DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 3 November 2025, is acknowledged.
Claims 1, 7-10, 12, 18-20, and 27-28 have been amended.
Claim 13 has been cancelled.
New claims 30-35 have been added.
Claims 18-20 and 23-24 were previously withdrawn from consideration in the office action mailed on 15 May 2025, as being drawn to a nonelected invention.
Claims 1-5, 7-12, and 27-35 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the surfactant is an anionic polymeric surfactant;
the thickener is a hydroxyethyl cellulose; and
the binder is an acrylate binder.
Objections Withdrawn
Objections to Drawings
The replacement sheets containing amended Figures 1A and 3B, submitted on 3 November 2025, have overcome the objections to the drawings set forth in the Office Action mailed on 15 May 2025. Accordingly, the relevant objections are withdrawn.
Objections to Claims
Applicant’s amendments to claims 7-8, submitted on 3 November 2025, have overcome the objection to the claims set forth in the Office Action mailed on 15 May 2025. The objection to claim 13 has been rendered moot as a result of Applicant’s cancellation of the claim. Accordingly, the relevant objections are withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 30 December 2025, was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Maintained Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 has been amended to recite “The textile finishing aqueous dispersion according to claim 11, comprising: from 67 to 94% by weight of water…” (bold added for emphasis). However, claim 7, upon which claim 12 is dependent, recites an aqueous dispersion comprising “from 67 to 90% by weight of water”. Claim 12 fails to further limit the subject matter of claim 7 because it recites a larger range.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Amendment
The Applicant’s amendment to claim 12, filed on 3 November 2025, has failed to overcome the rejection of the claim under 35 U.S.C. § 112(d) for failing to further limit claim 7. Previously, claim 12 recited the range of 37-94% w/w water, which allows for both more and less water than claim 7, which recited 67-90% w/w water. As it is currently written, amended claim 12 recites 67-94% w/w water, which still allows for more water than claim 7 and therefore still fails to further limit the subject matter of claim 7.
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, 7-11, 13, 27, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Rapaport et al. (U.S. Patent Application Publication No. US 2016/0215443 A1, published on 28 July 2016, hereafter referred to as Rapaport) in view of Otsuki et al. (European Patent Application No. EP 1661460 A1, published on 31 May 2006, provided by Applicant in IDS, hereafter referred to as Otsuki) and Hanuka et al. (WIPO International Publication No. WO 2019/026071 A1, published on February 7, 2019, provided by Applicant in IDS, hereafter referred to as Hanuka).
Rapaport teaches formulations, their preparation, and their application in imparting fire retardant properties on textile fabrics (Abstract). Textile flammability is taught to be a serious industrial concern and compositions that impart flame retardant properties are taught to have many properties in need of optimization, including environmental and physiological safety concerns, aesthetics, durability, and cost (para. [0001-0005]). Rapaport teaches that their formulations meet the need of finding “novel aqueous dispersions suitable as flame retardants in the textile industry” which “possess the special requirements noted herein” (para. [0017]). The desired textile fabric is taught to be obtained by contacting the fabric with a flame retardant formulation via dipping, spraying, or other means (claims 10 and 14).
The fabric receiving fire retardant properties is taught to be selected from garments, linens, or technical textiles, which is determined to be equivalent to the medical textile product recited in instant claims 27 and 29 (claim 11). The quantity of components added to the fabric is expressed as a percentage called the “add-on” percentage and is calculated as the mass of the added components compared to the total mass of the fabric (para. [0004]). In claim 16, Rapaport teaches the add-on percentage of their textile fabric to be 4-40%.
