DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Patent Prosecution Highway
This request to participate in the Patent Prosecution Highway (PPH) was GRANTED on 15 November 2023. Therefore, the present application is made SPECIAL.
Status of the Claims
Claims 1-3, 7 and 13-14 are pending in the present application. Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
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.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 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 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. Claim 14 states, “the anti-infective fibrous product is fixed in a state of having physically penetrated into spaces between twisted fibers of the fibrous material” and “the anti-infective fibrous product is fixed between twisted fibers rather than forming a continuous coating layer on a surface of the fibrous material”. The instant specification and claims as originally filed do not provide adequate written support for these limitations. The specification does not teach that the disinfectant is fixed in spaces between twisted fibers and does not form a continuous coating layer on a surface of the fibrous material.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 14 states, “the anti-infective fibrous product is fixed in a state of having physically penetrated into spaces between twisted fibers of the fibrous material” and “the anti-infective fibrous product is fixed between twisted fibers rather than forming a continuous coating layer on a surface of the fibrous material”. The claim is confusing because “the anti-infective fibrous product” is the entire product of claim 1 comprising the fibrous material, disinfectant, resin binder and crosslinking agent. It is unclear how the product can be penetrated into spaces between twisted fibers of the fibrous material since the fibrous material is a part of the product. It is unclear if Applicant intended to state that the disinfectant is fixed in a state of having physically penetrated into spaces between twisted fibers of the fibrous material, and the disinfectant is fixed between twisted fibers rather than forming a continuous coating layer on a surface of the fibrous material.
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 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurada (US 2021/0068399 A1) in view of Majumdar et al. (Materials Science and Engineering C, 2015) and Niño-Martínez et al. (Nanotechnology, 2008).
Regarding instant claims 1 and 14, Sakurada teaches an agent having efficacy against at least one of viruses, allergens, bacteria, fungi and odorants includes titanium dioxide particles having low photocatalytic activity, and metal ions of at least one metal selected from gold, silver, platinum and copper that are adsorbed to the surface of the titanium dioxide particles ([0009], [0061]-[0069]; Claim 1).
Regarding the limitation of a fibrous material comprising a yarn of a polyester, Sakurada teaches throughout that the material according to the currently discussed aspect may be applied to a substrate such as fibers of a woven fabric, a nonwoven fabric or paper, wood, a plastic, a metal or a ceramic bearing the agent according to one aspect of the present invention to allow the substrate to exhibit a high level of efficacy against at least one of viruses, allergens, bacteria, fungi and odorants over long periods of time regardless of the presence or absence of light while ensuring that the substrate has an appropriately long lifetime ([0026]-[0032]). To enhance the bond strength of the agent with respect to the fibers, a known binder may be used in the dispersion solution of the agent in a solvent, and the agent together with the binder may be attached to the surface of the fibers ([0032]).
Sakurada teaches fibers of any of woven fabrics and nonwoven fabrics, but does not explicitly disclose a yarn of a polyester, as instantly claimed.
Majumdar et al. teach there has been a growing demand among consumers for clean and hygienic products. Textiles remain in contact with human skin for almost the entire day. A broad range of microorganisms coexist with human body and living environments. However, a rapid and un controlled multiplication of microorganisms can seriously lead to three unwanted effects, namely discoloration, malodor and health risk. The control of microorganisms on textile materials is required in diverse areas such as hospital, sports and everyday household. Textile materials, whether natural or synthetic, do not have any inherent resistance against bacteria or pathogenic fungi. Thus, various antibacterial finishes and disinfection techniques are used for textiles (pg. 26, col. 1). Majumdar et al. teach knitted materials were produced using different proportions (wt.%) of polyester–silver nanocomposite fibers along with varying yarn counts and knitting machine gauge. A linear programming approach was adopted to optimize the performances of antibacterial materials by eliciting the optimum combination of blend percentage of nanocomposite fibers, yarn count and machine gauge (pg. 27, col. 1).
