DETAILED ACTION
This is in response to communication received on 11/13/25.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 12/1/23, 5/8/24, 11/15/24, 3/13/25, and 8/28/25.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/27/25 has been entered.
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.
Claim 23-33, 35-37, and 39-41 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.
The independent claim 23 has been amended to include the limitation of wherein the polyphenol compound is a tannin compound represented by the following formula:
PNG
media_image1.png
114
132
media_image1.png
Greyscale
Examiner notes that the addition of the word ‘tannin’ into this sentence is not supported by the specification. The specification does mention tannins as a polyphenol compound useful in its invention, but this is done separately from the formula. Namely, tannins are discussed in paragraphs 31-33 and the formula is discussed in paragraphs 35 (as numbered in the PGPub of the instant specification). It is never suggested in the specification that tannins are included in the formula or that the formula can be limited to tannins. Tannins are just discussed with specific examples and not in terms of the compound.
As such, there is no support for the formula of paragraph 35 being a tannin or describing a tannin. These are separate embodiments, and there is no support for the combination of them.
Appropriate correction is required.
For compact prosecution, Examiner will interpret the claim such that any compound following under the formula counts as a tannin.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Kizhakkedathu et al. US PG Pub 2018/0147326 hereinafter KIZHAKKEDATHU in view of Messersmith et al. US PGPub 2014/0206630 hereinafter MESSERSMITH on claims 23-25, 28-33 and 37-39 are withdrawn because the independent claim 23 has been amended.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Kizhakkedathu et al. US PG Pub 2018/0147326 hereinafter KIZHAKKEDATHU and Messersmith et al. US PGPub 2014/0206630 hereinafter MESSERSMITH further in view of Jiang et al. US PGPub 2019/0154683 hereinafter JIANG on claims 26 and 27 are withdrawn because the independent claim 23 has been amended.
Claim(s) 23-25, 28-33, 37, 39-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kizhakkedathu et al. US PG Pub 2018/0147326 hereinafter KIZHAKKEDATHU in view of Messersmith et al. US PGPub 2014/0206630 hereinafter MESSERSMITH and Babcock et al. US PGpub 2017/0224876 hereinafter BABCOCK.
As for claim 23, KIZHAKKEDATHU teaches a method for reducing or preventing ... fouling on a substrate in need thereof, (paragraph 8-18, 20, 21 ).
KIZHAKKEDATHU teaches that "The coating may be applied in 2 coat" (paragraph 40, lines 1-2), i.e. the method comprising forming a coating having a first and a second layer on the substrate ... contacting the substrate with a first aqueous composition ... contacting the first layer formed in step a) with a second aqueous composition different from the first aqueous composition as it is a separate composition that is applied at a different time.
KIZHAKKEDATHU teaches that "The composition may further include an aqueous solution ... the buffer may have a pH of between 7 and 12" (paragraph 33, lines 1-9), and "Wherein the method is substrate independent, and wherein the method of contacting the solution and surface of the substrate may be as a dip-coating" (paragraph 44, lines 4-6) i.e. a) contacting the substrate with an aqueous composition ... wherein the pH of the aqueous composition is in a range that overlaps with at least 7, to form the first layer ... wherein the pH of the second aqueous composition ranges from 5 to 7. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365- 66 (Fed. Cir. 1997). See MPEP 2144.05.
KIZHAKKEDATHU is silent on washing the first layer formed in step a) prior to step b).
BABCOCK teaches “Embodiments of the disclosure include coatings comprising an oligomerized polyphenol layer” (abstract, lines 1-2).
BABCOCK further teaches “Many different techniques can be used to apply the solution to the substrate. By way of example, exemplary techniques can include drop coating, blade coating, dip coating, spray coating, and the like. In one mode of coating, the solution is applied by drop coating. In other modes of coating, the substrate can be immersed into the polyphenol coating solution for a period of time sufficient for the coated layer of oligomerized polyphenol to form on the article surface” (paragraph 33, lines 1-9).
