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 .
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.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-3, 17, 21, 25-26, 31, 36, 43, 57-58, 71-72, 77, 117-119, and 130, and C18DMDEG as the species of the first quaternary ammonium salt, hydroxyethyl cellulose as the species of the water-soluble polymer, and the election that the second quaternary ammonium salt is absent in the reply filed on 01/09/2026 is acknowledged.
Claim 125 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and claims 58 and 71 are withdrawn as being drawn to a nonelected species (elected that the second quaternary ammonium salt is absent), there being no allowable generic or linking claim.
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.
Claims 1-3, 17, 21, 31, 36, 43, 57, 77, 117-119, and 130 are rejected under 35 U.S.C. 103 as being as being obvious over Severich et al. (US 2012/0015574 A1) in view of Jin et al. (CN 111849328 A).
Regarding claims 1 and 118-119 Severich discloses a polyurethane emulsion to coat textile fabrics which is produced by reacting polyols with diisocyanates in the presence of an antimicrobial agent [abstract] [0048]. Severich discloses the antimicrobial agent is preferably a quaternary ammonium salt with a functional group that is capable of addition to isocyanate, preferably an OH group [0053] [0254]. Severich discloses a quaternary ammonium-isocyanate adduct [0255] is added to a prepolymer of fatty polyols [0247]-[0252] [0112]-[0120] and the emulsion is then diluted with water [0253].
Severich does not disclose a water-soluble polymer.
Jin teaches a coating for fabrics (English translation, pg. 2) with isocyanate and hydroxyethyl cellulose (English translation, pg. 3, paragraph 10). Jin teaches that the aqueous polymer, such as hydroxyethyl cellulose, is easy to dissolve in water, and its crosslinking with isocyanate improves the stability of the material long-term (English translation, pg. 3, paragraph 10).
Since Severich generally teaches a coating for fabrics with isocyanate, it would have been prima facie obvious to one of ordinary skill in the art to include hydroxyethyl cellulose, within the teachings of Severich, because Jin teaches hydroxyethyl cellulose crosslinked with isocyanate in a coating for fabrics. An ordinarily skilled artisan would be motivated to use hydroxyethyl cellulose, within the teachings of Severich to improve the stability of the material long-term (English translation, pg. 3, paragraph 10).
Regarding the limitations of “an oil-in-water emulsion”, “an oil phase”, and “an aqueous phase”, while Severich does not explicitly disclose these limitations, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the combined teachings of the prior art disclose an emulsion with the same components (quaternary ammonium-isocyanate added to fatty polyols; hydroxyethyl cellulose in water), the properties the applicant discloses and/or claims (“oil phase” and “aqueous phase”) are necessarily present.
Regarding claim 2, it would have been prima facie obvious to include hydroxyethyl cellulose, as taught by Jin, crosslinked to the adduct of Severich (contains the isocyanate), as previously discussed.
Claim 3 is rendered prima facie obvious because Severich discloses the antimicrobial agent is preferably a quaternary ammonium compound with at least one alkyl radical having a length equal to or greater than ten carbon atoms as well as a functional group that is capable of addition to isocyanate, preferably an OH group [0053]. The following quaternary ammonium salt is disclosed [0254].
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While this quaternary ammonium salt differs from the elected compound (C18DMDEG) in that it does not contain an ether functional group and has a chloride instead of a bromide counter ion, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. See MPEP 2144.09. In the instant case, the compounds have close structural similarities (quaternary ammonium salt with same hydrophobic chain length and differ only in the ether functional group and counter anion) and have the same utility as an antimicrobial agent.
Claims 17 and 21 are rendered prima facie obvious because Severich discloses diisocyanates, such as hexamethylene diisocyanate [0154] [0133] [0252].
Claim 31 is rendered prima facie obvious because Severich discloses the quaternary ammonium-isocyanate-polymer emulsion is diluted with a diluent (water) [0253].
Claim 36 is rendered prima facie obvious because Severich discloses polyols such as polyether polyols [0120].
Claim 43 is rendered prima facie obvious because it would have been prima facie obvious to include hydroxyethyl cellulose, as taught by Jin, within the teachings of Severich, as previously discussed.
Regarding claims 57 and 77, the polymer network being produced from “random polymerization/crosslinking” is interpreted as a product-by-process limitation. Even though the 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, then the claim is unpatentable even though the prior product was made by a different process. In the instant case, the polymer network of the combined teachings of Severich (containing the adduct crosslinked to polyols [0247]-[0255]) and Jin (teaches hydroxyethyl cellulose crosslinked to isocyanate; English translation, pg. 3, paragraph 10), reads on the claimed polymer network. As such, the patentability of the instant claim does not depend on its method of production, and the Applicant' s limitation regarding the polymer network being produced from random polymerization is not patentable in view of Severich and Jin.
