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 .
Election/Restrictions
Applicant’s election without traverse of monomer 2 in the reply filed on 2025 September 22 is acknowledged. A search of the monomers has been extended to all of the monomers of claim 19.
Elected monomer 2 is free of the prior art of record. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement among the monomers of claim 19, as set forth in the Office action mailed on 2025 July 30, is hereby withdrawn and the other monomers are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2023 March 21, 2024 May 17, 2024 May 29, 2024 August 5, 27 January 25, 2025 May 12, and 2025 October 22 were submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-12, 14, and 16-18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: the structural relationship between a quaternary ammonium group and an acrylate or methacrylate group. The claims do not specify how these two functional groups are connected to each other.
Claims 13-15 recite structures containing an ammonium group and an acrylate or methacrylate group. There is insufficient basis for these structures because claim 1 does not specify how the two groups are connected.
In claim 1, the phrases in parentheses are interpreted as “such as” language and do not limit the claim limitation to which they refer. The text “(by vortexing)” does not limit how the composition is suspended. The text “(Nutrient broth, BD DIFCO, 8 g/L)” does not limit the both-type medium. The text “(λ = 600 nm)” does not limit the absorbance wavelength.
Claim 5 recites the limitation that 0.005 g in method 2 or 0.02 g in method 3 of antibacterial composition is added in the method. There is insufficient antecedent basis for this limitation in the claim because claim 1 specifies method A specifies that exactly 0.015 g of the antibacterial composition is added.
Claim 17 recites a limitation that the antibacterial composition has an acute percutaneous toxicity LD50 of 1000 mg/Kg or more. There is insufficient basis for this limitation because claim 1 recites an acute oral toxicity.
Claims 13-15 and 19 recite cationic monomers with no corresponding anion. What anion is neutralizing the cationic ammonium charge?
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-3, 5, 7-13, and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PING (Journal of Membrane Science, 2019, 570-571, 286-293). Ping describes that QAC has antibacterial activity of 93.3% against S. aureus and 98.5% against E. coli (page 287, figure 1; page 288, column 2, paragraph 3 to page 289, column 1, paragraph 1 page 290, column 2 paragraph 2 page 291, column 1, paragraph 1). The language starting with “which is measured b” is considered non-limiting with respect to patentability because claims 1-18 are considered product by process claims. Due to claim 1 not specifying the relationship between the quaternary ammonium group and acrylate or methacrylate group, QAC anticipates claim 1. In regard to claim 13, the following examined definitions apply: R4 is H; L1 is ethylene; and R1, R2, and R3 are each Me.
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Claim(s) 1-3, 5, 7-14, and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WANG Dental Materials, 2017, 33, 1127-1138). Wang describes compounds DMADDM and DMAHDM, which have antibacterial against S. mutans, S. sanguis, S. gordinii, and E. faecalis by 99.9%(page 1129, figure 1; page 1131, figure 3; page 1132, section 3 to page 1133, column 2, paragraph 1). Due to claim 1 not specifying the relationship between the quaternary ammonium group and acrylate or methacrylate group, QAC anticipates claim 1. In regard to claim 13, the following examined definitions apply: R4 is Me; L1 is ethylene; and R1 and R2 are each Me; and R3 is C12H24 or C16H32.
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Double Patenting
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 and 3-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-18 of copending Application No. 18274356 (reference application; US PGPub 20240108001). Although the claims at issue are not identical, they are not patentably distinct from each other because monomer 1 of claim 17 of 18247356 is the same in both examined cases and is encompassed by claim 1 of the examined application.
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-19 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: LEE (WO 2022075763, published 2022 April 14; US PGPub 20230120607, published 2023 April 20) describes compound 2-2’ (page 22 of foreign document; page 10, paragraphs [0152]-[0153] of US PGPub). This compound does not anticipate monomer 2 because the WO reference is disqualified as prior art because the inventive entity is a subset of the examined inventive entity and is published 2022 April 14, which is within a year of the effective filing date of 2022 June 29.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699