In Example 2, exemplary formulation F-2100 is taught to comprise water, the anionic polymer surfactant Tersperse 2735, hydroxyethylcellulose as a thickener, and acrylic binder AC-170 (para. 0247]). In Table 2, the final composition of F-2100 is taught to comprise 5.8% acrylic binder, 1% anionic polymer surfactant, and 0.15-0.20% hydroxyethylcellulose, which fall within the ranges of instant claims 7, 9, and 13 (para. [0248]). Rapaport also teaches their compositions to include additional components for added benefits, including the requirement of aluminum ammonium polyphosphate (AlAPP, trade name TexFRon AG) to successfully apply the composition to 100% cotton fabrics (para. [0062] and [0232]). In addition, metal oxides are taught to be inorganic flame retardant synergists, which would “enhance the effectiveness of flame retardants” when included in the formulations (para. [0091-0092]). Examples of metal oxides taught include iron, tin, zinc, and aluminum oxide, but magnesium oxide is not taught (para. [0092]).
Rapaport does not teach the metal oxide of their formulation to be magnesium oxide, their textile product to possess anti-viral and/or anti-bacterial properties, the final amount of MgO relative to the weight of the textile product, nor the percent composition of water to be 67-90% or MgO to be 2-20%. These deficiencies are offset by the teachings of Otsuki and Hanuka.
Otsuki teaches an antiviral agent that is usable on textiles, such as masks and filters, which comprises MgO and/or Mg(OH)2 that is prepared by “partial hydration of calcined dolomite” (Abstract and claims 2 and 5). The antiviral agent is taught eliminate the “infectious capacity of the virus” and protect the user from “invasion of the virus into cells” (Abstract). Examples of viruses against which the invention can be used include Severe Acute Respiratory Syndrome (SARS) and influenza viruses (para. [0029-0030]). The application of the antiviral composition comprising MgO to masks and filters in the teachings of Otsuki is equivalent to the application recited in instant claims 27 and 29.
In one embodiment, a mask is immersed in an antiviral agent solution which is prepared by dispersing powdered partially hydrated calcined dolomite, urethane polymer, and a dispersant in water (Fifth embodiment, page 5). The urethane polymer taught by Otsuki impacts the viscosity of the aqueous dispersion and is determined to be equivalent to the thickener disclosed in instant claim 1. Otsuki additionally teaches the urethane polymer of the fifth embodiment to be “an adhesive…to facilitate adhesion between powder and fabric” (para. [0056]), which is determined to be equivalent to the binder disclosed in instant claim 8. In the eighth and ninth embodiments, a variety of mixtures of Mg and Ca salts are analyzed for their antiviral activity, and Otsuki teaches that a mixture is more effective than any one salt alone (pages 6-7). The antiviral agent in the prepared solution is “at least 0.1%” and has an upper limit of 25%, indicating that the solvent accounts for 75.0-99.9% of the composition (para. [0095] and [0100]). Solvents that can be used in the invention are water, methanol, and ethanol, among others, which renders obvious the range of water in instant claim 7 (para. [0101]).
Hanuka teaches an antimicrobial chemical trap comprising a matrix, made of nanocrystalline cellulose (NCC), containing a film with antimicrobial MgO and/or Mg(OH)2 particles (Abstract, para. [0011]). The film is formed by creating a suspension comprising NCC and MgO and/or Mg(OH)2, dispersing the suspension on at least one surface of a substrate, and then drying (para. [0113-0116]). The trap can be placed on a substrate such as a polymeric material, fibers, or food surfaces to protect against microbes (claim 34). The antimicrobial substance of the invention (MgO or Mg(OH)2) is taught to comprise between 1-50% of the weight of the coated substrate, preferably 10-20%, rendering obvious the concentration range of MgO in instant claim 7 (para. [0027]).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). With respect to ranges or amounts that do not overlap but are merely close, courts held that a prima facie case of obviousness also exists. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In MPEP § 2144.05.II.A., it is further stated that “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” Courts have supported this statement in several decisions, including In re Hoeschele where the Court of Customs and Patent Appeals wrote “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (406 F.2d 1403, 160 USPQ 809 (CCPA 1969)).
