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
Election/Restriction
Applicant elected species, Compound 5, having following structure on April 30,2026. Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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The elected species Compound 5 (Example 5) is a compound of Formula 1,
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, wherein,
Y is O; L is CH2CH2 ; R1, R2 and R3 are hydrogen;
X is
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Claims 1-4 and 6-16 read on the elected species.
The elected species, Compound (CAS# 2891880-54-7, entered STN database on February 02, 2023), is free of anticipatory prior art.
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The search/examination is expanded to non-elected species wherein L is alkylene, X is
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, A is benzene ring, e is 1, f is 0, which are rejected in following 35 USC§ 102 and 103 section.
Other non-elected species are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected species, there being no allowable generic or linking claim.
Status of Claims
Claims 1-4 and 6-16 are pending and under examination in this office action.
Priority
The instant application 18/576,595 filed on January 04, 2024, is a national stage entry under 35 U.S.C. 371 of International Application No. PCT/KR2022/009225 filed on June 28, 2022, which claims priority from Korean Patent Application Nos. 10-2021-0093703, and 10-2022- 0078380, filed on July 16, 2021, and June 27, 2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Korean Application No. 10-2021-0093703 and 10-2022- 0078380 filed on January 04, 2024 are in Korean without English translation. Applicant’s right of foreign priority is not perfected due to lack of certified English translation thereof.
Information Disclosure Statement
The reference listed in IDS dated 01/04/2024, 01/09/2025 and 09/06/2025 are being considered by the Examiner. Reference written in foreign language are considered to the degree of English abstract or patent family of foreign patent.
Drawings
The drawings filed on January 04, 2024 are objected to because the numbers/value in Figure 2 and 3 are cut-off . The words in Figure 1-4 are also blurry and illegible.
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 Interpretation
Claims 12-14 recite antibacterial property of compound of claim 1 which do not further limit the structure of compound of formula 1 and do not necessarily further contribute to the patentability of compound of formula 1. As stated in MPEP 2112(I), a claim to something which is old does not become patentable upon the discovery of a new property. e.g., the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s functioning, does not render the old composition patentably new to the discoverer.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 still recites definition for “h” while Chemical Formula 2-5 and 2-6 are removed.
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 1-4, 6, 7, 10 and 12-16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites compound of Formula 1 wherein X is a conjugate base of an aromatic acid having 6 to 20 carbon atoms. It’s not clear if the “6 to 20 carbon atoms” are the aromatic ring carbons only, or if carbon atoms of substituent on the aromatic ring system are also included in the “6 to 20 carbon atoms”. It’s not clear if the acid group is directly attached to the aromatic ring or there are carbon atoms between the aromatic ring and the acid group.
Claims 2-4, 6, 10 and 12-16 are rejected due to dependency on claim 1.
Claim 7 recites when f is 2 or more , two or more R’s are the same or different. There is no R’ group in Compound of Formula 2 , thus the R’ group lacks antecedent basis. It’s not clear wherein the R’ are attached to.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12-14 are rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12-14 recite antibacterial property of compound of claim 1 which do not further limit the structure of compound of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-4, 6-14 and 16 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by Compound (CAS# 688763-74-8 ) having following structure,
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Compound 688763-74-8 read on instant compound of Formula 1, wherein,
Y is O, L is CH2CH2 ;
R1 is methyl, R2 and R3 are hydrogen;
one of R4 , R5 or R6 is C16 (alkyl having 5 to 20 carbon ) and the others are methyl;
X is
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wherein A is benzene ring, e is 1, f is 0.
Thus, Compound 688763-74-8 anticipates instant claimed invention.
Claims 1-4, 7-9, 12-14 and 16 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by Compounds (CAS# 1426900-93-7) having following structure,
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Compound 1426900-93-7 read on instant claimed compound of Formula I, wherein,
Y is O, L is CH2CH2 ;
R1, R2 and R3 are hydrogen;
one of R4 , R5 or R6 is alkyl having 5 to 20 carbons and the others are methyl;
X is
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wherein A is benzene ring, e is 1, f is 0.
Thus, Compound 1426900-93-7 anticipates instant claimed invention.
Claim Rejections - 35 USC § 103
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.
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 non-obviousness.
