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
Applicant’s election without traverse of claims 1-5 (group I) in the reply filed on 01/19/2026 is acknowledged. Claims 1-5 are currently under examination and the subject of the present Office Action. Claims 6-15 are cancelled.
As such, the restriction is made final.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/11/2023 has been considered here.
Claim Rejections - 35 USC § 101
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to laws of nature and natural phenomena without significantly more.
The claims recite natural phenomena. These judicial exceptions are not integrated into a practical application and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as explained below:
Subject Matter Eligibility Guidance
A three-step inquiry has been established to determine subject matter eligibility under 35 U.S.C. 101, in accordance with MPEP §2106:
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Step (1): Is the claim directed to a process, machine, manufacture, or composition of matter?
Step (2A): Is the claim directed to a law of nature, natural phenomenon (product of nature), or an abstract idea?
Prong 1 – Does the claim recite a law of nature, natural phenomenon, or an
abstract idea?
Prong 2 – If the claim recites a judicial exception, does it recite additional elements that integrate the judicial exception into a practical application?
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field. See MPEP §2106.05(a)
Applying the judicial exception with, or by use of, a particular machine. See MPEP §2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing. See MPEP §2106.05(c)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. See MPEP §2106.05(d)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §2106.05(e)
Step (2B): If the recited judicial exception is not integrated into a practical application, does the claim recite additional elements that amount to significantly different than the judicial exception such that they provide an inventive concept? This step includes evaluation of the same considerations under Step (2A), Prong 2, as well as two additional considerations:
Adding a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; and
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Analysis
Step (1): The answer to this step is yes since claims 1-3 and 5 are directed to a composition of matter, which is a statutory category.
Step (2A): The answer to this step is yes because the claimed compositions are directed to laws of nature and natural phenomena, specifically a composition comprising transition metal dichalcogenide as an active ingredient.
Prong 1:
Product of Nature Definition
When a law of nature or natural phenomenon is claimed as a physical product, the courts have often referred to the exception as a "product of nature". See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 580, 106 USPQ2d 1972, 1975 (2013); University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 758-59, 113 USPQ2d 1241, 1243 (Fed. Cir. 2014). As explained in those decisions, products of nature are considered to be an exception because they tie up the use of naturally occurring things, but they have been labeled as both laws of nature and natural phenomena. See Myriad Genetics, Inc., 569 U.S. at 590-91, 106 USPQ2d at 1979.
Claim Analysis
Independent claim 1 recites “An antibacterial composition comprising transition metal dichalcogenide (TMD) as an active ingredient”. Transition metal dichalcogenide is a naturally occurring compound.
In the instant case, the scope of the positively recited elements of the composition defines it in terms of naturally-occurring compounds, and as such the composition is defined as consisting of naturally-occurring compounds. The composition of the claims is merely taking naturally occurring materials and combining them, which does not add a meaningful limitation as it is merely a nominal or token extra-solution component of the claim and is nothing more than an attempt to generally link the product of nature a particular technological environment. While the composition is taught to be antibacterial, it is noted that in the prior art (WO 2020028391 A1; Green, 2020; as submitted in IDS of 12/1/2023), it is taught that transition metal dichalcogenides are known to be antimicrobial (see Green, paragraph 0004). As such, the composition comprising the TMD would also be antimicrobial as it is a property of the TMD. . "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. Therefore, the instant claim recites a product of nature.
Claim 2 does recite additional structure in that the TMD is a nanosheet, however this is no significant addition to the limitations of the claim. Therefore, the instant claims recite a product of nature. Claims 3 and 5 recite more limitations on the type of TMD used, however those listed, such as MoSe2 are naturally occurring products of nature.
There is no evidence within the specification that the compositions recited in claims 1-3 and 5 contain markedly different characteristics from their naturally-occurring counterparts.
Therefore, the answer to step 2A prong 1 is yes.
Prong 2:
The Prong Two analysis considers the claim as a whole. That is, the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application.
Here, the instantly amended claims do not introduce any additional limitations which transform or improve on the judicial exceptions recited in claim 1 and do not do anything beyond generally linking the use of the judicial exception to a particular technological environment.
