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 .
Priority
The instant application is a DIV of application 17/088,170 (now US 11,850,312) filed 3 November 2020.
Status of the Claims
Claims 19 and 21-24 are pending.
Claims 19 and 21-24 are rejected.
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.
Claims 19 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasumi et al. (US 5,824,267) in view of Jupin et al. (US 2010/0000901) in view of Ting et al. (US 2010/0113686) in view of Karpman et al. (US 2020/0352162).
Kawasumi teaches particles that, when embedded in a surface, said particles are effective to give a bactericidal surface of a plastic article (abstract) and a method for sterilizing liquid or solid materials using said particles (claim 1). The ceramic fine particles can comprise both titanium dioxide and silver particles (col 2, lns 38-52) wherein the silver particle has a diameter in the micron range, such as from 1-10 mm (1,000-10,000 nm) (col 2, lns 53-54) or, when the particles are extremely fine, the diameter ranges less than 0.1 mm (>100 nm) (col 2, lns 60-65). Silver is selected because of its safety and high bactericidal activity (col 3, lns 45-47). The base metal particle, which can be titanium dioxide, can range in diameter from 0.01-0.5 mm (10-500 nm) (col 3, lns 20-33). The titanium particles are interpreted as being spherical based on the teachings of a particle diameter, which implies a spherical shape and which further implies a sphericity value close to 1. The metallic bactericidal agent (silver-titanium) can be incorporated in a variety of molded articles wherein a portion of each particle is exposed over the surface of the article and wherein the article can be made of a synthetic polymer such as polyethylene (col 3, lns 55-61). The choice of article is not particularly limited and can include hospital curtains, refrigerators, phone, keyboards, and food wrappers (col 3, ln 61- col 4, ln 12). In Example 1, silver is used in 10 wt% in relation to the titanium dioxide powder to form silver-deposited titanium dioxide (col 4, lns 25-30). To make the article, the silver-deposited titanium dioxide is mixed in a 1:100 ratio with polyethylene resin and kneaded to form a film sheet of 20 mm thick (col 7, lns 1-7). In an alternative example, the film is 300 mm thick (col 7, lns 20-26).
Kawasumi does not teach the density or melting point of the polyethylene. Kawasumi does not teach the tensile strength.
Jupin teaches preparing granules comprising silver as a bactericidal agent and a thermoplastic material wherein the plastic can be low density polyethylene (LDPE) [0042-0043].
Ting teaches silver-containing polyurethane films (Abstract). It is shown that the tensile strength improves (increases) when silver is added into the film [0036] (Fig. 8).
Karpman teaches antimicrobial film (abstract) that can comprise silver [0019]. Karpman teaches that the desired thickness is 50.8 microns and wherein the tensile strength ranges from 38.6-52.1 MPa (Claim 19).
It would have been prima facie obvious to prepare silver-deposited titanium dioxide (spheres) and deposit them in a polyethylene matrix to form a film sheet that has antibacterial properties and can be used to sterilize plastic articles, based on the teachings of Kawasumi. The film, which can have a thickness of 20 mm or 300 mm, can comprise 100 parts polyethylene and 1 part silver-deposited titanium dioxide, which implies the polyethylene comprising 99% of the film and the silver-deposited titanium dioxide comprising about 1% by weight. Since the silver comprises 10% of the particle, the overall concentration of silver can be extrapolated as being 0.1% by weight. That being said and in lieu of objective evidence of unexpected results, the concentrations of each agent can be viewed as a variable which achieves the recognized result of successfully forming an antibacterial film composition. The optimum or workable range of polyethylene, silver, and titanium dioxide can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of polyethylene, silver, and titanium dioxide nonobvious.
Kawasumi is broad to any polyethylene, therefore it would have been obvious to look to Jupin, which teaches silver-comprising bactericidal particles can be combined with a polyethylene wherein the polyethylene is LDPE. The resulting composition of Kawasumi would be a blend of LDPE comprising silver-deposited titanium dioxide for the sterilization of a plastic surface. The instant specification teaches that LDPE has a melting point in the range of 90-125 ºC and a density from 0.9-0.99 g/cm3, as required in instant claim 19. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
The composition of Kawasumi is taught as being useful in a method for sterilizing (i.e. disinfecting) a solid material, wherein the material can be plastic. Therefore, it would have been obvious to use the film of Kawasumi to treat any plastic article, including but not limited to health care and entertainment devices. Items such as hospital curtains, refrigerators, and phones can be interpreted as health care and entertainment devices. These items are all associated with a person touching them with their skin, such as phones, and would happen after being treated with the antimicrobial film. The diameters of the particles overlap with the required limitations of the instant claims. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
Regarding the film thickness, Kawasumi teaches examples ranging from 20-300 mm thick, therefore the overall thickness is not particularly critical and would have been obvious to be any value in the range of 20-200 mm.
Regarding the tensile strength of the film, Ting teaches that silver is known to enhance the tensile strength of a film. Thus, it would have been obvious that preparing the silver-containing film of Kawasumi would result in an increase in the tensile strength as compared to without the inclusion of the silver. Karpman is applied for its teaching that an antimicrobial film composition can have a tensile strength between 38.6-52.1 MPa when used as a treatment. The specific measurement of tensile strength is a result of the formulation as taught in the prior art and would necessarily flow from the arrangement of silver and titanium dioxide in a polyethylene matrix, however it would have been obvious to have been at least 18 MPa, if not higher, as taught in Karpman. Similarly, the ability of the film formulation to limit bacterial transfer is inherent in the antimicrobial properties of the silver and titanium agents (see MPEP 2112.01 (II)).
As such, claims 19 and 21-24 are rejected as obvious over the prior art.
Response to Arguments
Applicant's arguments filed 13 January 2026 have been fully considered but they are not persuasive. The Applicant argues, on pages 4-6 of their remarks, that they have demonstrated that by incorporating silver particles and TiO2 particles into an organic matrix comprising polyethylene results in increasing the tensile strength of the polyethylene.
In response, the prior art renders obvious a polyurethane film comprising silver and titanium dioxide particles, which would inherently provide the claimed antimicrobial properties when applied to a substrate. Moreover, by preparing the composition, as claimed, by following the guidance of the prior art, the skilled artisan would have prepared a composition used in method for disinfecting a surface wherein the composition comprising silver particles necessarily provides an increase in tensile strength, as disclosed in Ting. Karpman teaches a desired range of tensile strength which is all over 18 MPa. The specific arrangement of the film taught in Kawasumi would necessarily result in the tensile strength as required in the instant claims. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)). The rejection is accordingly maintained.
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 ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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