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 1-4, 6-10, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Czerniak et al. (Chem. Pap. 2017, 71, 639–646. https://doi.org/10.1007/s11696-016-0058-7, Synthesis and application of ammonium-based poly(ionic liquids) as novel cationic flocculants).
Czerniak teaches cationic polymer prepared by photopolymerization of quaternary ammonium monomer conjugate with non-toxic anions (See whole article). Czerniak teaches the cationic poly(ionic liquids) (PILs) (e.g. [pMATMA][Sal] ) as flocculants that exhibit high efficiency for initial treatment and discoloration of sewage (See abstract, page 644, Conclusion).
Czerniak teaches the quaternary ammonium monomer conjugate with anions, e.g. salicylate, benzoate, etc.(See Fig 1 and 2, Table 1).
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It’s noted the salicylate conjugate of quaternary ammonium monomer, [MATMA][Sal], is very similar to instant claimed compound of Formula 1 and 2, wherein X is salicylate,
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, A is benzene ring, e is 1, f is 0. The difference of monomer [MATMA][Sal] and instant compound of Formula 1 is quaternary CH3 vs alkyl having 5 to 20 carbons as defined by instant R4- R6, which are considered as homologs of methyl group.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). A claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art.
In search for alternative quaternary ammonium flocculant, it would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore more ammonium salicylate monomer, e.g. homologs of [MATMA][Sal] as taught by Czerniak together with general knowledge of structure similarity. A skilled artisan would be motivated to do so and reasonably expect that homologation with long-chain alkyl group would provide alternative ammonium salicylate monomer which can be further polymerized to provide efficient non-toxic flocculants. Please note biological activity is the property of compound which do not necessarily add structural limitation/ patentable weight to the compound claims, even though prior art might be silent about the particular biological activity.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention base on the combined teachings of prior art and further exploration/optimization based on general knowledge of structure similarity. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1-4 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al (US 20110195104 A1, Applicant’s IDS dated 01/04/2024).
Jiang teaches antimicrobial cationic polymer hydrolysable to zwitterionic polymers that release therapeutic agents, zwitterionic monomers that are polymerizable to provide the cationic polymers and surfaces coated with the cationic polymers as wound dressings and related materials (See [0004], [0007]-[0014]; [0123-[0124], [0154], [0268]- [0271], claims 1-29).
Jiang teaches cationic monomer with formula III and VII (See [0097], [0123-[0124], [0128]-[0139]).
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Jiang teaches exemplary monomer comprising carboxybetaine ester groups, e.g. CBMA monomer, wherein m is 1-20, n is 1-5, X is anion (e.g. salicylate) (See [0051], [0143], Fig. 20-22 and 27, claim 14). Jiang teaches counterion having antimicrobial/antibacterial activity, e.g. salicylate, which is a naturally occurring compound against bacteria and fungi (See [0139], [0267], [0300]-[0301]).
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The CBMA monomer taught by Jiang read on instant compound of chemical formula 1 and 2, wherein:
Y is O; L is C2 alkylene (ethylene);
R1 , R4 and R5 are methyl;
R2 and R3 are hydrogen;
R6 is a substituted alkyl group;
X is a C6 aromatic acid conjugate base substituted with one hydroxyl group, e.g. a salicylate ion wherein: A is a benzene ring; f is 0; and e is 1.
Jiang teaches polymer compound (pCBMA-1 C2 SA) prepared from CBMA monomer has antibacterial properties of inhibiting the growth of gram-negative Escherichia coli K12 and gram-positive Staphylococcus epidermidis (See [0296] , [0299], Example 5). Jiang is silent about antimicrobial activity of quaternary ammonium salicylate monomer. However, Jiang teaches salicylic acid is a naturally occurring compound against bacteria and fungi and salicylate as antimicrobial agent( See [0300]-[0301]). A skilled artisan would reasonably expect the quaternary ammonium salicylate monomer is antimicrobial/antibacterial based on the collective teachings of Jiang and general knowledge of antibacterial/antimicrobial agent.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
In search for alternative antimicrobial ammonium salicylate , it would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore more quaternary ammonium salicylate monomer, e.g. CBMA derivatives with long chain alkyl group on the quaternary ammonium as taught by Jiang together with general knowledge of structure similarity and antibacterial/antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that modification with long-chain alkyl group at the quaternary ammonium would provide alternative antimicrobial ammonium salicylate monomer/polymers.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention base on the combined teachings of prior art and further exploration/optimization based on general knowledge of structure similarity and antibacterial/antimicrobial agent. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1-4 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over HE et al, (Molecules 2011, 16, 9755-9763; doi:10.3390/molecules16119755, Synthesis of Methacrylate Monomers with Antibacterial Effects Against S. Mutans), in view of Jiang et al (US 20110195104 A1, Applicant’s IDS dated 01/04/2024).
