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 .
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 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.
Previous Rejections
Applicant’s arguments, filed December 30, 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Status
Claim 40 is newly added.
Claims 4-5, 8, 11, 13-15, 18, 20-26, 32, and 34-36 are cancelled.
Claims 1-3, 6-7, 9-10, 12, 16-17, 19, 27-31, 33, and 37-40 are pending.
Claims 27-31, 33, and 37-39 are withdrawn.
Claims 1-3, 6-7, 9-10, 12, 16-17, 19, and 40 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claims 1-3, 6-7, 9-10, 12, 16-17, 19, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Thies (US 2006/0286305 A1; of record), in view of Olsen (US 2016/0083592 A1; of record) and Ashajyothi (“Antibiofilm activity of biogenic copper and zinc oxide nanoparticles-antimicrobials collegiate against multiple drug resistant bacteria: a nanoscale approach,” J. Nanostruct. Chem. (2016) 6: 329-341; of record).
Thies teaches hydrophobic coatings comprising reactive inorganic nano-particles, as well as their use in industrial processes. These coatings combine hydrophobic or even super-hydrophobic properties with superior mechanical properties and easy processability. These hydrophobic and super-hydrophobic coatings may be applied in the food industry, exterior or interior decoration, automobile industry and display industry (Abstract). Thies teaches zinc oxide as a suitable inorganic nanoparticle (pg 2, [0023]).
For the limitation in claims 1 and 12 of an “organic solvent” and a C1 to C10 alcohol, respectively, Thies teaches examples of solvents that may be suitable are “1,4-dioxane, acetone, acetonitrile, chloroform, chlorophenol, cyclohexane, cyclohexanone, cyclopentanone, dichloromethane, diethyl acetate, diethyl ketone, dimethyl carbonate, dimethylformamide, dimethyl sulfoxide, ethanol, ethyl acetate, m-cresol, mono-and di-alkyl substituted glycols, N,N-dimethylacetamide, p-chlorophenol, 1,2-propanediol, 1-pentanol, 1-propanol, 2-hexanone, 2-methoxyethanol, 2-methyl-2-propanol, 2-octanone, 2-propanol, 3-pentanone, 4-methyl-2-pentanone, hexafluoroisopropanol, methanol, methyl acetate, methyl acetoacetate, methyl ethyl ketone, methyl propyl ketone, n-methylpyrrolidone-2, n-pentyl acetate, phenol, tetrafluoro-n-propanol, tetrafluoroisopropanol, tetrahydrofuran, toluene, [and] xylene (pg 4: [0045]).
For the limitation of the perfluoroalkylsiloxane recited in claims 1, 6-7, and 9, as well as the limitations of claim 16, Thies teaches the following (pg 3, [0027]):
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It is noted that 1H,1H,2H,2H-perfluorooctyl triethoxysilane is considered a perfluoroalkylsiloxane as disclosed in ¶ [0115] of the instant specification.
For claim 2, Thies teaches a preferred embodiment wherein the majority of the nanoparticles have a diameter less than 100 nm, “more preferably less than 50 nm” (pg 2, [0021]), overlapping the claimed range. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
For claim 10, Thies teaches a composition comprising 2.47% 1H,1H,2H,2H-perfluorooctyltrimethoxysilane (pg 7, Table 3), reading on the limitation of “about 2%”.
Thies does not teach the presence or amount of nanoparticulate copper or the amount of zinc oxide.
Olsen and Ashajyothi teach the missing elements of Thies.
Olsen teaches a silicone-based fouling release coat comprising a polysiloxane-based binder matrix and copper metal as a biocide (Abstract; pg 8, [0109]). Olsen teaches the biocide typically constitutes 0.1-30% of dry weight (pg 9, [0117]). Olsen teaches zinc oxide as a pigment, present in up to 25% of the composition (pg 10, [0157]). Olsen teaches the organic solvent constitutes 5-50% of the composition (pg 4, 0049]).
For claim 19, the ratio of the amount copper metal and the amount of perfluorolkylsiloxane overlaps with the claimed range.
