DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
Claim Rejections - 35 USC § 103
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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zimmer et al. (US 2006/0142413).
Regarding claim 1, Zimmer discloses an antibacterial borosilicate glass having the following composition in relation to an oxide base: 40-80 mass % SiO2, 5-40 mass % B2O3, 0-25 mass % Na2O, 0-25 mass % K2O, 0-25 mass % CaO, 0-15 mass % MgO, and 0-30 mass % ZnO, see abstract. Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I.
Regarding claim 2, the reference renders obvious the content of SiO2 as greater than the content of B2O3, see above discussion and Zimmer abstract.
Regarding claim 3, the reference discloses the glass may contain 35-70 wt% of SiO2, which overlaps the claimed range [0069]; see MPEP 2144.05 I.
Regarding claims 4 and 5, the reference renders obvious the claimed amounts as well as the claimed ratio of Na2O and K2O, see above discussion and Zimmer abstract.
Regarding claim 6, the reference discloses the composition contains 0-5 mass% Ag2O, which overlaps the claimed range, see abstract and MPEP 2144.05 I.
Response to Arguments
Applicant's arguments filed June 8, 2026 have been fully considered but they are not persuasive.
Applicant argues that Zimmer does not disclose or suggest all of the claimed features of independent claim 1. Specifically, Applicant argues that unlike conventional elution mechanisms, the claimed glass composition exhibits permanent antimicrobial effects even without reacting with water. According to Applicant, the composition ratios recited in claim 1 achieve this property. Applicant further notes that advantageous effects are demonstrated by the 10 inventive examples versus the comparative examples that show degraded antimicrobial activity. Additionally, Applicant notes that the comparative examples fall within the ranges disclosed by Zimmer and that the reference fails to recognize the chemical durability of the glass addressed by the claimed features. As such, Applicant concludes that the critical differences in properties and effects could not have been easily predicted by Zimmer, and Applicant requests the withdrawal of the rejection. Examiner respectfully disagrees.
As discussed above and previously “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”; see MPEP 2144.05 I. “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range” or by showing that the prior art teaches away from the claimed invention; see MPEP 2144.05 III. In the instant case, Applicant argues that the disclosed ratios of claim 1 are critical for achieving the claimed properties. Examiner notes that claim 1 contains ranges for constituents of a glass composition but does not specify ratios.
Further, in order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). The examples cited from Applicant’s specification are for glass compositions made using a specific method, which is not claimed. Given the claims do not include these limitations, Applicant’s argument of criticality is not commensurate in scope with the claims.
Additionally, any assertion of unexpected results must be compared with the closest prior art, see MPEP 716.02(e). Applicant has failed to provide a comparison between the claimed range and the closest prior art. The cited examples also do not include values across the entire range for which Applicant is asserting criticality. For example, claim 1 requires SiO2 in an amount from 26 to 50 wt% whereas the inventive examples do not include value of SiO2 in an amount above 40 wt%. Similarly, the comparative examples do not include any data points for SnO, MgO and WO3.
While Applicant argues the prima facie case of obviousness regarding the claimed ranges is overcome by showing unexpected results, Applicant has failed to provide a sufficient number of tests both inside and outside the claimed ranges, the evidence of nonobviousness is not commensurate in scope with the claims and there is no comparison to the closest prior art.
In response to applicant's argument that the cited reference does not recognize or predict the critical properties and differences of the claimed glass composition, 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).
For the above reasons, the rejections under 35 U.S.C. 103 are respectfully maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/ Primary Examiner, Art Unit 1783
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