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 .
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 1-20 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Regarding claim 1, the term “…apt to promote…” in claim 1 (line 10) is a relative term which renders the claim indefinite. The term “…apt to promote…” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether formation and adhesion of a coating film is actually required, or what degree of probability of formation and adhesion is required to meet the limitation in question. See MPEP § 2173.
Regarding claims 2-20, claims 2-20 all depend from the independent base claim 1, similarly inheriting all the limitations established therein. Therefore, claims 2-20 are similarly rejected for being indefinite.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 14 is rejected under 35 U.S.C. § 101 as the claim is directed to non-statutory subject matter. Claim 14 does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed as "use" claims that do not purport to claim a process, machine, manufacture or composition of matter. Therefore, claim 14 fails to comply with 35 U.S.C § 101.
Claim 14 is further rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre- AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 is rejected under 35 U.S.C. § 112(b) for attempting to claim a use without any active, positive steps delimiting how the use is actually practiced. See MPEP § 2173.05(q).
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.
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 1 – 7 & 12 – 14 are rejected under 35 U.S.C. § 103 as being obvious over Chan et al. (US 10,577,247 B2) in view of Zhamu et al. (US 2022/0127779 A1) and Johnson et al. (A manufacturing perspective on graphene dispersions).
Regarding claims 1, 2, 4 – 7, Chan teaches an antimicrobial composition comprising graphene oxide & chitosan (Abstract). Chitosan exhibits good biodegradability, biocompatibility and antimicrobial activity (col. 5, lines 65-66), reading on the antimicrobial agent of claim 2 and the polysaccharide of claims 4 & 5. Embodiments of the invention were fabricated as transparent antimicrobial surface coatings via sol-gel method (col. 21, lines 42-43). Chan states nanosheets prepared this way have several advantages over using graphene oxide alone, such as improved dispersion in an aqueous dispersion, overcoming graphene oxide’s tendency to aggregate in solution, and further enhancing graphene oxide’s antimicrobial activity (col. 22, lines 47-54). Chan, however, does not teach steps (b) & (c) as required by the claim.
In the same field of endeavor, Zhamu teaches articles coated or embedded with graphene sheets - which may be graphene oxide, doped graphene or chemically functionalized graphene, preferably comprising an antimicrobial compound (Abstract). Zhamu details a process of a slurry comprising graphite and an oxidizing agent, like nitric acid or sulfuric acid, reading on the oxidizing agent of claim 7. Once the oxidation reaction reaches completion, graphene oxide is obtained by subjecting said slurry to ultrasonication. Zhamu discloses high shear mixing as the other alternative to ultrasonication (p. 5, [0063], [0064]).
Neither Chan nor Zhamu teach the remaining limitations as required by the claim.
In the same field of endeavor, Johnson studied and reviewed manufacturing methods for aqueous dispersions comprising graphene (Abstract). Johnson promotes shear mixing as opposed to ultrasonication detailing it the more scalable method (p. 368, col. 1, first full paragraph). Detailing said alternative to sonication, Johnson discloses high shear mixing at rates of 100,000 rpms (p. 368, col. 2, third full paragraph). Johnson teaches graphene films will find use in antibacterial applications and may be produced via spray coating. Graphene & binder may be deposited from a stable dispersion. Elaborating on the sol-gel method, Johnson discloses suitable polymers for this use include PVA (p. 371, col. 1, full paragraphs 1 & 3-5), reading on the film forming agent of claim 6.
It would have been obvious to one of ordinary skill in the art at the time of filing to one of ordinary skill in the art at the time of filing to modify Chan by including the oxidizing agent taught by Zhamu, as Zhamu discloses this to be a suitable oxidizing agent for graphite to obtain graphene oxide for similar end uses (i.e., imparting antimicrobial/antibacterial properties). Further, including the PVA into the dispersion, taught by Johnson, will thus enable one to control the phase of the composition (aqueous, gel, film) for a desired/preferred embodiment.
Modification of Chan in view of Zhamu & Johnson as detailed above results in a method of producing an antimicrobial coating composition, wherein, in an aqueous medium, graphite is reduced to graphene oxide via nitric acid or sulfuric acid (oxidizing agent), followed by subjecting said medium to high shear mixing at 100,000 rpms (or greater) to obtain the antimicrobial aqueous dispersion. Said antimicrobial dispersion is then treated with PVA to impart phase control (i.e., aqueous dispersion to film or gel), appropriate for end use applications. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Chan in view of Zhamu & Johnson as detailed above reads on limitations established by the independent base claim 1 and dependent base claims 2, 4, 5, 6 & 7.
Regarding claim 3, maintaining the modification of Chan in view of Zhamu & Johnson previously detailed, in addition to the preferred antimicrobial agent taught by Chan (i.e., Chitosan), Chan also teaches the further inclusion of an additional antimicrobial agent such as silver (p. 9, [0103], [0104]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 12, maintaining the modification of Chan in view of Zhamu & Johnson previously detailed, for the antimicrobial coating composition of the claims, the weight range for the film-forming agent (binder) is sufficiently large enough such that one skilled in the art would include said binding agent in the modification (previously detailed) in amounts such that it falls within the range as required by the claim. The claimed range effectively encompasses all practical and almost all possible concentrations. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d).