For claim 40, Thies teaches a composition comprising zinc oxide nanoparticles and a perfluoroalkylsiloxane and Olsen teaches a composition comprising copper nanoparticles and a perfluoroalkylsiloxane, as discussed in detail above.
Ashajyothi teaches the antibiofilm activity of copper and zinc oxide nanoparticles against multiple drug resistant bacteria (Title). Ashajyothi teaches both copper nanoparticles and zinc oxide nanoparticles are effective versus pathogenic bacteria a similar doses (pg 332, Table 2, below); note that “MIC” is the minimal inhibitory concentration and 1 microgram per ml is equivalent to 0.1 percent. Therefore, as shown in Table 2, copper nanoparticles and zinc oxide nanoparticles each have a MIC, in terms of percent, of 0.008% and the amount of each claimed in claim 1 are far in excess of the MIC for each nanoparticle and the concentration claimed in claim 3 would be expected to be an effective amount.
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For claim 17, Ashajyothi teaches that the MIC for each of copper nanoparticles and zinc oxide nanoparticles versus bacteria typically found in biofilms is similar, and one of ordinary skill would have had a reasonable expectation of success in arriving at the claimed ratio by routine experimentation. It is also noted that, while Ashajyothi does not explicitly teach the combination of copper nanoparticles and zinc oxide nanoparticles, it is generally prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
For claims 3 and 17, routine optimization of the amount of each of copper nanoparticles and zinc oxide nanoparticles would have led to the claimed weight ratio of zinc oxide nanoparticles to copper nanoparticles because Ashajyothi teaches that both copper nanoparticles and zinc oxide nanoparticles are potent against many gram-negative and gram-positive bacteria that form biofilms and Olsen (pg 1, [0012]) and Ashajyothi teach that coatings are effective in reducing biofilm formation (pg 1, [0012]). The person of ordinary skill in the art would have found it obvious to optimize within the claimed range because Ashajyothi teaches that the claimed range reduces microbial levels in biofilms.
Examiner’s Reply to Attorney Arguments dated 12/30/2025
1. Rejection of claims 1-3, 6-7, 9-10, 12, 16-17, and 19 under 35 U.S.C. 103 over Thies, Olsen, and Ashajyothi.
The applicant argues that the zinc oxide particles may have a hydrophobic coating and that combinations of organic groups taught by Thies may result in the formation of a cross-linked network. The applicant states: “In summary, Thies teaches the skilled artisan to functionalize nano-particles with reactive organic groups,” and “Although Thies discloses the use of zinc oxide in paragraph [0023], as discussed above, zinc oxide and the other oxide particles disclosed in paragraph [0023] are starting materials that are subsequently functionalized with reactive organic groups. Thies does not direct the skilled artisan to use oxide nano-particles that are not functionalized with reactive organic groups.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. First, it is noted that the claim is drawn to a mixture of zinc oxide nanoparticles and copper nanoparticles and, in view of the principle of broadest reasonable claim interpretation consistent with the specification, does not exclude coated nanoparticles. See MPEP 2111. For Example, the applicant recites the following in support of newly added claim 40 (see page 6 of the Remarks dated 12/30/2025):
New claim 40 has been added to specify the nanoparticles in the coating composition of claim 1. Support for the new claim is found in the specification at paragraph [0115], where the coating composition includes nanoparticles that consist only of zinc oxide and copper.
The first paragraph of paragraph [0115] is shown below:
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As such, the instant Specification clearly discloses that the nanoparticles are coated with the hydrophobic coating (“Through the evaporation of ethanol, FAS-treated hydrophobic particles are obtained”), as are the nanoparticles of the prior art of Thies and Olsen. While the nanoparticles of both the instant invention and the nanoparticles taught by the combination of Thies and Olsen are each coated, the zinc oxide and copper nanoparticles of the instant invention and the invention described by the prior art remain intact and maintain their functionality as antimicrobials.
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 MICHAEL P COHEN whose telephone number is (571) 270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
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