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
Status of Claims
The amendments and arguments filed on 04/28/2026 are acknowledged and have been fully considered. Claim 1 is now pending. Claims 2-15 are canceled; claim 1 is amended.
Claim 1 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
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.
Claim 1 is 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).
Green teaches compositions for killing microorganisms, such as coating (see Green, paragraph 0044) comprising transition metal dichalcogenides (TMC), such as WSe2 (see Green, paragraphs 0006, 0034; claims 1 and 3). Specifically, WSe2 is a known antibacterial composition (see Green, paragraph 0070). It is also taught that the TMC nanosheets are taught to have strong antibacterial activity (see Green, Example 1; paragraphs 0012, 0057; Fig. 2A-2L).
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 TMC is functionalized by the polymer Pluronic® F77 (see Green, paragraph 0062). It is taught that this is done by sonicated the TMC with the F77 with the TMC in a solution (see Green, paragraph 0062). This method of functionalization is similar to the method of functionalization via sonification as discussed in the specification as filed (see specification as filed, paragraphs 0039-0040). 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 claim 1, 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.
Response to Arguments
Applicant's arguments filed 04/28/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s argument that the functionalization mechanism is different between the prior art and the instant invention, it is noted that Green specifically teaches that the TMC is functionalized by the polymer Pluronic® F77 (see Green, paragraph 0062). It is taught that this is done by sonicated the TMC with the F77 with the TMC in a solution (see Green, paragraph 0062). This method of functionalization is similar to the method of functionalization via sonification as discussed in the specification as filed (see specification as filed, paragraphs 0039-0040). While Baskan does teach PAA in a different use, it would be within the purview of one with ordinary skill in the art to use PAA in the method described in Green to achieve the surface functionalization as instantly claimed.
Applicant argues that Green does not disclose WSe2 however this is incorrect as Green specifically teaches it in nanosheets (see Green, paragraphs 0006, 0034; claims 1 and 3; figure 2J).
In regards to applicant’s arguments of unexpected results, applicant is reminded that whether the 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." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, the antibacterial nature of WSe2 is known in the art as discussed above. Applicant argues that the combination of WSe2 is able to provide better antibacterial activity compared to the other composites, citing paragraphs 0050 and 0054-0056 of the instant specification as filed (which correspond to figures 5 and 7-8), however the only comparison in these to the other TMDs is in figure 5. Figure 5 shows that the bacterial viability is within the standard deviation of MoSe2 (see instant specification as filed, figure 5). As the teachings of Green and Baskan teach that these compositions are known in the art, one with ordinary skill in the art would reasonably expect the compositions to behave similarly, which is what the data shows. Further, if the data is meant to show that the PAA and WSe2 together have an unexpected result, there is not enough data to establish this as only data showing the antibacterial effects of PAA and the composite are shown, not just WSe2 alone. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).
The data presented is not enough to establish unexpected results to overcome the rejection of record.
Although Baskan is not in the same field of endeavor, it is reasonably pertinent to the problem to be solved with regards to using polymers in physiological environments and increasing mechanical properties of a composition using these polymers. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023). It would be within the purview of one with ordinary skill in the art to use the teachings of Baskan to modify the composition of Green to use PAA as it is taught to have better mechanical properties. This is also supported by the teachings of Green, as Green teaches that F77 is the polymer used in the examples, a different Pluronic® may provide better performance than Pluronic® F77 when integrated into the complex (see Green, paragraph 0063).
As such, claim 1 is rendered obvious by the prior art as discussed above.
Double Patenting
The terminal disclaimer filed 04/28/2026 is sufficient to overcome the previous double patenting rejection. As such, the rejection is withdrawn.
Conclusion
No claims allowed.
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.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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