HE teaches methacrylate quaternary ammonium compounds that are polymerizable and used as immobilized antibacterial agents in dental composite materials (See whole article). HE teaches quaternary ammonium compounds are well known and effective antibacterial agents and polymerizable quaternary ammonium compound can immobilize the antibacterial agents in polymer backbone with long-term antibacterial effectiveness, e.g. methacryloyloxydodecylpyrimidinium bromide (MDPB) (See page 9756, Introduction).
HE teaches preparation of a series of methacrylate monomers containing quaternary ammonium with different length of alkyl chains, and the relationship between the length of alkyl chain and antibacterial activity (See Scheme 1, .
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HE teaches the antibacterial activity increased with increasing alkyl side chain length of these monomers from five to 16, wherein C10 to C18 showed significant antibacterial activity(See page 9757, Table 1; page 9761, Conclusion).
HE compound reads on instant compound of Formula 1 and 2, wherein,
Y is O; L is C2 alkylene (ethylene);
R1 , R4 and R5 are methyl;
R2 and R3 are hydrogen;
R6 is a long chain alkyl group;
The difference of HE compound and instant claimed compound of Formula 1 is the anion X.
The collective teachings of Jiang are elaborated in preceding 103 rejection and applied as before. Jiang teaches salicylic acid is a naturally occurring compound against bacteria and fungi and salicylate as antimicrobial agent. Jiang teaches polymerized quaternary ammonium methacrylate conjugate with salicylate (pCBMA-1 C2 SA) has antibacterial properties of inhibiting the growth of gram-negative Escherichia coli K12 and gram-positive Staphylococcus epidermidis.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). "In United States v. Adams, . . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." See MPEP 2141 I.
It would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore/modify HE’s quaternary ammonium methacrylate compound with salicylate as counterion based on the combined teachings of HE and Jiang, together with experimentation/optimization based on general knowledge of structure similarity and antibacterial
/antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that methacrylate quaternary ammonium conjugate with salicylate would provide alternative antimicrobial monomer.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention base on the combined teachings of prior art and further exploration/optimization based on general knowledge of structure similarity . Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1-4 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US 20230120607A1, hereafter “Lee’ 607”, patent family member of WO2022075763A1), in view of Jiang et al (US 20110195104 A1, Applicant’s IDS dated 01/04/2024).
The teachings of WO2022075763A1 in Korea is illustrated by Lee’ 607. The applied reference has a common inventor/applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Lee’ 607 discloses an antibacterial polymer composition comprising methacrylate quaternary ammonium compound of Formula 1 (See abstract, [0012]-[0022], claims 1-18).
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L is an alkylene having 1 to 10 carbon atoms,
R1 to R3 are each independently hydrogen or methyl;
one of R4 to R6 is an alkyl having 5 to 20 carbon atoms, and the rest OfR4 to R6 are each independently an alkyl having 1 to 4 carbon atoms,
X is halogen.
Lee’ 607 discloses antibacterial monomer, compound of formula 1’ wherein the definition of each substituent is the same as defined in the Chemical Formula 1(See [0088]-[0090]) that’s very similar to instant claimed compound of formula 1.
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Lee’ 607 discloses exemplary antibacterial monomer, e.g. 2-1’ , 2-2’ (See Example B-E, [0145]- [0149])
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The difference of Lee’ 607 monomer and instant claimed compound of Formula 1 is the anion X.
