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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed March 24, 2026 in reply to the First Office Action on the Merits mailed September 24, 2025. Claims 1, 5, 6, 8-11, 21, and 22 have been amended; claims 2, 7, 19 and 20 have been canceled; and claims 23-25 have been newly added. Claims 4 and 11-18 have previously been withdrawn. Newly amended claim 6, and newly added claim 24 are drawn to non-elected subject matter, and are thus hereby also withdrawn. Claims 1, 3, 5, 8-10, 21-23, and 25 are under examination.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the First Office Action on the Merits mailed September 24, 2025 is hereby withdrawn.
Withdrawal of Prior Objections - Drawings
The drawings have been satisfactorily amended on corrected drawings sheets in compliance with 37 CFR 1.121(d). Therefore, the objections to the drawings presented in the First Office Action on the Merits mailed September 24, 2025 are hereby withdrawn.
Claim Objections
Claim 5 is objected to because of the following:
i). In claim 5, the expression “the first metal and the second metal are present in a first and a second amount and” should be “the first metal and the second metal are present in a first and a second amount, respectively, and”. There should be a comma between “of the particles” and “determines the strength”.
Appropriate correction is required.
Obviousness-Type 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, 3, 5, 8-10, 21-23, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 16-19 of copending Application No. 18/713,056.
Applicant’s elected subject matter is directed to an antimicrobial “material” comprising spherical particles with a diameter of at most 5 µm comprising a cellulose carrier at least partially coated with ruthenium oxide and silver oxide.
Claims 1-5 and 16-19 of copending Application No. 18/713,056 disclose an antimicrobial “material” comprising particles comprising a cellulose carrier at least partially coated with ruthenium oxide and silver oxide.
Although the claims at issue are not identical, they are not patentably distinct from each other because the disclosure of copending Application No. 18/713,056 provides that by “particle” is meant “all possible particle shapes and sizes” (paragraph 0042), including those with a length, diameter and/or circumference greater than 100 nanometers (nm) (paragraph 0028). This would include within the scope of the purview spherical particles; and a diameter “greater than 100 nm” is not patentably distinct from “a diameter of at most 5 µm”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5, 8-10, 21-23, and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 first stipulates in the preamble that the claimed “material” is “provided as an additive…for producing an antimicrobial effect” but then later claim 1 further stipulates that the first and second metals “establish half cells which are short circuited in presence of water and oxygen, and thus develop an antimicrobial effect”. One of ordinary skill in the art cannot definitively ascertain whether or not the claimed material itself necessarily contains water and oxygen, or, alternatively, whether the composition in which the claimed “material” is employed as an additive in an intended use is necessarily limited to aqueous compositions that contain both water and oxygen, or whether compositions that contain water and oxygen are entirely optional, but when employed as an additive in such compositions, the effect is as described.
Claim 9 stipulates in a wherein clause that the silver semiconductor comprises “at least one silver oxide, silver hydroxide, silver halogenide, or silver sulfide, or a combination of silver and silver oxide or silver chloride”. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter. First, with respect to the “at least one” of silver oxide, silver hydroxide, silver halogenide or silver sulfide, does this mean that only one of these recited elements can be present, or one or more (i.e. a combination)? If the combination of silver with silver oxide or silver chloride is present, does this mean that the “at least one of silver oxide, silver hydroxide, silver halogenide, or silver sulfide” is not necessarily present or is in fact excluded? Or what?
Claims 3, 5, 8-10, 21-23, and 25 are (also) indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 112(d)
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 5 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 5, which depends from claim 1, stipulates in a wherein clause that “the first metal and the second metal are present in a first and a second amount”, and that “the amount” of each metal “determines the strength of the antimicrobial effect”. One of ordinary skill in the art would no doubt already understand this from claim 1. Indeed, in claim 1, there is without question an amount of the first metal and an amount of the second metal, and the presence of the metals in these amounts is what produces the antimicrobial effect. Hence, claim 5 does not appear to further limit claim 1 from which it depends.
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.
