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 . Claims included in prosecution are claims 20, 22-27, 29, and 31.
Previous Rejections
Applicants' arguments in the Request for Continued Examination, filed 6/16/26, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election by Original Presentation
Newly submitted claims 49 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: newly submitted claims 49 read on a product and not a hydrophobic antimicrobial agent as originally elected by Applicant. Had the claims been originally presented a restriction requirement would have been made as follows.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 20, 22-27, 29, 31, and 48, drawn to a hydrophobic antimicrobial agent.
Group II, claim(s) 49, drawn to a product.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Falk (WO 2010/060652, Jun. 3, 2010) (hereinafter Falk) in view of Buri et al. (US 2017/0129782, May 11, 2017) (hereinafter Buri).
Falk discloses antimicrobial compositions comprising silver stearate (Des., Pg. 2). In a preferred embodiment of the invention, the silver or the silver compound is adsorbed on a water-insoluble, inert, non-hydratable or non-hydrated oxidic carrier (Des., Pg. 2). Preferred carriers include chalk and natural ground or precipitated calcium carbonates (Des., Pg. 2The compositions may be used as films (Des., Pg. 7). The antimicrobial compositions may be used as cleaning agents (Des., Pg. 7). The amount of silver is preferably 0.1 wt. % to 20 wt. %, and particularly preferably 0.2 wt. % to 2 wt. % (Ref. Claim 9).
Falk differs from the instant claims insofar as not disclosing wherein the resulting antimicrobial agent has moisture pickup susceptibility of 0.05 to 1 mg/g.
However, Buri discloses a process for making a calcium carbonate containing material, wherein the process allows for the provision of calcium carbonate materials with reduced moisture pick-up (Abstract). Well known mineral fillers are natural ground calcium carbonate (GCC) and precipitated calcium carbonate (PCC) (¶ [0002]). Several attempts have been made to improve the applicability of particulate mineral materials and especially calcium carbonate-containing mineral fillers. In this context, especially the residual moisture within the filler material and the moisture pick-up properties often are crucial. In the prior art, it was found that a moisture content above a minimum level associated with the carbonate mineral filler used in the composition for manufacturing a polymer film product can result in unwanted macroscopic size voids or holes in the film formed (¶ [0003]). Calcium carbonate-containing mineral filler materials may pick up moisture during storage, transportation, and/or processing which, in turn, may lead to the formation of voids in polymer compositions (¶ [0008]). The "moisture pick up susceptibility" or "moisture sorption susceptibility" of a material refers to the amount of moisture absorbed on the surface of said material within a certain time upon exposure to a defined humid atmosphere and is expressed in mg/g (¶ [0036]). The inventive calcium carbonate containing material preferably has a moisture sorption susceptibility of preferably of less than 1.0 mg/g, even more preferably of less than 0.5 mg/g and most preferred of less than 0.3 mg/g (¶ [0066]). The use of the calcium carbonate containing material as a filler material in polymer applications may be of particular advantage (¶ [0131]). The polymer material or composition optionally may comprise one or more additives such as antimicrobials (¶ [0156]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant claims, to have formulated the antimicrobial agent of Falk to have a moisture sorption susceptibility of preferably of less than 1.0 mg/g to most preferred less than 0.3 mg/g motivated by the desire to avoid technical drawbacks such as holes and voids in the resulting polymer composition and/or film as taught by Buri.
In view of this document, the common technical feature linking Groups I-II does not constitute a special technical feature as defined by PCT Rule 13.2, as it does not define a contribution over prior art for the reasons set forth above.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 49 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
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.
1. Claim(s) 20, 22, 24-27, 29, 31, and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Falk (WO 2010/060652, Jun. 3, 2010) (hereinafter Falk) in view of Buri et al. (US 2017/0129782, May 11, 2017) (hereinafter Buri).