Therefore, the answer to step 2A prong 2 is no.
Step (2B):
Claims 1-3 and 5 do not recite additional elements which require analysis under step 2B.
Therefore, the answer to step (2B) is no.
Conclusion
Claims 1-3 and 5 are directed to a judicial exception and do not qualify as eligible subject matter under 35 U.S.C. §101.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by WO 2020028391 A1 (Green, 2020; as submitted on IDS of 12/11/2020).
Green teaches compositions for killing microorganisms, such as coating (see Green, paragraph 0044) comprising transition metal dichalcogenides (TMC), such as MoSe2 (see Green, paragraph 0034; claims 1 and 3). Specifically, MoSe2 nanosheets are taught to have strong antibacterial activity (see Green, Example 1; paragraphs 0012, 0057; Fig. 2A-2L).
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020028391 A1 (Green, 2020; as submitted on IDS of 12/11/2020) in view of Baskan (2013).
The teachings of Green have been described supra. Further, it is taught that the transition metal dichalcogenides (TMC) is coated in a biocompatible polymer such as Pluronic® polymers (see Green, paragraphs 0006, 0008, 0036; claims 4 and 7). It is also taught that the MoSe2 is functionalized by the polymer Pluronic® F77 (see Green, paragraph 0062). Green teaches that while it uses F77 as the polymer, a different Pluronic® may provide better performance than Pluronic® F77 when integrated into the complex (see Green, paragraph 0063).
Green is silent on the use of polyacrylic acid (PAA) in the composition.
Baskan teaches that Pluronic® 127 is the most extensively studied member in the Pluronic® family and is known to be mechanically weak and easily dissolves in physiological environments (see Baskan, introduction). In order to improve on these issues, it is taught that the F127 is bound to PAA to form an interpenetrating polymer network (IPN)by increasing the number of breakable bonds (see Baskan, page 2980, column 1, first full paragraph; 3.2. Mechanical properties of the hydrogels; 4. Conclusions).
In regards to claims 1-5, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the composition as instantly claimed using the teachings of Green and Baskan as Green teaches that polymers such as Pluronic® are used with the TMC, specifically teaching that other types are used based on their performance, and Baskan teaches that the combination of a Pluronic® and PAA is known to enhance mechanical properties of Pluronic® polymers (see Baskan, page 2980, column 1, first full paragraph; 3.2. Mechanical properties of the hydrogels; 4. Conclusions). It would be obvious to one with ordinary skill in the art to combine the composition of Green with the polymer of Baskan according to the known method of making TMC/polymer nanosheets (see Green, paragraph 0062) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10695282 B2 in view of Baskan (2013).
10695282 teaches a monolayer composition that has a thickness of 1 to 10 nm (i.e., a nanosheet) comprising transition metal dichalcogenides (TMD) functionalized with an amphiphilic block polymer comprising polyethylene oxide and poly(epsilon-caprolactone wherein the transition metal dichalcogenide is MoSe2 (see 10695282, claims 1-4). Claims 5-6 further discuss the form of the composition. Claims 7-14 discuss the method of making the composition.
10695282 is silent on the use of polyacrylic acid (PAA) in the composition.
The teachings of Baskan have been described supra.
In regards to claims 1-5, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the composition as instantly claimed using the teachings of 10695282 and Baskan as Baskan teaches that the F127/PAA polymer is known to have beneficial mechanical properties (see Baskan, page 2980, column 1, first full paragraph; 3.2. Mechanical properties of the hydrogels; 4. Conclusions). Further, it is taught that the F127/PAA is an amphiphilic block polymer comprising polyethylene oxide (see Baskan, 1. Introduction). It would be obvious to one with ordinary skill in the art to combine the composition of 10695282 with the polymer of Baskan according to the known method of making TMC/polymer nanosheets (see 10695282, claims 7-14) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results. In regards to the antibacterial limitation of the instant claims, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In the instant case, the TMD is antibacterial as such its use in 10695282 would also have the same antibacterial properties.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611