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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bommarito et al. (2013/0211310) in view of Hu et al. (2019/0159937)
Regarding claims 4-8, Bommarito discloses a method of inhibiting the formation of a biofilm a medical device (abstract), comprising: applying nanostructures (e.g. nanofeatures as in abstract) on at least a portion of a surface of the medical device (e.g. dental device as in [0046]), the nanostructures having a pyramid-like shape ([0058]), with bases thereof having larger respective diameters than a top portions thereof (e.g. pyramid-like shape), with a periodicity of 0.5 microns (um) to 50 microns encompasses the range of 0.5 um to 5 um ([0125]), a height of 0.250-0.350 um ([0019], an aspect ratio from 0.5 to 5 ([0066]), pitch of 0.1-150 micros and a spacing (fig. 6b-7b) between bases of 200 nm to 4,000 nm and 300 nm to 2,500 nm. The pyramid-like nanostructures are spaced apart as seen in the figures 6a-7b but fail to disclose spacing between bases of greater than or equal to 0.1 um and less than 0.35 um; however, Hu teaches a medical apparatus having antimicrobial nanostructures (abstract) including nanostructure having spacing between bases including the range of 100 nm to 350 nm (.1 um to 0.35 um [0032]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to modify the method of Bommarito by providing spacing as claimed as taught by Hu in order to puncture the bacterial membrane, killing the bacteria thus preventing formation of bacterial film.
Response to Arguments
Applicant's arguments filed 08/21/2025 have been fully considered but they are not persuasive. In response to the argument regarding periodicity, it is noted that Bommarito discloses periodic structure which is a repeated pattern of the nanostructures in the figures provided. The argument regarding the dimension could be diameter or width is not persuasive because the reference already specified the diameter and width in paragraph [0019]. The periodic structure is supported by the figures in the reference. In response to the argument regarding cited case federal circuit case law, it is noted that the claims are examined per MPEP. It is not clear why the applicant is making a written description argument. No written description rejection was made in the previous office action.
Conclusion
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Patel Yogesh whose telephone number is (571) 270-3646. The examiner can normally be reached between 9 AM – 5:30 PM on Monday, Thursday and Friday.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE Eric Rosen, at (571) 270-7855.
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/YOGESH P PATEL/ Primary Examiner, Art Unit 3772