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 .
Response to Arguments
Applicant's arguments filed 27 July 2026 have been fully considered but they are not persuasive.
With respect to the rejection under 35 U.S.C. 112(a), it is noted that the claims as presently amended still fail to comply with the written description requirement. Applicant cites paragraph [0039] of the present specification as providing support for the range of 86 ppm to 275 ppm. However, the present specification does not provide support for the entire range between 86 ppm and 275 ppm. Paragraph [0039] discloses amounts of titratable chlorine of 86 ppm, 110 ppm, 124 ppm, and 120-275 ppm, but does not provide support for all the values that fall in between. The present specification does not provide support for the entire range of 86 ppm to 275 ppm, and therefore the claim amendment constitutes new matter and fails to comply with the written description requirement. See MPEP 2163.05(III).
With respect to the rejection under 35 U.S.C. 112(b), the amendment to claim 2 overcomes the previous rejection.
With respect to the rejection under 35 U.S.C. 102, Applicant argues that the Office Action has not provided a rationale to establish inherency as required by MPEP 2112(IV). It is noted that the Office Action cites MPEP 2112.01(II) to support the assertion of inherency. MPEP 2112.01(II) provides the rationale that a chemical composition and its properties are inseparable. The present claims disclose N-halamides, and the prior art discloses N-halamides, and therefore will exhibit the same properties. The burden is shifted to the Applicant to provide evidence that the property is not inherent (see MPEP 2112(V)). Applicant argues that N-halamides constitute a broad class of compounds, but does not provide evidence of N-halamides that are not compatible with organic solvents. It is further noted that the claim language of “compatible with organic solvents” is broader in scope than being soluble in organic solvents, and compatibility can be interpreted to encompass many meanings in the context of the claim.
With respect to the rejection under 35 U.S.C. 103, Applicant argues that the rationale concerns antimicrobial performance and cost, not compatibility with organic solvents. Worley teaches a specific N-halamide, 1-cholor-2,2,5,5-tetramethyl-4-imidazolidinone, that is advantageous for reasons of antimicrobial performance and cost. Therefore, one of ordinary skill in the art would be motivated to select that N-halamide for use in the composition of Keller. Worley further discloses that 1-cholor-2,2,5,5-tetramethyl-4-imidazolidinone is compatible with organic solvents. When one of ordinary skill in the art modifies the composition of Keller to include the N-halamide taught by Worley, the composition of Keller with comprise an N-halamide that is compatible with organic solvents. The combination of Keller as modified by Worley therefore discloses all limitations of the claimed invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The present specification does not provide support for the claimed range of 86 ppm to 275 ppm. Paragraph [0039] discloses amounts of titratable chlorine of 86 ppm, 110 ppm, 124 ppm, and 120-275 ppm, but does not provide support for all the values that fall in between. Therefore the limitation constitutes new matter.
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.
Claim(s) 1, 3-5, 7, 10, and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Keller et al. (2010/0030170) or, in the alternative, under 35 U.S.C. 103 as obvious over Keller et al. (2010/0030170) in view of Worley et al. (10,178,866).
With respect to claim 1, Keller discloses a composition comprising a water absorbent particulate material, as disclosed in paragraph [0052], and an N-halamide compound, as disclosed in paragraphs [0036-0037]. Keller is silent as to the N-halamine compound being compatible with organic solvents. Since Keller discloses the same chemical composition as claimed, it therefore inherently must have the same properties and therefore anticipates the claim limitation (see MPEP 2112.01(II)).
In the alternative, Worley discloses the use of N-halamine compounds in a fibrous material, as disclosed in column 1, lines 14-16, and teaches that 1-chloro-2,2,5,5-tetramethyl-4-imidazolidinone is suitable for use in a wound dressing, as disclosed in column 18, lines 25-29, and provides the advantage of providing sufficient antimicrobial inactivation inexpensively and at a lower concentration, as disclosed in the Abstract. Worley further discloses that the N-halamine is compatible with organic solvents, as disclosed in column 3, lines 62-63. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the N-halamine compound of Keller compatible in organic solvents, as taught by Worley, to achieve a compound that provides sufficient antimicrobial inactivation at a lower, inexpensive, concentration.
With respect to claim 3, the water absorbent particulate material is comprised of superabsorbent polymer particles, as disclosed in paragraph [0052].
With respect to claims 4-5, the superabsorbent polymer particles are comprised of an acrylic polymer acrylic acid, as disclosed in paragraph [0052].
With respect to claim 7, the composition further comprises zeolite, as disclosed in paragraph [0033].
