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 .
Claims 2-5, 7-11, 14-20 are pending.
Claims 16-20 are under examination on the merits.
Claims 16, 17 are amended.
Claims 1, 6, 12, 13 previously canceled.
No claims are newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/19/25 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16, 19 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 16 recites the limitation "one or more molecules" in the penultimate line. There is insufficient antecedent basis for this limitation in the claim. Previously, “one or more molecules” have been mentioned and it is believed that the “one or more molecules” in the penultimate line refers to these, but for clarity the “one or more molecules” in the penultimate line should be “the one or more molecules”.
Claim 19 depends on claim 16 and does not remedy this deficiency.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection in the previous action of claims 17, 20 under 35 U.S.C. 102(a)(1) as being anticipated by US 20080152685 by Blackwell is withdrawn in view of applicant’s amendment describing the functional group. Blackwell requires his surface linking agent to be chosen between a dihaloalkyl, a dihaloalkenyl, and a dihalomethylaryl. None of these are in the now-claimed group.
Claim Rejections - 35 USC § 102/103
The rejection in the previous action of claim 18 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 20080152685 by Blackwell et al is withdrawn in view of applicant’s narrowing of the functional groups capable of attachment to the polymer surface.
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.
The rejection in the previous action of claims 16 and 19 under 35 U.S.C. 103 as being unpatentable over US 20080152685 by Blackwell et al in view of “Polypropylene surface modification by active screen plasma nitriding” by Kauling et al is withdrawn in view of applicant’s amendment. Blackwell’s functional groups do not include those instantly listed.
The rejection in the previous action of claims 16, 19 under 35 U.S.C. 103 as being unpatentable over FR 3016128 by Leoment et al in view of “Polypropylene surface modification by active screen plasma nitriding” by Kauling et al is repeated and amended herein to reflect applicant’s amendment. Claims 17, 18 and 20 are newly rejected under the same premise.
Leoment describes a method of surface treating an article of polymeric material to impart antibacterial activity thereto.
Regarding claim 16, Leoment describes a polymeric material which has been subjected to plasma treatment followed by grafting of peptide molecules on the plasma-activated surface (translation top of p.2, paragraph labeled [0002]). The plasma is preferably nitrogen (p.2 paragraph [0004], p.3 paragraph [0007]) and creates ions on the surface such as amines (p.3 paragraph [0008]).
Regarding the newly claimed functional groups, Leoment describes the molecules to be grafted as “lysozyme, Nisin, Lysostaphin, Magainins, Defensins, Protegrin and/or Polyphemusin” (paragraph 4). Lysozyme, nisin, lysostaphin, magainins, defensins, protegrin and polyphemusin are all made up of amino acids and thus have a carboxyl group terminus and an amine terminus.
Leoment’s “grafting” language indicates covalent bonding.
Leoment is silent as to the temperature of the nitriding process, which will affect the final product at least because of relatively low degradation temperatures of polymers including polypropylene. Notably Leoment describes polypropylene as an exemplary polymer (end of paragraph labeled [006]).
Kauling describes low energy plasma immersion with active screen as a convenient approach for polypropylene surface modification.
Kauling states that due to electrical insulating characteristics and relatively low thermal degradation, conventional DC plasma cannot be applied to most polymers (p.363 col 2 final paragraph-p.364 col 1 paragraph 1). He goes on to describe a form of plasma process called “active screen” and states that it reduces overheating that can cause melting or thermal degradation of polymers (p.364 col 1 paragraph 1). Kauling describes this technique as keeping the samples to temperatures no higher than 100C (p.364 col 2 paragraph 1), and using in plasma nitriding as in Leoment and instant (p.364 col 1 final paragraph).
Thus it would be obvious to one of ordinary skill to use Kauling’s active screen technique where Leoment describes plasma nitriding of polypropylene because the active screen technique reduces overheating that can cause melting or thermal degradation.
Although the new phrasing of the claim states the process “is not active screen plasma nitriding”, there is not evidence that Leoment in view of Kauling is inapplicable to the claim, which is a product, not a process. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The instant specification describes (submitted specification bottom of p.3-top of p.4) the instant process as advantageous for high-volume manufacturing but does not draw distinction between the products produced by active screen plasma nitriding (ASPN) and the instant process. The instant new phrase describing pressure conditions of the process is also product-by-process language.
Regarding the functionalization of the polymer surface comprising an antimicrobial entity, Leoment describes grafting of peptide-like molecules after the nitriding process to impart antimicrobial activity (paragraph labeled [002] top of page 2 and [008] bottom of page 3).
Regarding claim 17, Leoment describes a nitrided polymer surface (p.2 paragraph [0004] which is functionalized by peptides (p.2 paragraph [0002]) which are antimicrobial (p.3 paragraph [0008]). Kauling’s nitriting process, for which motivation to use as Leoment’s nitriding process is described in rejection of claim 16 above, creates nitrogen for bonding in the near surface region (Kauling p.364 col2 paragraph 2), i.e. “within the polymer surface”. Leoment’s described grafting process (p.3 paragraph [0008]) is a covalent attachment.
Regarding claim 18, Leoment describes several different molecules which have antimicrobial properties (p.3 paragraph [0008] item 2.). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Also, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus it is obvious to use two different molecules as the functionalizing molecule from Leoment’s list.
Regarding claims 19 and 20, Leoment discloses the surface area to be treated in samples from 2-3 cm2 (p.3 paragraph [0008]). This amount must either be a portion of or the whole of a surface of the article, meeting the claim. Furthermore, Leoment describes treating “the entire” surface with grafting solution, indicating that “the entire” surface is plasma-treated (p.4 paragraph [0011]).
Response to Arguments
Applicant states p.6 final paragraph -p.7 of Remarks submitted 8/19/25 that claim 17 require each molecule to comprise a specific functional group capable of reacting with a nitrogen atom within the polymer surface. Blackwell requires his surface linking agent to be chosen between a dihaloalkyl, a dihaloalkenyl, and a dihalomethylaryl. None of these are in the now-claimed group and the rejections over Blackwell are withdrawn.
Applicant states p.8-9 that Leoment does not describe the temperatures of the instant process. This is not found convincing because first, the claims are to a product not a process of making, and if prior art reads on the product, it reads on the claim regardless of if the process steps are the same as instant or not. Second, secondary reference Kauling is brought in to account for differences which could arise due to the differences in preparation described in Leoment and instant. Kauling's temperature is lower, like instant, thus when Leoment uses his method it is reasonably expected to produce the same product (claimed).
Conclusion
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766