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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/5/2026 has been entered.
Status of the Claims
Claims 1-8, 10-16, and 18-20 are pending. Claims 9 and 17 are cancelled. Claims 1-7, 15-16, and 18-20 are withdrawn from consideration. Claims 8 and 10-14 are under current examination.
Withdrawn Claim Rejections
All rejections pertaining to claims 9 and 17 are moot because the claims are cancelled in the amendments to the claims filed 5/4/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
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 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 8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yeung (U.S. Patent No. 10,842,148, issue date: 11/24/2020, of record), in view of Lai (U.S. Patent Application No. 2017/0275472, publication year: 2017) and Rolfe (U.S. Patent No. 10,278,390, issue date: 5/7/2019, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 8, Yeung teaches colloidal antimicrobial and anti-biofouling coatings comprising a colloidal suspension of hollow, round particles comprising at least two or more polymers. The hollow round particles can contain cores of active antimicrobial cores (col. 5 lines 39-59). The particle size can be controlled with the use of a stabilizer such as polyvinyl alcohol and/or polyethylene glycol derivatives and polymers with PVA or PEG groups (col. 5 lines 60-62). The polymers may include active polymers such as polyethyleneimine (PEI), poly(diallyl dimethyl ammonium chloride) (PDDA) , polyhexamethylene biguanide (PHMD) , chitosan ( CHIT), polyquaternium ( PQAC ) , and polyvinyl alcohol (PVA) . The active polymers are defined as those having low adhesion properties and/or beneficial antimicrobial properties (col. 6 lines 10-18). The coating may be applied to non-porous surfaces such as steel, glass, and polyvinyl chloride surfaces (Claims 12 and 13). The coating is designed to be safe and effective for industrial, commercial, municipal and household usage (col. 6 lines 8-9).
Regarding claims 10 and 11, Yeung teaches that polymer chains containing primary, secondary and/or tertiary amines and zwitterionic groups are suitable for formation of the hollow particles (col. 5 lines 46-50).
Regarding claim 12, Yeung teaches that the polymers forming the hollow particle may include active polymers such as polyethyleneimine (PEI), poly(diallyl dimethyl ammonium chloride) (PDDA) , polyhexamethylene biguanide (PHMD) , chitosan ( CHIT), polyquaternium ( PQAC ) , and polyvinyl alcohol (PVA) . The active polymers are defined as those having low adhesion properties and/or beneficial antimicrobial properties (col. 6 lines 10-18).
Regarding claim 13, Yeung teaches that the hollow particles can contain active antimicrobial ingredients (col. 5 line 56).
Regarding claim 14, Yeung teaches that the active core material can be essential oils, fragrances, biocides and/or disinfectants (col. 7 line 33).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 8, Yeung does not teach a polymer scaffold comprising polyvinyl pyrrolidone or that the colloidal particles may be incorporated into an optically clear acrylic material or that the coating may be a component of an antimicrobial screen. However, this deficiency is cured by Lai and Rolfe.
Lai teaches an antimicrobial coating for porous material or porous media comprising a colloidal encapsulation structure with gaseous, volatile, semi-volatile, and/or non-volatile biocides enclosed with inorganic-organic shells permeable to the biocides [0033]. An exemplary composition teaches a polymer shell comprising polyethylene glycol (PEG), polyvinyl alcohol (PVA), polyvinyl pyrrolidone (PVP), and polyethylenimine [0076]. Rolfe teaches an antimicrobial transparent film comprising a polymer support matrix and antimicrobial nanoparticles evenly dispersed in the polymer support matrix (col. 1 lines 63-67). The antimicrobial nanoparticles comprise an ionic antimicrobial agent and a support agent that localizes the ionic antimicrobial agent to external and/or internal surfaces of the support agent (col. 2 lines 1-3). The nanoparticle support agent may include, but are not limited to, polymers such as polymethylmethacrylates, polyacrylamide copolymer, and polyvinyl alcohol copolymers (col. 7 lines 4-9). The nanoparticles are evenly dispersed in the polymer support matrix (col. 1 line 48), which may be formed into films that are useful in imparting antimicrobial properties to surfaces, such as display screens, touch-screens, monitors, video screens, windows, doors, or other surface to be protected (col. 7 line 66). In a preferred embodiment, the polymer comprises an acrylic polymer embedded with the antimicrobial nanoparticles (col. 9 lines 27-29) and in preferred embodiments the antimicrobial composition is transparent (col. 3 line 12). Given the broadest reasonable interpretation of the term “coating” of the instant claim 8, the examiner interprets the “coating” of the instant claim 8 to encompass the antimicrobial film embraced by Rolfe.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 8, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (PVA and/or PEG and the polymer mixture of Lai comprising PVP for the purpose of forming a polymer shell to encapsulate biocidal components in a coating composition). See MPEP 2144.06 (II).