BABCOCK teaches “The article can then be rinsed using a liquid such as water to remove any excess coating material (s)” (paragraph 33, lines 14-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include washing the first layer formed in step a) prior to step b) in the process of KIZHAKKEDATHU because BABCOCK teaches that washing after the formation of a layer rinsing away excess coating material.
KIZHAKKEDATHU teaches "the composition comprising: (a) a polymeric binder, wherein a monomer of the polymeric binder may have the following structure:
PNG
media_image2.png
136
146
media_image2.png
Greyscale
"(Paragraph 9, lines 2-3; Formula I), i.e.
composition comprises a polyphenol compound, wherein the polyphenol compound is a
compound represented by the following formula:
PNG
media_image1.png
114
132
media_image1.png
Greyscale
KIZHAKKEDATHU further teaches "D1 may be selected from H, OH ... O2 may be selected from H, OH, D3 may be selected from H, OH, D4 may be selected from H, OH" (paragraph 9, 10, 11, and 12) wherein the OH group of KIZHAKKEDATHU's formula 1 is R1, D1 is Rs, D2 is R--4, D3 is R3 and D4 is R2 such that KIZHAKKEDATHU teaches R1 and R5 are each, independently, H, -OH, or-OG1; R2 and R4 are each, independently, H or-OH; ... R3 is H, -OH.
KIZHAKKEDATHU further teaches "(c) a hydrophilic polymer bound to the polymeric binder, wherein the hydrophilic polymer may be comprised of monomer units having the following structure" (paragraph 16, page 5, formula II) which further includes the following group
PNG
media_image3.png
198
76
media_image3.png
Greyscale
which, as defined by Science Direct, is a zwitterionic monomer, i.e. an aqueous composition comprising a polymer having repeating units derived from one or more zwitterionic monomers to form a layer.
Examiner notes that KIZHAKKEDATHU specifically teaches applying both the polymer having repeating units derived from one or more zwitterionic monomers and polyphenol compound within the same composition, and that this composition can be applied multiple times. Thus KIZHAKKEDATHU is silent on wherein the first aqueous composition does not comprise polymer having repeating units derived from one or more zwitterionic monomers and wherein the second aqueous composition does not comprise polyphenol compound.
In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See MPEP 2144 IV.
In this case, splitting the application of the zwitterionic monomers and polyphenol compound into separate steps in stead of applying them together would be obvious to one of ordinary skill in the art because it results in a layer containing both materials.
KIZHAKKEDATHU is silent on the concentration of the polyphenol compound.
KIZHAKKEDATHU does teach "Wherein the method is substrate independent, and wherein the method of contacting the solution and surface of the substrate may be as a dip-coating" (paragraph 44, lines 4-6).
MESSERSMITH teaches "a method of making a facile, surface-independent, Polyphenol coating is disclosed" ( abstract, lines 1-2).
MESSERSMITH teaches "By "applied" we mean any method of coating a surface known to the art, including spin-coating, painting, dipping, washing, spraying, brushing, and the like" (paragraph 125).
MESSERSMITH teaches "Pyrogallol (PG, FIG. 4) coating deposition under mildly-basic, saline, aqueous condition was achieved on a variety of substrates. Pyrogallol is a more cost-effective phenolic compound to use and obtain, as compared to many other phenols and polyphenols. The dip coating strategy was performed by incubating the choice substrate in a 0.1 to 2.0 mg/ml solution of pyrogallol" (paragraph 141, lines 1-7), i.e. wherein a polyphenol compound at a concentration in range that overlaps with 0. 1 mg/mL to 10 mg/ml.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to apply the coating of KIZHAKKEDATHU wherein a polyphenol compound at a concentration in range that overlaps with 0. 1 mg/mL to 10 mg/ml because MESSERSMITH teaches that such a concentration is useful for applying poly phenols to a substrate using the dip-coating method taught by KIZHAKKEDATHU.
