rejected as being indefinite because the claim recites “the mixed oxide has the chemical formula MoxW1-xOz, in which there is 0 < x < 1 and 2.5 ≤ z ≤ 3.0, , and a molar W:Mo ratio is 1:3,” which is unclear because the only value of x in the equation MoxW1-xOz, that satisfies “a molar W:Mo ratio is 1:3” is 0.75, therefore it is unclear exactly what the scope of the claimed “mixed metal oxide” should be considered. Appropriate clarification is required. Claims 16, 18-20, 22 and 23 are rejected as depending from and doing nothing to clarify the scope of the base claim 9.
Claim 9 is further rejected as being indefinite because the claim recites “and further the mixed metal oxide has a mass fraction of 0.01% and 80% of the composite material” which is unclear because the “a mass fraction of 0.01% and 80% of the composite material” suggest a mass fraction of 0.01% and a mass fraction of 80% which not logically consistent as these amounts are different. Therefore it is unclear what exactly the “the mixed metal oxide has a mass fraction [...] of the composite material” should be considered. Appropriate clarification is required. Claims 16, 18-20, 22 and 23 are rejected as depending from and doing nothing to clarify the scope of the base claim 9.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 16, 18-20, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over GUGGENBICHLER (US 2010/0057199; published March 2010) in view of LEE (WO 2013/176369 A1; filed 12/28/2012, US 2015/0105235 relied on as an English language translation); Baeck et al. (“Combinatorial Electrochemical Synthesis and Characterization of Tungsten-Molybdenum Mixed Metal Oxides,” 2002; Korean Journal of Chemical Engineering Vol. 19, No. 4, pp. 593-596); Hassan et al. (“Optimization of the synthesis of nanostructured tungsten-molybdenum bimetallic oxide.” International Scholarly Research Notices (ISRN) Nanomaterials, Vol. 2012, Article ID 909647, pp. 1-13); and WANG (CN 101891252 A; published November, 2010; Original document and Espacenet English language abstract, and machine translation, attached).
Applicants Claims
Applicant claims a composite material for producing antimicrobially effective surfaces containing a mixed oxide, wherein:
the composite material comprises a matrix and the mixed oxide,
the mixed oxide has the chemical formula MoxW1-xOz, in which there is 0 < x < 1 and 2.5 ≤ z ≤ 3.0, , and a molar W:Mo ratio is 1:3, and wherein the mixed oxide is present in the form of particles with an average diameter between 0.1 µm and 200 µm, and further wherein the mixed oxide has a mass fraction of 0.01% and 80% of the composite material;
wherein the matrix includes at least one material selected from the group consisting of inorganic polymers, plastics, silicones, ceramics, rubber, powder varnishes, liquid varnishes, bitumen, asphalt, glasses, waxes, resins, paints textiles, fabric, wood, composites, metals, hydrophilizing agents, and an oxide of Zn, Bi, Cu, Ti and/or V; the composite material further comprising a compound of the chemical formula of An+zMO4, wherein M denotes Mo or W, and A is selected from the group consisting of Ca, Ag, Cu, Bi, V and Zn, wherein n * z = +2; and the composite material excludes MoO3 and the composite material is light stable (instant claim 9).
Claim interpretation: With respect to the claim limitation: “the composite material is light stable.” the examiner is interpreting this as being chemically stable in light. And cites STANFORD (US 2009/0258218 A1) as stating that: “Silver salts are widely known to be thermally and photolytically unstable, discoloring to form brown, gray or black products.” ([0003]). The instant Specification disclosing that: “particularly high light stability, in particular with respect to UV light, is surprisingly also achieved. Thus, the occurrence of undesired stains on the surface of the composite material produced according to the invention or of a component produced therefrom is particularly reliably prevented.”
