DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 October 2025 and 19 November 2025 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 48-52, 54, and 57-59 are rejected under 35 U.S.C. 103 as being unpatentable over Clevenger et al. (US 2010/0215643 A1, “Clevenger”).
With respect to claims 48, 51-52, 54, and 59, Clevenger discloses functionalized surfaces on which an anti-infective agent has been bound (i.e., deposited) where the surfaces include metals ([0010], [0012]). The anti-infective agents include quaternary ammonium dendrimers (i.e., a functional polymer originating from a quaternary ammonium salt) ([0058]). Anti-infective coating moieties are bonded to the functional group of a functionalized organophosphonate moiety (i.e., an organophosphorus compound originating from an unsaturated organophosphorus monomer) ([0014-0015]), and therefore the functional layer is the reaction product of the unsaturated organophosphorus monomer and the antimicrobial monomer. The phosphonate is bonded to the oxide surface of a metal ([0014]). The metal includes titanium and its alloys, stainless steel, cobalt chrome alloys, nickel, molybdenum, tantalum, zirconium, magnesium, and alloys including those metals ([0014]). The anti-infective material is used in medical devices ([0024]).
In light of the overlap between the claimed article and that disclosed by Clevenger, it would have been obvious to one of ordinary skill in the art to use an article that is both disclosed by Clevenger and encompassed with the scope of the present claims and thereby arrive at the claimed invention.
With respect to claim 49, Clevenger discloses the use of phosphonic acids (i.e., the organophosphorus compound comprises an organophosphonic acid) ([0033]).
With respect to claim 50, Clevenger discloses the organophosphonic acid has a hydrocarbon ligand of about 2 to about 40 carbon atoms ([0082]), overlapping the claimed organo group of C2-C12.
With respect to claim 57, the phosphonate is bonded to the oxide surface of a metal ([0014]) (i.e., is covalently bonded to an oxide layer through a phosphonate moiety).
With respect to claim 58, Clevenger discloses that the organophosphorus compound is attached to a native oxide on the metal surface ([0015)]. Clevenger does not disclose wherein the organophosphorus compound is deposited on the metal surface via anodization, however, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Clevenger meets the requirements of the claimed structure, Clevenger clearly meets the requirements of the present claims.
Allowable Subject Matter
Claim 56 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.
The following is a statement of reasons for the indication of allowable subject matter. Claim 56 contains allowable subject matter over the “closest” prior art Clevenger et al. (US 2010/0215643 A1, “Clevenger”).
As set forth above, Clevenger discloses the invention of claim 48. However, Clevenger does not disclose wherein the antimicrobial monomer comprises one of the compounds of claim 56. Therefore, claim 56 contains allowable subject matter.
Response to Arguments
Due to the cancellation of claim 53, the 35 U.S.C. 103 rejection of claim 53 is withdrawn.
Due to the amendment to claim 48, the 35 U.S.C. 103 rejections of claims 48-52, 54, and 56-59 over Porosa et al. (US 2016/0066579 A1, “Porosa”) are withdrawn. This is because while Porosa discloses the use of functional compounds, Porosa fails to disclose the use of functional oligomers or functional polymers as presently claimed. However, claims 48-52, 54, and 57-59 are newly rejected under 35 U.S.C. 103 for the reasons set forth above. Further, claim 56 is objected to for the reasons set forth above.
Applicant’s arguments filed 23 October 2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787