DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed September 30, 2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Rejections - 35 USC § 102 (Maintained)
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.
Claims 1-3, 6, and 11-12 are rejected under 35 U.S.C. 102 as being as being anticipated by Khan et al. (US 5,302,385).
Claim 1 is anticipated because Khan discloses the preparation of an antimicrobial (abstract) polyurethane-iodine complex where an iodine source, polyglycol, a chain extender (water), and a catalyst are mixed thoroughly, followed by addition of isocyanate. The isocyanate reacts with the hydroxyl groups to give urethane linkages (Col 4, lines 32-44). This procedure is described in detail in Example IV where an iodine source is dissolved in water (reads on single phase) and mixed and the mixture is polymerized (in situ) to form the polyurethane-iodine complex (Example IV; Col 6, lines 16-27).
Claims 2-3 are anticipated because the iodine source is elemental iodine/ PVP-AA-I (Example IV; Col 6, lines 16-27).
Claim 6 is anticipated because the polyglycol disclosed at Col 4, lines 32-44 is preferably the polyol, polyether glycol (Col 3, lines 30-33).
Claim 11 is anticipated because the method disclosed includes a polyurethane catalyst (Col 4, lines 32-44).
Claim 12 is anticipated because the polyurethane polymerization reaction is conducted in a multi-step process to form the final PU-I complex with a pre-polymer formation stage (Col 4, lines 32-44).
Response to Arguments
Applicant's arguments filed 09/30/2025 have been fully considered but they are not persuasive.
Applicants argues at pg. 6 that there is no specific urethane-iodine complex identified or implied anywhere in Khan as Khan discloses an “N-vinylpyrrolidone-allyl alcohol copolymer – iodine complex that can be used as a component of the polyurethane to impart antimicrobial properties”.
The Examiner disagrees. Example IV of Khan explicitly states the “Preparation of Polyurethane-Iodine Complex” (Col 6, lines 16-27) which reads on the process to provide a polyurethane-iodine complex of claim 1. No specific structural requirements or bonding interactions are required by the instant claims and, therefore, the complex of Khan with polyurethane and iodine reads on the polyurethane iodine complex of the instant claims.
Applicant also argues on pg. 6 that the iodine complex of Khan is not made in-situ during the polyurethane reaction, as recited in claim 1.
The Examiner disagrees. The requirement of claim 1 is to generate a “polyurethane-iodine complex in situ”. The term “in-situ” is not explicitly defined in the specification and is broadly known in the art to mean a chemical process which occurs without isolating/purifying reaction intermediates. The preparation of the polyurethane-iodine complex of Khan meets the known definition of “in-situ” as the iodine source and other components are mixed together to form the final complex without the isolation/purification of any reaction intermediates.
Claim Rejections - 35 USC § 103 (Maintained)
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, 5-12, and 33 are rejected under 35 U.S.C. 103 as being as being obvious over Khan et al. (US 5,302,385).
Khan is believed to be anticipatory as described above, but in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, Khan will be interpreted as if it is not anticipatory.
In that case, Khan could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose to follow Example IV of the specification, as directed at Col 4, lines 32-44 where the mixture is polymerized (in situ) to form the polyurethane-iodine complex (Col 6, lines 16-27).
Nevertheless, claims 1-3, 6 and 11-12 are rendered prima facie obvious over the teachings of Khan, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., elemental iodine, polyether glycol, polyurethane catalyst, PU polymerization reaction) were known in the prior art (e.g., Khan) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a polyurethan-iodine complex) to one of ordinary skill in the art. MPEP 2143.A.
Claim 1 is rendered prima facie obvious because Khan discloses the preparation of an antimicrobial (abstract) polyurethane-iodine complex where an iodine source, polyglycol, a chain extender (water), and a catalyst are mixed thoroughly, followed by addition of isocyanate. The isocyanate reacts with the hydroxyl groups to give urethane linkages (Col 4, lines 32-44). This procedure is described in detail in Example IV where an iodine source is dissolved in water (reads on single phase) and mixed and the mixture is polymerized (in situ) to form the polyurethane-iodine complex (Example IV; Col 6, lines 16-27).
Claims 2-3 are rendered prima facie obvious because Khan discloses elemental iodine/ PVP-AA-I as the iodine source (Example IV; Col 6, lines 16-27).
Claim 5 is rendered prima facie obvious because Khan discloses the polymerization mixture includes a polyglycol, such as polyether glycol (Col 2, lines 33-35; Col 3, lines 38-42), an isocyanate, a chain extender, (Abstract) and can be polymerized with heat (Col 4, lines 22-23).
Claim 6 is rendered prima facie obvious because Khan discloses the polymerization mixture includes a polyglycol, such as polyether glycol (Col 2, lines 33-35; Col 3, lines 38-42) followed by addition of the isocyanate to initiate the polyurethane reaction (Col 4, lines 32-44; Example IV, Col 6, lines 16-27).
Claim 7 is rendered prima facie obvious because Khan discloses the isocyanate comprises an aliphatic diisocyanate (Col 3, lines 27-28).
Claim 8 is rendered prima facie obvious because Khan discloses the polymerization mixture includes a polyglycol, such as polyether glycol (Col 2, lines 33-35; Col 3, lines 38-42).
Claim 9 is rendered prima facie obvious because Khan discloses the chain extender can be a diol or diamine (Col 3, lines 46-56).
Claim 10 is rendered prima facie obvious because Khan discloses an alcohol or amine with a functionality of 2 or more, such as 1,4-butanediol (Col 3, lines 46-56).
Claim 11 is rendered prima facie obvious because Khan discloses the use of a polyurethane catalyst (Col 4, lines 1-2).
Claim 12 is rendered prima facie obvious because Khan discloses the polyurethane of the invention may be prepared by conventional bulk polymerization or solution polymerization techniques (Col 3, line 66-Col 4, line 44) in pre-polymer formation stages or a one process step (Col 5, line 30-Col 6, line 28).
Claim 33 is rendered prima facie obvious because Khan discloses the use of stannous octoate (a metallic tin compound) as the catalyst (Col 3, line 68 - Col 4, line 2).
Response to Arguments
Applicant's arguments filed 09/30/2025 have been fully considered but they are not persuasive.
Applicants argues at pg. 6 that Khan fails to teach producing a polyurethane-iodine complex in-situ.
These arguments are not found persuasive for the reasons discussed above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/ Examiner , Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612