DETAILED ACTION
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 8 to 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rathore et al. US 2004/0151755.
This rejection rationale is comparable to that made in the previous office action.
Rathore et al. teach an antimicrobial lens that contains silver bonded to a “silver
releasing compound”. While Rathore et al. refer to silver throughout, they state that the teachings can apply to other metals including copper (Cu). See paragraph 34.
The silver or other equivalent metal as found in paragraph 34 is added to contact lens compositions either prior to or after lens formation. Preferably the lens is prepared from a silicone hydrogel formulation. See para. 37 to 40. See also para. 46-48, 55-57 and 60-62.
While all of the above passages are relevant to this rejection and the teachings in Rathore et al., the Examiner will draw specific attention to the working examples.
In Example 16, paragraph 99, a contact lens is prepared from the monomer mix in Table 1. This includes monomers for making an ophthalmic device and NORBLOC. The latter reactant is defined in paragraph 76 and is a heterocyclic ligand containing monomer. More importantly this is defined in applicants’ specification as a preferred heterocyclic ligand-containing monomer. See page 16, lines 7 and 8.
The lens is contacted with a solution of AgNO3 and autoclaved for 150 minutes at 121o C. Given the fact that Example 1 in applicants’ specification autoclaves the lens and metal solution for 121oC for 30 minutes, the process of autoclaving for 150 minutes will meet the requirement of “conditions for form a complex…” in claim 17.
In short, Rathore et al. teach a method of making a lens in which (a) the same monomers and (b) the same contacting step as required in claim 17 are used. Since paragraph 34 specifically mentions using a copper metal in place of the silver metal, the limitations in claim 17 are anticipated.
As this applies to applicants’ amended claims, note the following - added for emphasis. The composition of Rathore et al. refers to a silver releasing composition in which silver is contacted with a polymerization product such that the silver is complexed or present in the product. Paragraph 34 teaches that other metals can be used in place of silver, including copper. Replacing silver with copper in the process of Rathore et al. would lead the skilled artisan to a process that meets (a) and (b) as claimed.
For claims 8 and 15, these monomers are found in Table 1 which shows the reactants used in the working examples. Table 1 includes a silicone monomer (para. 75, 79), a hydrophilic monomer (Rathore et al. claim 26, as well as Table 1) and/or a hydrophilic monomer (Rathore et al. claim 29, as well as Table 1).
For claims 9 to 13, as noted above, the NORBLOC benzotriazole component meets these requirements.
For claim 14, note that a lens is prepared in the working examples. See also paragraph 38.
For claim 16, note that no such compounds are required in Rathmore et al.
Response to Arguments
Applicants’ response has been considered but is not deemed persuasive. They acknowledge that Rathore teach copper metal “in the context of antimicrobial metals that release”. Copper must first be complexed with the material, the hydrogel lens, prior to any copper being released. Thus it is quite clear that Rathore et al. anticipate copper complexing.
As found in the claims and stated by applicants in the response, the only process step required to form the complex is contacting the polymerization reaction product with copper. Since Rathore teach contacting the polymerization reaction product with silver and that copper can be used in the alternative to silver, Rathore et al. teach each of the steps in claim 17.
Applicants indicate that the purpose of Rathore is different from the inventive purpose but this does not lend any novelty to a process that is the same as that found in the prior art.
Applicants also refer to the working examples but comparative results cannot be relied upon in overcoming an anticipatory teaching. Furthermore applicants’ argument that silver does not form a complex with NORBLOC (from the working examples) is not clear since silver is embraced by the useful metals found in the specification.
Applicants also state the NORBLOC does not serve as a ligand for metal com-plexation in Rathore. Again applicants are reminded that the claims are directed to a method and the claimed method steps are the same as that found in the prior art. Any complex formed by the claimed method would naturally be expected to occur in the prior art method.
Finally, note that Figure 4 in Rathone shows a product having an imidazole-Ag complex and, as noted above, the skilled artisan would have immediately envisioned copper in place of the Ag. This shows a complexed metal. Also paragraph 31 in Rathmore refers to forming metal complexes.
In view of the above, applicants’ arguments are not persuasive and this rejection is maintained. In summary, the process steps found in claim 17 are each found in the process of Rathore et al. such that any complexing that occurs in the claimed process will likewise occur in the prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
7/6/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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