DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
Claims 1-19 are pending and under consideration in this action.
Election/Restrictions
Applicant's election with traverse of the following species in the reply filed on February 11, 2016 is acknowledged:
Metal compound: copper
Liquid medium: water
Functionalization agent: PVP
The traversal is on the ground(s) that the species have been searched repeatedly in the long line of cases in this family, and thus there is not undue search burden. This is not found persuasive because the cases in the present application’s family (e.g., those listed in Applicant’s response of February 11, 2026) were not of the same scope as the present case, particularly with regards to the specific metal compounds. For example, the other cases did not include all of the metal compounds recited in, for example, the instant claim 7, and were not directed to “metal compounds” in general as in the instant claim 1. Thus, the entire scope as present in the instant application’s claims have not been repeatedly searched.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 12 is objected to because of the following informalities: “where in” in line 1 should be “wherein”. Appropriate correction is required.
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 1-19 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.
With regards to claims 1, 13, and 18, the claims do not recite a transitional phrase (e.g., “comprising”, “consisting of”, etc.). As the transitional phrase determines the scope of the phrase with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim, the claims as currently written are indefinite as to the scope of the claims. In particular, as currently written, it is unclear if unrecited steps and/or components are or are not excluded from the scope of the claims. Claims 2-12, 14-17, and 19 are subsequently rejected as they incorporate the limitations of claims 1, 13, or 18 and do not remedy the issue discussed above.
With regards to claim 5, the claim recites “wherein the weight ratio of the metal compound to the functionalization agent in the liquid medium is at least 1:1.” It is unclear if “at least 1:1” is intended to mean that greater amounts of metal compound may be used, greater amounts of functionalization agent may be used, or either.
With regards to claim 9, the term “high water solubility” renders the claim indefinite because “high” is a subjective term which does not appear to be defined in the instant specification. Thus, it is unclear what levels of solubility are and are not encompassed by the term “high”. Claim 10 is subsequently rejected as it incorporates the limitations of claim 9 and does not remedy the issue discussed above.
Claim 17 recites the limitation "the aqueous medium" in line 1. There is insufficient antecedent basis for this limitation in the claim because there is not previous mention of an aqueous medium. It is noted that claim 14, which claim 17 ultimately depends from, recites “a liquid medium”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8, 11-15, and 17-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Uhlmann et al., (Uhlmann) (US 2012/0301528 A1; priority date May 24, 2012).
The applied reference has common inventors and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With regards to Claims 1-4, 6, 7, 13, 14, and 18, Uhlmann discloses compositions having antimicrobial activity comprising particles comprising at least one inorganic copper salt; and at least one functionalizing agent in contact with the particles, the functionalizing agent stabilizing the particle in a carrier such that an antimicrobially effective amount of ions are released into the environment of a microbe (abstract).
In an embodiment, Uhlmann discloses metal compound particles being formed by grinding, particularly wet grinding. Wet grinding is carried out in liquid (e.g., aqueous), where the media further comprises any surface modifying agents (para.0013).
With regards to the method of forming the particles by grinding, a known method of forming the desired microparticles and nanoparticles is by grinding larger particles in a wet media mill. Such grinding is done in the presence of the functionalizing agents and an appropriate liquid medium, e.g., water (para.0103).
The particles may be CuI particles (para.0105). Example 42b exemplifies the preparation of PVP/CuI dispersions by wet grinding. A PVP dispersion and CuI were added to de-ionized water and ground. The surface of the ground particles were functionalized by the PVP dispersion. The particles after 45, 120, and 210 minutes of grinding were 920 nm, 220 nm, and 120 nm respectively (para.0225-0228).
With regards to Claims 11, 12, 15, and 19, the functionalization agent may be a polymer, such as polyvinylpyrrolidone (PVP) (molecular weight greater than 60). PVP effectively stabilizes emulsions, suspensions, and dispersions. The polymer is adsorbed in a thin molecular layer on the surface of the individual particles to prevent contact between them and thereby overcome tendency of these particles to form a continuous phase (para.0105-0106). PVP is soluble in water (para.0108).
With regards to Claim 5, the weight ratio of the metal halide (e.g., CuI) to polymer (e.g., PVP) is most preferably about 1:1 to 1:65 (para.0106).
With regards to Claim 8, Uhlmann also exemplifies the preparation of polyurethane/CuI dispersions by wet grinding. A polyurethane dispersion and copper iodide were added into aqueous media for grinding. The surface of the ground particles were functionalized by the polyurethane dispersion, which comprised of hydrophobic polyurethane and a surfactant amongst other additives, reading on more than one functionalization agent being used and the more than one functionalization agent being added at the same time into the grinding process (para.0225-0227).
With regards to Claim 17, the CuI power can be first dissolved in a polar nonaqueous solvent, such as acetonitrile (para.0105-0106).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 and 17-19 are rejected under 35 U.S.C. 103 as being obvious over Uhlmann et al., (Uhlmann) (US 2012/0301528 A1; priority date May 24, 2012) and Verhoff et al. (Verhoff) (US 2002/0047058 A1; published Apr. 25, 2002).
The applied Uhlmann reference has common inventors and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
The teachings of Uhlmann as they apply to Claims 1-8, 11-15, and 17-19 are set forth above and incorporated herein.
Uhlmann does not appear to explicitly disclose wherein the liquid medium further contains at least one salt with high water solubility (Claims 9, 10). Verhoff is relied upon for this disclosure. The teachings of Verhoff are set forth herein below.
Verhoff discloses a process for milling a solid substrate and compositions of small particles of milled solid materials synergistically commixed with small particulates of milling media of comparable or smaller size. The methods prepare extremely fine particles of pharmaceutical agents (abstract; para.0001, 0049, 0050, 0073). Verhoff discloses that an advantageous feature of their invention is that there is provided a grinding method which enables the use of ultra-find grinding media, e.g., of a particle size less than 350 micrometers, in a grinding process (para.0074).
Verhoff discloses that the process is carried out in a fluid carrier, which may be an aqueous solution of one or more salts (Verhoff claims 1 and 9). Verhoff discloses that among the useful milling media materials known include potassium chloride (para.0187).
With regards to Claims 9 and 10, as discussed above, Uhlmann discloses a process of using wet grinding, which is carried out in liquid (e.g., aqueous), to produce their functionalized nanoparticles. In light of Verhoff’s disclosure that aqueous solution of one or more salts, such as potassium chloride is known to be used as milling media material for wet grinding processes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the teachings of Uhlmann and Verhoff to try adding potassium chloride into the liquid medium of Uhlmann’s wet grinding method as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so as both Uhlmann and Verhoff are directed to wet grinding methods of producing particulate materials, Uhlmann discloses the use of liquid aqueous medium as the wet grinding material, and Verhoff discloses that aqueous solutions of one or more salts, such as potassium chloride, is known to be used as the grinding media in wet grinding methods of producing particulate material.
Therefore, the claimed 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 instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Conclusion
Claims 1-19 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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, Sue X Liu can be reached at 571-272-5539. 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.
/MONICA A SHIN/Primary Examiner, Art Unit 1616
Prosecution Insights