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 .
DETAILED ACTION
Claims 1-33 are pending in the Claim Set filed 6/06/2024.
Applicants’ election without traverse of species in the reply filed on 7/16/2026 is acknowledged.
Species election is as follows:
Species A: Polymer (A I.; A2.; and A3.).
Election A I: Species ii, imidazolium-containing moiety (Claims 22-25). Herein, the species election is extended to include benzimidazolium-containing moiety.
Election A2: interpenetrating network (Claim 31); Herein, extended species election to include graft copolymer.
Election A3: main chain polymer (Claim 16). Herein, species election is extended to include claim 17 (pendant group) and claim 18 (crosslink).
Species B: Microorganism.
Election: iv, combination (Claim 5). Applicants in the restriction requirements were requested to identify the specific combination together with a specific microorganism. Thus, election of a ‘combination’ without indicating the specific combination and a corresponding microorganism is not a proper response to the Restriction Requirement filed 3-16-2026. However, to promote compact prosecution: ‘combination’ is interpreted herein to mean ‘any combination thereof’ in accordance with claim 5.
Species C: Polymer Form (C. l a. or C. lb; and, C.2).
Election C. la or C. lb: C. la, (i), coating (Claim 26-28), Applicants in the Restriction requirements were requested to identify, e.g., coating: e.g., spun fibers (claims 26 and 27). However, to promote compact prosecution the polymer form is selected from claims 26, 27 and 28.
Election C. lc: ii, polymer blend (Claim 30)
Species D: Medical Device
Election: an air filter (Claims 32 and 33). Herein, the species election is extended to include membrane and films.
Herein, claims 1-33 are for examination.
Priority
The present application 18551105 filed 09/18/2023 is a National Stage entry of PCT/CA2022/050417, International Filing Date: 03/21/2022; PCT/CA2022/050417 Claims Priority from Provisional Application 63163605 filed 03/19/2021.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 9/18/2023, 5/28/2025 and 3/17/2026 have been considered by the examiner and an initialed copy of the IDS is included with the mailing of this office action.
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes” etc. In the instant case, the abstract has the implied phrase of "The present disclosure features” which should be avoided.
Drawings
The drawings are objected to because Fig. 11 (page 16/16) contains the misspelled word ‘LABRATORY SURFACE’, which should be spelled ‘LABORATORY SURFACE’. Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as "amended." If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121 (d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-33 are 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 pre-AIA the applicant regards as the invention.
Regarding claims 1 and 20,
The breadth of the term, ‘any group’ is sufficiently broad that it is vague and unclear, as well as unsupported by the disclosure.
Before the claimed subject matter can properly be compared to the prior art, it is essential to know what the claim(s) do in fact cover.
The language of a claim must make it clear what subject matter the claim encompasses to adequately delineate its ‘metes and bounds
Remaining claims do not resolve the issues with claims 1 and 20.
All remaining claims are rejected as depending from a rejected claim.
Claims 14 and 33 are 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 pre-AIA the applicant regards as the invention.
Claim 14 contains parenthetical subject matter that renders the claim indefinite because it is not clear whether the subject matter embraced by the parentheses (i.e., round brackets) is/are a limitation or an option for the claimed virus.
(i) betacoronaviruses (e.g., SARS-Cov2); i.e., genus (species);
(ii) coxsackieviruses (enveloped and non-enveloped).
Claim 33 contains parenthetical subject matter that renders the claim indefinite because it is not clear whether the subject matter embraced by the parentheses (i.e., round brackets) is/are a limitation or an option for the claimed virus.
(i) matrix (e.g., membranes, films, rods, beads, or any combination thereof),
and, (ii) Description of examples (e.g., membranes, films, rods, beads, or any combination thereof) or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences can lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d).
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 of this title, 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.
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 1-19 and 26-33 are rejected under 35 U.S.C. 103 as being unpatentable over Wright (WO2013149328, IDS filed 5/28/2025) [Wright] in view of Crounse (USP 3,583,984, of record) [Crounse] and Spitzer (USP 4,492,708, of record) [Spitzer].
Claim Interpretation
The term ‘spp.’ recited in claims 7 and 12 is interpreted to mean the plural abbreviation for species, e.g., Trychophyon spp., means ‘multiple unspecified species within the Trychophyon genus.
