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 Claims
A new claim set was filed on 7/9/26 with the following:
Amended claims
1
Newly canceled claims
Newly added claims
Previously canceled claims
7 and 14
Previously withdrawn claims
Claims under instant examination
1-6, 8-13 and 15-20
Withdrawn Claim Rejections
The rejections of claims 1-6, 8-13 and 15-20 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are hereby withdrawn in view of the claim amendments filed on 7/9/26.
The rejection of:
claims 1-6, 8-13 and 15-20 under 35 U.S.C. 103 as being unpatentable over Fechner et al. (US 2005/0069592; published: 3/31/05; of record), in view of Mendes et al. (Materials Science and Engineering, Vol 32, Iss 6, P 1518-1523, 8/1/12; of record)
are hereby withdrawn in view of the claim amendments filed on 7/9/26.
New Claim Rejections - 35 USC § 103
Applicant' s claim amendments have necessitated the following new grounds of rejection.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6, 8-13 and 15-20 remain rejected under 35 U.S.C. 103 as being unpatentable over Fechner et al. (US 2005/0069592; published: 3/31/05; of record), in view of Mendes et al. (Materials Science and Engineering, Vol 32, Iss 6, P 1518-1523, 8/1/12; of record) and Feschner et al. (US 2004/0253321; published: 12/16/04; hereinafter referred to “Feschner II”).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Fechner et al. is directed to a water-insoluble, antimicrobial silicate glass (Title).
With regards to instant claims 1-6 and 9-13, Fechner et al. teach a silicate glass with the following weight composition in wt. % based on oxides: SiO2 20 to 70, Na2O 5 to 30, K2O 0 to 5, P2O5 1 to 15, B2O3 0 to 10, CaO 4 to 30, AgO 0 to 2, ZnO 0 to 8, CuO 0 to 5, MgO 0 to 8, Al2O3 0 to 7, CeO2 0 to 5, Fe2O3 0 to 2 (overlapping ranges with instantly claimed ranges; Abstract). Based on the ranges taught above, Fechner teaches the following weight percentage sums: 20-80 of SiO2 + B2O3, 5-35 of Na2O + K2O, 4-42 of ZnO + CaO + CeO2 and 0-7 of CuO + Fe2O3 (overlapping ranges with instantly claimed ranges; Abstract).
With regards to instant claims 8 and 15-18, Fechner et al. teach that the process for making the antimicrobial glass powder is melting the raw materials in a platinum crucible at 1600 °C, processed into ribbons and milled in a drum grinder to grain sizes of up to 4 µm ([0050]). It is noted, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). The method steps recited in claims 8 and 15-16 (i.e., the cooling step, the temperature heated to and the size mesh) do not appear to impart any structural limitations to the glass powder cited in claims 8 and 15-16. The Examiner notes, that even though Fechner et al. is silent with regards to a cooling step and a particular mesh sieve size, Fechner et al. teach that the glass powder produced by its method contains the same claimed ingredients and has particle sizes of <100 μm are obtained through a milling process and that particle sizes <50 μm or <20 μm have proven to be appropriate (overlaps with the ranges recited in instant claims 17-18; [0042]).
With regards to instant claim 20, Fechner et al. teach that the abovementioned glass powder has antimicrobial effect against, for example, E. coli and S. aureus ([0053-0054]).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Fechner et al. teach that CuO can be present in an amount ranging from 0-5 wt%, but do not specifically teach wherein the amount of CuO is greater, for example, within the range of 5.5 and 8.1 wt%, as required by amended claim 1. Fechner et al. teach the incorporation of ZnO in an amount ranging from 0-8 wt%, which does not overlap with the claimed range of 10-20 wt%, as required by instant claim 6. Fechner et al. do not teach the claimed amount of 0.1-2 wt% of either Ag3PO4 or AgNO3, as required by instant claim 1. However, Fechner et al. teach that there is an extremely strong antimicrobial effect of the glass in the glass composition based on the invention due to a synergistic effect between the antimicrobial effect of the Ag, Cu, Zn, and Ce heavy metal ions and the effect of the ion exchange of the glass ([0025]).
However, the 0.1-2 wt% of either Ag3PO4 or AgNO3 deficiency is cured by Mendes et al., which is directed to the influence of particle size and AgNO3 concentration in the ionic exchange process on the fungicidal action of antimicrobial glass (Title). Mendes et al. teach that the experimental results showed that the fungicidal effect was dependent on the AgNO3 concentration in the ionic exchange medium (Abstract).
Feschner et al. do not specifically teach wherein the glass composition does not comprise P2O5, as required by amended claim 1. It is noted that Feschner et al. use P2O5 as a network former [0029].
However, such deficiency is cured by Feschner II, which is directed to antimicrobial, anti-inflammatory, would-healing glass powder (Title). Feschner II teaches that its glass with very similar ingredients (20-80 wt. % SiO2, 0-40 wt. % Na2O, 0-40 wt. % K2O, 0-40 wt. % Li2O, 0-40 wt. % CaO, 0-40 wt. % MgO, 0-40 wt. % Al2O3, 0 wt. % P2O5, 0-40 wt. % B2O3, 0-10 wt. % ZnO; see claim 1) contains SiO2 as a network-forming ion [0035] and furthermore, that B2O3 acts as a network-forming ion [0039].
Fechner et al. do not specifically teach wherein a pH value of the glass powder, when soaked in water, is initially 7.5 and changes by less than 0.1 after 32 hours, as required by instant claim 19. However, instant claim 19 is directed to a glass composition and the invention as claimed is not structurally distinguishable from the disclosure of Fechner et al. and it is therefore, the Examiner's position that the pH value and pH stability is an inherent property of the invention taught by Fechner et al. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed glass with that of the prior art, the burden of proof is upon the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed glass composition and the glass composition of the prior art. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Fechner et al. and Mendes et al. are both directed to antimicrobial glasses. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the glass taught by Fechner et al. by further incorporating the AgNO3 taught by Mendes et al. to achieve the predictable result of obtaining a composition suitable for providing an antimicrobial glass. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (antimicrobial Ag salts taught by Fechner et al. and AgNO3 taught by Mendes et al. for the purpose of providing a glass with antimicrobial actions), in order to form a third composition to be used for the very same purpose (See MPEP 2144.06-I).
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (P2O5 taught by Feschner et al. for B2O3 taught by Feschner for the purpose of providing a network forming effect) (See MPEP 2144.06-II). Such would eliminate the P2O5 in the glass taught by the combined teachings while also providing the same effect.
Regarding the concentration of CuO, ZnO and AgNO3 as specified in claims 1 and 6, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Fechner et al. teach that surprisingly, there is an extremely strong antimicrobial effect of the glass in the glass composition based on the invention due to a synergistic effect between the antimicrobial effect of the Ag, Cu, Zn, and Ce heavy metal ions and the effect of the ion exchange of the glass ([0025]). The Applicants' specification provides no evidence that the selected concentration range in claims 1 and 6 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to numerous biological properties of various chemicals (e.g., amount of other ingredients with antimicrobial effect such as ZnO, CuO, AgNO3 and CeO2), it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine these teachings and alter the concentration. Furthermore, the Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. One of ordinary skill in the art would have been motivated to change the concentration as this could be expected to be advantageous for optimizing the biological effect (e.g., antimicrobial effect).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Response to Arguments
Applicants’ arguments are moot in view of the new grounds of rejection.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617
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