Response to Amendment
Applicant’s arguments, filed on 11/10/2025, are based on a Declaration by Marc Hein. However, said Declaration is not on file.
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.
Unless stated otherwise, the basis for the following rejections can be found in the last Office action.
Claims 393-395, 398, 401-407 and 411-412 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/096694 A1 to Worley et al. for the reasons set forth in the Office action dated 6/10/2025. To reiterate, Worley et al. discloses a similar biocidal copolymer but fails to disclose its Mn. However, considering that the copolymer is incorporated into a biocidal coating composition that may be applied to a variety of surfaces using different coating techniques such as soaking, spraying and spreading (p. 20), it would have been obvious to a person of ordinary skill in the art, at the time the instant invention was filed, to adjust the Mn of the copolymer to be suitable for a selected coating method and/or coating thickness. That is to say that the properties of the coating composition, such as viscosity and the concentration of the copolymer, depend on the MW of the copolymer, wherein said MW can be readily controlled by a POSITA. “In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.)” See MPEP § 2144.05(II)(A). Claims 393-395, 398, 401-407 and 411-412 are unpatentable for being obvious.
Claims 399-340 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/096694 A1 to Worley et al. in view of WO 2019/246123 A1 to Ma et al.
Allowable Subject Matter
Claims 408-410 are 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: Worley et al., which represents the closest prior art of record, fails to disclose or suggest a comonomer that is a zwitterion.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive. Applicant alleges that the claimed polymer is prepared by RAFT, which tends to afford a low MW, whereas the prior art polymer is prepared by a conventional free radical polymerization, which gives a higher MW. It is noted, however, that the pending claims are not directed to a method of polymerization but a polymer as a product. Thus, the method of making is patentably immaterial. Second, a free radical polymerization does not always produce high-MW polymers. A POSITA knows well that the MW can be controlled by many ways: the reaction time, the reaction temperature, the amount of the initiator, the presence or absence of a chain-transfer agent, etc. Third, a POSITA is expected to know that a selected coating method and/or a desirable coating thickness require a certain range of viscosity which is directly related to the MW and the concentration of the polymer in the coating composition. For example, if lowering the concentration of a high-MW polymer causes the coating to be less effective (due to a low dose of the active material), a reduced MW (and hence an increased concentration) would be more favorable. A reduced MW is also preferred if the coating method requires a low viscosity. These are routine optimizations. See MPEP § 2144.05(II). Lastly, there is no evidence in the application that a MW less than 25 KDa produces a superior result.
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 VU ANH NGUYEN whose telephone number is (571)270-5454. The examiner can normally be reached M-F 8:00 AM-5:00 PM.
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/VU A NGUYEN/Primary Examiner, Art Unit 1762
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