Regarding claims 1, 2, 5, 7, 9-12, 14-19, 26-28 and 31-33,
Wright teaches polymers comprising one or more repeating units benzimidazolium and imidazolium containing moieties: e.g., Formula (I) and Formula (II), respectively, shown below (pp.1-2; See entire document, e.g., p.12: benzimidazolium(s) Formula (XII: XIII: XIV); Fig. 1A-C):
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benzimidazolium imidazolium
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Wright teaches benzimidazolium-containing moiety: structure (XIV), where R1 and R3 are methyl groups and R2 is hydrogen (H). (instant claim 19):
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Wright teaches the counterion is iodide, hydroxide, chloride, bromide, fluoride, cyanide, acetate, carbonate, nitrate, sulfate, phosphate, triflate, and tosylate (claim 2; See entire document).
Wright teaches benzimidazolium and imidazolium containing moieties: e.g., Formula (I) (‘M1’) and Formula (II): (“M2’) are grafted onto an already-formed polymer (p.10, lns.1-20). (i.e., graft copolymer: instant claim 31).
Wright teaches that the membranes were provided from blends of as membranes of polymers. Therefore, Wright teaches polymer blends (p.15, lns.30-34; p.16, lns.1-5; See entire document). (instant claims 29 and 30).
Wright teaches membranes (p.3, lns.6-7; p.5, lns.10-14; p.16, lns.11- 22; p.25, lns.1-17; p.26, lns.14; claims 6-11, 18; See entire document). Further, Wright teaches films (p.15, lns.25-29; p.16, lns.1-5; p.25, lns.14-17; Fig. 4 (films) (reads on instant claim 33). Therefore, Wright teaches membranes and films comprising a benzimidazolium containing moiety.
Wright teaches benzimidazolium and imidazolium containing moieties: e.g., Formula (I) (‘M1’) and Formula (II): (“M2’) are grafted onto an already-formed polymer (p.10, lns.1-20). (i.e., graft copolymer: instant claim 31).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the benzimidazolium and imidazolium containing moieties as repeat units in a polymer, as instantly claimed, in view of Wright. Wright teaches that the benzimidazolium and imidazolium containing moieties are included in a main chain of the polymer; included in a pendant group of the polymer; and are in part of a crosslink of the polymer (Wright: claims 1-10). Further, Wright teaches the polymers are provided to form a membrane (pp. 3-13; Wright: claims 6-11; See entire document). (Instant claims 32 and 33). Further, Wright teaches that membranes were provided from blends of as membranes of polymers (p.15, lns.30-34; see entire document). (instant claims 29 and 30).
Wright differs from the claims in that the documents do not teach a method of inhibiting microorganisms on a surface comprising applying to the surface a polymer comprising these repeat units: for example, benzimidazolium-containing moieties.
However, Crounse and Spitzer, as a whole, cures the deficiencies.
Crounse teaches a quaternary ammonium salts of the benzimidazolylstilbene comprising repeat units containing benzimidazolium-containing moieties, having the structure of Formula I (See page 1, col.1; substituents listed on p.1, col. 1-2). Specification at page 10 defines ‘repeat unit’ that corresponds to the smallest constitutional unit, the repetition of which constitutes a regular macromolecule (or oligomer molecule or block. Further, Crounse teaches that these quaternary ammonium salts of the benzimidazolylstilbene are useful as disinfecting agents comprising antibacterial and antifungal properties, of which are useful in the treatment of threads, sheets, films, filaments, textile fabrics, and the like, (i.e., inhibiting microorganisms on a surface) as well as in the manufacture of paper, varnishes, inks, coatings, and plastics (p.1, col.1, lns.20-38). Crounse teaches when a pharmaceutical use is intended it is preferred to employ anions of pharmaceutically-acceptable salt-forming inorganic or organic acids since the disinfecting properties of the quaternary ammonium compounds of this invention make them applicable to human or animal use (col.2, lns.54-59). Thus, Crounse teaches using disinfecting agents comprising antibacterial and antifungal properties to treat a surface that is a film, which renders obvious instant claim 33.