Majumdar et al. teach that the increase in the percentage of nanocomposite fibers rapidly increases the antibacterial activity of knitted materials. On the other hand, the reduction of yarn count (increase in yarn diameter) and increase in machine gauge lead to a gradual increase in antibacterial activity. The antibacterial activity produced by the polyester–silver nano composite fibres was durable to washing. Even after repeated washing, there was no perceptible drop in the antibacterial activity of knitted materials made from polyester–silver nanocomposite fibres (pg. 31, Conclusions).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the fibrous product according to Sakurada wherein the fibrous material is a yarn of a polyester. A person of ordinary skill in the art would have been motivated to use a yarn of a polyester as the material in Sakurada because Majumdar et al. teach the need for preparing antimicrobial polyester material, wherein polyester-silver nanocomposite fibers have been shown to be antimicrobial and durable even after washing. Sakurada teaches that the substrate for their material can be fibers of any woven or nonwoven fabrics. Therefore, a person of ordinary skill in the art would reasonably expect the yarn of polyester to be a suitable substrate for use in Sakurada.
Regarding the limitation of titanium dioxide that adsorbs silver ions, Sakurada teaches that silver ions are adsorbed to the surface of the titanium dioxide (Abstract; Figures 1A-1D and 2A-2D; [0009], [0012], [0017], [0061]-[0069], etc.; Claims 1 and 17).
Regarding the limitation of particle size distribution and weight average diameter of the titanium dioxide, Sakurada teaches that in Examples 1 and 2, commercial white pigment KRONOS titanium dioxide KA-10C (product name, Titan Kogyo, Ltd.) was used as base titanium dioxide particles ([0062]).
Sakurada does not explicitly disclose that the titanium dioxide has a particle size distribution that follows the probabilistic distribution within a range of 100 nm to 600 nm, and a weight average diameter of the order of 300 nm, wherein a particle size of 100 nm or less included in the titanium dioxide is less than 0.3%.
The declaration filed 18 April 2024 states that Sakurada uses titanium dioxide KA-10C which has a weight average particle diameter of 0.179 µm, and the content of nanoparticles having a particle diameter of 100 nm or less is 9.56%.
Sakurada teaches that in Example 1 and Example 2, titanium dioxide known as a pigment was used as the base material. Any commercial titanium dioxide having lower photocatalytic activity than photocatalytically active titanium dioxide may be appropriately selected for use in the present invention ([0093]). Sakurada further teaches that Example 1 and Example 2 have illustrated that silver ions are formed by electrolysis, but silver ions, or gold ions, platinum ions or copper ions may be supplied by the addition of an aqueous solution of, for example, silver nitrate (AgNO3), gold chloride (AuCl2), platinum chloride (PtCl2), cupric chloride (CuCl2) or cupric nitrate (Cu(NO3)2) ([0090]).
Niño-Martínez et al. teach antibacterial nanoparticles comprising silver ions adsorbed onto the surface of titanium dioxide particles, wherein the titanium dioxide particles have a particle size ranging from 200 to 450 nm (pg. 2, col. 2, Section 3.2). Figure 2a shows the titanium dioxide particle size of about 264-283 nm. Niño-Martínez et al. teach the nature of the silver nanoparticles prepared on the surface is elemental silver (pg. 7, Conclusions). Niño-Martínez et al. teach that the titanium dioxide nanoparticles with silver on the surface exhibited a synergistic antibacterial activity (pg. 6-7, Section 3.8).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare material according to Sakurada comprising silver ions adsorbed on the surface of titanium dioxide nanoparticles with a size ranging from 200 to 450 nm as reasonably taught by Niño-Martínez et al. A person of ordinary skill in the art would have been motivated to use the particles according to Niño-Martínez et al. because they teach that the composites comprising elemental silver adsorbed onto titanium dioxide having a particle size from 200 to 450 nm was synergistic and provided the best antibacterial results compared to the titanium dioxide particle, TiO2-_2, with particle sizes ranging from 15 to 70 nm (pg. 3, col. 2; pg. 6-7, Section 3.8).
A person of ordinary skill in the art would reasonably expect that the composites according to Niño-Martínez et al. would function similarly as the nanoparticles according to Sakurada, and would possess antimicrobial activity when applied to a fibrous material and product.
In the absence of evidence to the contrary, the titanium dioxide nanoparticles according to Niño-Martínez et al. would necessarily follow the probabilistic distribution within a range of 100 nm to 600 nm, and also have less than 0.3% of particle sizes of 100 nm or less.
Regarding the limitation of an aqueous resin binder, Sakurada teaches the titanium dioxide bearing silver ions were dispersed in an aqueous solution of an acrylic resin as a binder ([0064], [0068], [0093]). Sakurada teaches that to enhance the bond strength of the agent with respect to the fibers, a known binder may be used in the dispersion solution of the agent in a solvent, and the agent together with the binder may be attached to the surface of the fibers ([0032]).