Claim 117 is rendered prima facie obvious because Severich discloses a composition of the polymer network discussed above [abstract] [0048] [0247]-[0255].
Regarding claim 130, the preparation method of the polymer network is interpreted as a product-by-process limitation, as discussed above. In the instant case, the polymer network of the combined teachings of Severich and Jin, containing a quaternary ammonium salt, isocyanate, polyols, and hydroxyethyl cellulose, reads on the claimed polymer network. As such, the patentability of the instant claim does not depend on its method of production, and the Applicant' s limitation regarding the process of preparation is not patentable, in view of Severich and Jin. Even so, Severich discloses a quaternary ammonium-isocyanate adduct is formed [0254]-[0255] is added to a prepolymer emulsion of polyols [0247]-[0252] [0112]-[0118] to form a reactive emulsion which can be diluted with water [0253]. It would have been prima facie obvious to include hydroxyethyl cellulose as previously discussed. Severich discloses the emulsion is applied to surfaces [0058]-[0059] and dried by heating (i.e., cured) to form a polymer network [0021].
Claims 3 and 72 are rejected under 35 U.S.C. 103 as being as being obvious over Severich et al. (US 2012/0015574 A1) in view of Jin et al. (CN 111849328 A) and further in view of Wang et al. (US 2011/0124772 A1).
The 35 U.S.C. 103 rejection over Severich in view of Jin was previously discussed.
While claim 3 is prima facie obvious over Severich in view of Jin, as discussed above due to the close structural similarities between the quaternary ammonium salt taught by Severich and the elected compound C18DMDEG, in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, the claim will be interpreted as not being obvious because Severich does disclose the elected compound C18DMDEG.
Wang teaches an antimicrobial coating composition with a polymeric backbone and an antimicrobial active moiety [abstract] [0029]. The following is disclosed as an exemplary quaternary ammonium halide with antimicrobial activity where it is disclosed that m = 1-3, n=17, and X- is a bromide ion [0064] [0033].
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Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Severich generally taught antimicrobial quaternary ammonium salts, it is prima facie obvious to select that taught by Wang at [0064] for incorporation into the composition based on its recognized suitability for the intended use as an exemplary quaternary ammonium halide with antimicrobial activity, as taught by Wang.
Regarding claim 72, Severich does not disclose that the polymer network includes the claimed chain extenders.
Wang teaches that the polymer backbone includes polyols as chain extenders such as 1, 4-butanediol and ethylene glycol [0041].
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Severich generally taught an antimicrobial coating composition with polyols, it is prima facie obvious to include polyols such as 1, 4-butanediol and ethylene glycol based on their recognized suitability for the intended use as polyols in an antimicrobial coating composition as taught by Wang.
Further regarding claims 3 and 72, it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., quaternary ammonium salt; 1, 4-butanediol and ethylene glycol) were known in the prior art (e.g., Wang) and one skilled in the art could have combined the elements as claimed (within the teachings of Severich and Jin) by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., an antimicrobial coating composition) to one of ordinary skill in the art. MPEP 2143.A.
Claims 25-26 are rejected under 35 U.S.C. 103 as being as being obvious over Severich et al. (US 2012/0015574 A1) in view of Jin et al. (CN 111849328 A) and further in view of Jana et al. (Polymers 2021, 13, 2875. https://doi.org/10.3390/polym13172875).
The 35 U.S.C. 103 rejection over Severich in view of Jin was previously discussed.
Regarding claims 25-26, Severich does not disclose that the reactive isocyanate functionality on the first adduct is protected with a blocking agent, where the blocking agent is selected from those recited in claim 26.
Jana teaches that blocking agents, such as phenyls, oximes, alcohols, and lactams, can be used in the preparation of polyurethanes from diisocyantes (abstract; pg. 2, first paragraph). Jana teaches that the blocking agents are used to reduce the hazards of diisocyantes and for operational simplicity (abstract; pg. 1-2).
Since Severich generally teaches reactions with diisocyantes, it would have been prima facie obvious to one of ordinary skill in the art to include a blocking agent, such as a phenyl, oxime, alcohol, or lactam, within the teachings of Severich, because Jana teaches that these blocking agents are used to reduce the hazards of diisocyantes and for operational simplicity (abstract; pg. 1-2).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompaJind by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 17, 21, 25-26, 31, 36, 43, 57, 72, 77, 117-119, and 130 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 18, 22, 39, 46, 61-62, 87, 105-106, 108-110, 184, 196-197, 203, and 208 of U.S. Patent Application No. 18/373,683.
Although the claims at issue are not identical, they are not patentably distinct from each other because the species (antimicrobial composition) recited in the claims of the copending application falls within the genus (antimicrobial composition) recited in the claims of the instant application, and thus reads on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Conclusion
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612