These guidelines apply to the weight composition of water, MgO, surfactant, thickener, and binder in the instant invention. In each case, the prior art either encompasses the ranges recited in the instant claims or falls within those ranges. Further, if the textile product contains 40% add-ons as taught by Rapaport and the added composition comprises 10-20% MgO as taught by Hanuka, the final amount of MgO would be 4-8% by weight of the textile product. The combined teachings of applying a composition comprising MgO to garments, linens, and technical textiles, including masks, and the final textile product comprising 4-8% by weight of MgO renders obvious instant claims 27 and 29.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Rapaport, Otsuki, and Hanuka to arrive at the invention of instant claims 1, 7-11, and 13 because applying known techniques to a known product ready for improvement yields predictable results. The known product ready for improvement in this instance is the flame retardant composition taught by Rapaport, which comprises water, metal oxide(s), the surfactant Tersperse 2735 (an anionic polymeric surfactant), the thickener hydroxyethylcellulose, the acrylic binder AC-170, and aluminum ammonium polyphosphate. While textiles coated with the composition of Rapaport are taught to be flame retardant, aesthetically pleasing, and durable, they are not taught to possess antiviral properties. Otsuki teaches that metal oxides, in particular magnesium and calcium oxide, possess antiviral properties. It would have been obvious to an artisan to select the metal oxides taught by Rapaport to be MgO or CaO and test the resulting formulation for its antiviral properties. Further, Rapaport does not teach the final concentration of water in their formulation F-2100, nor the concentration of metal oxides if used as synergists in their formulations. An artisan would be motivated to modify the teachings of Rapaport with the teachings of Otsuki and Hanuka because the latter two references teach concentrations of water and MgO in formulations that are effective in antiviral compositions. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1, 7-11, 13, 27 and 29 in view of the teachings of Rapaport, Otsuki, and Hanuka.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Rapaport (U.S. Patent Application Publication No. US 2016/0215443 A1, published on 28 July 2016) in view of Otsuki (European Patent Application No. EP 1661460 A1, published on 31 May 2006, provided by Applicant in IDS) and Hanuka (WIPO International Publication No. WO 2019/026071 A1, published on February 7, 2019, provided by Applicant in IDS) as applied to claims 1, 7-11, 13, 27 and 29 above, and further in view of Leister et al. (U.S. Patent Application No. US 2016/0009600 A1, published on January 14, 2016, hereafter referred to as Leister).
Rapaport, Otsuki, and Hanuka teach the above, in addition to Otsuki teaching that the MgO used in their studies had a mean particle size of 2.5-11 mm and a surface area of 6.4 or 37 m2/g (Figure 2). Hanuka further teaches the MgO in their invention to have a bulk density of 0.19 or 0.43 g/cm3 and a surface area of 8.4 or 97 m2/g (Example 4). The particle size distribution of the higher density, lower surface area MgO is taught in Table 1 to be D50 5.9 mm and D90 43.5 mm (page 24). In paragraph [0138], films containing MgO with lower bulk density and higher surface area are shown to exhibit greater antibacterial activity.
Rapaport, Otsuki, and Hanuka do not teach the Loss on Ignition (LOI) or citric acid activity of the MgO used. These deficiencies are offset by the teachings of Leister.
