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
Previous Rejections
Applicants' arguments, filed 10/27/25 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim recites “to kill at least 90% microbes in contact with the coated surface,” which is likely intended to recite “to kill at least 90% of microbes in contact with the coated surface.” Appropriate correction is required.
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.
Claims 1-3, 9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Akamine et al. (JP2011136977A, English translation provided for citations, hereinafter referred to as “Akamine”) in view of Willis et al. (USP 7,737,224).
Akamine teaches a composition for virus infection (i.e., microbes) inhibiting paint (i.e., an antimicrobial paint) (Abstract) wherein said paint may be solvent-based, water-based, or a resin paint (e.g., polyester resin paint, epoxy resin paint) ([0061] and [0063]), which reads on the claimed comprising a carrier fluid selected from water, solvents, or liquid polymers. Akamine teaches that the composition for virus infection preventing paint comprises an RNA virus infection-preventing agent having at least one substituent of general formula (1) wherein R2 may be a sulfonic acid group ([0009]) including polystyrene sulfonic acid ([0022]) (i.e., a vinyl aromatic monomer bearing sulfonic acid groups), and further teaches that the virus infection inhibiting compound may be a copolymer of a general formula (1) wherein R2 may be a sulfonic acid group and a monomer copolymerizable with the monomer that preferably forms a block copolymer ([0034]). Akamine further teaches that the amount of a monomer having the structure of general formula (1) wherein R2 may be a sulfonic acid group is preferably 5% by weight of more ([0036]), which overlaps with the claimed range for an amount of vinyl aromatic monomer that is selectively sulfonated such that 10 to 100 mol% of the monomer units in the B block bear sulfonic acid groups. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Akamine suggests, that the overlapping portion is a useable range for an amount of a sulfonated vinyl aromatic monomer (e.g., styrene sulfonic acid, see [0022] of Akamine) within a block copolymer such that the moiety is present in a sufficient amount to block or inhibit viruses (i.e., microbes) ([0036]). Akamine further teaches that the virus infection inhibiting compound may comprise a carrier which may be a polyurethane resin or alkyd resin ([0056]), which read on the claimed binder. Akamine further teaches that the virus infection inhibiting paint composition may comprise an ultraviolet absorber additive ([0059]). Akamine further teaches that the virus infection prevention paint may be applied by roller coating, spray coating, brush coating, dip coating ([0074]). Akamine further teaches that the virus infection prevention paint may be coated onto kitchen goods (i.e., indoor objects) or building interior materials (i.e., indoor structures) ([0071]-[0072]).
Akamine teaches that the virus infection inhibiting composition is preferably a block copolymer ([0034]), but is silent towards the configuration of said block copolymer or the distribution of monomers along the backbone.
Willis teaches a sulfonated block copolymer comprising at least two polymer end blocks (A block) and at least on interior block (B block) (see abstract of Willis), wherein each B block is susceptible to sulfonation and the A block is selected from one or more segments of polymerized (i) para-substituted styrene monomers, (ii) ethylene, (iii) alpha olefins of 3 to 18 carbon atoms; (iv) hydrogenated 1,3-cyclodiene monomers, (v) hydrogenated monomers of conjugated dienes having a vinyl content less than 35 mol percent prior to hydrogenation, (vi) acrylic esters, (vii) methacrylic esters, and (viii) mixtures thereof; and each B block is selected from polymerized vinyl aromatic monomers selected from (i) unsubstituted styrene monomers, (ii) ortho-substituted styrene monomers, (iii) meta-substituted styrene monomers, (iv) alpha-methylstyrene, (v) 1,1-diphenylethylene, (vi) 1,2-diphenylethylene and (vii) mixtures thereof (see abstract). Willis further teaches that the configuration of the A and B blocks A-B-A and A and B are as defined above (see column 7, lines 54-60), and may also be configured as A-D-B-D-A or A-B-D-B-A and mixtures thereof, wherein each A block and each D block is a polymer block resistant to sulfonation and the D block may be a hydrogenated polymer or copolymer of a conjugated diene selected from isoprene, 1,3-butadiene and mixtures thereof (column 8, lines 51-50). Willis also discloses that it was known that the materials disclosed in Willis are useful due to their known antimicrobial properties (column 28, lines 55-60). Willis and Akamine are considered analogous art because they are both directed to sulfonated copolymers suitable for coatings or paints. It would have been obvious to a person having ordinary skill in the art to improve the sulfonated styrene copolymer taught by Akamine with the polymer configuration taught by Willis because Willis teaches that the preparation of styrenic and sulfonated styrenic block copolymers having a central sulfonated block are known in the art to balance the hydrophobic/hydrophilic properties of each block, which allows for tuning of the properties of the polymer (column 4, lines 14-20 of Willis) and also to improve dimensional stability of coatings or films formed thereof (column 44, lines 30-35 of Willis) while allowing for application in wet or aqueous environments without the need for crosslinking (column 5, lines 8-11). Because the antimicrobial properties of the composition taught by Akamine result from the sulfonic acid moieties of the polymer coating, a coating having the degree of sulfonation taught by Akamine (Akamine teaches that