Regarding the limitation of a polycarbodiimide-based aqueous thermosetting crosslinking agent, Sakurada teaches that to be safe, the binder used for bonding and fixation will be one that uses a thermosetting polycarbodiimide curing agent and is free from preservatives. By rendering the binder used in the agent thermosetting, the agent according to the present invention attains higher safety and becomes environmentally friendly and persistent ([0107]).
The polycarbodiimide curing agent according to Sakurada is the same as the polycarbodiimide-based aqueous thermosetting crosslinking agent, and would therefore meet Grade 0 biocompatibility.
Regarding the limitation of a persistent bactericidal effect of 4log even in the absence of light, Sakurada teaches that the metal ions of at least one selected from gold, silver, platinum and copper are known to have, depending on their types, various levels of antiviral effects, antiallergenic effects, sterilizing effects, antifungal effects or antiodorant effects regardless of the presence or absence of light… Thus, the agent according to the currently discussed aspect of the present invention exhibits a high level of efficacy against at least one of viruses, allergens, bacteria, fungi and odorants over long periods of time regardless of the presence or absence of light. For example, the agent according to the currently discussed aspect of the present invention does not substantially release silver ions into water (the amount of silver ion release is as small as several ppb). Thus, the agent according to the currently discussed aspect of the present invention decomposes dead organisms such as of viruses, bacteria and fungi, allergens, odor substances and soiling substances, mainly by way of contact therewith. Furthermore, the agent according to the currently discussed aspect of the present invention is substantially free from silver ion release and thus exhibits efficacy against at least one of viruses, allergens, bacteria, fungi, odorants, harmful substances and the like over long periods of time ([0012], [0017], [0019], [0021], [0023], [0025], [0030], etc.). The textile samples comprising silver ions adsorbed on titanium dioxide exhibited a greater than or equal to 4log bactericidal effect (Tables 1-2).
Regarding the limitation of biocompatibility and lack of environmental toxicity, Sakurada teaches that the agents according to the present invention are substantially insoluble and do not burden the environment. There are a variety of conventional medical products for sterilizing bacteria, deactivating viruses, decomposing allergens, and eliminating odors. However, the fact is that such medical products are more intrinsically destructive to the human body and the nature with increasing efficacy. In contrast, the agents according to the present invention are insoluble in water and remain effective for long periods of time, and are thus safe and do not adversely affect the environment ([0128]).
Regarding the limitation of a lack of release of nanosilver and eluted silver ions into pure water, Sakurada teaches that the agent according to the currently discussed aspect of the present invention does not substantially release silver ions into water (the amount of silver ion release is as small as several ppb). Thus, the agent according to the currently discussed aspect of the present invention decomposes dead organisms such as of viruses, bacteria and fungi, allergens, odor substances and soiling substances, mainly by way of contact therewith. Furthermore, the agent according to the currently discussed aspect of the present invention is substantially free from silver ion release and thus exhibits efficacy against at least one of viruses, allergens, bacteria, fungi, odorants, harmful substances and the like over long periods of time ([0012]).
Regarding the limitation of a bactericidal effect when the number of washing cycles is 300, Sakurada teaches that the evaluation results 2 have shown that the textile sample of Example 2, comprising silver ions adsorbed on titanium dioxide nanoparticles and an acrylic resin binder on sterilized gauze, after being washed 200 times and after being washed 300 times, exhibited good antibacterial activity against Staphylococcus aureus and Escherichia coli. Furthermore, the evaluation results 2 indicated that the textile sample would have shown good antibacterial activity even after more than 300 times of washing, and would have satisfied longer persistence in line with the advantageous effects of the present invention ([0094]-[0105]).
Regarding instant claim 2, Sakurada teaches examples comprising silver ions, such as silver oxide, silver hydroxide and elemental silver, adsorbed on titanium dioxide nanoparticles, combined with an aqueous resin binder and applied to a fibrous material ([0061]-[0069]; Examples 1-2). During drying, part of the silver ions that have been adsorbed to the titanium dioxide and the hydroxyapatite react with water and convert to silver hydroxide (AgOH or Ag2O.H2O) and then to silver oxide (Ag2O), and the silver hydroxide or the silver oxide is further partially photodecomposed by external light into silver atoms ([0065]).
