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 of Group I, claims 1-14, drawn to an anti-fouling degradable material in the reply filed on 09/23/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed 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.
Claims 1, 2, 8-10, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2020/0325600 to Czaja et al. (hereinafter “Czaja”).
Czaja discloses an oil-infused bacterial nanocellulose material comprising a porous body comprising a three-dimensional network of bacterial nanocellulose fibers including a plurality of interconnected pores; and a lubricating oil infused within the plurality of pores (abstract). The nanocellulose material is an all-natural-renewable, biocompatible and degradable polymer (paragraph 10). The oil-infusion of the porous body is an environmentally degradable product (paragraph 48).
Czaja does not explicitly disclose the oil-infused bacterial nanocellulose material which is an anti-fouling material.
However, it appears that the oil-infused bacterial nanocellulose material meets all structural limitations and chemistry required by the claim. The oil-infused bacterial nanocellulose material comprises a porous body comprising a three-dimensional network of bacterial nanocellulose fibers including a plurality of interconnected pores; and a lubricating oil infused within the plurality of pores (abstract). The nanocellulose material is an all-natural-renewable, biocompatible and degradable polymer (paragraph 10). The oil-infusion of the porous body is an environmentally degradable product (paragraph 48). Therefore, the examiner takes the position that the anti-fouling material would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 2, Czaja discloses that the oil-infusion of the porous body is an environmentally degradable product. This is a clear indication that the nanocellulose fibers would inherently degrade after exposure to environmental conditions including sunlight, changes in temperatures and/or ultraviolet light.
As to claim 8, Czaja discloses that the oil-infusion of the porous body is in the form of strands, fibers, strips or combinations thereof (paragraph 19). The interconnection and combination of strands, fibers, strips would result in a fiber mesh.
As to claim 9, Czaja discloses that the lubricating oil is mineral oil (paragraphs 36 and 37).
As to claim 10, Czaja discloses that the oil component comprises an emulsifying agent to assist the penetration of the oil into the porous network of the porous body. The emulsifying agent comprises water-miscible organic solvent (paragraph 35). When the emulsifying agent is added to the oil component along with water, the emulsifying agent promotes the dispersion of water droplets within the oil, thereby maintaining the stability of the emulsion. The miscibility of the organic solvent allows for better interaction with the water phase, enhancing the emulsification process.
As to claim 13, it appears that Czaja and the Applicant use the same lubricating oil to infuse the pores of the porous body; therefore, it is not seen that the lubricating oil would not allow other liquids and compounds to contact the degradable material without adhering the degradable material.
As to claim 14, Czaja discloses that when wet cellulose sheet is exposed to the environment, the water occupying the pore space begin to evaporate. This results in breakage of crosslinkages both from the intra-chain crosslinking in the polysaccharide chains and inter-chain crosslinking provided through hydrogen bonding from the water molecules in the porous network. Consequently, the pore that were previously occupied by water collapse, thereby resulting in a product of densely collapsed cellulose with reduced pore spaces (paragraph 47).
Claims 1, 2, 4-7, 9, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0230318 to Lynn et al. (hereinafter “Lynn”) further in view of US 2017/0266931 to Langer et al. (hereinafter “Langer”).
As to claims 1, 4 and 5, Lynn discloses a polymeric slippery liquid-infused porous surface (SLIPS) that can prevent adhesion and colonization by fungal and bacterial pathogens and also kill and/or attenuate the colonization and virulence of non-adherent pathogens in surrounding media. The polymeric SLIPS is applied to a substrate for reducing, inhibiting, or modulating the behaviors of non-adherent pathogens in media surrounding the substrate wherein the polymeric SLIPS comprises: a porous matrix having nanoscale or microscale porosity; an oil covering at least a portion of the porous matrix, wherein said oil at least partially fills the pores of the porous matrix; and one or more small molecule compounds located on the surface of the porous matrix, within oil or both wherein the one or more small molecule compounds are able to controllably release from the SLIPS into the media and contact the pathogens, thereby reducing the number of pathogens, inhibiting the growth or colonization of the pathogens or modulating the behaviors of the pathogens (paragraphs 43-47).
