FINAL ACTION
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 .
Status of the Claims
This action is in response to papers filed 03/26/2026 in which claims 2-3, 5, 7, and 16-18 were canceled; claims 10-15, 19-20, and 23 were withdrawn; claims 1, 4, 8, 21 and 22 were amended; and claim 24 was newly added. All the amendments have been thoroughly reviewed and entered.
Claims 1, 4, 6, 8-9, 21, 22 and 24 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejections and/or objections not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Modified Rejection
Necessitated by Applicant’s Claim Amendments
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-6, 8, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al (Chemical Engineering Journal, 17 November 2015, 287(1): 482-491; cited in IDS filed 11/17/2022).
Regarding claims 1 and 4-5, Song teaches a polymeric ionic liquid (PIL) containing imidazolium backbones (hb-Plm+Cl), wherein the PIL contains two repeating units at about 50% mol each and one of the repeating unit has a formula in which x=1; Y- is a counterion; o=1; p=1; q=0; r=2; t’=0; and each of D and D’ is a biodegradable functional group of ester (Abstract; pages 483-485; Scheme 1 and Fig. 1).
Regarding claim 6, as discussed above, Song teaches the PIL contains two repeating units at about 50% mol each and one of the repeating units has a formula in which x=1; Y- is a counterion; o=1; p=1; q=0; r=2; t’=0; and each of D and D’ is a biodegradable functional group of ester (Abstract; pages 483-485; Scheme 1 and Fig. 1).
Regarding claim 8, as discussed above, Song teaches of the repeating units in the PIL has a formula in which x=1; Y- is a counterion; o=1; p=1; q=0; r=2; t’=0; and each of D and D’ is a biodegradable functional group of ester (Abstract; pages 483-485; Scheme 1 and Fig. 1).
Regarding claim 24, Song teaches each of D and D’ is a biodegradable functional group of ester (pages 483-485; Scheme 1 and Fig. 1), thereby the PIL of Song contains a bivalent biodegradable functional group of ester.
As a result, the aforementioned teachings from Song are anticipatory to claims 1, 4-6, 8, and 24 of the instant invention.
Response to Arguments
Applicant's arguments filed 03/26/2026 have been fully considered but they are not persuasive.
Applicant argues that “the examiner has suggested that x = 1, but also that o = 1. This cannot be. If x = 1, then the non-biodegradable portion of formula I of the claim 1 is absent (the portion below), so "o" cannot be present.” (Remark, bottom of page 13 to page 14).
In response, the Examiner disagrees. Claim 1 recites x is from 0.01 to 1.0 and thus, encompassed x=1. In addition, claim 1 also recites that o is from 0 to 10 and thus, encompassed o=1. In this respect, claim 1 encompassed a polymer or oligomer in which the non-biodegradable portion of
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is not required to be present in the formula I. This is evident by dependent claim 9, in which polymer d) does not contain the non-biodegradable portion of
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.
Accordingly, the teaching from Song with respect to the PIL containing two repeating units at about 50% mol each and one of the repeating unit has a formula in which x=1; Y- is a counterion; o=1; p=1; q=0; r=2; t’=0; and each of D and D’ is a biodegradable functional group of ester (Abstract; pages 483-485; Scheme 1 and Fig. 1), is proper and remained anticipatory to claim 1 of the instant invention.
Applicant argues “[a]mended claim 1 requires multiple repeating units that consist only of a single imidazolium species with one (or possibly two) biodegradable linking species. Further, it is noted that D and D' (when the latter is a biodegradable species)_must be present between the imidazolium of the repeating unit and a second imidazolium attached to the end of said repeating unit. That is, D and D' must be present between any two imidazolium species.” Thus, Applicant alleges that this would not be possible in Song. (Remarks bottom of page 14 to top of page 17).
In response, the Examiner disagrees. As discussed above, Song teaches PIL containing two repeating units at about 50% mol each and one of the repeating unit has a formula in which x=1; Y- is a counterion; o=1; p=1; q=0; r=2; t’=0; and each of D and D’ is a biodegradable functional group of ester (Abstract; pages 483-485; Scheme 1 and Fig. 1). As shown in Fig.1 of Song below, the PIL of Song contains two ester functional groups that were introduced to the imidazolium backbone via β-addition, thereby meeting the claimed D is a biodegradable functional group and D’ is a biodegradable functional group as recited in claim 1. Accordingly, the teachings from Song as discussed in the pending 102 rejection supra remained proper and anticipatory to claim 1 of the instant invention.