Determination of the scope
and content of the prior art (MPEP 2141.01)
GUGGENBICHLER teaches an inorganic substance containing molybdenum and/or tungsten which forms hydrogen cations when in contact with an aqueous medium and which results in an antimicrobial effect (see whole document). GUGGENBICHLER further teaches that it is an object of their invention to provide an active substance which has an antimicrobial effectiveness comparable to that of nanosilver, has a high general biocompatibility, and a high cost-benefit ratio and favorable processing properties ([0017]). GUGGENBICHLER further teaches that “the substance does not only have an antimicrobial effective in the form of nanoscale particles (particle size of less than 100 nm), but also in the form of non-respirable particles (particles of more than 500 nm) and/or also compact form.” ([0017]) (instant claim 9, “an average diameter between 0.1 µm and 200 µm”). GUGGENBICHLER also teaches “the preferred particle size according to Fischer is 0.5 to 10 µm” ([0103]). Where “Fischer” appears to reference a specific method for establishing an average particle size (i.e. diameter). GUGGENBICHLER further teaches the antimicrobially active substance retains its full effect in a composite material ([0017]).
GUGGENBICHLER teaches that:
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And that “it surprisingly turned out that substances forming hydrogen cations when in contact with an aqueous medium have an excellent antimicrobial effectiveness. An essential advantage also resides in the fact that the substances are practically not consumed. […] Consequently, the antimicrobial effect is almost unrestrictedly present in terms of time.” ([0021]). GUGGENBICHLER teaches that the molybdenum may be present in different oxidation states including the molybdate ion ([MoO4]2- ([0020]-[0023]). GUGGENBICHLER further teaches that “Here, the chemically nobler metal is preferably silver, copper, tin and their alloys.” And further that: “A very high effectiveness is also given if an Mo-Cu or W-Cu powder is added to other materials.” [0039](instant claim 14, Ag, Cu -- silver or copper molybdates or tungstates).
GUGGENBICHLER teaches that “In addition to pure molybdenum and pure tungsten, the compounds and alloys of these compounds which are sufficiently stable and form an oxide film on their surface are also effective.” ([0031]).
GUGGENBICHLER teaches that the active substance can be used for the production of an antimicrobial plastic material, such as including in a polymer matrix ([0041]-[0042]; claims 33-34)(instant claim 1, “the matrix includes at least one material selected from the group consisting of inorganic polymers, plastics […].”). GUGGENBICHLER further teaches that the active substance is suitable as an additive for varnishes, coating substances and adhesives ([0103]) (instant claim 18, “adhesive bond”). GUGGENBICHLER further teaches that the active substance can be used as an additive for a filter ([0105]).
GUGGENBICHLER teaches that the active substance is present as agglomerates having a size of less than 5 microns ([0037]; claims 28-29). GUGGENBICHLER teaches the substance according to the invention is incorporated in a plastic material, particularly a polymer matrix in in amount of 0.1 to 50% by volume ([0085]) (instant claim 9, “wherein the mixed oxide has mass fraction of 0.01% and 80% of the composite material”).
GUGGENBICHLER teaches “An antimicrobial effect can also be achieved by means of components with a photooxidative effect. Due to this, reactive free radicals are formed, which damage the microorganisms. JP 11012479 describes an antimicrobial plastic material which contains an organic and an inorganic component. Metallic particles such as silver, zinc and copper and further compounds such as calcium zinc phosphate, ceramics, glass powder, aluminum silicate, titanium zeolite, apatite and calcium carbonate are mentioned as an example of inorganic components. Here, metal oxides such as zinc oxide, titanium oxide or molybdenum oxide act as a catalyst for the photooxidative effect.” ([0013])(instant claim 14).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of GUGGENBICHLER is that GUGGENBICHLER does not expressly teach the active substance species is a mixed oxide has the chemical formula MoxW1-xOz, in which there is 0 < x < 1, 2.5 ≤ z ≤ 3.0, and a molar W:Mo ratio is 1:3, or the claimed particle size.
