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 .
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 30 April 2026 is acknowledged. The traversal is on the ground(s) that there is no evidence to show that the process of using as claimed can be conducted as the office action alleges. The office action simply states a conclusion. This is not found persuasive because Safak teaches that it’s Schiff bases displays corrosion inhibition efficiency (Abstract; and paras 2.1-2.5, and paras 3.1-3.4).
The requirement is still deemed proper and is therefore made FINAL. An action on the merits of Group I, claims 1-8 is set forth below. Group II, claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to because in Figures 11-12, 15A-D, and 16 it is not clear what parameters are plotted in the X- and Y-axis. The X and Y axes in the said figures just show numbers. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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.
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.
Claim(s) 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Abdel-Monem et al (Journal of Macromolecular Science, Part A: Pure and Applied Chemistry, 2020, 57(2), 145-155) in view of Elmehbad et al (International Journal of Biological Macromolecules; 2020, 151, 92-103) and further in view of Alharthi et al (Journal of King Saud University-Science, 2022, 34, 1-8; cited in IDS filed 01/26/2024).
Abdel-Monem teaches a nanohybrid chitosan composite comprising a matrix of a chitosan Schiff base with anisaldehyde and salicylaldehyde and silver nanoparticles (Abstract; page 146, part 2.2.2; part of the limitations of claim 1 regarding nanohybrid chitosan composite; wherein R1 as in instant formula (I) is OH, and R3 is alkoxy, and R2=R4=R5= H). Monem uses low molecular weight carboxymethyl chitosan (page 146, part 2.1). This means that the number n for the repeat units in formula (I) should be in the range of 2 to 500 as in claim 1. The chitosan Schiff base also has silver nanoparticles uniformly distributed throughout the matrix, and the composite has porous structure as in claim 1 (page 148, part 3.3). Fig. 4 a shows the SEM of the composite. As seen in Fig. 4a the composite has a porous structure (dark circles in the background) with the dots being the silver nanoparticles (as in claim 1). The silver nano particles are observed with a size of 7-15nm (page 149, part 3.4; as in claim 2). Since the chitosan has free hydroxyl groups the AgNPs will interact with the oxygen atom of the plurality of hydroxyl groups as in claim 4, and via a nitrogen atom of a plurality of residual amino groups (ones that did not react with the aldehyde carbonyl) to form the NHc composite as in claim 5. Fig. 4a shows pores of different sizes which include pores with size of about 30nm to 80nm as in claim 6.
Monem et al does not teach the use of chitosan as shown in formula (I) in claim 1, the use of p-tolualdehyde to form the Schiff’s base as in claim 3, and the limitations of claims 7-8.
Elmehbad, in a method of making chitosan modified with silver nanoparticles, teaches the preparation of Schiff base of chitosan with benzaldehyde (page 94, Scheme 1, Derivative 1). The chitosan used by Elmehbad also has a degree of deacetylation of 88% (page 93, part 2.1). Therefore, Derivative 1 should have the structural features of chitosan as recited in claims 1 and 3, except for the substitutions other than H, alkoxy and hydroxyl as in claim 1 and the methyl group at the para position of the phenyl in formula (II) in claim 3.
Alharthi et al teach making of chitosan Schiff base, silver nanoparticle composite (page 2, parts 2-2.5, 2.7, 3.4-3.5, 3.7). Therefore, the composites as claimed could also be made with chitosan without the carboxymethyl substitutions as in Monem.
Even though Elmehbad does not expressly teach making the silver nanoparticle composites with derivative 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make the claimed composites as in claims 1 and 3 in view of Monem and Elmehbad.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, chitosan Schiff base composite with silver nanoparticles show remarkable antibacterial activities (page 151, part 3.7, and page 153, part 4).
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. Product improvement is the motivation. One of ordinary skill in the art would look for other such composites having enhanced bacterial activities. Even though the percentage of the elements C, N, O, Na, and Ag as in claims 7-8 is not taught in the prior art, the amounts can be determined by using EDX spectra as in Monem. The amount of carbon, O, N and Ag would depend on the molecular weight of chitosan and the substitutions used on the phenyl ring and the amount of silver. These can be adjusted to obtain the percentages as in claims 7-8. It would also be obvious to the artisan to make the Schiff bases of the chitosan via reaction of the aldehydes having the substitutions as in claims 1 and 3 and their corresponding composites comprising AgNPs.
Conclusion
1. Elected claims 1-8 (Group I) are rejected.
2. Group II, claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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