Applicant argues that Song does not teach the newly added claim 24, which recites “each of D and D' is a bivalent biodegradable functional group.” (Remarks, page 17, 1st paragraph).
In response, the Examiner disagrees. As discussed above and in the pending 102 rejection, Song teaches each of D and D’ is a biodegradable functional group of ester (pages 483-485; Scheme 1 and Fig. 1), thereby the PIL of Song contains a bivalent biodegradable functional group of ester.
As a result, for at least the reasons discussed above, claims 1, 4-6, 8, and 24 remained rejected as being anticipated by the teachings from Song in the pending 102 rejection as set forth in this office action.
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.
Claim 1, 4, 6, 8-9, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18727019 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘019 significantly overlap with the subject matter of the instant claims i.e., the claims in the copending application ‘019 being a method of use, but uses the same composition containing the same polymer as the instant invention, in which the polymer is
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, wherein n is 2-10, x is about 15%, and the number average molecular weight is from 1,000 to 2,000 Daltons.
It is noted that the "[n]onstatutory Double Patenting Rejection Based on Equitable Principles" discussed in [MPEP §804] paragraph II.B.3 below should be considered. Cf. Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003) (rejecting claims to methods of use over claims to compound based on unjustified timewise extension rationale).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18727019.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 03/26/2026 have been fully considered but they are not persuasive.
Applicant argues by requesting the double patenting be held in abeyance until the claims are otherwise found to be allowable. (Remarks, page 17).
In response, it is noted that Applicant's request to hold the double patenting rejection in abeyance is not a proper response because a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the double patenting rejection over copending application ‘019 is maintained for reasons of record and pending the filing of a terminal disclaimer.
New RejectionsNecessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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.
Claim 24 is 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.
Claim 24 introduces new matter as the claims recite the limitations: “D an D’ is a bivalent biodegradable functional group.” There is no support in the specification for the D and D’ to be generically a bivalent biodegradable functional group.
Nowhere in the specification does it disclose or provide support for the generically claimed “D an D’ is a bivalent biodegradable functional group” or in other words, the genus of “bivalent biodegradable functional group.”
Thus, Applicant does not have possession of the claimed genus of “bivalent biodegradable functional group” as it pertains to D an D’. MPEP §2163.06 states: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendment.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 24 as amended at the time of filing of the instant application.
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.
Claim(s) 1, 4, 6, 8, 21, 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al (Chemical Engineering Journal, 17 November 2015, 287(1): 482-491; cited in IDS filed 11/17/2022), and further in view of Zheng et al (ACS Applied Materials & Interfaces, 2016, 8: 12684-12692).
The polymer or oligomer of claims 1, 4-6, 8, and 24 is discussed above from Song, said discussion being incorporated herein its entirety.
Regarding claims 21 and 22, Zheng teaches poly(ionic liquids) containing imidazolium-type ionic liquid monomers or polymers containing an imidazolium backbone are known to exhibit biocidal properties against a broad spectrum of bacteria and are widely used as disinfectants and cleaning agents in food and pharmaceutical industries and in hospitals (Abstract; Introduction; pages 12684-12685 and 12690).
It would have been obvious one of ordinary skill in the art to incorporate the polymeric ionic liquid (PIL) containing imidazolium backbones (hb-Plm+Cl) of Song in an antimicrobial formulation used for disinfectants and cleaning agents, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Zheng established that poly(ionic liquids) containing imidazolium-type ionic liquid monomers or polymers containing an imidazolium backbone are known to exhibit biocidal properties against a broad spectrum of bacteria and are widely used as disinfectants and cleaning agents in food and pharmaceutical industries and in hospitals. The polymeric ionic liquid (PIL) containing imidazolium backbones (hb-Plm+Cl) of Song encompassed the poly(ionic liquids) containing imidazolium-type ionic liquid monomers or polymers containing an imidazolium backbone and thus, would have been reasonably expected to have antimicrobial properties and be useful as disinfectants and cleaning agents in cleaning, sanitizing, and disinfecting articles in the food and pharmaceutical industries and in hospitals, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Allowable Subject Matter
As previously discussed, claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, as well as, overcoming the double patenting rejection (as set forth in this office action) by filing a terminal disclaimer.
Conclusion
Claims 1, 4, 6, 8, 21, 22 and 24 are rejected.
Claim 9 is objected.
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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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