Falk discloses antimicrobial compositions comprising silver and/or one or more silver compounds (Des., Pg. 2). Suitable silver compounds include silver stearate (satisfies silver salt of claim 20 and fatty acid of claim 26-27) (Des., Pg. 2). In a preferred embodiment of the invention, the silver or the silver compound is adsorbed on a water-insoluble, inert, non-hydratable or non-hydrated oxidic carrier (satisfies coating of claim 1) (Des., Pg. 2). The carrier material should have a particle size of less than 25 μm, preferably of less than 5 μm, particularly preferably less than 1 μm (satisfies particle size of claim 24-25) (Des., Pg. 2). The proportion by weight of silver or the silver compound, based on the weight of the carrier, is in the range of 0.1 wt. % to 75 wt. % (satisfies claim 29) (Des., Pg. 2). Preferred carriers include chalk and natural ground or precipitated calcium carbonates (satisfies mineral material of claim 20-22) (Des., Pg. 2). The composition may comprise copper octoate (satisfies claim 48) (Des., Pg. 7). The compositions may be used as films (Des., Pg. 7). The antimicrobial compositions may be used as cleaning agents (Des., Pg. 7). The amount of silver is preferably 0.1 wt. % to 20 wt. %, and particularly preferably 0.2 wt. % to 2 wt. % (Ref. Claim 9).
Falk differs from the instant claims insofar as not disclosing wherein the resulting antimicrobial agent has moisture pickup susceptibility of 0.05 to 1 mg/g.
However, Buri discloses a process for making a calcium carbonate containing material, wherein the process allows for the provision of calcium carbonate materials with reduced moisture pick-up (Abstract). Well known mineral fillers are natural ground calcium carbonate (GCC) and precipitated calcium carbonate (PCC) (¶ [0002]). Several attempts have been made to improve the applicability of particulate mineral materials and especially calcium carbonate-containing mineral fillers. In this context, especially the residual moisture within the filler material and the moisture pick-up properties often are crucial. In the prior art, it was found that a moisture content above a minimum level associated with the carbonate mineral filler used in the composition for manufacturing a polymer film product can result in unwanted macroscopic size voids or holes in the film formed (¶ [0003]). Calcium carbonate-containing mineral filler materials may pick up moisture during storage, transportation, and/or processing which, in turn, may lead to the formation of voids in polymer compositions (¶ [0008]). The "moisture pick up susceptibility" or "moisture sorption susceptibility" of a material refers to the amount of moisture absorbed on the surface of said material within a certain time upon exposure to a defined humid atmosphere and is expressed in mg/g (¶ [0036]). The inventive calcium carbonate containing material preferably has a moisture sorption susceptibility of preferably of less than 1.0 mg/g, even more preferably of less than 0.5 mg/g and most preferred of less than 0.3 mg/g (¶ [0066]). The use of the calcium carbonate containing material as a filler material in polymer applications may be of particular advantage (¶ [0131]). The polymer material or composition optionally may comprise one or more additives such as antimicrobials (¶ [0156]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant claims, to have formulated the antimicrobial agent of Falk to have a moisture sorption susceptibility of preferably of less than 1.0 mg/g to most preferred less than 0.3 mg/g motivated by the desire to avoid technical drawbacks such as holes and voids in the resulting polymer composition and/or film as taught by Buri.
Regarding the amount of copper/silver salt recited in instant claim 20, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Falk’s composition comprises silver or the silver compound in an amount of 0.1 wt. % to 75 wt, preferably 0.1 wt. % to 20 wt. %, and particularly preferably 0.2 wt. % to 2 wt. %. Accordingly, because the range recited in the instant claims lies inside the range disclosed by Falk, the range disclosed by Falk meets the instantly recited limitation.
Regarding the particle size recited in instant claims 24-25, as discussed above, Falk discloses wherein the carrier material should have a particle size of less than 25 μm, preferably of less than 5 μm, particularly preferably less than 1 μm. As such, since Falk prefers smaller particle sizes, it would reasonable for one of ordinary skill in the art to conclude that Falk’s particles would have average particle sizes that encompass the d(50) values recited in the instant claims.
