DETAILED ACTION
Status of Application
The Examiner acknowledges receipt of the amendments filed on 5/20/2026 wherein claims 1, 6 and 7 have been amended.
Claims 1-10 are presented for examination on the merits. The following rejections are made.
Response to Applicants’ Arguments
Applicant’s approved terminal disclaimers filed 5/20/2026 renders moot the provisional non-statutory double patenting rejections over claims 1-10 of copending 19/231421 and claims 1-7 of copending 18/409776 in view of Ladet et al. (US 2012/0021037). These rejections have been withdrawn.
Applicant’s arguments filed 5/20/2026 regarding the rejection of claims 1-10 made by the Examiner under 35 USC 103 over Lee et al. (KR 20220014206) in view of Luo et al. (US 2016/0160071) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 1/2/2026.
In regards to the 103 rejection, Applicant asserts the following:
A) Luo does not constitute a PEI being durably coated onto a fixed PP surface. Luo instead teaches that the PP is a tiny molecule that cannot constitute a fixed, stable and durable macroscopic surface or substrate for PEI to bond with.
In response to A, nothing in the claims requires the PP to have any dimensional properties. As far as the Examiner can tell, the only requirement of the substrate material is that it’s a) hydrophobic and b) be stable and c) be capable of forming a porous sheet, membrane, woven fabric or nonwoven fabric. The claims identify PP as a suitable substrate material. With respect to a) and b) these are properties of the PP substrate and so the selection of PP would necessarily possess these properties. As noted before, the claims do not preclude the PP being a large substrate or a small substrate and so this argument is considered nonpersuasive. With respect to c), Lee teaches that PEI coated PP can be structured as nonwoven fabrics as well as porous sheets. Luo teaches that PEI can be covalently attached to PP surfaces. Thus, the combination of Lee and Luo would suggest that being described such that the PEI is covalently bound to the PP susbtrate. The references do not ascribe the covalent bond as ‘durable’ or ‘stable’ but given the overlapping nature of the claimed structure with the structures resulting from the references, it is reasonable to presume, absent evidence otherwise, that the obvious configuration is also ‘durable’ and ‘stable’.
Maintained Rejections, of Record
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.
New Rejections, Necessitated by Amendment
Claim Rejections - 35 USC § 112
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.
Claims 1, 5 and 6 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Claims 1, 5 and 6 have been amended to recite the term ‘stable’ and ‘durably’. However, these concepts are not conveyed in the specification as filed. If Applicant contends that there is support for such a specific language/embodiments, then Applicant is requested to point to the specific page and line of said support. This is a new matter rejection.
Applicant’s attention is directed to MPEP 714.03, “Applicant should also specifically point out the support for any amendments made to the disclosure.” Applicant has not done so.
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 extension fee 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 date of this final action.
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
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