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 .
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.
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.
Claim 42 is 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.
Regarding claim 42, the variables R, R1, R2 and R3 are undefined.
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.
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:
Claim(s) 1 – 3, 6, 10, 11, 23, 33, 35 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20180000858 A1 to Liang et al. hereinafter “Liang”.
Liang is directed to film forming compositions comprising an antiseptic, a solvent and a film forming material (Abstract).
Regarding claims 1 – 3, 6, 10, 11, 23, 33, 35 and 41 , Liang teaches a composition at Table 4, formulation 29 comprising: 2.1 % PVP-I (antimicrobial and carrier) , 46.4 % ethanol (solvent) and 12.4% PVB (polymer binder). The coating is clear. PVP-I is a metal ion containing complex of polyvinylpyrrolidone (pyrrolidones) and iodine comprising 9 – 12 % iodine [0006]. Therefore the concentration of iodine is 0.19 – 0.25 %. PVP-I is both an antimicrobial and a carrier where the carrier is a pyrrolidone. Also see claim 35.
The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002).
No terminology in the preamble limits the structure of the claimed invention. The preamble in this case was read as a future intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). This is the case with independent claim 1.
Additionally, if the prior art composition is physically the same as that claimed it must have the same properties. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). MPEP 2112.01
In this case the PVP provides long lasting antimicrobial activity as it through and extended or slow release mechanism [0019].
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.
Claim(s) 1 – 3, 6, 10, 11, 23, 33, 35, 36 and 41 – 43 are rejected under 35 U.S.C. 103 as being unpatentable over US 20180000858 A1 to Liang et al. hereinafter “Liang”.
Liang is directed to film forming compositions comprising an antiseptic, a solvent and a film forming material (Abstract).
Regarding claims 1 – 3, 6, 10, 11, 23, 33, 35, 36 and 41, Liang discloses that in some other embodiments the invention includes PVP-I (antimicrobial) or chlorhexidine (antimicrobial) at 0.5 – 2.5%, PVB (polymer binder) at 5 – 10%, ethanol (solvent) at 50 – 60% or isopropanol (solvent) at 50 – 70 % and ethyl acetate (solvent) at 8 – 10 % [0030]. Also, the film forming material (polymer binder) may comprise PVB, polyvinylpyrrolidone, ethyl cellulose, nitrocellulose, acrylate polymer and ethyl cellulose or combinations thereof. The concentration of the film forming material (polymer binder) 1 – 20% [0020 – 0021].
Therefore, it would be obvious to one of ordinary skill to make a coating comprising chlorhexidine (antimicrobial) at 0.5 – 2.5%, PVB (polymer binder) at 5 – 10%, ethanol (solvent) at 50 – 60% and ethyl cellulose (EC) at 5 – 10% as this is directly taught by Liang. Also obvious would be a coating comprising chlorhexidine (antimicrobial) at 0.5 – 2.5%, PVB (polymer binder) at 5 – 10%, isopropanol (2-propanol / solvent) at 50 – 70%, ethyl acetate (solvent) at 8 – 10 % and ethyl cellulose (EC) at 5 – 10% as this is directly taught by Liang.
As to claim 42, formulation numbers 97 and 117 are obvious as being directly taught by Liang. See paragraph 19 supra.
Regarding claim 43, Liang teaches, at least at [0028 - 0029], the used of additives such as viscosity builder agents and bio adhesive agents. Therefore, it would be obvious to one or ordinary skill to use such an additives as it is directly taught by Liang.
Allowable Subject Matter
Claim 47 is allowed.
Claims 13 – 14, 16, 45 – 46, 49, 52 and 53 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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PAS 11/25/25
/PETER A SALAMON/Primary Examiner, Art Unit 1759