DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of quaternary ammonium structure of monomer 2 in the reply filed on 2 January 2026, is acknowledged.
Status of Claims
The preliminary amendment, filed on 26 July 2023, is acknowledged.
Claims 1, 3-7, 9, 11, 15-16, and 18 are amended.
Claims 1-18 are pending and under consideration in the instant Office Action, to the extent of the elected species of the compound comprising the quaternary ammonium structure monomer 2.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent Korean Patent Application No. KR 10-2021-0093569, filed on 16 July 2021, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 26 July 2023, 20 May 2024, 14 June 2024, 14 August 2024, 5 February 2025, 23 May 2025, and 27 October 2025, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objection to the title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title of the instant application is “Antibacterial composition”. The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. The title does not reflect the main inventive concept of Applicant’s invention and the major components of the invention. The title is generic and can be applicable to any “antibacterial composition”. The Examiner advises Applicant to consider including major components of the composition, primary purpose of the invention, and/or the general steps taken to achieve the claimed invention in the title to precisely reflect the inventive concept. Inasmuch as the words "new", "improved", "improvement of", and "improvement in" are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles "a," "an," and "the" should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.
Claim Objections
Claims 7, 9, 11, and 16 are objected to because of the following informalities:
Claims 7, 9, and 11 recite “wherein the Method n is the same as the Method m”, where n is 2, 3, or 4, and m is 1 (bold added for emphasis). The bolded articles “the” are extraneous and should be removed, so the resulting phrase reads “wherein Method n is the same as Method m”.
Claim 16 recites “the number of carbon atoms of the alkyl group…”. The word “group” should be pluralized, so the resulting phrase recites “the number of carbon atoms of the alkyl groups…” (bold added for emphasis).
Appropriate correction is required.
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Toyobo Co Ltd. (Japanese Patent Application Publication No. JP 2000-45179 A, published on 15 February 2000, provided by Applicant in the IDS filed on 5 February 2025, references to English translation, hereafter referred to as Toyobo).
Toyobo teaches an antimicrobial fiber formed from graft polymerization of an antimicrobial vinyl monomer to a cellulosic fiber, forming a structure with “excellent…resistance to washing” (Abstract). The antimicrobial vinyl monomer is taught to have a quaternary ammonium or phosphonium group, a biguanide group, or a pyridinium group, and is often in the form of a salt (para. [0011-0012]). In the embodiment that the monomer is a quaternary ammonium salt, it has the following structure (Structure 2):
PNG
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where R1 is H or C1-6; R2, R3, and R4 are C1-20 and may be the same or different; X is a halogen or a residue (interpreted as the conjugate base) of an inorganic or organic acid; B is 1,4-phenylene or -C(=O)O-; and n is integers from 0-4 (0 excluded when B forms an acrylate group) (para. [0019]). In the embodiment that R1 is H, R2 and R3 are C4, R4 is C10, n is 2, and B forms an acrylate group, the structure is the same as Monomer 2 in the instant application. Toyobo also teaches that the antimicrobial polymer can be grafted to materials with fibers other than cellulose, including rayon, wool, cotton, etc. (para. [0008-0010]). Finally, Toyobo teaches that the antimicrobial polymer may be grafted to woven, knitted, non-woven, and sewn products (para. [0029]), with examples including clothing that retains antimicrobial properties that can “withstand repeated washing (para. [0059]).
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Toyobo and the instant claims is that Toyobo does not teach the specific combination of components as claimed in a single embodiment (e.g., a polymer formed from Monomer 2 in one embodiment), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Toyobo, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Toyobo, to arrive at a compound comprising Monomer 2.
Claims 1-2 recite a critical micelle concentration, claims 3-12 recite an antimicrobial strength, and claims 13-14 recite an LD50 of the polymer formed from Monomer 2. These limitations are inherent properties of the compound comprising the quaternary ammonium structure Monomer 2 and would necessarily be present in the structure rendered obvious above.
“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01. Further, "[p]roducts 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. The limitations discussed in claims 1-14 regarding critical micelle concentration, antimicrobial strength, and LD50 above are necessarily present. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-18 in view of the teachings of Toyobo.
Conclusion
No claims are allowed.
Citation of Pertinent Prior Art
The prior art cited by Applicant in the IDS filed 14 June 2024, Jiangnan University (Chinese Patent Application Publication No. CN 109135232 A, published on 4 January 2019), and not relied upon in the rejection above is considered pertinent to applicant's disclosure. Jiangnan University teaches an antibacterial polymer composition that contains a salt of a long alkyl chain quaternary ammonium polymer which can be used in antibacterial plastics, coatings, and other products (Abstract). The polymer is made from a monomer that links a methacrylate group to a quaternary ammonium group via an ethyl chain, said quaternary ammonium group being coordinated to two methyl groups and a C1-12 alkyl chain (claim 2). Jiangnan University teaches in Table 1 that when the alkyl chain in the monomer contains fewer than 8 carbons, the resulting polymer has weak antibacterial properties, but when the number of carbons in the chain is 8-12 it has much stronger antibacterial properties, lasting four weeks or longer following application. The monomer taught by Jiangnan University is similar to elected Monomer 2 in the instant application, merely containing a methacrylate group in place of an acrylate group, and two methyl groups in place of the butyl groups.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619