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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/2/2024 and 10/26/2023 have been considered.
Election Acknowledged
Applicant's election with traverse of the invention of Group I encompassing claims 1-13 in the reply filed on 12/22/2025 is acknowledged. The traversal is on the ground(s) that Groups I and II do not pose a serious burden on the examiner as a search of one group would encompass the other and that the device could not be used in a method of treating lumber as it is a medical device. Applicant’s arguments are not found persuasive because the Groups can be differently classified and a different search could be required for each. The argument that the one would not use a medical device in a method of treating lumber is not persuasive because a medical device is an intended use. Further, prior art which may anticipate or render obvious one method would neither anticipate nor render obvious the other.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-16 are pending, claims 14-16 are withdrawn as being directed to nonelected invention and claims 1-13 are presented for examination on the merits.
The following rejections are made.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-6, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uhlman et al. (US 2012/0301533).
Uhlman describes metallic antimicrobial compositions comprising metallic nanoparticles. The nanoparticle is to comprise a copper salt (e.g. copper iodide (CuI), copper oxide (Cu2O); ionic copper), a silver halide (e.g. AgI) (ionic silver), a silver metal and a copper metal (see [0026, 0086]) (see instant claims 1 and 4). The nanoparticles are to include a functionalizing agent such as cationic surfactants like cetyltrimethylammonium chloride (a quaternary ammonium) (see [0067, 0094]) (see instant claims 1 and 3). The metallic antimicrobial composition may be incorporated into fibers and/or be provided to medical devices such as bandages and masks (see Table 1 and [0127, 0128]) (see instant claim 6) wherein the composition is present on the surface of the device so as inhibit microbe growth (see [0015, 0031]).
Regarding instant claim 5, the coefficient of antimicrobial synergy according to:
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is a limitation which cannot be assessed by the Examiner as the USPTO is not a laboratory. However, because the prior art describes a composition identical in composition to that claimed, any properties (e.g. coefficient of synergy) possessed by the claimed invention must be possessed by the prior art, albeit unrecognized. See MPEP 2112.01.
Regarding instant claim 10, this is an intended use limitation. This claim does not limit the structure of the composition but instead describes an outcome of the product when used in a specific way (‘applied on wound or inflamed tissue’). See MPEP 2111.02.
Regarding instant claim 11, Dong states that the presence of zinc in their fibers inhibit the growth of viruses (see [0009]). And, because the Dong describes an identical composition to that claimed (a mask made from fibers comprising nanoparticles of silver metal, copper metal, ionic silver and ionic copper functionalized with cationic surfactants), the composition of Dong must similarly be capable of reducing activity/viability or inactivating SARS-CoV-2 and/or H1N1.
Claims 1, 3, 5, 6, 8, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dong et al. (US 2020/0102673).
Dong is directed to antimicrobial fibers. The fibers are to include antimicrobial metallic nanoparticles dispersed uniformly therein (see [0013]). Exemplified nanoparticle metals include copper metal, silver metal, silver salts (ionic silver) and copper salts (ionic copper) (see [0017]) (see instant claims 1). The nanoparticles may be modified with a surfactant so as to facilitate uniform dispersion in the fiber mixture (see [0021]). Surfactants may be cationic and include quaternary ammonium surfactants (see [0022, 0041] and claims 1, 3 and 9). The presence of the cationic surfactant on the copper-based nanoparticle would render it positively charged as required by instant claim 1. The antimicrobial fibers are to be shaped into a textile such as mask and bandages (see claim 13) (see instant claim 6) so as to destroy unwanted microbes that may be inhaled or contact the skin. It is noted that the antimicrobial fiber is intended to contact the skin (see [0025]). Regarding instant claim 8, this is a product-by-process limitation. See MPEP 2113(I).
Regarding instant claim 5, the coefficient of antimicrobial synergy according to:
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414
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is a limitation which cannot be assessed by the Examiner as the USPTO is not a laboratory. However, because the prior art describes a composition identical in composition to that claimed, any properties (e.g. coefficient of synergy) possessed by the claimed invention must be possessed by the prior art, albeit unrecognized. See MPEP 2112.01.
Regarding instant claim 10, this is an intended use limitation. This claim does not limit the structure of the composition but instead describes an outcome of the product when used in a specific way (‘applied on wound or inflamed tissue’). See MPEP 2111.02.
Regarding instant claim 11, Dong states that the presence of zinc in their fibers inhibit the growth of viruses (see [0009]). And, because the Dong describes an identical composition to that claimed (a mask made from fibers comprising nanoparticles of silver metal, copper metal, ionic silver and ionic copper functionalized with cationic surfactants), the composition of Dong must similarly be capable of reducing activity/viability or inactivating SARS-CoV-2 and/or H1N1.
Claims 1-8 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams et al. (US 2016/0220728).