Therefore, the combined teachings of Falk and Buri render obvious claims 20, 22, 24-27, 29, 31, and 48.
2. Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Falk (WO 2010/060652, Jun. 3, 2010) (hereinafter Falk) in view of Buri et al. (US 2017/0129782, May 11, 2017) (hereinafter Buri) and further in view of Budde et al. (US 2016/0271025, Sep. 22, 2016) (hereinafter Budde).
The teachings of Falk and Buri are discussed above.
The combined teachings of Falk and Buri differ from the instant claim insofar as not disclosing wherein the precipitated calcium carbonates used have aragonitic, vateritic or calcitic crystal forms.
However, Budde teaches cleaning compositions comprising calcium carbonate (Abstract). In an embodiment, the compositions further comprise natural ground calcium carbonate and/or precipitated calcium carbonate (¶ [0017]). Suitable crystal forms of precipitated calcium carbonate include vateritic, calcitic or aragonitic crystal forms (¶ [0029]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Falk in view of Buri discloses wherein the composition may comprise precipitated calcium carbonate. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Falk in view of Buri to comprise precipitated calcium carbonate in the vateritic, calcitic or aragonitic crystal forms, since these are known forms of precipitated calcium carbonate for use in cleaning compositions comprising calcium carbonate as taught by Budde.
Therefore, the combined teachings of Falk, Buri, and Budde render obvious claim 23.
Response to Arguments
Applicant’s arguments filed 6/16/26 have been fully considered but they are not persuasive for the reasons that follow.
Regarding allegations of unexpected results, with respect to the hydrophobicity, Applicant’s results do not appear unexpected. For instance, according to the data presented in Table 5, the comparative example that contained 12 wt.% actually outperformed several inventive samples that contained amounts less than or equal 10 wt.%. For example, it significantly outperformed a sample that contained 1 wt.% copper stearate. As such, one of ordinary skill in the art cannot conclusively point to the amount of copper stearate as being the sole factor contributing to the hydrophobicity of the claimed antimicrobial agent. Furthermore, the moisture susceptibility fluctuated significantly between samples that contained the same concentration of copper stearate. This would lead one of ordinary skill in the art to reasonably conclude that there appears to be another factor contributing to this fluctuation and resulting hydrophobicity other than the amount of copper stearate. With respect to the alleged issues with processability, increased agglomeration and the active remaining in the coater drum would appear to be an expected consequence of making the composition more concetrated. Applicant has not shown where there is a sharp discontinuity in performance at the claimed boundary. Furthermore, the Examiner points to the fact that these alleged findings of increased agglomeration are unquantified and conclusory. This, in combination with the issues with the hydrophobicity data, undermines the alleged criticality of the claimed range. As such, it is unclear if Applicant’s findings are indeed “unexpected”.
Regarding allegations of unexpected results, with respect to the antimicrobial reduction, Applicant’s results do not appear unexpected. For instance, Applicant did not compare their samples in Tables 6-7 to samples that did not contain their inventive compound or samples that contained the inventive compound but in amounts outside the claimed ranges. As such, one of ordinary skill in the art cannot truly appreciate whether the antimicrobial activity presented is truly unexpected or not. Copper or silver compounds such as silver stearate or copper octoate/octanoate are known actives in antimicrobial compositions as disclosed by the prior art above and would be expected to provide antimicrobial activity. Furthermore, the antimicrobial reduction fluctuated significantly between samples that contained the same concentration of silver/copper stearate and for similar incubation times. This would lead one of ordinary skill in the art to reasonably conclude that there appears to be another factor contributing to this fluctuation and resulting antimicrobial activity other than the amount of silver/copper stearate and as a result, one of ordinary skill in the art cannot conclusively point to the amount of silver/copper stearate as being the sole factor contributing to the antimicrobial activity. As such, it is unclear if Applicant’s findings are truly “unexpected”.