Regarding claims 13 & 14, maintaining the modification of Chan in view of Zhamu & Johnson previously detailed, Chan provides various disclosures reading on the limitations established in claims 13 & 14, for example, Chan expressly discloses an embodiment of the invention in the form of a transparent coating with sufficient antimicrobial properties, allowing said coating to be used in biomedical fields (col. 22, lines 43-46).
Claims 8 & 15 are rejected under 35 U.S.C. § 103 as being obvious over Chan et al. (US 10,577,247 B2) in view of Zhamu et al. (US 2022/0127779 A1) and Johnson et al. (A manufacturing perspective on graphene dispersions) in further view of Toreki et al. (US 9,999,226 B2).
Regarding claim 8, maintaining the modification of Chan in view of Zhamu and Johnson previously detailed, neither Chan, Zhamu nor Johnson teach the oxidizing agent as required by the claim.
In the same field of endeavor, Toreki teaches aqueous antimicrobial compositions with hydrogen peroxide (Abstract). The objective of Toreki’s invention was to incorporate zinc (metal) oxide particulates into coatings for substrates typically needing antibacterial/antimicrobial properties such as hospital equipment and medical instruments (col. 11, lines 1-6). In addition to being an antiseptic, Toreki states hydrogen peroxide is a preferred antimicrobial as it has broad spectrum antimicrobial activity making it effective against bacteria, viral organisms and fungi (col. 3, lines 12-19).
As Zhamu discloses the inventive graphene oxide sheets may be deposited with antimicrobial compounds such as Zn or Ag or oxides thereof (p. 3, [0030]), it would have been obvious to one of ordinary skill in the art at the time of filing to include ZnO or AgO as the metal oxide and hydrogen peroxide as the oxidizing agent in the aqueous dispersion from the modification of Chan in view of Zhamu & Johnson, as both Zhamu & Toreki expressly disclose the antimicrobial properties of these compounds.
Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009).
Modification of Chan in view of Zhamu and Johnson in further view of Toreki as detailed above reads on all limitations established by claim 8.
Regarding claim 15, maintaining the modification of Chan in view of Zhamu and Johnson in further view of Toreki previously detailed, Toreki states once the novel polymer coating is deposited onto a surface and liquid has evaporated &/or dried, long-lasting antimicrobial effects are maintained for weeks after being coated (col. 9, lines 44-52).
Claim 9 is rejected under 35 U.S.C. § 103 as being obvious over Chan et al. (US 10,577,247 B2) in view of Zhamu et al. (US 2022/0127779 A1) and Johnson et al. (A manufacturing perspective on graphene dispersions) in further view of Alsharaeh et al. (US 2015/0065601 A1).
Regarding claim 9, maintaining the modification of Chan in view of Zhamu & Johnson previously detailed, neither Chan, Zhamu nor Johnson teaches the content of graphene oxide as required by the claims.
In the same field of endeavor, Alsharaeh teaches a technique of producing a nanocomposite from a copolymer of styrene and methylmethacrylate containing graphene oxide and silver (Abstract), wherein said nanocomposite exhibits antimicrobial properties (p. 1, [0002]). Alsharaeh teaches said nanocomposite comprises graphene oxide in amounts of 2% by weight (p. 2, [0022]).
It would have been obvious to one of ordinary skill in the art at the time of filing to formulate an antimicrobial composition such that graphene oxide is present in amounts of 2% by weight, as Alsharaeh teaches antimicrobial articles comprising graphene oxide in the same amount, suitable for similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Claims 10 & 11 are rejected under 35 U.S.C. § 103 as being obvious over Chan et al. (US 10,577,247 B2) in view of Zhamu et al. (US 2022/0127779 A1) and Johnson et al. (A manufacturing perspective on graphene dispersions), in further view of Assanelli et al. (US 2024/0132359 A1).
Regarding claims 10 & 11, maintaining the modification of Chan in view of Zhamu & Johnson previously detailed, neither Chan, Zhamu nor Johnson teach either of the amounts of oxidizing agent in the aqueous dispersion or antimicrobial agents in the antimicrobial aqueous dispersion as required by the claims.
In the same field of endeavor, Assanelli teaches a process for preparing graphene oxide comprising high shear mixing in an aqueous dispersion and oxidation via oxidizing agent. Assanelli expressly states the obtained graphene oxide is useful for imparting antimicrobial properties to rubber articles (Abstract).
Assanelli teaches hydrogen peroxide (oxidizing agent) may be used in amounts of 10-50 wt.% with respect to the aqueous dispersion (p. 2 & 3, [0042]), reading on the limitation established in claim 10.
As the aqueous antimicrobial dispersion of the instant application comprises a film-forming agent as well, said dispersion is a latex. Assanelli further teaches antimicrobial substances may be present in the latex composition in amounts of 0.5-5 wt.% with respect to the weight of the dispersion/latex (p. 4, [0085]), reading on the limitation established in claim 11.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the ranges of 10-50 wt.% for the oxidizing agent, with respect to the aqueous dispersion and 0.5-5 wt.% for the antimicrobial agent, with respect to the aqueous antimicrobial dispersion, taught by Assanelli, as guides for the appropriate amounts of oxidizing agent and antimicrobial agent when making the modification herein, as Assanelli expressly discloses these values to be suitable for their respective components when detailing methods of producing graphene oxide for antimicrobial end uses.
Modification of Chan in view of Zhamu and Johnson in further view of Assanelli as detailed above reads on limitations established by claims 10 & 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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