With respect to claim 10, Keller does not disclose the composition comprises water, and therefore the composition is essentially free of water.
With respect to claim 16, Keller discloses an article of manufacture including the composition of claim 1 in the form of an incontinence pad, as disclosed in paragraph [0002].
With respect to claim 17, the composition is incorporated into the article as a water absorbent layer, as disclosed in paragraph [0037].
Claim Rejections - 35 USC § 103
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 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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (2010/0030170) in view of Worley et al. (10,178,866).
With respect to claim 2, Keller discloses all aspects of the claimed invention with the exception of the N-halamine compound comprising 1-chloro-2,2,5,5-tetramethyl-4-imidazolidinone. Worley discloses the use of N-halamine compounds in a fibrous material, as disclosed in column 1, lines 14-16, and teaches that 1-chloro-2,2,5,5-tetramethyl-4-imidazolidinone is suitable for use in a wound dressing, as disclosed in column 18, lines 25-29, and provides the advantage of providing sufficient antimicrobial inactivation inexpensively and at a lower concentration, as disclosed in the Abstract. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the N-halamine compound of Keller 1-chloro-2,2,5,5-tetramethyl-4-imidazolidinone, as taught by Worley, to achieve a compound that provides sufficient antimicrobial inactivation at a lower, inexpensive, concentration.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (2010/0030170), or in the alternative over Keller in view of Worley et al. (10,178,866), and further in view of Durdag et al. (8,828,516).
With respect to claim 6, Keller discloses all aspects of the claimed invention with the exception of the superabsorbent polymer being crosslinked. Durdag teaches crosslinking a polyacrylic acid superabsorbent polymer to secure the polymer within an absorbent layer, as disclosed in column 10, lines 45-55. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to crosslink the superabsorbent polymer of Keller, as taught by Durdag, to allow the polymer to be secured into an absorbent layer.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (2010/0030170), or in the alternative over Keller in view of Worley et al. (10,178,866), and further in view of Quincy, III (6,823,530).
With respect to claim 8, Keller discloses all aspects of the claimed invention with the exception of the composition containing from 86-275 ppm of titratable Cl/mL. Quincy discloses a composition comprising a water absorbing material and an N-halamine compound, and teaches contacting the composition with chlorine during use and that the interaction with chlorine stabilizes the antimicrobial agent, as disclosed in column 7, lines 26-34. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to contact the composition of Keller with chlorine, as taught by Quincy, to stabilize the antimicrobial agent, and further to provide the composition with from about 86-275 ppm of titratable Cl/mL to achieve the predictable result of a sufficient amount of chlorine to achieve stabilization.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (2010/0030170), or in the alternative over Keller in view of Worley et al. (10,178,866), and further in view of Piron et al. (4,883,479).
With respect to claim 18, Keller discloses an absorbent article, as shown in figure 1, comprising a base sheet 102 of fluid impervious material, a top sheet 110 of pervious nonwoven material, and an absorbent pad 106, the absorbent pad comprising the composition of claim 1, as disclosed in paragraph [0037].
Keller discloses all aspects of the claimed invention with the exception of the absorbent pad having a central portion and two side panels folded over the central panel, a wadding sheet, and a binder securing the side panels to the central panels and penetrating the wadding sheet. Piron discloses an absorbent article comprising an absorbent pad, as shown in figure 1, comprising a wadding sheet having a central portion 2 and side panels 1 that are folded over the central portion. A binder secures the side panels to the central panel and penetrates the wadding sheet, as disclosed in column 3, lines 20-34. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the absorbent pad of Keller with a central portion and two side panels folded over the central panel, a wadding sheet, and a binder securing the side panels to the central panels and penetrating the wadding sheet, as taught by Piron, to apply a known technique to achieve the predictable result of a stable absorbent pad.
Modified Keller does not explicitly disclose the base sheet and top sheet being connected to each other about the periphery of the article, but it is well-known in the art to bond the top and back sheets of an absorbent article together around the periphery to form a secure envelope around the absorbent pad. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to connect the base sheet and the top sheet of Keller about the periphery of the article to achieve the predictable result of forming a secure envelope around the absorbent pad.
With respect to claim 19, the article of Keller is for incontinence care, as disclosed in paragraph [0002], and therefore is a diaper.
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 LYNNE ANDERSON whose telephone number is (571)272-4932. The examiner can normally be reached Monday-Friday 10-6.
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/CATHARINE L ANDERSON/Primary Examiner, Art Unit 3781
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