Regarding Applicant’s argument that one of ordinary skill in the art would not be motivated to select a “narrow concentration range” of the silver compound from the range disclosed by Falk, the Examiner submits that a reference is relied upon for all it teaches and suggests, even non-preferred embodiments. See MPEP § 2141.02 (VI). One of ordinary skill in the art would have sufficient motivation to select amounts within the claimed amounts where Falk discloses that amount of silver is preferably 0.1 wt. % to 20 wt. %, and particularly preferably 0.2 wt. % to 2 wt. %.
Regarding Applicant’s arguments that Falk is not concerned with the hydrophobicity of the antimicrobial agent, Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 20, 22-27, 29, and 31. When reading the preamble in the context of the entire claim, the recitation “hydrophobic antimicrobial agent” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Furthermore, “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation". See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). See MPEP § 2111.02 (II). Even in the case where an intended use is limiting, “a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See MPEP § 2111.02 (II). Thus, the antimicrobial composition of Falk of Buri reads fully on the instantly claimed “hydrophobic” antimicrobial agent whether it is concerned with this hydrophobicity or not.
Regarding Applicant’s argument that Falk allegedly does not discuss, make, or use films, the Examiner points to the fact that, as discussed above, Falk does indeed disclose wherein the composition may be in the form of a film. As such, one of ordinary skill in the art would have had sufficient motivation to formulate the antimicrobial agent of Falk to have a moisture sorption susceptibility of preferably of less than 1.0 mg/g to most preferred less than 0.3 mg/g as taught by Buri.
Regarding Applicant’s argument with respect to routine optimization, the rejection of record is not based on routine optimization.
Regarding Applicant’s argument that Falk’s disclosure of 0.2 wt% to 2 wt% is not applicable to claim 29, which recites 3 to 4 wt% of a copper salt and/or silver salt, as discussed above, the Examiner once more submits that a reference is relied upon for all it teaches and suggests, even non-preferred embodiments. See MPEP § 2141.02 (VI). Falk’s range of 0.2 wt. % to 2 wt. % is the particularly preferable range. Falk simultaneously discloses that amount of silver is preferably 0.1 wt. % to 20 wt. % which overlaps with the amount claimed in instant claim 29, as discussed above.
Regarding Applicant’s argument that one of ordinary skill in the art would not have been reasonably expected to modify the teachings of the prior art to arrive at the instantly claimed invention, Applicant is reminded that a skilled artisan is not an automaton, but a person having ordinary skill in the art and is capable of fitting teachings of multiple prior art documents together like pieces of a puzzle. See MPEP § 2143.03. As discussed above, Falk discloses antimicrobial compositions comprising silver compounds such as silver stearate which is adsorbed onto calcium carbonates and may be used as films, where the amount of silver is preferably 0.1 wt. % to 20 wt. %, and particularly preferably 0.2 wt. % to 2 wt. %. Buri discloses that a moisture sorption susceptibility of preferably of less than 1.0 mg/g to most preferred less than 0.3 mg/g for polymers/films formed from mineral fillers such as natural ground calcium carbonate (GCC) and precipitated calcium carbonate (PCC) is desirable to avoid technical drawbacks such as holes and voids. Therefore, a skilled artisan would be highly capable of combining the teachings of Falk and Buri to arrive at the claimed hydrophobic antimicrobial agent. Since the cited prior art teaches each of the instantly recited limitations, a prima facie case of obviousness is established. Accordingly, Applicant’s argument is unpersuasive and the obviousness rejection is maintained.
Regarding Applicants argument that Budde does not cure the alleged deficiencies of Falk, the Examiner submits that Budde cures any alleged deficiencies of Falk where Budde teaches that vateritic, calcitic or aragonitic crystal forms are known forms of precipitated calcium carbonate for use in cleaning compositions comprising calcium carbonate.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive and the rejection is maintained.
Conclusion
Claims 20, 22-27, 29, 31, and 48 are rejected.
Claims 32-47 and 49 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
