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 .
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, 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2019-0027346) in view of Gedanken et al. (US 9,315,937).
Regarding claim 1, Kim teaches a device for delivering biomolecules using a zinc-oxide nanowire structure (Paragraph [0001]). The nanowires are formed on a support, which is in the shape of a film, such that zinc oxide nanoparticles are formed on the support by electrospinning a zinc oxide nanoparticle solution and a polymer wherein the polymer support is in the form of fibers (“a fiber-nanowire composite-based sheet comprising a fiber-nanowire composite including: fibers including a polymer; and metal nanowires or metal oxide nanowires grown from metal nanoparticles or metal oxide nanoparticles located inside and/or on the surface of the fibers”) (Paragraphs [0037]; [0056]). The wires are then grown from the nanoparticles through hydrothermal synthesis (Paragraph [0059]).
Kim is silent with respect to the nanowires in film form having a water contact angle of 3° or less and a hexane contact angle of 3° or less.
However, these properties appear to be dependent on the materials and the methods of forming the sheet of claim 1 such that one of ordinary skill in the art would recognize that a film or sheet formed from identical methods and materials as applicant’s invention would have identical properties. MPEP 2112.01: 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 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).
In the instant case, the sheets of claim 1 require the nanowires grown from nanoparticles on polymeric fibers. Furthermore, the sheets are formed from the methods of electrospinning, sonication, and hydrothermal synthesis, in this order (Paragraphs [0049]-[0070]).
As discussed above, Kim teaches the films with the nanowires grown from nanoparticles on a fibrous, polymeric support film. Therefore, Kim teaches identical materials.
Additionally, as discussed above, Kim teaches the methods of forming the films being electrospinning and hydrothermal synthesis.
Kim is silent with respect to the methods further including a sonication process.
Gedanken teaches antimicrobial fabrics which are coated with metal oxide nanoparticles through a sonochemical method (Col. 1, Lines 8-10). The method includes coating a textile with a solution containing a metal oxide, which may be zinc (Col. 2, Lines 35-46; Col. 2, Lines 56-58). Zinc has been shown to have outstanding antimicrobial activity in the case of both gram-positive and gram-negative bacteria (Col. 4, Line 66-Col. 5, Line 2). The sonochemical methods provide a textile which is uniformly impregnated with metal oxide nanoparticles (Col. 3, Lines 25-30).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Kim such that after the nanoparticle solution and the polymeric, fibrous support are combined via electrospinning, the combination is subjected to a sonochemical method allowing the fibers to be uniformly impregnated with the nanoparticles as taught by Gedanken.
The combination now teaches identical methods and materials, as discussed above. Therefore, one of ordinary skill in the art would recognize that these identical materials and methods would teach identical properties to that of applicant’s invention, including having a water contact angle of 3° or less and a hexane contact angle of 3° or less.
Regarding claim 2, Kim teaches the films as discussed above with respect to claim 1. As discussed above, the nanoparticles and nanowires may be formed from zinc oxide.
Regarding claim 3, Kim teaches the films as discussed above with respect to claim 1. The nanoparticles may have an average diameter of 1 nm to 1 micron, overlapping with the claimed range (Paragraph [0031]).
Regarding claim 4, Kim teaches the films as discussed above with respect to claim 1. The polymeric fibers may be PLA fibers (Paragraph [0037]).
Regarding claim 5, Kim teaches the films as discussed above with respect to claim 1. Kim further teaches the average diameter of the polymeric fibers may be 1.25 microns (1250 nm) (Paragraph [0188]).
Regarding claim 11, Kim teaches the films as discussed above with respect to claim 1. As discussed above, Kim and Gedanken teach identical materials and methods as applicant’s invention resulting in identical properties. This would include a wetting time of 0 minutes to 1 minute in water.
Regarding claim 13, Kim teaches the films as discussed above with respect to claim 1. As discussed above, Gedanken teaches zinc oxide having an antimicrobial effect against both gram-positive and gram-negative bacteria.
Regarding claim 14, Kim teaches the films as discussed above with respect to claim 1. As discussed above, Gedanken teaches zinc oxide having an antimicrobial effect against both gram-positive and gram-negative bacteria.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2019-0027346) in view of Gedanken et al. (US 9,315,937) as applied to claim 1, and further in view of Zhang et al. (US 2019/0246635).
Regarding claim 12, Kim teaches the films as discussed above with respect to claim 1.
Kim is silent with respect to the films having a thickness of 1,000 nm or more.
Zhang teaches antimicrobial surfaces which are coated with a metal oxide (Paragraph [0001]). The metal oxides are formed on the surfaces through hydrothermal synthesis (Paragraph [0011]). The thickness of the metal oxide on the surfaces are from 1 to 10,000 nm (Paragraph [0044]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Kim to have thicknesses of 1 to 10,000 nm as taught by Zhang such that both references teach applying a metal oxide through hydrothermal synthesis to a surface.
Response to Arguments
Applicant’s arguments/amendments, see pages 5-6, filed 07/01/2026, with respect to the 35 U.S.C. 112 rejections of claims 11-14 have been fully considered and are persuasive. The rejections of 04/07/2026 has been withdrawn.
Applicant's arguments filed 07/01/2026 have been fully considered but they are not persuasive.
On pages 6-12, applicant argues that the combination of Zhang and Gedanken fails to teach the superamphifilic properties of claim 1 being the water contact angle of 3° or less and a hexane contact angle of 3° or less. More specifically, applicant argues that the step of sonication is key to achieving both the claimed superhydrophilic property and the claimed superoleophilic property and the sonication step is required to be performed following the formation of the nanoparticles on a surface of the fibrous substrate. Instead, the combination would result in the sonication step being performed prior to the nanoparticles being placed on the substrate.
The examiner is not persuaded by applicant’s arguments such that the sonication step taught by Gedanken is done in order to uniformly impregnate the textiles with the zinc oxide (Col. 3, Lines 25-30). It is further noted that the nanoparticles must be formed first in order to uniformly impregnate the textiles. Furthermore, Zhang teaches the application of the zinc oxide nanoparticles is in the form of a solution to the support via electrospinning (Paragraphs 0037; [0056]). As such, the sonication step would be performed after the electrospinning in order to uniformly impregnate the solution into the support resulting in the method steps in the combination being electrospinning, sonication, and hydrothermal synthesis, identical to applicant’s method. Lastly, it is noted that Gedanken teaches the sonication step for an identical reason to applicant’s invention, uniform impregnation rather than on the surface of the supports (Instant Specification, PGPUB, Paragraph [0066]).
Therefore, the examiner contends that the combination teaches identical materials and methods as applicant’s invention resulting in identical properties as well, including a water contact angle of 3° or less and a hexane contact angle of 3° or less.
The current rejection is made FINAL.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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