DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 and 15-16 in the reply filed on 23 March 2026 and Species A (polyester) and Species B: -C(=O)-CH=CH2 is acknowledged.
As to the requirement to pick a Species B: the elected Species B was found, however it appears Applicant may be able to overcome some of the rejections by perfecting foreign priority. If Applicant does so, the elected species would be allowable as to the agent and binder (claim 1). As such, in the interest of compact prosecution, the requirement to elect a Species B is withdrawn.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 106432420.
‘420 teaches see Embodiment 1 an antiviral agent anticipating claims 15-16. Although the capabilities are not discussed given the ‘420 agent is the same as the elected, it is expected the property is inherent.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of anticipation has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“[p]roducts of identical chemical composition can not have mutually exclusive properties.”).
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Naito (WO 2022/124101 with US 2024/0017896 relied upon for citations).
Naito (WO version) published on 16 June 2022, which is prior to the effective filing date of the current case. Naito was filed 11 December 2020, which is prior to the effective filing date of the current case. As such Naito (WO version) is prior art under both 102(a)(1) and 102(a)(2).
Naito teaches each element of claim 1 in claims 1 and 2 except for the molecular weight of the resin. This element is taught in ¶72 of Naito.
Naito anticipates all of claims 1-10 based on the teachings in the claims, figures, and examples.
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 (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 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 1-10 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over ‘462 (JP 2022-097462) in view of Kashiwakura (US 2017/0210940).
JP 2022-097462 teaches (see derivative 3) an antiviral agent comprising a tannic acid derivative including an acryloyl group with three carbons and 5 organic groups. ‘462 teaches the derivatives may be mixed in a matrix such as a resin (section 1.1) and applied to a variety of surfaces.
‘462 fails to teach the resin is the elected species of polyester or the molecular weight of the resin.
Kashiwakura (US 2017/0210940) teaches a metal sheet coated with an organic resin film which contains a main resin, a phenol resin, and a tannic acid additive. The coating provided for dent resistance in the final application (¶38). Kashiwakura teaches using a polyester in the range of 5,000-25,000 MW for a balance of applicability and curing degree.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use as the resin of ‘462 the resin of Kashiwakura for the benefit of dent resistance on metal. A PHOSIA would have had a reasonable expectation of success because ‘462 teaches mixing the tannic acid derivative in a resin and application to metal, which is what the Kashiwakura reference is directed to.
‘462 in view of Kashiwakura render obvious claims 1-6 and 15-16.
Regarding claim 7, ‘462 teaches the coating may be applied in a printing mechanism and as such is itself a printing ink.
Regarding claim 8, the coating of ‘462 would inherently have a sealing property
Regarding claims 9-10, ‘462 fails to teach a second coating of the ink however given the ink provides for antibacterial and antiviral functions it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have duplicated the invention by printed on both sides the ink to provide both sides the antiviral properties. See MPEP 2144.04.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Naito (2017/0321061) in view of Kashiwakura (US 2017/0210940).
Naito 2017/0321061 discloses a tannic acid derivative in which at least one hydroxyl group of the plurality of hydroxyl groups is substituted with a hydrocarbon chain having 3-18 carbon atoms [Abstract; 0031-0034, Formula (1)]; the tannic acid derivative includes the substituted hydroxyl group(s), hydroxyl groups, and inter alia, ester groups/bonds. Naito teaches that the tannic acid derivative is capable of film formation, and in particular is suitably included in film-forming compositions to impart improved sterilization/pasteurization properties [0001, 0008, 0037-0038]. The tannic acid derivative may be crosslinked or otherwise mixed with a matrix resin to form the composition and resultant film, wherein durability of the film is improved [0037]. The film forming compositions (inclusive of resin and tannic acid derivative) are suitably coated on a range of substrates including, inter alia metals, metal oxides, resins, elastomers, and polymers [0037-0038].
Kashiwakura (US 2017/0210940) teaches a metal sheet coated with an organic resin film which contains a main resin, a phenol resin, and a tannic acid additive. The coating provided for dent resistance in the final application (¶38). Kashiwakura teaches using a polyester in the range of 5,000-25,000 MW for a balance of applicability and curing degree.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use as the resin of Naito ‘061 the resin of Kashiwakura for the benefit of dent resistance on metal. A PHOSIA would have had a reasonable expectation of success because Naito ‘061 teaches mixing the tannic acid derivative in a resin and application to metal, which is what the Kashiwakura reference is directed to.
Naito ‘061 in view of Kashiwakura render obvious claims 1-6.
Regarding claim 7, Kashiwakura teaches the resin can further include known agents such as pigment (¶104). It would have been obvious to a person having ordinary skill in the art to use a pigment in the resin for the desired coloring effect. Such a combination reads on claim 7.
Regarding claims 9-10, ‘Naito ‘061 fails to teach a second coating however given the coating provides for antirust functions it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have duplicated the invention by coating on both sides to provide both sides the antirust properties. See MPEP 2144.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK J VINEIS whose telephone number is (571)270-1547. The examiner can normally be reached Monday - Thursday: 8:00 a.m. - 4:00 p.m.
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/FRANK J VINEIS/ Supervisory Patent Examiner, Art Unit 1781
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