Lynn does not explicitly disclose the polymeric SPIPS that is a degradable material and formed form biodegradable polymer comprising polylactide, polyglycolide, polycaprolactone, poly(sebacic acid), combinations thereof, or copolymer thereof.
Langer, however, discloses an article for drug delivery, biological diagnostics, medical devices, food packaging, comprising a non-omniphobic portion 120 and an omniphobic portion 110 adhered to the non-omiphobic portion (figure 3; and paragraph 36). The omiphobic portion comprises a first material 130 having textured surface 135 including lotus leaf microtexture (paragraphs 43 and 44). A lubricant oil 140 is deposited on the surface of the omiphobic portion (figure 3, and paragraph 58).
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410
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The non-omiphobic portion comprises a mucoadhesive material for maintaining prolonged residence of the article to a location internal of a subject and for inhibiting mobility of the article internally of the subject (paragraph 66).
The omniphobic portion is a SLIPS comprising polycaprolactone, polylactide, poly(glycol acid) and each of which corresponding to the claimed biodegradable polymer (paragraphs 54 and 86). The omniphobic portion resists adhesion and fouling to the article, of material internally of the subject (paragraph 60).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the SLIPS of Lynn from a biodegradable polymer disclosed in Langer motivated by the desire to reduce plastic waste and pollution while effectively reducing the cost of the material and promoting sustainability.
As to claim 2, it appears that the polymeric SLIPS of Lynn as modified by Langer meets all structural limitations and chemistry required by the claims. The resulting polymeric SLIPS comprises a porous matrix made of a biodegradable polymer: polycaprolactone, polylactide, and/or poly(glycol acid), and having nanoscale or microscale porosity; an oil covering at least a portion of the porous matrix, wherein said oil at least partially fills the pores of the porous matrix; and one or more small molecule compounds located on the surface of the porous matrix, within oil or both wherein the one or more small molecule compounds are able to controllably release from the SLIPS into the media and contact the pathogens, thereby reducing the number of pathogens, inhibiting the growth or colonization of the pathogens or modulating the behaviors of the pathogens. Therefore, the examiner takes the position that the degradable porous matrix degrading after exposure to specified molecules or environmental conditions would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 6, it appears that the polymeric SLIPS of Lynn as modified by Langer meets all structural limitations and chemistry required by the claims. The resulting polymeric SLIPS comprises a porous matrix made of a biodegradable polymer: polycaprolactone, polylactide, and/or poly(glycol acid), and having nanoscale or microscale porosity; an oil covering at least a portion of the porous matrix, wherein said oil at least partially fills the pores of the porous matrix; and one or more small molecule compounds located on the surface of the porous matrix, within oil or both wherein the one or more small molecule compounds are able to controllably release from the SLIPS into the media and contact the pathogens, thereby reducing the number of pathogens, inhibiting the growth or colonization of the pathogens or modulating the behaviors of the pathogens. Therefore, the examiner takes the position that at least 30% of the SLIPS by weight able to degrade within a 12 month period of time would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 7, it appears that the polymeric SLIPS of Lynn as modified by Langer meets all structural limitations and chemistry required by the claims. The resulting polymeric SLIPS comprises a porous matrix made of a biodegradable polymer: polycaprolactone, polylactide, and/or poly(glycol acid), and having nanoscale or microscale porosity; an oil covering at least a portion of the porous matrix, wherein said oil at least partially fills the pores of the porous matrix; and one or more small molecule compounds located on the surface of the porous matrix, within oil or both wherein the one or more small molecule compounds are able to controllably release from the SLIPS into the media and contact the pathogens, thereby reducing the number of pathogens, inhibiting the growth or colonization of the pathogens or modulating the behaviors of the pathogens. Therefore, the examiner takes the position that no more than 10% of the SLIPS by weight degrading within a one month period of time would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 9, Lynn discloses that the lubricating oil comprises a mineral oil, a silicone oil, a vegetable oil, a perfluorinated oil or a liquid crystalline material (paragraph 38).