Regarding instant claim 3, Sakurada teaches that as the carriers, the following can be listed: oils, for example, drying oils such as linseed oil, etc., semidrying oils such as soybean oil, etc., and nondrying oils such as castor oil, etc., resins, for example, natural resins (such as pine resin (rosin), modified pine resin (modified rosin), gilsonite, etc.), natural resin derivatives, phenol resins, alkyd resins, xylene resins, urea resins, melamine resins, polyamide resins, acrylic resins, epoxy resins, ketone resins, petroleum resins, polyvinyl chloride resins, polyvinyl acetates, urethane resins, chlorinated polypropylenes, chlorinated rubbers, cyclized rubbers, cellulosic derivatives and reactive resins; and plasticizers ([0110]).
Regarding instant claim 13, Sakurada teaches preparation of textile sample of Example 2, wherein equal amounts of the titanium dioxide particles and the hydroxyapatite particles were dispersed in distilled water. Unlike in Example 1, no silver metal was dispersed in the distilled water in Example 2. Next, electrolysis was performed for a short time using a silver metal plate as the anode and a platinum metal plate as the cathode, thereby forming silver ions in the distilled water ([0066]-[0069]). Thus, the textile sample of Example 2 according to Sakurada does not comprise nanosilver.
Response to Arguments
Applicant's arguments filed 28 January 2026 have been fully considered but they are not persuasive. Applicant asserts that neither Sakurada nor Niño-Martinez et al. teaches incorporating disinfectant in a yarn of a polyester to attain no cytotoxicity, nor using a combination of polyester and a polycarbodiimide based aqueous thermosetting crosslinking agent, unlike amended claim 1.
The examiner respectfully argues that Sakurada teaches that to be safe, the binder used for bonding and fixation will be one that uses a thermosetting polycarbodiimide curing agent and is free from preservatives. By rendering the binder used in the agent thermosetting, the agent according to the present invention attains higher safety and becomes environmentally friendly and persistent ([0107]). Therefore, it would have been obvious to prepare the fibrous product according to Sakurada comprising a thermosetting polycarbodiimide curing agent as the binder and the substrate includes fibers.
Applicant further argues that Sakurada fails to teach the particle size distribution and weight average diameter of the titanium dioxide.
The examiner respectfully argues that Sakurada teaches essentially the same fibrous product as instantly claimed comprising silver ions adsorbed on titanium dioxide nanoparticles and an aqueous resin attached to a fibrous material, wherein the fibrous product has a persistent bactericidal effect in the absence of light and after 300 washes. Sakurada further teaches using a thermosetting polycarbodiimide curing agent, which attains higher safety and becomes environmentally friendly and persistent. Therefore, the fibrous product according to Sakurada is the same as instantly claimed, except Sakurada does not explicitly disclose the particle size distribution of the titanium dioxide.
Niño-Martínez et al. teach antibacterial nanoparticles comprising silver ions adsorbed onto the surface of titanium dioxide particles, wherein the titanium dioxide particles have a particle size ranging from 200 to 450 nm (Figure 2a shows the titanium dioxide particle size of about 264-283 nm); and the titanium dioxide nanoparticles with silver on the surface exhibited a synergistic antibacterial activity.
A person of ordinary skill in the art would have been motivated to select titanium dioxide nanoparticles according to Niño-Martínez et al. having a particle size ranging from 200 to 450 nm, such as about 300 nm, in view of the teaching that said titanium dioxide nanoparticles with silver on the surface exhibited synergistic antibacterial activity.
Applicant argues that Sakurada fails to teach incorporating the silver ions into yarn of the fibrous material or the fibrous product. Sakurada merely teaches "the amount of silver ion release is as small as several ppb".
The examiner respectfully argues that Sakurada teaches the agent according to the present aspect of the present invention is substantially free from silver ion release and thus exhibits efficacy against at least one of viruses, allergens, bacteria, fungi, odorants, harmful substances and the like over long periods of time ([0012], [0019]).
Applicant further argues that neither Sakurada nor Niño-Martínez et al. teaches the following features recited in claim 1, "wherein the disinfectant has biocompatibility; wherein the disinfectant does not exhibit environmental toxicity caused by nanoparticles, wherein the disinfectant does not exhibit environmental toxicity caused by nanosilver."