As for claim 24, KIZHAKKEDATHU teaches "the composition comprising: (a) a polymeric binder, wherein a monomer of the polymeric binder may have the following structure:
PNG
media_image2.png
136
146
media_image2.png
Greyscale
"(Paragraph 9, lines 2-3; Formula I), i.e. composition comprises a polyphenol compound, wherein the polyphenol compound is a compound represented by the following formula:
PNG
media_image1.png
114
132
media_image1.png
Greyscale
KIZHAKKEDATHU further teaches "D1 may be selected from H, OH ... O2 may be selected from H, OH, D3 may be selected from H, OH, D4 may be selected from H, OH" (paragraph 9, 10, 11, and 12) wherein the OH group of KIZHAKKEDATHU's formula 1 is R1, D1 is Rs, D2 is R--4, D3 is R3 and D4 is R2 such that KIZHAKKEDATHU teaches R1 is -OH.
KIZHAKKEDATHU further teaches that "D1 can be ...
PNG
media_image4.png
132
188
media_image4.png
Greyscale
" (paragraph 9), i.e. wherein Rs is -OG1 and G1 is
PNG
media_image5.png
122
154
media_image5.png
Greyscale
.
As for claim 25, KIZHAKKEDATHU further teaches "D1 may be selected from H, OH ... O2 may be selected from H, OH, D3 may be selected from H, OH, D4 may be selected from H, OH" (paragraph 9, 10, 11, and 12) wherein the OH group of KIZHAKKEDATHU's formula 1 is R1, D1 is Rs, D2 is R--4, D3 is R3 and D4 is R2 such that KIZHAKKEDATHU teaches R2 is H and R4 is H.
As for claim 28, KIZHAKKEDATHU further teaches"( c) a hydrophilic polymer bound to the polymeric binder, wherein the hydrophilic polymer may be comprised of monomer units having the following structure:
PNG
media_image6.png
114
106
media_image6.png
Greyscale
where, G may be H or
PNG
media_image7.png
202
72
media_image7.png
Greyscale
(paragraph 16, page 5), i.e. wherein the polymer has 1 monomer repeated and thereby is a copolymer.
As for claim 30, KIZHAKKEDATHU further teaches "The hydrophilic polymer may have a number average molecular weight (Mn) of at least 100 kDa" (paragraph 34, lines 1-2), i.e. a range that overlaps with wherein the weight-average molar mass (Mw) of the polymer is in the range of from about 5,000 to about 3,000,000 g/mol.
As for claim 31, KIZHAKKEDATHU further teaches"( c) a hydrophilic polymer bound to the polymeric binder, wherein the hydrophilic polymer may be comprised of monomer units having the following structure:
PNG
media_image6.png
114
106
media_image6.png
Greyscale
where, G may be H or CH3; R may be selected [from groups including]
PNG
media_image8.png
238
76
media_image8.png
Greyscale
(paragraph 16, page 5), i.e. wherein the repeating units derived from one or more zwitterionic monomers are repeating units derived from one or more betaine monomers selected from the group consisting of ... f) phosphobetaines of the formulae
PNG
media_image9.png
92
356
media_image9.png
Greyscale
.
As for claim 32, KIZHAKKEDATHU further teaches"( c) a hydrophilic polymer bound to the polymeric binder, wherein the hydrophilic polymer may be comprised of monomer units having the following structure:
PNG
media_image6.png
114
106
media_image6.png
Greyscale
where, G may be H or CH3; R may be selected [from groups including]
PNG
media_image7.png
202
72
media_image7.png
Greyscale
(paragraph 16, page 5), i.e. wherein the repeating units derived from one or more zwitterionic monomers are repeating units derived from one or more betaine monomers selected from the group consisting of: - sulfopropyldimethylammonioethyl (meth)acrylate.
As for claim 33, KIZHAKKEDATHU teaches that "The composition may further include an aqueous solution ... the buff er may have a pH of between 7 and 12" (paragraph 33, lines 1-9), i.e. a range that overlaps with wherein the pH of the aqueous composition comprising the polyphenol compound is from 7 to 9. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir.1997). See MPEP2144.05.