As to claim 11, Lynn discloses that one or more small molecule compounds located in the surface of the porous matrix, within oil or both wherein the one or more small molecule compounds are able to controllably release from the SLIPS into the media and contact the pathogens, thereby reducing the number of pathogens, inhibiting the growth or colonization of the pathogens or modulating the behaviors of the pathogens (paragraphs 43-47).
As to claim 12, Lynn discloses that 45% of the one or more molecules are able to controllably released to the surrounding environment over a 4-month period (paragraph 174). This is a clear indication that the release of at least 50% is likely to occur over a longer period, exceeding 4 months.
As to claim 13, Lynn discloses that the infusion of the oil into at least a portion of the SLIPS causes other liquids placed in contact with the SLIPS to slide off the SLIPS (paragraph 20).
As to claim 14, it appears that the polymeric SLIPS of Lynn as modified by Langer meets all structural limitations and chemistry required by the claims. The resulting polymeric SLIPS comprises a porous matrix made of a biodegradable polymer: polycaprolactone, polylactide, and/or poly(glycol acid), and having nanoscale or microscale porosity; an oil covering at least a portion of the porous matrix, wherein said oil at least partially fills the pores of the porous matrix; and one or more small molecule compounds located on the surface of the porous matrix, within oil or both wherein the one or more small molecule compounds are able to controllably release from the SLIPS into the media and contact the pathogens, thereby reducing the number of pathogens, inhibiting the growth or colonization of the pathogens or modulating the behaviors of the pathogens. Therefore, the examiner takes the position that the degradation of the material resulting in changes in one or more physical or chemical properties of the material would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lynn in view of Langer as applied to claim 1 above, further in view of US 2017/0015835 to Aizenberg et al. (hereinafter “Aizenberg”).
Neither Lynn nor Langer discloses the porous matrix comprising a nanofiber mat generated through electrospinning.
Aizenberg, however, discloses an article having a repellant surface wherein the article comprising a substrate with a roughened surface; and a lubricating liquid wetting and adhering to the roughened surface to form a stabilized liquid overlayer and said liquid overlayer forming a repellant surface (paragraph 5). The substrate which has a roughened surface is a nanofiber mat manufactured through the process of electro-spinning (paragraph 182).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a nanofiber mat obtained through the electro-spinning as disclosed in Aizenberg for the porous matrix disclosed in Lynn/Langer, because the nanofiber mat is one of the typical forms of the porous matrix material for the SLIPS and Aizenberg provides necessary details to practice the invention of Lynn/Langer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lynn in view of Langer as applied to claim 1 above, further in view of US 2021/0253969 to Paink et al. (hereinafter “Paink”).
Neither Lynn nor Langer discloses the lubricating oil that is an emulsion comprising a liquid continuous phase and a plurality of liquid droplets dispersed within the continuous phase.
Paink, however, discloses a lubricant composition for lubrication of a hydrophobic textured surface, is applied with a precise amount to overcome problems associated with over-lubrication and waste of lubricants in a variety of industrial settings (abstract). The lubricant composition comprises a lubricant and a carrier wherein the lubricant has a higher boiling point than the carrier to provide precise lubrication with easy removal of the carrier and wetting of the lubricant on the surface. In particular, the lubricant composition for lubrication of a SLIPS comprises a perfluorinated oil emulsion in water (table 12). Alternatively, the lubricant composition for lubrication of a SLIPS comprises a silicone oil emulsion in water (table 16). In either case, lubricant composition comprises an oil continuous phase and a plurality of water droplets dispersed within the oil continuous phase.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the lubricating oil of Lynn in the form of a lubricant composition disclosed in Paink motivated by the desire to apply a precise amount of the lubricant to a surface so as to avoid waste of lubricant in various industrial settings.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,825,845. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are fully encompassed by those of the Patent No. 11,825,845 regarding claims 1-5, and 8-13.
As to claims 6, 7 and 14, it appears that the anti-fouling degradable material of the claimed invention and the slippery material of the Patent No. 11,825,845 are structurally and compositionally the same; therefore, it is not seen that at least 30% of the material by weight able to degrade within a 12 month period of time; no more than 10% of the material by weight degrading within a 1 month period of time; and the degradation of the material resulting in changes in one or more physical or chemical properties of the material would not be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788