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 .
Claims Status
Claims 1-19 are pending and under current examination.
Applicants' arguments and Declaration filed on 12/05/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102-maintained
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(s) 1-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aldossary et al. (Therapeutic Intervention for Various Hospital Setting Strains of Biofilm Forming Candida auris with Multiple Drug Resistance Mutations Using Nanomaterial Ag-Silicalite-1 Zeolite-published 10/21/2022).
Aldossary et al. teach reducing C. auris biofilms with a composition that comprises silicalite and silver nanoparticles, see section 3.4 and entire document. The synthesized Ag-silicalite has a Si/Ag ratio of 25, see abstract. From Figure 7 (c) at least some of the Ag-Silicalite-1 particles appear to be spherical shaped. The size of the particles is 600nm, see section 3.3.4. The silver nanoparticles can comprise a cubic crystal, see Figures 6 and sections 3.3.3- 3.3.4. The diameter of the silver nanoparticles is about 10nm, see section 3.3.4. The particles are substituted in a matrix of silicalite. The surface area can comprise 338 m2/g, see section 3.3.4. The pore volume is 0.11cm3/g, see section 3.3.4. Average pore size distribution is about 2.51nm. The Ag-silicalite contains both mesopores and micropores, section 3.3.4. The mesopore volume can comprise 0.11cm3/g and micropore volume 0.10 cm3/g which a ratio of about 1.1:1. The composition is 71% crystalline, see section 3.3.4. The composition shows 20% of template locked inside Ag-silicalite-1, see 3.3.4. The template can comprise tetrapropyl ammonium hydroxide TPOH, see section 2.3. The Ag-silicalite-1 shows regular shaped crystals and is not agglomerated while the Ag/TIXSM-5 is agglomerated, see section 3.3.4. The Ag-silicalite-1 complex is composed of Ag (4.65%), O (49.87%), Na (1.80%),Si (33.13%) and C( 10.55%), see Figure 7 and section 3.3.4. The silver nanoparticles appear to be substantially spherical, see Figure 8 c-d. The study collected and treated bacteria from hospital surfaces, see abstract and entire document. The composition attaches to a cell surface and penetrates, see section 3.5. The product is made by adding silica to alkaline solution and adding silver salt and template then hydrothermally treating for 3 days to form precipitate then the precipitate is, dried and calcined, see section 2.3. Since Aldossary discloses the silver nanoparticles are substituted in a matrix of the silicalite, and Aldossary discloses an identical method for making the particles, the silver nanoparticles would necessarily be isomorphously substituted.
With regards to the fact that the composition reduces the amount of Candida auris biofilm by at leat 80% after 24 hours, or at least 50% after 24 hours, since Aldossary discloses an identical composition as claimed, the amount of Candia auris biofilm being reduced would necessarily follow as a composition and its properties are inseparable.
Response to Remarks
Applicants note Aldossary was published on October 21 2002 and that the present Application was filed on May 5, 2023. The Applicants provide a Declaration demonstrating their own disclosure which is dated less than one year.
Examiner respectfully submits that the Declaration filed on 12/05/2025 is discussed below.
37 CFR 1.130(a) Declaration
The examiner acknowledges receipt of the Declaration under 37 CFR 1.130(A) by Hanan A. Aldossary filed on 12/05/2025.
The Declaration notes that the joint inventors of the instant invention are: Hanan A. Aldossary, Suriya Rehman, B. Rabindram Jermy, Sayeed AbdulAzeez, J. Francis Borgio and Ebtesam Abdullah Al-Suhaimi.
The co-authors of the cited art to Aldossary et al. who were not joint inventors of the instant application are Reem AlJindan, Afra Aldayel, Sultan Akhtar, and Firdos Alam Khan which did not contribute to the subject matter disclosed and claimed in the present Application.
The Declarant notes to any extent that the subject matter disclosed and claimed in the above identified U.S. Patent Application was also disclosed in Aldossary et al., the above mentioned inventors are the actual inventors of that subject matter.
Examiner respectfully submits that it is not clear what the nature of the collaboration for Aldossary et al. was because there is no reasonable explanation of the presence of additional authors on the Aldossary et al. reference.
From MPEP 707.01(a)(1), Some factors to consider to are the following:
Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
A mere statement from the inventor or a joint inventor, without any accompanying reasonable explanation, may not be sufficient where there is evidence to the contrary, such as a contrary statement from another named author that was filed in another application on behalf of another party. See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a non-applicant author submitting a letter declaring the non-applicant author’s inventorship).
(C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c)
(D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f) .
Here, there is no accompanying reasonable explanation of the presence of additional authors on the Aldossary et al. reference. Declarant just states to any extent that the subject matter disclosed and claimed in the above identified U.S. Patent Application was also disclosed in Aldossary et al., the above mentioned inventors are the actual inventors of that subject matter.
Conclusion
Applicant’s arguments/remarks are considered unpersuasive. 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).
Currently, no claims are allowed and all claims are rejected.
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 extension fee 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 SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619