Leister teaches a coating system comprising aluminum phosphate and magnesium oxide (Abstract). The citric acid test is described as a method for determining the reactivity of magnesium oxide and is measured as the time required for a solution containing citric acid and phenolphthalein to undergo a color change, indicating neutralization of the acidic citric acid solution (para. [0037]). The MgO used in the invention had citric acid test values between 40 and 400 seconds (claim 1). Values lower than 40 seconds are taught to be too reactive, leading to an inability to create a network of the MgO coating, and above 400 seconds to be insufficiently reactive (para. [0038]). Leister also teaches the ignition loss of MgO to be between 0.0-3.0% (para. [0040]). Values above 3.0% are taught to be detrimental to the reactivity of the MgO as it is indicative of a water concentration that is too high (para. [0040]).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing date of the instant application, to have modified the invention rendered obvious by the teachings of Rapaport, Otsuki, and Hanuka, with the teachings of Leister to arrive at the invention of claims 2-5 because combining prior art elements according to known methods yields predictable results. One would be motivated to combine the teachings of Leister with those of Rapaport, Otsuki, and Hanuka because the latter three do not teach the full breadth of the characteristics of reactive, useful MgO. The invention of Otsuki is useful as an antiviral and antibacterial coating on a textile such as a mask, but the only taught characteristics of the MgO used in the invention are the particle size and surface area. Hanuka taught the bulk density and surface area of commercially available MgO useful in antimicrobial applications, but Leister provided the missing citric acid activity and ignition loss characteristics of reactive MgO, which are necessary for optimally reactive MgO. A person of ordinary skill in the art would use the characteristics taught by Otsuki, Hanuka, and Leister to evaluate MgO and determine which sources or types of magnesium oxide would be most reactive for their antimicrobial invention. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 2-5 in view of the teachings of Rapaport, Otsuki, and Hanuka, and further in view of the teachings of Leister.
Claims 12 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Rapaport (U.S. Patent Application Publication No. US 2016/0215443 A1, published on 28 July 2016) in view of Otsuki (European Patent Application No. EP 1661460 A1, published on 31 May 2006, provided by Applicant in IDS) and Hanuka (WIPO International Publication No. WO 2019/026071 A1, published on February 7, 2019, provided by Applicant in IDS) as applied to claims 1, 7-11, 13, 27 and 29 above, and further in view of von Bonin (U.S. Patent No. 5,182,049, published on 26 January 1993).
Rapaport, Otsuki, and Hanuka teach the above.
Rapaport, Otsuki, and Hanuka do not teach the concentration of aluminum ammonium polyphosphate in the composition or final textile product. These deficiencies are offset by the teachings of von Bonin.
von Bonin teaches an intumescence media which can be employed for fire prevention purposes that comprises “ammonium and/or amine salts of acid phosphates of metals of the 2nd and/or 3rd group of the periodic system of the elements” (Abstract). Intumescence materials, which react upon being exposed to fire, include fire-preventive coatings (column 1, lines 5-13). Ammonium phosphates are taught to be frequently used in fire-resistant materials, but have the drawback of being water soluble, introducing the need for media that is not degradable by oxidation and is insensitive toward air, moisture, and CO2 (column 1, lines 31-47). von Bonin teaches that ammonium salts of acid phosphates of metals in the second and/or third group of the periodic table are suitable for use in these applications and that “particularly aluminum” is a good metal for these compounds (column 1, lines 48-56).
The preferred molecule, presented by Formula I, comprises Me, a metal of the 2nd/3rd group, n, a number of phosphate moieties bound together by shared oxygen atoms, n changing based upon the valency of the metal, and xnA, which represents a number of ammonia molecules corresponding to n (vide supra) and x, which is 1.5-4.5 (column 2, lines 9-31). It is further taught that “It is particularly preferable for Me to represent aluminum and hence for n to represent 3”, which would result in aluminum triphosphate with 5-14 ammonium molecules (column 2, lines 27-28). In fire preventive materials comprising AlAPP, general contents are taught to be 10-50% by weight, but in suitable cases are taught to be lower, including 3-10% by weight (column 5, lines 7-11). The range 3-10% taught by von Bonin overlaps with the range of 0.5-4% taught in instant claim 12, which renders the range obvious (see MPEP § 2144.05 and discussion above). Additionally, if the textile product contains 40% add-ons as taught by Rapaport and the added composition comprises 3-10% AlAPP as taught by von Bonin, the final amount of AlAPP would be ≥1.2% by weight of the textile product, rendering obvious instant claim 28.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing date of the instant application, to have modified the invention rendered obvious by the teachings of Rapaport, Otsuki, and Hanuka, with the teachings of von Bonin to arrive at the invention of claim 12 because combining prior art elements according to known methods yields predictable results. One would be motivated to combine the teachings of von Bonin with those of Rapaport, Otsuki, and Hanuka because the latter three do not teach a concentration of aluminum ammonium polyphosphate in their compositions. An artisan would be motivated to use the ranges taught by von Bonin to modify the invention rendered obvious by Rapaport, Otsuki, and Hanuka to arrive at an optimized concentration of aluminum ammonium polyphosphate. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 12 and 28 in view of the teachings of Rapaport, Otsuki, and Hanuka, and further in view of the teachings of von Bonin.