Additionally, Crounse teaches the compounds described and claimed herein are of unique value, because they have biostatic properties and are useful as antibacterial and antifungal agents. Thus, when tested by standard serial dilution procedures, these compounds were found to have bactericidal, bacteriostatic, fungicidal, and fungistatic activity in vitro. More specifically the quaternary ammonium compounds of this invention have been found to possess antibacterial activity toward Staphylococcus aureus, i.e., gram positive bacterium (recited in Instant claims 9, 12), Salmonella typhosa Hopkin (Salmonella spp-gram negative: Instant claim 12; i.e., species), Bacterium ammoniogenes, Clostridium welchii M (gram-positive: Clostridium spp; Instant claim 12; i.e., species), and Pseudomonas aeruginosa 211. They also possess antifungal activity toward Trichophyton mentagrophytes, Aspergillus niger and Monilia albicans (i.e., fungus: Instant Claim 7). The substantivity of the compounds of this invention to a variety of textiles together with the above-mentioned activities provide a means of imparting long-lasting antibacterial and antifungal properties to fibrous materials. For example, it has now been found that textile materials, which undergo successive launderings wherein the compounds of this invention are employed as mentioned hereinbefore, have the property of markedly inhibiting the growth of bacteria and of destroying existing bacteria. Crounse teaches the treatment of textile fabrics with these compounds is readily carried out by conventional procedures (col.3, lns.36-60). Furthermore, Crounse teaches a concentration of less than 0.02 percent imparts an antibacterial and antifungal finish to the fabrics (col.12, lns.25-27). Crounse teaches that when cloth samples were treated with the quaternary ammonium fluorescent compounds of this invention were inoculated with a known number of bacteria and were then incubated at 37° C. for 18 to 24 hours, it was found that the viable Staphylococcus aureus had been reduced by 97.5 percent as calculated by comparison with the control cloths (Example 18, col,12-13; also Examples 19-21, i.e., compounds treated cloth and cotton reduced bacteria).
Spitzer (USP 4,492,708) teaches antiviral benzimidazoles and pharmaceutically acceptable salts that are useful as antiviral agents (Title; col.13). Spitzer teaches that the benzimidazoles are potent antiviral agents and are useful in the treatment and control of viral growth, including growth attributable to rhinovirus (enterovirus: Instant claim 14), polio (Instant claim 14), coxsachie (Instant claim 14), eeho virus, mengo virus, influenza (Instant claim 14) and related viral growths (col.2; lns.29-40). Further, Spitzer teaches a method of treatment which comprises administering to a mammal suffering from a viral infection or suspected of developing a viral infection an effective amount of a benzimidazole (col.2, lns.22-27; See entire document).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art to provide the benzimidazolium and imidazolium containing moieties as repeat units in a polymer, as instantly claimed, in view of the teachings of Wright. One skilled in the art would have recognized that benzimidazolium and imidazolium containing moieties potentially possess antimicrobial properties comprising antibacterial, antifungal and antiviral properties in view of the teachings of Crounse and Spitzer, as a whole. In particular, Crounse teaches the treatment of textile fabrics with these compounds by conventional procedures imparts an antibacterial and antifungal finish to the fabrics. Thus, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide a method of inhibiting microorganisms on a surface comprising applying to the surface a polymer comprising the benzimidazolium and imidazolium containing moieties as repeat units in a polymer, wherein one skilled in the art would have been motivated to apply the benzimidazolium and imidazolium containing moieties as repeat units in a polymer to a surface to provide a method of inhibiting microorganisms on the surface having a reasonable expectation of success.
Regarding claims 3, 4, 6, 8 and 13,
The method of inhibiting microorganism on the surface is render obvious by the teachings of Wright, Crounse and Spitzer, as a whole, wherein the claimed imidazolium and benzimidazolium containing moieties are structurally identical and so the imidazolium and benzimidazolium containing moieties would necessarily provide: inhibiting adhesion of the microorganism on the surface (instant claim 3); wherein when the surface is exposed to the microorganism, the number of microorganisms on the surface is reduced by greater than 99 % after a duration of 24 hours (instant claim 4); when the surface is exposed to a fungus, the number of the fungus is reduced by greater than 99 % after a duration of 24 hours (instant claim 6); wherein when the surface is exposed to a bacterium, the number of the bacterium is reduced by greater than 99 % after a duration of 24 hours (instant claim 8); and when the surf ace is exposed to a virus, the number of the virus is reduced by greater than 99 % after a duration of 24 hours (instant claim 13).