the amount of a monomer having the structure of general formula (1) wherein R2 may be a sulfonic acid group is preferably 5% by weight of more such that virus inhibition may be achieved ([0036] of Akamine)) along with the block copolymer configuration of Willis would also be expected to have comparable antimicrobial activity. Furthermore, a person having ordinary skill in the art would reasonably look to Willis to choose a block copolymer for the composition of Akamine due to (1) the explicit disclosure of Akamine that a block copolymer configuration is preferred ([0034] of Akamine), and (2) Willis teaches a block copolymer comprising the at least one substituent of general formula (1) wherein R2 may be a sulfonic acid group ([0009]) including polystyrene sulfonic acid ([0022]) as required by Akamine and Willis further motivates the combination by contemplating improvements of mechanical properties over alternative sulfonated copolymers (as described above, also see column 4, lines 14-20; column 44, lines 30-35; column 5, lines 8-11 of Willis) and furthermore because Willis contemplates utility in antimicrobial applications (column 28, lines 55-60 of Willis), which is the main thrust of the block copolymer of Akamine.
Akamine further teaches that the virus infection inhibiting compound may be present in a paint in an amount of 0.01 to 20% by weight ([0066]), which overlaps with the claimed range for an amount of the selectively sulfonated negatively-charged copolymer for a surface to have a surface pH of < 3.0. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Akamine suggests, that the overlapping portion is a useable range for an amount of a sulfonated block copolymer within a composition for antimicrobial/antiviral applications. However, Akamine is silent towards the surface pH of the virus infection inhibiting compound or paints comprising the same.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Akamine as modified by Willis teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. surface pH, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Regarding the limitation “wherein the selectively sulfonated negatively-charged block copolymer is present in the paint composition in a sufficient amount for a surface coated with the antimicrobial paint composition to have a coating of selectively sulfonated negatively-charged block copolymer of > 1 µm to kill at least 90% [of] microbes in contact with the coated surface within 120 minutes,” Akamine teaches that the virus infection prevention paint may be applied at a thickness of 200µm or less ([0067]), more preferably 100µm or less which substantially overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Akamine suggests, that the overlapping portion is a useable range for a thickness of a virus infection prevention or antimicrobial paint such that the antimicrobial effect and coating properties are balanced ([0067]). While Akamine also discloses various examples of virus reduction effect of 95% or more ([0084]) in 1 hour ([0083]), the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the antimicrobial efficacy appears to be related to the surface pH ([049] of the instant specification, which is furthermore related to the pH on the contact surface that results from surface bound moieties (i.e., sulfonic acid groups), [014] of the instant specification). Therefore, the claimed effects and physical properties, i.e. antimicrobial efficiency (% of microbes killed in a given amount of time), would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Akamine teaches that the virus infection prevention paint may be applied at a thickness of 200 µm or less, more preferably 100 µm or less ([0067]) which substantially overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Akamine suggests, that the overlapping portion is a useable range for a thickness of a virus infection prevention or antimicrobial paint such that the antimicrobial effect and coating properties are balanced ([0067]). While Akamine also discloses various examples of virus reduction effect of 95% or more ([0084]) in 1 hour ([0083]), the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the antimicrobial efficacy appears to be related to the surface pH ([049] of the instant specification, which is related to the pH on the contact surface that results from surface bound moieties (i.e., sulfonic acid groups), [014] of the instant specification). Therefore, the claimed effects and physical properties, i.e. antimicrobial efficiency (% of microbes killed in a given amount of time), would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Nonstatutory double patenting rejection
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, 9 and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8, 10 and 12-19 of copending Application No. 17/995,854 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite an antimicrobial spray composition comprising: a carrier fluid selected from water, solvents, liquid polymers, and combinations thereof; 5 up to 10 wt.% of a binder; 0.1-5 wt.% of a sulfonated polymer. The copending claims also recite an antimicrobial paint composition comprising carrier fluid selected from water, solvents, liquid polymers or waxes, selectively sulfonated negatively-charged block copolymer, binder and additives wherein the paint composition provides a coating of >1micron to kill at least 90% microbes in contact with the coated surface. The copending antimicrobial composition comprising sulfonated polymer reads on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s arguments are moot in view of new rejections made above. The double patenting rejections are maintained pending submission of terminal disclaimer.
Action is final
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.
Correspondence
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612