LEE teaches photocatalysts having properties such as antimicrobial effects (see whole document), and particularly that:
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Baeck et al. teaches a combinatorial electrochemical synthesis and characterization of Tungsten-Molybdenum Mixed Metal Oxides (see whole document). Baeck et al. teaches that: “We used methods of automated electrochemical synthesis and screening of WO3-MoO3 mixed oxide to address the following questions: 1 ) Can a combinatorial library of WO3-MoO3 mixed oxide be rapidly synthesized and screened electrochemically? 2) What are the photoelectrochemical effects of the compositional changes? 3) Is there any trend in photoelectrochemical activity as a function of composition that might improve our understanding of composition-function relationships?” (p. 593, paragraph bridging cols. 1-2).
Baeck et al. further teaches that “Automated measurement of photocurrent by using a scanning photoelectrochemical cell showed that mixed oxides showed higher photocatalytic activity than pure tungsten oxide or pure molybdenum oxide.” (abstract, lines 7-8), and that: “The library shown in Fig. 1 is a 45-member (5x9 array) WO3-MoO3 mixed oxide library, with diversity achieved by variations in deposition voltage and Mo concentration in electrolyte. The library was deposited on titanium foil by using the 63-well parallel reactor block. The concentration of Mo was varied from 1 to 100 mol% and all films were deposited for 10 minutes. After deposition, the library was calcined at 450 °C for 4 hours in air.” (paragraph bridging pp. 593-594). Baeck et al. clearly teaches the full range of mixed metal oxides of Mo an W therefore implicitly teaching the mixed oxide has the chemical formula MoxW1-xOz, in which there is 0 < x < 1, 2.5 ≤ z ≤ 3.0, and a molar W:Mo ratio is 1:3. And while the do teach that: “Maximum photoresponse was achieved when 50% Mo and 50% W concentration in electrolyte was used.” (p. 596, col. 1, §Conclusion, lines 8-9). The full range is taught, therefore one of ordinary skill in the art to which the primary reference pertains would have selected the optimum value of the of mixed metal oxides of Mo an W (i.e. the optimum ratio of Mo/W in the mixed metal oxide for the best antimicrobial effect)(MPEP §2144.05-II - “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.”)(i.e. MoxW1-xOz, wherein x = 0.75, resulting in a molar W:Mo ratio is 1:3).
Baeck et al. teaches that: “Shiyanovskwa and Hepel [Shiyanovakaya and Hepel, 1999] reported increased photocatalytic activity of WO3/TiO2 bicomponent films. In this system, Electrons photogenerated at the conduction band of TiO2 transfer into the lower lying WO3 conduction band, while the holes photoexcited at the valence band of WO3 transfer into TiO2 valence band. Therefore, the relative locations of the band energies of TiO2 and WO3 can promote efficient separation of photogenerated charges, whereas the surface and bulk recombination processes result in a photocurrent decrease. By the same principle, WO3-MoO3 mixed oxide might show higher photocatalytic activity than either pure tungsten oxide or pure molybdenum oxide. Photoexcited electrons at WO3 conduction band can transfer into MoO3 conduction band due to the relative location of band energies of the two materials, while the holes from MoO3 valence band can move in an opposite direction. So, the recombination of photogenerated electron-hole pair might be suppressed, resulting in higher photocatalytic activity.” (paragraph bridging pp. 595-596).
Regarding the exclusion of MoO3 (instant claim 9) WO3 (instant claim 22) as well as Mo, MoO2, W and WO2 (instant claim 23), the examiner maintains that the combination of cited prior art suggests substituting the antimicrobial tungsten (W) and molybdenum (Mo) oxides (O) with a WO3-MoO3 mixed oxide as this species was shown by Baeck et al. to have improved photocatalytic activity as compared to the pure tungsten and pure molybdenum oxides. Thus, the prior art suggests replacing, as the antimicrobial active agent, the pure tungsten and pure molybdenum oxides with a WO3-MoO3 mixed oxide, and as a result excluding other species such as those recited in instant claims 21-23.