The collective teachings of Jiang are elaborated in preceding 103 rejection and applied as before. Jiang teaches salicylic acid is a naturally occurring compound against bacteria and fungi and salicylate as antimicrobial agent. Jiang teaches polymerized methacrylate quaternary ammonium conjugate with salicylate has antibacterial properties of inhibiting the growth of gram-negative Escherichia coli K12 and gram-positive Staphylococcus epidermidis.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). "In United States v. Adams, . . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." See MPEP 2141 I.
It would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore/modify Lee’ 607 methacrylate quaternary ammonium monomer with salicylate as counterion based on the combined teachings of Lee’ 607 and Jiang, together with experimentation/optimization based on general knowledge of structure similarity and antibacterial
/antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that methacrylate quaternary ammonium conjugate with salicylate would provide alternative antimicrobial monomer.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention base on the combined teachings of prior art and further exploration/optimization based on general knowledge of structure similarity and antibacterial/antimicrobial agent . Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1-4 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Perichaud et al. (US 6251967B1 Applicant’s IDS dated 09/26/2025).
Perichaud discloses antimicrobial/antibacterial polymer, compound of Formula I, comprising quaternary ammonium group (See abstract, Col 2. lines 9-67; Examples 1-6; claims 1-22).
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Prichard teaches quaternary ammonium monomer prepared from arylate, methacrylate, etc. (See Col.4. lines 60-67; Col. 7, lines 55-65; Example 3-5), and anion X is salicylate, benzoate, etc. ( Col. 4, lines 7-12) that’s similar to instant claimed compound of formula 1,
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Perichaud teaches antibacterial property of the polymers comprising methacrylate and methacrylamide, wherein R1 and R2 are methyl, R3 is octyl, dodecyl, hexadecyl, etc. (See Example 6)(which read on instant R4- R6 group).
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
In search for alternative antibacterial quaternary ammonium conjugate , it would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore more quaternary ammonium monomer, e.g. long chain alkyl group on the quaternary ammonium conjugate with other anion (e.g. salicylate) as taught by Perichaud, together with general knowledge of structure similarity and antibacterial/antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that quaternary ammonium salicylate would provide alternative antimicrobial methacrylate ammonium salicylate monomer/polymers.
One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention base on the combined teachings of prior art and further exploration/optimization based on general knowledge of structure similarity and antibacterial/antimicrobial agent. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-4 and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 15- 16, and 19-21 of copending U.S. patent application No. 18/027,430, in view of Jiang et al (US 20110195104 A1, Applicant’s IDS dated 01/04/2024). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Reference claims are drawn to a composition comprising at least one compound of Chemical Formula 1 comprising a quaternary ammonium structure having an acrylate group or methacrylate group;
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L1 is an alkylene group having 2 to 4 carbon atoms,
R1, R2 and R3 are the same as or different from each other, and are each an alkyl group having 4 to 20 carbon atoms, and R4 is hydrogen or a methyl group.
Reference claim 15 recites the quaternary ammonium structure having acrylate or methacrylate group selected from Monomers 1-10. Reference claim 19 is drawn to a compound selected from Monomers 1-10.
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Refence claims 20 and 21 recite the anion is halogen.
The difference of reference compounds and instant compounds is the anion X .
The collective teaching of Jiang are elaborated in preceding 103 rejection and applied as before. Jiang teaches salicylic acid is a naturally occurring compound against bacteria and fungi and salicylate as antimicrobial agent. Jiang teaches polymerized quaternary ammonium methacrylate conjugate with salicylate has antibacterial properties of inhibiting the growth of gram-negative Escherichia coli K12 and gram-positive Staphylococcus epidermidis.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties."
It would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore salicylate as counterion for reference quaternary ammonium methacrylate compound based on the combined teachings of Jiang together with experimentation/ optimization based on general knowledge of structure similarity and antibacterial / antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that methacrylate quaternary ammonium conjugate with salicylate would provide alternative antimicrobial monomer.
The instant application shares at least one common inventor/applicant with the reference application. Further, the continuing data of instant application is not related to the reference patent, thus no 35 USC 121 shield exists.
Claims 1-4 and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 13-21 of copending U.S. patent application No. 18/029,802 , in view of Jiang et al (US 20110195104 A1, Applicant’s IDS dated 01/04/2024). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Reference claims are drawn to a polymer comprising a crosslinked polymer of an acrylic acid-based monomer including acidic groups and a polymeric antimicrobial monomer represented by the following Chemical Formula 1, wherein X is bromo.