Response to Arguments
The Applicant’s arguments, filed on 3 November 2025, have been fully considered but are not persuasive.
From para. 2 of pg. 10 to para. 2 of pg. 11, Applicant argues that the Hanuka reference does not teach a concentration of MgO above 1.5% and directs the reader to para. [0046-0047] and [0114]. This argument is not found to be persuasive because Hanuka teaches in para. [0030] that the antimicrobial substance in their matrix material is MgO or Mg(OH)2 and in some embodiments “the film comprises between 1% and 50% (w/w) of the antimicrobial substance”. In addition, the Applicant’s argument relies upon the embodiment with 1-2% NCC to assert that the concentration of MgO cannot be above 1%. However, para. [0037] of Hanuka teaches not only embodiments having 0.1-3% NCC, but also 0.1-15% NCC, which would result in higher concentrations than those asserted by the Applicant.
In para. 3 of pg. 11, Applicant argues that para. [0099] of the Otsuki reference teaches away from a MgO concentration above 2% due to alkaline issues. However, in the very next paragraph (para. [0100]), Otsuki teaches that the antiviral agent may be present in the solution up to 25%, but is not limited to this number, suggesting the concentration could be higher. Given the teachings of Hanuka state that antiviral activity may be observed at up to 50% MgO, an ordinary artisan would still be motivated to try using concentrations above 2% as the Applicant has argued.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references from the penultimate para. of pg. 11 to para. 2 of pg. 12, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In the case of the Rapaport and Otsuki references, the former relates to the treatment of textile fabrics to improve their properties while the latter teaches an antiviral agent which can be used in masks, filters etc. (Abstract). Mask and filters are considered relevant to textiles and the addition of antiviral agents to the textiles is considered to be a treatment that improves the properties of the textiles. Therefore, an artisan of ordinary skill would recognize that the teachings have relevance to each other. The Applicant’s argument that the ordinary artisan would not combine brominated flame retardants with MgO because the teachings of the Rapaport reference “cannot be extended beyond this particular class of metal oxides” is not found to be persuasive because there is not a “particular class” of metal oxides taught by Rapaport. Instead, Rapaport teaches the broad class of metal oxides and provides examples, but explicitly states that the examples “are not limited” to the species taught in para. [0092]. In view of the teachings of Otsuki and Hanuka that MgO, which is a metal oxide, can impart the added benefit of antimicrobial activity, an ordinary artisan would be motivated to combine the teachings.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the final para. of pg. 12 and para. 1 of pg. 13, Applicant argues that Otsuki does not teach the presence of MgO and analyzes their XRD patterns to support their conclusion. This is not found persuasive because Otsuki does teach the presence of MgO, for example in para. [0053] and claim 2.
In the final para. of pg. 13, Applicant argues that an ordinary artisan would have no reasonable expectation of success in achieving the claimed invention in view of the cited references. In response to applicant's argument that, specifically, the person of ordinary skill would have no “reasonable expectation that MgO could be efficiently protected in Rapaport’s aqueous carrier against hydration and settling”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The combination of water, MgO, an anionic polymeric surfactant, a hydroxyethyl cellulose thickener, and an acrylate binder has been rendered obvious above. The recognition that this mixture protects MgO from hydration and settling would also necessarily be achieved by one of ordinary skill in the art and the argument is therefore not found persuasive.