Furthermore, Baeck et al. teaches calcination consistent with the instant disclosure, particularly that: “The library shown in Fig. 1 is a 45-member (5x9 array) WO3-MoO3 mixed oxide library, with diversity achieved by variations in deposition voltage and Mo concentration in electrolyte. The library was deposited on titanium foil by using the 63-well parallel reactor block. The concentration of Mo was varied from 0 to 100 mol% and all films were deposited for 10 minutes. After deposition, the library was calcined at 450 °C for 4 hours in air.” [emphasis added](paragraph bridging pp. 593-594, Figure 1). Baeck et al. teaches that “The stabilized Me (W or Mo)-peroxo electrolyte was prepared by dissolving proper amount of tungsten powder or molybdenum powder in 60 ml of 30% hydrogen peroxide solution. The excess hydrogen peroxide was subsequently decomposed with platinum black. The solution was diluted to 50 mM with a 50 : 50 mixture of water to isopropanol.” (p. 593, 2nd paragraph). The instant specification discloses that the claimed mixed oxides (MoxW1-xOz, in which there is 0 < x < 1 and 2.5 ≤ z ≤ 3.0 a molar W:Mo ratio is 1:3) are produced by calcination to form the same (p. 7, line 8 through p. 8, line 8; [0010]-[0011], as published) and particularly calcination in the temperature range of “200 to 400°C and a dwell time of 0.5 to 4 hours” (p. 20, line 13-25; [0036], as published). The examiners position is that the calcination step disclosed by Baeck et al. is substantially identical to the step described in the instant Application and the resulting mixed oxide would also have been the same, that is, a mixed oxide having the chemical formula of MoxW1-xOz, in which there is 0 < x < 1 and 2.5 ≤ z ≤ 3.0, a molar W:Mo ratio is 1:3, and free of MoO3 and WO3 (instant claims 9 & and 22)(MPEP §2144.05II-B - “In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range.”).
Regarding optimization of the process of making to produce the mixed oxide having the concentration of Mo was varied from 1 to 100 mol% the parameters indicated by Baeck et al. include, in addition to varying the rations of reactants, the calcination temperature (450 °C) and the time (4-hours), and further Hassan et al. teaches optimization of the synthesis of nanostructured tungsten-molybdenum bimetallic oxide (see whole document) including the calcination temperature (p. 7, §3.2.1) and the calcination time (p. 9, §3.2.2), specifically teaching, e.g., that: “The reflection that belonged to the monometallic phases monoclinic MoO3 (JCPD: 80–0347) and cubic WO3 (JCPD: 41–0905), which could easily be identified in the XRD pattern of MW1–3 (Figure 15(a)), weakened and became indistinct after eight hours of calcination at 500°C (Figure 15(b)). Such reflections disappeared in the X-ray pattern of MW1–3(12), indicating that the produced nanoparticles of molybdenum-tungsten were a pure bimetallic Mo0.5W0.5O3 phase (JCPD: 28–0667, Figure 15(c)).” (p. 10, col. 2, first full paragraph).
With respect to the claim limitation “the composite material is light stable.” the examiner argues that the prior art clearly suggest making a mixed oxide of tungsten and molybdenum according to the known chemical structure of MoxW1-xOz, where x is about 0.55, and as such the chemical stability would have also been the same, especially in the absence of evidence to the contrary (MPEP 2112.01: “IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE THE SAME PROPERTIES”). Additionally, the instant Specification citing WO 2008/058707 A2 (i.e. GUGGENBICHLER, as cited herein), states that “the mentioned oxides are temperature stable and thereby suitable for antimicrobial configuration in plastics, ceramics, metals and the like.” (p. 1, lines 10-21). GUGGENBICHLER does not suggest any issue with light stability consistent with the meaning of the instant Specification, as discussed above in section “Claim interpretation”.