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Claim 5 further recites the antimicrobial monomer Chemical Formulae 1-1 to 1-4 wherein a is an integer of 2 to 9, b is an integer of 2 to 8,
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The difference of reference compounds and instant compounds is the anion X .
The collective teaching of Jiang are elaborated in preceding 103 rejection and applied as before. Jiang teaches salicylic acid is a naturally occurring compound against bacteria and fungi and salicylate as antimicrobial agent. Jiang teaches polymerized quaternary ammonium methacrylate conjugate with salicylate has antibacterial properties of inhibiting the growth of gram-negative Escherichia coli K12 and gram-positive Staphylococcus epidermidis.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties."
It would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore salicylate as counterion for reference quaternary ammonium methacrylate compound based on the combined teachings of Jiang together with experimentation/ optimization based on general knowledge of structure similarity and antibacterial / antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that methacrylate quaternary ammonium conjugate with salicylate would provide alternative antimicrobial monomer.
The instant application shares at least one common inventor/applicant with the reference application. Further, the continuing data of instant application is not related to the reference patent, thus no 35 USC 121 shield exists.
Claims 1-4 and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5 and 16-18 of copending U.S. patent application No. 18/274356, in view of Jiang et al (US 20110195104 A1, Applicant’s IDS dated 01/04/2024). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Reference claims are drawn to a composition comprising a compound comprising a quaternary ammonium structure having an acrylate group or a methacrylate group,
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L1 is an alkylene group having 2 to 4 carbon atoms,
R1, R2 and R3 are the same as or different from each other, and are each an alkyl group having 4 to 20 carbon atoms, and R4 is hydrogen or a methyl group.
Reference claim 17 recites the compound selected from Monomers 1-10, etc.
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The difference of reference compounds and instant compounds is the anion X .
The collective teaching of Jiang are elaborated in preceding 103 rejection and applied as before. Jiang teaches salicylic acid is a naturally occurring compound against bacteria and fungi and salicylate as antimicrobial agent. Jiang teaches polymerized quaternary ammonium methacrylate conjugate with salicylate has antibacterial properties of inhibiting the growth of gram-negative Escherichia coli K12 and gram-positive Staphylococcus epidermidis.
According to M.P.E.P. § 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties."
It would have been prima facie obvious to one of ordinary skilled in the art before the effective filing date of instant application to explore salicylate as counterion for reference quaternary ammonium methacrylate compound based on the combined teachings of Jiang together with experimentation/ optimization based on general knowledge of structure similarity and antibacterial / antimicrobial agent. A skilled artisan would be motivated to do so and reasonably expect that methacrylate quaternary ammonium conjugate with salicylate would provide alternative antimicrobial monomer.
The instant application shares at least one common inventor/applicant with the reference application. Further, the continuing data of instant application is not related to the reference patent, thus no 35 USC 121 shield exists.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mancuso et al. ChemPlusChem 2017, 82, 1235, https://doi.org/10.1002/cplu.201700194, Synthesis and Antibacterial Activity of Polymerizable Acryloyloxyalkyltriethyl Ammonium Salts. Mancuso teaches synthesis and antibacterial activity of polymerizable acryloyloxyalkyltriethyl ammonium salts (See whole article). Mancuso teaches quaternary ammonium salts (QASs) have been known for a long time to possess important antimicrobial activities, and have been extensively used as antiseptics and disinfectants (See page 1235, Introduction). Mancuso teaches acryloxyalkyltriethylammonium bromides (AATEABs), bearing long alkyl chain (e.g. 6, 9, 11, and 12 carbon atoms(See Scheme 1) and antibacterial activity thereof against two Gram positive (Staphylococcus aureus and Streptococcus pyogenes) strains and three Gram negative bacterial strains (Escherichia coli, Klebsiella pneumoniae, and Pseudomonas aeruginosa)(See page 1236, right column; Fig. 1).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIYUAN MOU whose telephone number is (571)270-1791. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/LIYUAN MOU/Examiner, Art Unit 1628
/JARED BARSKY/Primary Examiner, Art Unit 1628
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