As for claim 36, KIZHAKKEDATHU teaches "Wherein the method is substrate independent, and wherein the method of contacting the solution and surface of the substrate may be as a dip-coating" (paragraph 44, lines 4-6), i.e. wherein step a) and/or step b) are each conducted by ... dip coating.
As for claim 37, KIZHAKKEDATHU teaches "Wherein the method is substrate independent, and wherein the method of contacting the solution and surface of the substrate may be as a dip-coating" (paragraph 44, lines 4-6), and "coating was applied via a simple dip coating process for 24h at room temperature" (paragraph 175, lines 3- 4 ), i.e. wherein the substrate is immersed in the aqueous composition comprising the polyphenol compound for 30 minutes to 24 hours.
As for claim 39, KIZHAKKEDATHU is silent on further comprising washing the second layer formed in step b).
BABCOCK teaches “Embodiments of the disclosure include coatings comprising an oligomerized polyphenol layer” (abstract, lines 1-2).
BABCOCK further teaches “Many different techniques can be used to apply the solution to the substrate. By way of example, exemplary techniques can include drop coating, blade coating, dip coating, spray coating, and the like. In one mode of coating, the solution is applied by drop coating. In other modes of coating, the substrate can be immersed into the polyphenol coating solution for a period of time sufficient for the coated layer of oligomerized polyphenol to form on the article surface” (paragraph 33, lines 1-9).
BABCOCK teaches “The article can then be rinsed using a liquid such as water to remove any excess coating material (s)” (paragraph 33, lines 14-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include further comprising washing the second layer formed in step b) in the process of KIZHAKKEDATHU because BABCOCK teaches that washing after the formation of a layer rinsing away excess coating material.
As for claim 40, KIZHAKKEDATHU teaches may thickness within the range in (Table 1 ), wherein the thickness of the first layer formed in step a) is from 2 to 20 nm. As for claim 41, KIZHAKKEDATHU teaches that "The coating may be applied in 2 coat" (paragraph 40, lines 1-2) and teaches may thickness within the range in (Table 1) , wherein the total thickness of the coating is from 4 to 50 nm.
Claim(s) 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Kizhakkedathu et al. US PG Pub 2018/0147326 hereinafter KIZHAKKEDATHU, Messersmith et al. US PGPub 2014/0206630 hereinafter MESSERSMITH and Babcock et al. US PGpub 2017/0224876 hereinafter BABCOCK as applied to claim 23 above, and further in view of Jiang et al. US PGPub 2019/0154683 hereinafter JIANG.
As for claim 26, KIZHAKKEDATHU and MESSERSMITH are silent on wherein R3 is-(C=O)Rh.
JIANG teaches "Hierarchical films with structurally regulated functionalities through the integration of two-dimensional and three-dimensional structures to achieve ultra low nonspecific binding and high loading of molecular recognition elements, and methods for making and using the films" (abstract) using similar materials (see paragraph 11 ).
JIANG further teaches that "In the second layer, the materials can include carboxylic acid groups and certain of these carboxylic acid groups are available for further chemical reaction, specifically the immobilization of recognition elements (i.e., target binding partners) to the materials and, therefore, the film" (paragraph 51 ), wherein a group is -(C=O)OH, i.e. wherein R3 is -(C=O)Rh and Rh is ... OH.
It would have been obvious to replace the D3 group of KIZHAKKEDATHU with the carboxylic acid group of JIANG such that wherein R3 is -(C=O)Rh because JIANG teaches that such a group allows for immobilization of recognition elements (i.e., target binding partners) to the materials and, therefore, the film.
As for claim 27, Examiner notes that the claim is not written such that chemical is required to have the Su group. Namely, group R3 is limited to being each independently H, -OH, OSu or -OG1 While the claim limits what the Su and G 1 group can be, it does not limit R3 to having the Su or G1. As such, the combination in the rejection of Group 26 applies here as well.
Response to Arguments
Applicant’s arguments with respect to claim(s) 23-33, 35-37, 39-41 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRISTEN A DAGENAIS/Examiner, Art Unit 1717