Finally, the Applicant argues in para. 1 of pg. 14 that “[t]here is no reasonable expectation in applying the suggested composition on fabrics/textiles” because Hanuka teaches the application of a composition comprising MgO to plastic surfaces. This is not found to be persuasive because Hanuka teaches application of the MgO-containing composition to “polymers, hybrid materials…fibers”, explicitly including cotton fibers, which is considered to be a fabric/textile material (para. [0120] and claims 48 and 59).
New Grounds of Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
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, 7-12, and 30-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 7, and 12 were amended to recite “at least 2% by weight” of MgO in the case of claims 1 and 7 and “at least 5% by weight” of MgO in the case of claim 12. New claims 30 and 31 further limit claim 1 to MgO weights of “at least 5%” and “at least 8.7%”, respectively. The original disclosure, specifically para. [0040], [0046], [0079], [0081], [0099-0100], [0109], [0174], [0187], and [0211] as referenced by the Applicant on pg. 8 of the Remarks filed on 3 November 2025, indicate concentrations that have an upper limit. For example, in para. [0046] the concentration of MgO is “at least 2%, e.g. up to 15% or 20%” and in para. [0081-0093] exemplary compositions contain MgO in the amounts of 5-20% or 9.9-13%. By amending the claims to have no upper limit, the scope of the claims has been broadened beyond the scope of the original disclosure and new matter has been introduced. “In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of ‘25%- 60%’ and specific examples of ‘36%’ and ‘50%.’ A corresponding new claim limitation to ‘at least 35%’ did not meet the description requirement because the phrase ‘at least’ had no upper limit and caused the claim to read literally on embodiments outside the ‘25% to 60%’ range, however a limitation to ‘between 35% and 60%’ did meet the description requirement.” See MPEP § 2163.05.III.
Claims 2-5 and 8-11 incorporate these new limitations and do not resolve issues with new matter, and therefore are also rejected.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this section can be found above.
Claims 1, 27, and 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over Rapaport (U.S. Patent Application Publication No. US 2016/0215443 A1, published on 28 July 2016) in view of Otsuki (European Patent Application No. EP 1661460 A1, published on 31 May 2006, provided by Applicant in IDS) and Hanuka (WIPO International Publication No. WO 2019/026071 A1, published on February 7, 2019, provided by Applicant in IDS).
Rapaport, Otsuki, and Hanuka are described above, and particularly relevant to claims 30-34, Hanuka teaches in para. [0030] that the antimicrobial substance in their matrix material may be MgO and in some embodiments “the film comprises between 1% and 50% (w/w) of the antimicrobial substance” and Rapaport teaches in claim 16 that the add-on percentage of their textile fabric is 4-40%.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Rapaport, Otsuki, and Hanuka to arrive at the invention of instant claims 1, 27, and 30-35 because applying known techniques to a known product ready for improvement yields predictable results. The known product ready for improvement in this instance is the flame retardant composition taught by Rapaport, which comprises water, metal oxide(s), the surfactant Tersperse 2735 (an anionic polymeric surfactant), the thickener hydroxyethylcellulose, the acrylic binder AC-170, and aluminum ammonium polyphosphate. While textiles coated with the composition of Rapaport are taught to be flame retardant, aesthetically pleasing, and durable, they are not taught to possess antiviral properties. Otsuki teaches that metal oxides, in particular magnesium and calcium oxide, possess antiviral properties. It would have been obvious to an artisan to select the metal oxides taught by Rapaport to be MgO or CaO and test the resulting formulation for its antiviral properties. Further, Rapaport does not teach the final concentration of water in their formulation F-2100, nor the concentration of metal oxides if used as synergists in their formulations. An artisan would be motivated to modify the teachings of Rapaport with the teachings of Otsuki and Hanuka because the latter two references teach concentrations of water and MgO in formulations that are effective in antiviral compositions. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1, 27, and 30-35 in view of the teachings of Rapaport, Otsuki, and Hanuka.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, whose telephone number is (571) 272-3396. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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, David Blanchard, can be reached at (571) 272-0827. 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.
/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619