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing to use the colloidal antimicrobial coating embraced by Yeung to coat an antimicrobial screen. One would have understood in view of Rolfe that antimicrobial nanoparticles comprising a polymer support agent may be dispersed in a transparent acrylic polymer in order to form a coating for surfaces such as display screens, touch-screens, monitors, and video screens. It would have been obvious to utilize the antimicrobial colloidal particle embraced by Yeung in the transparent acrylic polymer coating embraced by Rolfe. One of ordinary skill in the art of filing would have been motivated to utilize an optically clear acrylic coating for screens to suspend the antimicrobial particles embraced by Yeung in order to allow the screen to be seen after application of the coating. The artisan of ordinary skill would have had reasonable expectation of success because Rolfe teaches antimicrobial nanoparticles comprising an ionic antimicrobial agent and a support agent that localizes the ionic antimicrobial agent to external and/or internal surfaces of the support agent (col. 2 lines 1-3) that may be incorporated into a antibacterial screen coating and Yeung teaches that the coating is designed to be safe and effective for industrial, commercial, municipal and household usage (col. 6 lines 8-9).
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
On page 8, Applicant argues that the presently claimed PVP-based antimicrobial colloids unexpectedly exhibit superior 60-second antimicrobial activity compared to PVA-based colloids. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results is unexpected and unobvious.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to an increased bactericidal effect rendered by antimicrobial colloids comprising a PVP scaffold compared to a PVA scaffold, therefore the evidence of unexpected results are of practical significance. However, the data only demonstrate a significant increase in precent reduction of bacterial after 60 seconds of contact for samples containing 0.33% w/w/ PHMB and 1.33% w/w PEI (corresponding to samples DMAA & MAP-1 and 2-HPA & MAP-P in Table 3). The samples that contain higher concentrations of PHMB and PEI demonstrate no significant difference in bactericidal efficacy (corresponding to samples DMAA & MAP-1 2* and 2-HPA & MAP-P 2* in Table 3). Therefore, the differences are not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The amended claim 8 embraces an antimicrobial polymeric colloidal particle that comprises any concentration of polymer scaffold comprising PVP and any concentration of antimicrobial polymer carried on the polymer scaffold. In order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate increased bactericidal efficacy at each and every concentration of antimicrobial polymer and each and every concentration of polymer scaffold. However, the evidence of unexpected results contain data for a single concentration of polymer scaffold and two concentrations of antibacterial polymer. There is only a demonstrated difference in bactericidal efficacy between PVA and PVP scaffolds at 0.33% w/w/ PHMB and 1.33% w/w PEI (corresponding to samples DMAA & MAP-1 and 2-HPA & MAP-P in Table 3). The samples that contain higher concentrations of PHMB and PEI demonstrate no significant difference in bactericidal efficacy (corresponding to samples DMAA & MAP-1 2* and 2-HPA & MAP-P 2* in Table 3). Therefore, evidence of unexpected results is not in commensurate scope with the claims.
Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
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 8 and 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,842,148, in view of Lai (U.S. Patent Application No. 2017/0275472, publication year: 2017) and Rolfe (U.S. Patent No. 10,278,390, issue date: 5/7/2019, of record), as evidenced by Guo et. al. (Advanced Drug Delivery Reviews, pg. 650-666, publication year: 2010, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘148 patent embrace an antimicrobial and anti-biofouling coating comprising an active polymer shell and an active core, wherein the active polymer shell comprises polymers with antimicrobial and anti-biofouling activities, including PEI and PHMB. The active core comprises one or more biocides selected from essential oil, polyol, and aldehyde. Guo teaches that PEI is a synthetic polymer with a highly branched network and a high cationic charge density (pg. 657, 26. Polyethyleneimine). The coating formulation may also comprise stabilizers. The specification of the ‘148 patent defines stabilizers to include polyvinyl alcohol (PVA) and/or polyethylene glycol (PEG) derivatives, as well as polymers with PVA or PEG groups. The Examiner has relied upon the specification to delineate the scope of the invention embraced by the claims of the ‘148 patent, consistent with the decision in Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co. U.S. Court of Appeals Federal Circuit, 95 USPQ2d 1797.
The claims of the ‘148 patent do not teach a polymer scaffold comprising polyvinyl pyrrolidone (PVP) or that the colloidal particles may be incorporated into an optically clear acrylic material or that the coating may be a component of an antimicrobial screen. However, this deficiency is cured by Lai and Rolfe.
Lai teaches an antimicrobial coating for porous material or porous media comprising a colloidal encapsulation structure with gaseous, volatile, semi-volatile, and/or non-volatile biocides enclosed with inorganic-organic shells permeable to the biocides [0033]. An exemplary composition teaches a polymer shell comprising polyethylene glycol (PEG), polyvinyl alcohol (PVA), polyvinyl pyrrolidone (PVP), and polyethylenimine [0076]. Rolfe teaches an antimicrobial transparent film comprising a polymer support matrix and antimicrobial nanoparticles evenly dispersed in the polymer support matrix (col. 1 lines 63-67). The antimicrobial nanoparticles comprise an ionic antimicrobial agent and a support agent that localizes the ionic antimicrobial agent to external and/or internal surfaces of the support agent (col. 2 lines 1-3). The nanoparticle support agent may include, but are not limited to, polymers such as polymethylmethacrylates, polyacrylamide copolymer, and polyvinyl alcohol copolymers (col. 7 lines 4-9). The nanoparticles are evenly dispersed in the polymer support matrix (col. 1 line 48), which may be formed into films that are useful in imparting antimicrobial properties to surfaces, such as display screens, touch-screens, monitors, video screens, windows, doors, or other surface to be protected (col. 7 line 66). In a preferred embodiment, the polymer comprises an acrylic polymer embedded with the antimicrobial nanoparticles (col. 9 lines 27-29) and in preferred embodiments the antimicrobial composition is transparent (col. 3 line 12). Given the broadest reasonable interpretation of the term “coating” of the instant claim 8, the examiner interprets the “coating” of the instant claim 8 to encompass the antimicrobial film embraced by Rolfe.
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (PVA and/or PEG and the polymer mixture of Lai comprising PVP for the purpose of forming a polymer shell to encapsulate biocidal components in a coating composition). See MPEP 2144.06 (II).
It would have been prima facie obvious to one of ordinary skill in the art of filing to use the colloidal antimicrobial coating embraced by the claims of the ‘148 patent to coat an antimicrobial screen. One would have understood in view of Rolfe that antimicrobial nanoparticles comprising a polymer support agent may be dispersed in a transparent acrylic polymer in order to form a coating for surfaces such as display screens, touch-screens, monitors, and video screens. It would have been obvious to utilize the antimicrobial colloidal particle embraced by the claims of the ‘148 patent in the transparent acrylic polymer coating embraced by Rolfe. One of ordinary skill in the art of filing would have been motivated to utilize an optically clear acrylic coating for screens to suspend the antimicrobial particles embraced by the claims of the ‘148 patent in order to allow the screen to be seen after application of the coating. The artisan of ordinary skill would have had reasonable expectation of success because Rolfe teaches antimicrobial nanoparticles comprising an ionic antimicrobial agent and a support agent that localizes the ionic antimicrobial agent to external and/or internal surfaces of the support agent (col. 2 lines 1-3) that may be incorporated into an antibacterial screen coating.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
On page 9, Applicant argues that the present amendment to the instant claim 8 to include PVP renders the instant claims patentably distinct from the teachings of Yeung and Rolfe. This is not found persuasive for the reasons described in the double patenting rejection above.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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