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, 3, 5, 8-10, 21-23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Luong (U.S. Patent Application Pub. No. 2020/0062865), in view of Van Loi et al. (Front Microbiol. 2018; 9: Article 3037).
Applicant Claims
Applicant’s elected subject matter is directed to an antimicrobial “material” comprising spherical particles with a diameter of at most 5 µm comprising a cellulose carrier at least partially coated with ruthenium oxide and silver oxide.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Luong discloses e.g. an antimicrobial “material” comprising spherical particles with a diameter of e.g. 3-10 nm comprising a cellulose carrier at least partially coated with antimicrobial agents (see e.g. abstract; paragraphs 0009, 0031, 0034).
Van Loi et al. disclose the AGXX antimicrobial coating that can be attached to various carrier surfaces including to e.g. glass and organic polymers, which may be in particle form; is composed of two transition metal oxides, ruthenium and silver; and provides a potent antimicrobial effect against a broad range of Gram-positive and Gram-negative bacteria, including antibiotic resistant nosocomial pathogens.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Luong does not explicitly disclose that the antimicrobial agent coating the cellulose particles comprises ruthenium oxide and silver oxide. This deficiency is cured by the teachings of Van Loi et al.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Luong and Van Loi et al., outlined supra, to devise Applicant’s presently claimed composition.
Luong discloses e.g. an antimicrobial “material” comprising spherical particles with a diameter of e.g. 3-10 nm comprising a cellulose carrier at least partially coated with antimicrobial agents, for use in e.g. a wound dressing. Since Van Loi et al. disclose that the AGXX antimicrobial coating can be attached to various carrier surfaces including to e.g. glass and organic polymers, which may be in particle form; is composed of two transition metal oxides, ruthenium and silver; provides a potent antimicrobial effect against a broad range of Gram-positive and Gram-negative bacteria, including antibiotic resistant nosocomial pathogens; and thus has application in wound dressings; one of ordinary skill in the art would thus be motivated to employ the AGXX antimicrobial coating as the antimicrobial coating on the Luong cellulose particles, with the reasonable expectation that the resulting particles can be applied to a wound dressing to successfully provide a potent antimicrobial effect against a broad range of Gram-positive and Gram-negative bacteria, including antibiotic resistant nosocomial pathogens.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
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 at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed March 24, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “Van Loi and Guridi are both completely silent on semiconductive ruthenium compounds or semiconductive silver compounds as claimed” and provide no guidance that the antimicrobial effectiveness of AGXX could be improved “by the presence of ruthenium as a semiconductor in oxidation state IV or VI compared to the presence of ruthenium in oxidation state 0”.
The Examiner, however, would like to point out the following:
1. Van Loi, the cited secondary reference, expressly teaches that AGXX comprises a ruthenium compound and a silver compound, is made in part by oxidizing Ru(III) via NaOCl to form RuO4, then reducing RuO4 to either Ru or RuOx (see page 3, right column, first paragraph). For the compound RuO4, one of ordinary skill in the art would immediately recognize that Ru is in the VI oxidation state. Ru(VI) reduction to RuOx would thus include e.g. RuO2, in which Ru is in the IV oxidation state. In other words, Van Loi provides that the ruthenium compound in AGXX is e.g. RuO2, in which Ru is in the IV oxidation state.
2. Guridi, which was not cited in the prior art rejection at issue here, but which has been cited by Van Loi, teaches that AGXX effectively functions as a galvanic cell, and comprises a silver/silver chloride micro anode and expressly refers to this anode as “semiconducting” (see page 8 of Guridi, right column, first paragraph). Clearly, then, the silver compound in AGXX is a semiconductor.
3. AGXX is an antimicrobial coating. As noted, supra, Van Loi provides that the ruthenium compound can be RuOx or Ru metal, and RuOx can be e.g. RuO2. As anyone of ordinary skill in the art would readily know, RuO2 is a more potent antimicrobial agent than Ru metal. For this reason, one of ordinary skill in the art would thus be more motivated to employ RuO2, in which Ru is in the IV oxidation state.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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