The examiner respectfully argues that Sakurada teaches that to be safe, the binder used for bonding and fixation will be one that uses a thermosetting polycarbodiimide curing agent and is free from preservatives. By rendering the binder used in the agent thermosetting, the agent according to the present invention attains higher safety and becomes environmentally friendly and persistent ([0107]). Also, Sakurada teaches that when metal ions of at least one selected from gold, silver, platinum and copper are adsorbed to the surface of titanium dioxide particles in a solution, and the particles are thereafter dried, part of the metal ions that have been adsorbed naturally converts to the hydroxide (the hydrate of the oxide) and then to the oxide with the progress of dehydration, and is further partially photodecomposed particularly by the surrounding light into the corresponding metal element. Thus, as long as the agent is not absolutely dry, the agent in the currently discussed aspect contains the metal not only in the form of metal ions naturally adsorbed to the surface of the titanium dioxide particles due to the surrounding humidity, but also in the form of oxide and hydroxide of the metal as well as the elemental metal ([0017]). Sakurada further teaches that the agent in the currently discussed aspect is inexpensive because, in particular, it does not contain metal particles of at least one selected from gold, silver, platinum and copper ([0019]). Therefore, the compositions according to Sakurada are environmentally friendly and does not exhibit environmental toxicity caused by nanosilver.
Applicant further argues that neither Sakurada nor Niño-Martínez et al. teaches attaining Grade 0 reactivity in the evaluation of biocompatibility based on ISO 10993-5. In particular, Sakurada fails to teach polyester, and therefore, Sakurada's product does not completely cytotoxicity.
The examiner respectfully argues that in view of Majumdar et al., as discussed above, it would have been prima facie obvious to use a yarn of a polyester as the fibrous material in Sakurada. Also, Sakurada teaches that to be safe, the binder used for bonding and fixation will be one that uses a thermosetting polycarbodiimide curing agent and is free from preservatives. By rendering the binder used in the agent thermosetting, the agent according to the present invention attains higher safety and becomes environmentally friendly and persistent ([0107]).
Applicant asserts that the disinfectant is incorporated into the yarn, but neither Sakurada nor Niño-Martínez et al. teaches the claimed features of new claim 14.
The examiner respectfully argues that Sakurada teaches that the material in the currently discussed aspect may be such that the substrate is fibers of any of a woven fabric, a nonwoven fabric and paper, and the fibers are impregnated with the agent by immersion of the fibers into a solution in which the agent is dispersed in a solvent ([0031]; Claim 6). Sakurada teaches that the step of drying the titanium dioxide particles with adsorbed silver ions may include bonding or attaching the metal ions of silver and the titanium dioxide particles to a substrate such as fibers with a resin or the like ([0052]).
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 accompanied 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 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,707,069 in view of Majumdar et al. (Materials Science and Engineering C, 2015) and Niño-Martínez et al. (Nanotechnology, 2008).
The instant claims are drawn to a fibrous product comprising a fibrous material comprising a yarn of a polyester, and a disinfectant incorporated in the yarn, the disinfectant comprising titanium dioxide that adsorbs silver ions, an aqueous resin binder, and a polycarbodiimide-based aqueous thermosetting crosslinking agent.
US ‘069 claims an agent having efficacy against at least one of viruses, allergens, bacteria, fungi and odorants, the agent comprising: titanium dioxide particles having low photocatalytic activity, and metal ions of at least one metal selected from gold, silver, platinum or copper that are adsorbed to the surface of the titanium dioxide particles, wherein the metal ions are present in the form of at least one of metal oxide or metal hydroxide (Claims 1-3). US ‘069 further claims a material/product comprising the agent above applied to a fibrous material (Claims 4-22), wherein the particles are bonded or fixed to the material using a thermosetting polycarbodiimide curing agent as a binder (Claim 23).
US ‘069 claim fibers of any of woven fabrics and nonwoven fabrics, but does not explicitly claim a yarn of a polyester, as instantly claimed.
Majumdar et al. teach there has been a growing demand among consumers for clean and hygienic products. Textiles remain in contact with human skin for almost the entire day. A broad range of microorganisms coexist with human body and living environments. However, a rapid and un controlled multiplication of microorganisms can seriously lead to three unwanted effects, namely discoloration, malodor and health risk. The control of microorganisms on textile materials is required in diverse areas such as hospital, sports and everyday household. Textile materials, whether natural or synthetic, do not have any inherent resistance against bacteria or pathogenic fungi. Thus, various antibacterial finishes and disinfection techniques are used for textiles (pg. 26, col. 1). Majumdar et al. teach knitted materials were produced using different proportions (wt.%) of polyester–silver nanocomposite fibres along with varying yarn counts and knitting machine gauge. A linear programming approach was adopted to optimize the performances of antibacterial materials by eliciting the optimum combination of blend percentage of nanocomposite fibres, yarn count and machine gauge (pg. 27, col. 1).
