DETAILED ACTION
Receipt is acknowledged of applicant’s Amendment/Remarks filed 1/2/2026.
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 1-7 and 11 have been amended. Claims 8-10 are cancelled. No claims are newly added. Accordingly, claims 1-7 and 11 remain pending in the application and are currently under examination.
Withdrawn Objections/Rejections
Applicant’s amendment renders the previous objections of claims 2 and 5 moot. Specifically, the minor informalities have been remedied. Thus, said objections have been withdrawn. However, new objections are presented below.
Applicant’s amendment renders the rejections of claims 5-10 under 35 USC 112(b) moot. Specifically, the indefinite phrase “preferably” has been deleted from the claims or the affected claims have been cancelled. Thus, said rejections have been withdrawn.
Applicant’s amendment renders the rejection of claim 8 under 35 USC 102 over Calabrese moot. Specifically, claim 8 has been cancelled. Thus, said rejection has been withdrawn.
Applicant’s amendment renders the rejection of claims 8-10 under 35 USC 102 over Pratsinis moot. Specifically, claims 8-10 have been cancelled. Thus, said rejection has been withdrawn.
Maintained Rejections
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.
Claims 1-4 and 11 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Didar et al. (WO 2019/136560 A1, Jul. 18, 2019, hereafter as “Didar”).
The claimed invention (claims 1-7 and 11) are drawn to a method for the preparation of a solid surface with antibacterial and non-cytotoxic consisting in the steps of: (a) activation of said surface by oxygen plasma; and (b) deposition of a silane or siloxane having at least one fluorocarburic terminal group.
Regarding instant claims 1-4 and 11, Didar teaches method of modifying substrates to incorporate fluorosilanes and reactive functional groups for attachment of biomolecules ([0009]). The resulting substrates, once treated with fluoro-lubricants, provide omniphobic biomolecule-modified surfaces that show reduced non-specific interactions ([0009]). Such materials are useful for a number of applications, including for example, biosensors, medical implants, medical diagnostics and therapeutics ([0009]). Didar teaches that prior to functionalizing a substrate, the substrate is treated with oxygen plasma ([00191]) and then the silane is deposited by chemical vapor deposition (CVD) ([00192]). Didar teaches the particular silanes, trimethoxy(3,3,3-trifluoropropyl)silane and trichloro (1H,1H,2H,2H-perfluorooctyl)silane (TPFS) ([00111]). Didar also teaches the particular substrate materials, metals including titanium and stainless steel, polymers/plastic, ceramic ([00112]).
It is noted that the instant claims recite “consisting in the steps of”. Didar teaches steps a and b, as discussed above, without any additional steps prior to step a or in between steps a and b. Accordingly, Didar reads on the method as it is currently written.
It is noted that while Didar does not recite, “with antibacterial and non-cytotoxic [activity]”, MPEP 2111.02(II) states, “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”. Didar teaches the method steps as claimed and the preamble merely states the purpose of the method. Thus, the preamble is not significant to the claim construction and, as such, Didar meets the limitations of the claim. It is further noted that Didar teaches the claimed method including the components used in the method such as the claimed silanes and silane deposition phase (see, e.g., instant claims 3 and 4). Thus, one of ordinary skill in the art would have reasonably expected that the same method utilizing the same components would yield the same antibacterial and non-cytotoxic activity/properties.
The teachings of Didar render the instant claims anticipated.
Response to Arguments
Applicant's arguments, filed 1/2/026, regarding the 102 rejection over Didar have been fully considered but they are not persuasive.
Applicant argues that Didar does not describe that a coating with silanes having at least one fluorocarburic terminal group and no biomolecules confers extreme hydrophobic properties to the treated surface such as a to prevent bacterial adhesion, nor is Didar’s coating suitable for this purpose. Remarks, page 5.
In response, it is respectfully submitted that the claims are drawn to a method for the preparation of a solid surface with antibacterial and non-cytotoxic [activity] consisting in the steps of: (a) activation of said surface by oxygen plasma; and (b) deposition of a silane or siloxane having at least one fluorocarburic terminal group. Didar teaches that prior to functionalizing a substrate, the substrate is treated with oxygen plasma ([00191]) and then the silane is deposited by chemical vapor deposition (CVD) ([00192]). Didar teaches the particular silanes, trimethoxy(3,3,3-trifluoropropyl)silane and trichloro (1H,1H,2H,2H-perfluorooctyl)silane (TPFS) ([00111]). Didar does not require any additional steps prior to step a or in between steps a and b. Thus, Didar teaches preparation of a surface consisting of the claimed steps a and b. With respect to the preamble limitations regarding antibacterial and non-cytotoxic activity, MPEP 2111.02(II) states, “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”. Didar teaches the method steps as claimed and the preamble merely states the purpose of the method. Thus, the preamble is not significant to the claim construction and, as such, Didar meets the limitations of the claim. Even assuming arguendo, Didar teaches the method including the components used in the method such as the claimed silanes and silane deposition phase (instant claims 3 and 4). One of ordinary skill in the art would have reasonably expected that the same method utilizing the same components would yield the same activity or properties.
Applicant also submits arguments regarding obviousness (Remarks, pages 5-6), however the claims are rejected under 35 USC 102 over Didar. Arguments regarding obviousness are not applicable to a rejection under 35 USC 102 and, as such, unpersuasive.
Thus, for the above reasons, Applicant’s arguments are found unpersuasive. Said rejection is maintained.
New Objections/Rejections
In light of Applicant’s amendments, the following rejections have been newly added:
Claim Objections
Claim 1 is objected to because of the following informalities: the claim recites, “Method for the preparation of a solid surface with antibacterial and non-cytotoxic consisting in the steps of...” in lines 1-2 of the claim. There appears to be a word missing following the phrase “with antibacterial and non-cytotoxic” such as “activity”, “properties”, or the like. It is also suggested that “A” is inserted at the beginning of the claim such that the claim reads, “A method for...”.
Claim 1 is objected to because of the following informalities: the claim recites, steps (a) and (b). It is suggested that the word “and” is inserted following step (a).
Claim 2 is objected to because of the following informalities: the claim recites a Markush group. It is suggested that the word “and” is inserted between the last two alternatives listed.
Claim 7 is objected to because of the following informalities: the claim recites a Markush group. It is suggested that the word “and” is inserted between the last two alternatives listed.
Claims 2-7 and 11 are objected to because of the following informalities: it is suggested that “The” is inserted at the beginning of each claim such that the claims read, “The method according to claim...” in order to have proper antecedent basis to a parent claim.
Appropriate correction is requested.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites, “further including a step of functionalization of said surface with nanoparticles...”. Claim 5 depends form claim 1. Claim 1 recites, “Method for the preparation of a solid surface with antibacterial and non-cytotoxic consisting in the steps of...“. The open-ended “further including” language of claim 5 contradicts with the closed “consisting” language of claim 1. Thus, claim 5 does not properly further limit claim 1. Dependent claims 6-7 do not remedy the further limiting issue and as such said dependent claims suffer from the same deficiency. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
All claims have been rejected; no claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY HAGOPIAN whose telephone number is (571)272-6097. The examiner can normally be reached on M-F 9:00 am - 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, Sue Liu can be reached on 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Casey S. Hagopian
Examiner, Art Unit 1617
/CARLOS A AZPURU/Primary Examiner, Art Unit 1617