DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of t/e previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/11/2025 has been entered.
Status of Application
The Examiner acknowledges receipt of the amendments filed on 8/11/2025 wherein claim 1 has been amended.
Claims 1-10 are presented for examination on the merits. The following rejections are made.
Response to Applicants’ Arguments
Applicant’s arguments/amendments filed 02/12/2025 overcomes the rejection of claim 1 made by the Examiner under 35 USC 112(a). This rejection is withdrawn per amendments removing ‘hydrophobin’.
Applicant’s arguments/amendments filed 02/12/2025 overcomes the rejection of claims 1-3, 6, 7 and 9 made by the Examiner under 35 USC 102(a)(1) over Lee et al. (US 201//0059146). This rejection is withdrawn as Lee’s composition a linking agent to connect the surface and the cationic polymer.
Applicant’s arguments/amendments filed 02/12/2025 overcomes the rejection of claims 1-7 and 9 made by the Examiner under 35 USC 102(a)(2) over Lee et al. (KR 20220014206). This rejection is withdrawn as Lee’s composition uses a crosslinking agent to perform an epoxy reaction with the polyfunctional amine compound and serve as a binder. However, it is not clear what a ‘binder’ is as Lee provides no clarifying remarks.
Applicant’s arguments/amendments filed 02/12/2025 overcomes the rejection of claims 1-10 made by the Examiner under 35 USC 103 over Lee et al. (KR 20220014206). This rejection is withdrawn as Lee’s composition a linking agent to connect the surface and the cationic polymer.
Applicant’s arguments/amendments filed 02/12/2025 overcomes the rejection of claims 1-3, 6, 7, 9 and 10 made by the Examiner under 35 USC 102(a)(1) over Qiu et al. (J Applied Surface Science, 426, 2017, 972-979). This rejection is withdrawn as Lee’s composition a linking agent to connect the surface and the cationic polymer.
New Rejections, Necessitated by Amendment
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 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 20220014206; filed 07/2020; translation provided; of record) in view of Luo et al. (US 2016/0160071).
Lee is directed to positively charged filter media for use in removing pathogenic microorganisms such as bacteria and viruses (see pages 1 and 5).
Example 1 describes a nonwoven fabric made from polypropylene (PP) fibers (‘hydrophobic substrate’) wherein the PP fibers are surface modified to possess cationic linear polyethyleneimine (PEI) (see page 7) (see instant claims 1-3, 6, 7 and 10). The cationic coating is described as being uniformly applied to the surface and improved durability (i.e. stability) (see page 3) (see instant claim 1). It is presumed that because the structure is identical that the positively charged surface would also be persistent. See MPEP 2112(II).
The limitation of ‘the cationic polymer comprises at least one cationic bearing group located in the backbone or side chain of the cationic polymer’ is a descriptor of a physical property/characteristic of the cationic PEI claimed and would be necessarily present in the PEI taught by Lee.
Lee teaches that their positively charged surface is to possess a surface charge of 15-30 mV (see page 6). Although this surface charge of Lee is reported in a different value, the reference would still obviate the instant surface charge minimum because a) Lee desires the surface to have a positive surface charge of at least 15 mV, b) Lee describes the exact structure claimed and c) Lee describes that the cationic PEI can be provided to account for 5% of the treated substrates weight. Thus, given the prior art describes all of the instantly claimed features, it would have been obvious to manipulate the surface charge to best identify a surface charge that resulted in the removal of pathogenic organisms and if that manipulation resulted in the finding that a minimum surface charge of 2-35 nC/cm2 worked to perform the desired function, this manipulation would not have been the product of innovation but rather a product of common sense and ordinary skill. See also MPEP 2144.05 which states that where the general conditions of a claim are disclosed by the prior art, it is not inventive to discover workable ranges by routine experimentation.
In all, Lee describes a porous substrate comprising at least one fiber made from PP, (polyethylene, polyester and cellulose are also exemplified) (see instant claims 6 and 7) wherein the surface of the substrate is modified to possess a positively charged coating layer (e.g. PEI) wherein the positive charge coating layer is 5-15% by weight of the substrate (see claim 1, pages 10-11) (see instant claims 4 and 5). Lee’s 5% PEI by weight of the treated substrate lies within the instantly claimed ranges of the PEI relative to the treated material (e.g. 2-8%). See MPEP 2144.05(I) regarding obviousness of ranges.
Although Example 1 of Lee appears to describes a hydrophobic surface being directly modified by a cationic polymer (e.g. PEI), Lee fails to specifically teach the PEI as being directly bonded via a covalent bond to the PP substrate fiber.
Example 6 of Lou provides the following PEI modified PP:
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where the surface of a polypropylene (PP) polymer is directly modified via covalent bonding of a branched polyethyleneimine (PEI) polymer (see Example 6, [0065]). The PP-PEI material of Luo does not require a metallic ion or a linking agent in order to covalently bond the PP and the PEI. Alternative embodiments include polyethylene (PE) polymer modified with PEI wherein the PEI is bound to the PE via a silanol linker (see [0057]). Thus, PEI can be attached by a linker molecule or directly to a substrate polymer (e.g. PP, PE). Thus, as it was known that PEI could be directly bonded to the surface of PP, this configuration would have been an obvious modification of Lei (assuming Lei does not already describe such a configuration) because the end result is very much the same: a PP fiber substrate having PEI attached to the surface. The presence or absence of a linker connecting the PEI to the PP surface is not seen as yielding a significant materially difference as both structures result in a composite having an inward facing PP and an outward facing PEI, both of which would be expected to exhibit antimicrobial activity.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in absence of evidence to the contrary.
Double Patenting
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19/231421 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the cited claims in all the applications are drawn to a cationic polymeric material (e.g. PEI) bonded to a hydrophobic substrate material (e.g. PP). Moreover both applications require overlapping concentrations of PEI in the material and minimum average positive surface charge of 2-35 nC/cm2. The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other. Thus, the claims of the reference application are not patentably distinct over the instantly claimed subject matter.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18/409776 (reference application) in view of Ladet et al. (US 2012/0021037).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the cited claims in all the applications are drawn to a cationic polymeric material (e.g. PEI) bonded to a substrate surface. Both applications require overlapping concentrations of PEI in the material and minimum average positive surface charge of 2-35 nC/cm2. The major different between the instant and reference application is that the reference recites a ‘medical device material’. However, polypropylene is commonly used as a material in medical devices (see claim 4 of Ladet). Other than this small difference, the scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other. Thus, the claims of the reference application are not patentably distinct over the instantly claimed subject matter.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611