WANG teaches: “The invention relates to a method for preparing zinc molybdate ultrafine anti-bacterial powder by adopting a molten-salt growth method. The method comprises the following steps that: sodium molybdate and zinc nitrate serving as raw materials and sodium nitrate serving as a salt material are mixed in a mortar in the proportion of 1:1:8-18; a proper amount of absolute alcohol is added in the mortar to grind for 1 to 2 hours to ensure that the raw materials and the salt material are mixed sufficiently and uniformly; the mixture is dried for 2 to 4 hours at 90 °C in a crucible, and is melted and calcined for 3 to 7 hours in an electric furnace at the temperature of between 320 and 360 °C; and the calcined curing product is sufficiently soaked and washed with distilled water, is filtered and dried to remove residual fused salt to obtain the ultrafine zinc molybdate powder. Researches prove that the ultrafine zinc molybdate anti-bacterial powder prepared by the molten-salt growth method has bacteria resistance superior to the anti-bacterial powder synthesized by a chemical precipitation method under the same testing condition, and avoids the problems of high cost and color change by using a silver antibacterial agent. The method can be widely applied in the fields of plastics, ceramics, paints and the like.” [emphasis added](Espacenet - English Abstract).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a composite material including an antimicrobial material based upon molybdenum and tungsten oxides the composite including the microbial active in material such as a plastic, as taught by GUGGENBICHLER, and modify the molybdenum and tungsten oxides to form a Tungsten-Molybdenum mixed oxide because this would have reasonably improved the antimicrobial effect by providing a photocatalytic antimicrobial effect by shifting the energy bands (valence band and conduction band) of the resulting mixed oxide which is expressly taught by Baeck et al. as having “showed higher photocatalytic activity than pure tungsten oxide or pure molybdenum oxide.” And both GUGGENBICHLER and LEE teaches the photocatalytic antimicrobial effect, GUGGENBICHLER teaches “An antimicrobial effect can also be achieved by means of components with a photooxidative effect.” ([0013]), and LEE teaches that “The photocatalyst is a material which can provide air cleaning, deodorization and antimicrobial effects since electrons and holes created by energy obtained by light absorption of the material generate superoxide anions, hydroxyl radicals, or the like.” Furthermore, it would GUGGENBICHLER clearly teaches inclusion of copper and silver metals, particularly that “A very high effectiveness is also given if an Mo-Cu or W-Cu powder is added to other materials.” which does not specify molybdate ([MO4]-2) ions or tungstate ([WO4]-2) ions in combination with the metals, however, one of ordinary skill in the art would have reasonably included the metals in the calcination process resulting in the compounds of formula An+zMO4, wherein M denotes Mo or W, and A is selected from the group consisting of Ag or Cu.
Additionally, WANG teaches zinc molybdate ([Zn]2+[MO4]-2) ultrafine particles, produced using a substantially identical calcination process used by the instantly claimed invention (instant Specification, pp. 7-8, 27), having anti-bacterial property for addition to plastics, ceramics, paints and the like. One skilled in the art would have been motivated to combine the mixed oxides (chemical formula MoxW1-xOz, in which there is 0 < x < 1, 2.5 ≤ z ≤ 3.0 a molar W:Mo ratio is 1:3) because it is generally considered to be prima facie obvious to combine compounds, each of which is taught by the prior art to be useful for the same purpose, in order to form a composition that is to be used for an identical purpose. The motivation for combining them flows from their having been used individually in the prior art, and from the being recognized in the prior art as useful for the same purpose. As shown by the recited teachings, instant claims are no more than the combination of conventional components of anti-microbial compositions. It therefore follows that the instant claims define prima facie obvious subject matter. Cf. In re Kerkhoven, 626 F.2d 848, 205 USPQ 1069 (CCPA 1980).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because the prior art disclose methods of making molybdenum and tungsten mixed oxide compounds useful for catalysts. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over GUGGENBICHLER in view of LEE; Baeck et al.; Hassan et al.; and WANG as applied to claims 9, 16, 18 and 22-24 above, and further in view of HENDERSON (WO 2011/129982 A2; published October 2011).
