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 .
Detailed Action
Restriction/Election
Applicant’s election without traverse of group III, claims 31 and 33-52 in the reply filed on 01/31/25 is acknowledged. Applicant’s election of sodium chlorite, silica gel, ethylene vinyl acetate, calcium chloride and polyethylene glycol is also acknowledged.
Claims 53-56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/31/25.
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 31 and 33-52 are rejected under 35 U.S.C. 103 as being unpatentable over Hartman et al. (WO 2005/041660A1) in view of Speronello (USP 6,676,850) and further in view of Kibele (WO 2014/152539).
Hartman discloses antimicrobial films or composites. A terpolymer such as a polyurethane is combined with a composition that can deliver a desired amount of chlorine dioxide over a desired period of time. The composition comprises a metal chlorite that reacts with a hydrophilic material when exposed to water. The hydrophilic material is silicate such as a zeolite (silica). The pH of the resulting solution should be below 7. The salt is, for example barium or calcium chlorite (a metal chlorite as an active compound), see abstract and Table III. The reference teaches about 10 to 90% of antimicrobial composition, see page 4, last paragraph. Use of zeolite is taught on page 9, lines 25-28. Since the art teaches the generic amount of antimicrobial releasing agent, it would have been obvious to one of ordinary skill to have optimized the amount for optimum antimicrobial results. Since the art teaches the pH to be less than 7, it would be within skill of an artisan to keep the pH of the solution to be from 1.4 to 3.1 as claimed (less than 7).
While Hartman teaches hydrophilic material as zeolite (silica), Hartman does not teach acidified hydrophilic material, acidified silica gel.
Hartman does not teach use of triggering agent calcium chloride.
Speronello, teaches a catalyst such as sulfuric acid mixed with metakaolin, which would have been known to one having ordinary skill in the art to be calcined clay (silica) (see column 9, lines 42-15). Speronello also teaches hydrous clays such as bentonite (see column 5, lines 3-6) and acidified clays (acidified silica gels), (column 4, line 13) contacted with acids such as sulfuric acid (column 5, lines 15). Speronello also teaches the powder can include a humidity trigger, such as calcium chloride (column 5, lines 8-10; column 5, lines 26-27; column 6, lines 65-66).
It would have been obvious to include a catalyst such as sulfuric acid and moisture, humidity trigger to one having ordinary skill in the art into the composition of Hartman et al. for the purpose of controlling the reaction for releasing the chlorine dioxide gas motivated by the teachings of Speronello et al. because Hartman teaches that the composition comprises a metal chlorite that reacts with a hydrophilic material when exposed to water. Since Speronello teaches calcium chloride to be humidity trigger, it would have been obvious to one of ordinary skill to have utilized calcium chloride along with acidified clay (acidified silica gel) with metal chlorite of Hartman et al. which teaches release of chlorine dioxide (an antimicrobial gas) for a desired time when metal chlorite reacts with a hydrophilic material when exposed to water.
The references discussed above do not teach entrained polymer having base polymer.
Kibele teaches a package (see paragraph 41, “a package”; paragraph 42 “rigid containers”) in a closed container having a product located therein (see paragraph 42: “product such as foodstuffs and medicines”; paragraph 62, “the container 61 is closed”). Regarding the packages being for inhibiting or preventing growth of microbes and/or for killing microbes it is noted that Kibele teaches on paragraph 22, 34 and 36 that the material that is to be released as an active agent can be an antimicrobial agent.
As such, it would have been obvious to one having ordinary skill in the art that Kibele encompassed inhibiting or preventing growth of microbes and/or for killing microbes in a closed container. Further regarding the antimicrobial agent, Kibele teaches that the active agent can be an antimicrobial agent (paragraph 22) that can be released as a gas (see paragraph 34). Kibele further teaches that the antimicrobial releasing agent can be provided in an entrained polymer article (see paragraph 5, 6 24), located within the interior space (see figures 4, 6), the entrained polymer article comprising a monolithic material (see paragraph 18, 20, 51) that includes a base polymer (see paragraph 18, 51, “base polymer 25”), the antimicrobial releasing agent (paragraph 51, “active agent 35” which can be an antimicrobial releasing agent) and a channeling agent (see paragraph 51, “channeling agent 35”), wherein the monolithic material features channels through the entrained polymer formed of the channeling agent (see paragraph 18, and the figures which show the channels; figure 2, item 35 for example). The film release will be implicit to the composition since the prior art as discussed above makes obvious the entrained polymer.
Nonstatutory double patenting rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 31 and 33-52 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 and 21-25 of copending Application No. 18/053793(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite an entrained polymer comprising: (i) a base polymer; (ii) a channeling agent present in a range of from 1% to 20% by weight with respect to the total weight of the entrained polymer; and (iii) an antimicrobial releasing agent comprising: a carrier material comprising an acidified silica gel; an active compound comprising a metal chlorite; and a trigger comprising a hygroscopic compound; wherein: the carrier material has a pH below 3.5, and the entrained polymer is a monolithic material. The copending claims recite an entrained polymer comprising: 1. a base polymer; lI. a channeling agent present in a range of from 2% to 15% by weight with respect to the total weight of the entrained polymer; and lIl. an antimicrobial releasing agent made according to the method of claim 16. The copending entrained polymer reads on the instant entrained polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SNIGDHA MAEWALL whose telephone number is (571)272-6197. The examiner can normally be reached Monday thru Friday; 8:30 AM to 5PM.
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612