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 .
Status of the Claims
Claims 1-20 are pending. Claims 1-7 and 15-20 are withdrawn from consideration. Claims 8-14 are under current examination.
Withdrawn Objections and Claim Rejections
The objection to the specification is withdrawn in view of the amendment to the specification filed 11/13/2025.
All rejections pertaining to claims 8-14 under 35 U.S.C. 112(b) are withdrawn in view of the arguments filed 11/13/2025.
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 8-14 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 Rolfe (U.S. Patent No. 10,278,390, issue date: 5/7/2019, of record).
Applicant’s Invention
Applicant’s claim 8 is drawn to an antimicrobial screen, comprising: a coating comprising an optically clear acrylic material and multilevel antimicrobial polymeric colloidal particles incorporated into the optically clear acrylic material, wherein each of the multilevel antimicrobial polymeric colloidal particles comprises: a polymer scaffold; and at least one antimicrobial polymer carried on the polymer scaffold, wherein the polymer scaffold and the at least one antimicrobial polymer form a hollow colloidal particle; and a substrate comprising a material selected from the group consisting of glass, metal and plastic, wherein the coating is coated onto the substrate.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 8 and 9, 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 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 Rolfe.
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, 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 11/13/2025 have been fully considered but they are not persuasive.
On pages 6-7, Applicant argues that, given the plain meaning of the term “scaffold”, there is nothing in Yeung to suggest a molecular structure which includes molecules with a polymer scaffold to which antimicrobial polymers are attached. This is not found persuasive. Please refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: “A person of ordinary skill in the art is also a person of ordinary creativity, not an automation.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. Yeung teaches that PVA may be used as a stabilizer in the colloidal particle (col. 5 line 60) and that the colloidal coating may be prepared by first preparing a PEI solution followed by addition of PVA solution to yield colloidal materials (col. 12 line 66-col. 13 line 8). One of ordinary skill in the art would have understood that PVA and PEI must necessarily be associated with the other in order to form the colloidal particle and that the two must be carried together in order to form a single hollow colloidal particle. The Examiner therefore considers the PVA stabilizer taught by Yeung to read on the “scaffold” limitation of the instant claim. Therefore, the argument is not persuasive and the rejection is maintained.
On pages 8-9, Applicant argues that the distinction between a PVA scaffold, a PVP scaffold or a PVA/PVP scaffold and the mere mix of polymers disclosed in Yeung is considerable. This is not found persuasive. As described above, the Examiner therefore considers the PVA stabilizer taught by Yeung to read on the “scaffold” limitation of the instant claim. With regards to the hydrogen-bonding and cross-linking ability of PVA, the prior art teaches the same PVA as claimed and therefore, the hydrogen-bonding and cross-linking properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.” With regard to the argument of the suitability of PVA and PVP as scaffolds with high tensile strength, elasticity, and durability for applications in tissue engineering and drug delivery systems, it is noted that the features upon which applicant relies (i.e., tensile strength, elasticity, and durability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the argument is not persuasive and the rejection is maintained.
Response to Appendix
The references included in the appendix filed 11/13/2025 have been considered and are not persuasive. For the reasons described in the response to arguments above, the Examiner considers the colloidal particle taught by Yeung to read on the “scaffold” limitation of the instant claim. With regards to the hydrogen-bonding and cross-linking ability of PVA, the prior art teaches the same PVA as claimed and therefore, the hydrogen-bonding and cross-linking properties are necessarily present. Furthermore, with regards to the properties of PVA and PVP, the features upon which applicant relies (i.e., tensile strength, elasticity, and durability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the 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 8-14 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 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 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 Rolfe.
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. 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 11/13/2025 have been fully considered but they are not persuasive.
On page 10, Applicant argues that Yeung neither teaches nor suggests each of multilevel antimicrobial polymeric colloidal particles being made of a polymeric material with a polymer scaffold and at least one antimicrobial polymer carried on the polymer scaffold. This is not found persuasive for the reasons described in the response to arguments above.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614