Applicants Claims
Applicant claims a composite material for producing antimicrobially effective surfaces containing a mixed oxide, wherein the composite material comprises a matrix and the mixed oxide, […], and the matrix includes at least one material selected from the group consisting of […], hydrophilizing agents, […] (instant claim 9). Applicants further claim the hydrophilizing agent is polyethylene glycol (PEG), among others (instant claims 19-20).
Determination of the scope
and content of the prior art (MPEP 2141.01)
GUGGENBICHLER teaches an inorganic substance containing molybdenum and/or tungsten which forms hydrogen cations when in contact with an aqueous medium and which results in an antimicrobial effect, as discussed above and incorporated herein by reference.
LEE teaches that “The photocatalyst is a material which can provide air cleaning, deodorization and antimicrobial effects since electrons and holes created by energy obtained by light absorption of the material generate superoxide anions, hydroxyl radicals, or the like.”, as discussed above and incorporated herein by reference.
Baeck et al. teaches a combinatorial electrochemical synthesis and characterization of Tungsten-Molybdenum Mixed Metal Oxides (see whole document) and that “Automated measurement of photocurrent by using a scanning photoelectrochemical cell showed that mixed oxides showed higher photocatalytic activity than pure tungsten oxide or pure molybdenum oxide.”, as discussed above and incorporated herein by reference.
Hassan et al. teaches optimization of the synthesis of nanostructured tungsten-molybdenum bimetallic oxide, as discussed above and incorporated herein by reference.
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of GUGGENBICHLER is that GUGGENBICHLER does not expressly teach the inclusion of a hydrophilizing agent (i.e. a wetting agent) such as polyethylene glycol.
HENDERSON teaches methods for increasing the effectiveness of one or more antimicrobial agents incorporated in polymeric films (see whole document). HENDERSON further teaches that “the incorporation of a wetting agent increases contact between a microbe-containing aqueous medium and a face of polymeric layer containing antimicrobial agent(s).” ([0024]). HEDERSON teaches that the hydrophilic wetting agents include polyethylene glycols, among others ([0055]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a composite material including an antimicrobial material based upon molybdenum and tungsten oxides the composite including the microbial active in material such as a plastic, as taught by GUGGENBICHLER, and modify the molybdenum and tungsten oxides to form a Tungsten-Molybdenum mixed oxide, as discussed above, an further to include a hydrophilic wetting agent such as polyethylene glycol in order to enhance the antimicrobial effect by increasing contact between a microbe-containing aqueous medium and a face of polymeric layer containing antimicrobial agent(s), as suggested by HENDERSON.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because the prior art disclose methods of making molybdenum and tungsten mixed oxide compounds useful for catalysts. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
Response to Arguments:
Applicant's arguments filed 07/01/2025 have been fully considered but they are not persuasive.
Applicant argues that: “In the Office Action, the Examiner appears generally receptive to applicant's recent arguments; however, it is criticized that the described light/UV stability is not supported by comparative experimental data substantiating our assertion of a surprising result.
In this regard, it is specifically emphasized that the results must be commensurate with the scope of the claimed invention (MPEP §716.02(d)).
In response, the applicant has therefore amended claim 9 to limit the subject-matter for which a clear advantage over the prior art can be demonstrated. Specifically, claim 9 has been restricted to antimicrobial mixed oxides having the chemical formula MoxW1-xOz, wherein the molar W:Mo ratio is 1:3.” (p. 4, lines 21-29).
Applicant further argues that: “Further, the applicant respectfully submits herewith the evidences, as Exhibit A that is well-structured and carries a clear "study-like" character, including a detailed description of the methods, the date the experiments were performed, the results and their interpretation, demonstrating an unexpectedly high antimicrobial activity of mixed oxides with a W:Mo ratio of 1:3 (see Exhibit A). Please note that in both the first and second 'investigation' (pages 2 and 3 of Exhibit A), samples BF24 and G28 - each having a W:Mo ratio of 1:3 - show a significantly stronger antimicrobial effect than samples BF25 and G29, which do not exhibit this W:Mo ratio.