Majumdar et al. teach that the increase in the percentage of nanocomposite fibres rapidly increases the antibacterial activity of knitted materials. On the other hand, the reduction of yarn count (increase in yarn diameter) and increase in machine gauge lead to a gradual increase in antibacterial activity. The antibacterial activity produced by the polyester–silver nano composite fibres was durable to washing. Even after repeated washing, there was no perceptible drop in the antibacterial activity of knitted materials made from polyester–silver nanocomposite fibres (pg. 31, Conclusions).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the fibrous product according to US ‘069 wherein the fibrous material is a yarn of a polyester. A person of ordinary skill in the art would have been motivated to use a yarn of a polyester as the material in US ‘069 because Majumdar et al. teach the need for preparing antimicrobial polyester material, wherein polyester-silver nanocomposite fibers have been shown to be antimicrobial and durable even after washing. US ‘069 claims that the substrate for their material can be fibers of any woven or nonwoven fabrics. Therefore, a person of ordinary skill in the art would reasonably expect the yarn of polyester to be a suitable substrate for use in US ‘069.
US ‘069 does not explicitly claim that the titanium dioxide has a particle size distribution of 100 nm to 600 nm, a weight average diameter of the order of 300 nm and a particle size of 100 nm or less included in the titanium dioxide is less than 0.3%.
Niño-Martínez et al. teach antibacterial nanoparticles comprising silver ions adsorbed onto the surface of titanium dioxide particles, wherein the titanium dioxide particles have a particle size ranging from 200 to 450 nm (pg. 2, col. 2, Section 3.2). The nature of the silver nanoparticles prepared on the surface is elemental silver (pg. 7, Conclusions).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the antibacterial compositions according to US ‘069 comprising silver ions adsorbed on titanium dioxide, and applying the compositions to a fiber to allow the substrate to exhibit a high level of efficacy against at least one of viruses, allergens, bacteria, fungi and odorants over long periods of time regardless of the presence or absence of light while ensuring that the substrate has an appropriately long lifetime. Also, it would have been obvious to include an aqueous resin binder and thermosetting crosslinking agent in order to attain higher safety and become environmentally friendly and persistent, as claimed by US ‘069.
Regarding the particle size and weight distribution of the titanium dioxide, it would have been obvious to prepare composites comprising elemental silver nanoparticles on the surface of titanium dioxide nanoparticles with a size ranging from 200 to 450 nm as reasonably taught by Niño-Martínez et al. A person of ordinary skill in the art would have been motivated to use the particles according to Niño-Martínez et al. because they teach that the composites comprising elemental silver adsorbed onto titanium dioxide having a particle size from 200 to 450 nm was synergistic and provided the best antibacterial results compared to the titanium dioxide particle, TiO2-_2, with particle sizes ranging from 15 to 70 nm (pg. 3, col. 2; pg. 6-7, Section 3.8).
A person of ordinary skill in the art would reasonably expect that the composites according to Niño-Martínez et al. would function similarly as the nanoparticles according to US ‘069, and would possess antimicrobial activity when applied to a fibrous material and product.
Regarding the limitation that the disinfectant does not release nano silver, US ‘069 teaches that the agent according to the currently discussed aspect of the present invention does not substantially release silver ions into water (the amount of silver ion release is as small as several ppb). Thus, the agent according to the currently discussed aspect of the present invention decomposes dead organisms such as of viruses, bacteria and fungi, allergens, odor substances and soiling substances, mainly by way of contact therewith. Furthermore, the agent according to the present aspect of the present invention is substantially free from silver ion release and thus exhibits efficacy against at least one of viruses, allergens, bacteria, fungi, odorants, harmful substances and the like over long periods of time ([0012], [0019]).
Regarding instant claim 13, US ‘069 claims metal ions of at least one metal selected from gold, silver, platinum and copper that are adsorbed to the surface of the titanium dioxide particles. US ‘069 does not claim nanosilver as part of the disinfectant.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response above is repeated here as well.
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.
Contact Information
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616