Adams discloses an antimicrobial composition for use in wound care, e.g. a bandage, dressing, fibers (see [0012, 0069, 0115], Table 2 and claim 2) (see instant claim 6) and possess the ability to absorb exudate when applied to wounds (see [0115]) (see instant claim 9). The antimicrobial bandages/dressing are to contact the skin with the antimicrobial components contained therein (see [0124]) (see instant claim 9) so as to kill unwanted bacteria, viruses and fungi (see [0028]). The antimicrobial composition is to comprise metal nanoparticles including a copper salt (e.g. CuI; see abstract Table 5) and silver (e.g. AgBr and/or Ag; see Table 5) (see instant claims 1, 3, 4) wherein the antimicrobial metal (e.g. CuI, AgI) is present in a concentration of between 5-200 mg/100cm2 (see [0124]). 5 mg/100 cm2 lies within the concentration range of instant claim 7. Formulation R12 provides a Cu/Ag ratio of 6 (12:2) and formulation R14 provides a Cu/Ag ratio of about 5.9:1 (59:10) (see Table 5) (see instant claims 2 and 12). See MPEP 2131.03 regarding anticipation of ranges. Adams’ nanoparticles are to be functionalized with a cationic surfactant such as benzalkonium, dimethyldialkylonium, alkylpyridinium and alkyltrimethylammonium (‘quaternary ammonium’) (see abstract, [0059]) so as to form a bridge or link between the particles and surfaces/media (see instant claim 3). Such functionalization would render the resulting nanoparticle positively charged.
Regarding instant claim 8, Adams states that their antimicrobial metallic nanoparticles may be provided as fibers. The method by which the nanoparticles are embedded into the fibers is not relevant to the end product because the prior art results in a fiber having the metal nanoparticles embedded therein (‘antimicrobial agent is in fibers’, see Table 2). Accordingly, this is a product-by-process limitation. See MPEP 2113(I).
Regarding instant claims 5 and 12, the coefficient of antimicrobial synergy according to:
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414
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is a limitation which cannot be assessed by the Examiner as the USPTO is not a laboratory. However, because the prior art describes a composition identical in composition to that claimed any properties (e.g. coefficient of synergy) possessed by the claimed invention must be possessed by the prior art, albeit unrecognized. See MPEP 2112.01.
Regarding instant claim 10, this is an intended use limitation. This claim does not limit the structure of the composition but instead describes an outcome of the product when used in a specific way (‘applied on wound or inflamed tissue’). See MPEP 2111.02.
Regarding instant claims 11 and 13, Adams states that their antimicrobial composition inhibit the growth of bacteria, viruses and fungi (see [0028] and Examples). And, because the Adams describes an identical composition to that claimed (a wound care device comprising nanoparticles of silver metal, ionic silver and ionic copper functionalized with cationic surfactants), the composition of Adams must similarly be capable of reducing activity/viability or inactivating SARS-CoV-2 and/or H1N1.
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.
Claims 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2016/0220728) in view of Riesinger et al. (US 2011/0213286).
Adams is relied upon for disclosure described in the rejection of claims 1-8 and 10-13 under 35 U.S.C. 102(a)(1).
As stated above, Adams teaches that their wound device is to have the property of absorbing wound exudate (see [0115]).
Adams fails to teach the absorbent layer of the bandage/dressing as comprising a natural or synthetic polymer.
Riesinger, like Adams, describes a wound care device (e.g. dressing, bandage; see [0185]) that has the ability to absorb wound exudate. Materials for absorbing wound exudate include copolymers of acrylic acid and sodium acrylate (‘synthetic polymer’) (see [0064]). It would have been obvious to modify Adams’ device so as to include a synthetic polymer like those described by Riesinger with a reasonable expectation in producing a bandage which absorbs wound exudate. See MPEP 2143(I)(A) and 2144.07.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in absence of evidence to the contrary.
Claim Rejections - 35 USC § 112
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.
Claims 2, 4, 5, 7 and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites the phrases "preferably", “more preferably” and “most preferably” which renders the claim indefinite because it is unclear whether limitations following the phrases are considered limiting. See MPEP § 2173.05(d). Moreover, claim 2 is indefinite as it recites a broad, a less broad and a narrow range in regards to the Cu/Ag ratio and it is unclear which range is considered limiting. See MPEP 2173.05(c).
Claim 4 recites the phrase "preferably" which renders the claim indefinite because it is unclear whether the limitations following the phrase are considered part of the claimed invention . See MPEP § 2173.05(d).
Claim 5 recites the phrases "preferably", “more preferably” and “most preferably” which renders the claim indefinite because it is unclear what limitations following the phrases are considered limiting. See MPEP § 2173.05(d).
Claim 7 recites the phrases "preferably" and “most preferably” which renders the claim indefinite because it is unclear whether the limitations following the phrases are considered limiting. See MPEP § 2173.05(d). Moreover, claim 7 is indefinite as it recites a broad and narrow range to the concentration of Cu and Ag and it is unclear which range is considered limiting. See MPEP 2173.05(c).
Claim 12 recites the phrases "preferably", “more preferably” and “most preferably” throughout which renders the claim indefinite because it is unclear whether the limitations following the phrases are considered limiting. See MPEP § 2173.05(d). Moreover, claim 12 is indefinite as it recites a broad and narrow range in regards to the metallic ratio and synergy coefficient and it is unclear which range is considered limiting. See MPEP 2173.05(c).
Claim 13, the phrase "including…" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611
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