Surprisingly, sample BF24 already outperforms the reference samples having a W:Mo ratio of 1:1 at half the concentration.
The same applies to the prevention of algal colonization. As shown in Exhibit A (page 5), a W:Mo ratio of 1:3 again demonstrates a clear advantage over the alternative ratios of 1:1 and 3:1. The effect is, however, more difficult to discern in the image due to the use of a darkcolored polymer (left: coated with a W:Mo ratio of 3:1). Clearly, the mixed oxides with a W:Mo ratio of 1 :3, as currently claimed, are not only characterized by a particularly strong antimicrobial activity, but the deliberate selection of this specific ratio is neither taught nor suggested in Guggenbichler et al. Starting from Guggenbichler, a skilled person aiming to improve the antimicrobial efficacy of mixed oxides would find no indication - either in this document or in the further prior art on record – to specifically choose a W:Mo ratio of 1:3. The present claim is therefore not only novel, but also involves an inventive step over the prior art.” (p. 4, last paragraph through p. 5, 4th paragraph).
In response the examiner previously noted: Applicants position that “applicant will submit additional data showing the unexpected better results along with a declaration shortly.” (p. 6, lines 17-18). However, the examiner sees no data showing any light stability. The Specification suggest light stability but does not show any data to that effect, particularly as Applicants point to in paragraph [0063] stating that: “The mentioned compounds also show particularly high light and UV stability […]. The test of the UV resistance can be performed in accordance with DIN EN 438-2, section 27.” (p. 5). However, no comparative data is provided showing any light/UV stability therefore it is not clear what the scope of “the composite material is light stable” should be considered. MPEP 716.02(d) makes clear that: “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.” However, the examiner sees no “objective evidence” showing any unexpected light/UV stability as no data is shown.
Applicant has provided data in Exhibit A but this is not presented in the form of a proper 37 C.F.R. §1.132 declaration. MPEP §716.02(c)II – “Arguments presented by the applicant cannot take the place of evidence in the record.”
Applicants data in Exhibit A has been considered and is not considered commensurate with the claims because the data Applicant alleges as “demonstrating an unexpectedly high antimicrobial activity of mixed oxides with a W:Mo ratio of 1:3 (see Exhibit A).” is limited to 1-2% on polystyrene (i.e. “wherein the mixed metal oxide has a mass fraction of [from/between] 0.01% and 80% of the composite material” – amount antimicrobial active; and the matrix is not limited to polystyrene or a (sub)genus thereof). Applicant has not provided an explanation of how the data in Exhibit A is commensurate with instant claim 1. Applicant points to sample BF24 describes Mo3:WO3 ratio of 3:1, and G28 describes MoO3:WO3 ratio of 3:1, whereas claim 9 which recites “a molar W:Mo ratio is 1:3” which is not the same.
Additionally the examiner maintains that, there is no data showing a comparison with any composition(s) according to GUGGENBICHLER showing light/UV stability. And the fact that GUGGENBICHLER does not show light/UV stability data does not, as a matter of fact, show that those composition(s) are not light/UV stable. MPEP §716.02(e) makes clear that the claimed invention may be compared with the closes prior art (GUGGENBICHLER) or with prior art that is more closely related to the invention than the prior art relied upon by the examiner.
In summary, Applicants have relied on unexpected light/UV stability and antimicrobial activity which is described but not clearly established by objective evidence such as data showing the same (i.e. a proper 37 C.F.R. §1.132 declaration) . And particularly no comparison with the closest prior art or closer to establish, in fact, the allegation of surprising/unexpected results, and the examiner can ascertain the requirement of MPEP §716.02(d) that the results show be commensurate in scope with the claimed invention.
Conclusion
Claims 9, 16, 18-20, 22 and 23 are pending and have been examined on the merits. Claims 9, 16, 18-20, 22 and 23 are rejected under 35 U.S.C. 112(b) and claims 9, 16, 18-20, 22 and 23 are rejected under 35 U.S.C. 103. No claims allowed at this time.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619