These properties of the claimed imidazolium and benzimidazolium containing moieties would be the natural result of the combination of the prior art elements. Inherency is appropriate in an obviousness analysis "when the limitation(s) at issue is the 'natural result' of the combination of prior art elements." PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (quoting In re Oelrich, 666 F.2d 578,581 (CCPA 1981)). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
All the claimed elements herein are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Therefore, one of ordinary skill would have had a reasonable expectation of success in producing the claimed invention. Therefore, in the absence of evidence to the contrary, the claimed invention as a whole would have been obvious to one of ordinary skill as evidenced by Wright, Crounse and Spitzer.
Claims 20 and 21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wright (WO2013149328, IDS filed 5/28/2025) [Wright] in view of Crounse (USP 3,583,984, of record) [Crounse] and Spitzer (USP 4,492,708, of record) [Spitzer] as applied to claims 1-19 and 26-33 above and further in view of Holdcroft (WO2015157848, IDS filed 5/28/2025) [Holdcroft].
The teachings of Wright, Crounse and Spitzer, as a whole, are described above.
Wright, Crounse and Spitzer fail to render obvious the benzimidazolium containing moieties of claims 20 and 21.
However, Holdcroft cures the deficiencies.
Holdcroft teaches polymer comprising benzimidazolium containing moieties of claim 20 (Holdcroft: claim 1; See entire document):
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where X is independently selected from the group consisting of alkylene, perfluoroalkylene, heteroalkylene, arylene, aralkylene, and no group.
See identical substituents to the above in p.1-3; claim 1, p.48: Holdcroft, that reads on claim 20.
Holdcroft teaches a polymer comprising benzimidazolium containing moieties of claim 21 (Holdcroft: p.4; claim 27; See entire document):
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a is from 0 mole percent to 45 mole percent,
b+c is 55 mole percent to 100 mole percent,
b and c are each more than O percent, and
a+b+c= 100%.
See identical substituents to above in claim 27, pp.51-53: Holdcroft.
Further, Holdcroft teaches that the benzimidazolium-containing moieties can be incorporated into a polymer in a number of ways, including as part of
the polymer backbone and/or as a pendant moiety. Alternatively, the moiety can be one of a plurality of moieties in the backbone of the monomer (i.e., main chain polymer) (p.15).
It would have been obvious to provide the following polymers, as described above, comprising benzimidazolium containing moieties because one of ordinary skill in the art would have recognized that these polymers, as described above, comprising benzimidazolium containing moieties would necessarily provide different physical and chemical properties, other than those taught by Wright, and have had been motivated to provide these benzimidazolium containing moieties having a reasonable expectation of success that they would retain similar functional properties and necessarily provide inhibition of varied microorganisms since they provide the benzimidazolium groups therein.
Applicant is reminded that obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
Conclusive proof of efficacy is not required to show a reasonable expectation of success. OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d 379681 (Fed. Cir. 2019) ("To be clear, we do not hold today that efficacy data is always required for a reasonable expectation of success. Nor are we requiring ‘absolute predictability of success.’"); Acorda Therapeutics, Inc. v. Roxane Lab., Inc., 903 F.3d 1310, 1333, 128 USPQ2d 1001, 1018 (Fed. Cir. 2018) ("This court has long rejected a requirement of ‘[c]onclusive proof of efficacy’ for obviousness." (citing to Hoffmann-La Roche Inc. v. Apotex Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014); PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364, 1367–68 (Fed. Cir. 2007) (reasoning that "the expectation of success need only be reasonable, not absolute")).
All the claimed elements herein are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Therefore, one of ordinary skill would have had a reasonable expectation of success in producing the claimed invention. Therefore, in the absence of evidence to the contrary, the claimed invention as a whole would have been obvious to one of ordinary skill as evidenced by Wright, Crounse, Spitzer and Holdcroft.
Conclusions
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THURMAN WHEELER whose telephone number is (571)-270-1307. The examiner can normally be reached Monday-Friday 11:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THURMAN WHEELER/ Examiner, Art Unit 1619
/SARAH ALAWADI/ Primary Examiner, Art Unit 1619
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