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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-11, 16-17 and 20-21 in the reply filed on 10 February 2026 is acknowledged. The traversal is on the ground(s) that the grounds that Groups I and II share a common technical feature. In support of this position, applicant makes the following argument, as of page 6, bottom paragraph, relevant text reproduced below.
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This does not appear to be accurate because Group II requires the surface of an object in addition to the polyurethane. As such, a case wherein the polyurethane of Group I would itself have been used e.g. as a medical device, but the modified polyurethane was not placed on the surface of an additional object, this would not appear to meet the requirements of Group II due to the lack of an additional object. Therefore, groups I and II do not appear to share a common technical feature. As such, applicant’s arguments do not appear to be persuasive.
Applicant then makes the following argument on page 7, first full paragraph.
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This is not persuasive because the 37 C.F.R. 1.475(b)(2) states the following
An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories … (2) A product and a process of use of said product
In this case, Group II is not drawn “only to a product of use of Group I because Group II requires an additional object that is not required by Group I.
Applicant then cites In re Kuehl, 475 F.2d 658, 177 USPQ 250 (CCPA 1973), as of applicant’s response, page 7. In view of this argument, the examiner searched the cited case in the MPEP. The examiner found it to have been cited as of MPEP 2116.01, third paragraph in section, where the MPEP describes the cited case in the following manner:
Process of cracking hydrocarbons using novel zeolite catalyst found to be patentable even though catalytic cracking process was old. "The test under 103 is whether in view of the prior art the invention as a whole would have been obvious at the time it was made, and the prior art here does not include the zeolite, ZK-22. The obviousness of the process of cracking hydrocarbons with ZK-22 as a catalyst must be determined without reference to knowledge of ZK-22 and its properties.
This does not appear to be applicable to the fact pattern of the instant application because the product of Group I is not novel and non-obvious. With that being said, the above-indicated fact pattern would appear to support the general concept surrounding rejoinder that was set forth on pages 5-6 of the restriction requirement mailed on 11 December 2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 22-26, 39-41, and 47-48 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 10 February 2026.
Information Disclosure Statement
Regarding the information disclosure statement (IDS) submitted on 11 April 2025, foreign patent #7 (KR 10-2312344 B), the examiner corrected an error regarding the publication date. The IDS indicates that the publication date is 4 March 2021. However, the actual publication date of this document of KR 10-2312344 B appears to have been 13 October 2021. This has been corrected by the examiner.
Claim Interpretation
Regarding claim 17, the examiner understands that a block copolymer comprising one block drawn to group (i) and another block drawn to group (ii) meets the claim requirements. Additionally, a homopolymer comprising repeating units that contain both groups (i) and (ii) attached to each repeating unit of the polymer is also understood to meet the claim requirements.
Claim Rejections - 35 USC § 102 – Anticipation
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.
Claim(s) 1-2, 8-9 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al. (Journal of Thermal Analysis and Calorimetry, Vol. 112, 2013, pages 1289-1295).
Huang et al. (hereafter referred to as Huang) is drawn to polyurethanes comprising zwitterionic sulfobetaine groups, as of Huang, page 1289, title. Huang teaches the following polymer, as of Huang, page 1291, Scheme 1, wherein the portion of the scheme focusing on the reaction product has been reproduced below, with annotation by the examiner.
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As to claim 1, the claim requires a polyurethane. This is taught as of Huang, page 1289, title as well as page 1291, Scheme 1. The caption of Scheme 1 (which is not reproduced above) teaches the acronym “PU” which refers to “polyurethane.”
As to claim 1 part (i), the 1,2,3-triazoles in the above-reproduced figure read on the required at least one heterocyclic ring.
As to claim 1 part (ii), the sulfobetaines in the above-reproduced figure read on the required zwitterionic group.
As to claim 2, the 1,2,3-triazole groups contain more than two nitrogen atoms.
As to claim 8, the sulfobetaine functional groups in the above-reproduced diagram are understood to read on the required betaine group.
As to claim 9, the sulfobetaine functional groups read on the additional requirements of this claim.
As to claim 17, the above-reproduced structure teaches a single polyurethane comprising both the heterocyclic moiety and the zwitterionic moiety.
Claim Rejections - 35 USC § 103 – Obviousness
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.
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.
Claim(s) 1-2, 4-6, 8-9, 11, 16, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (WO 2020/223525 A1).
Claim(s) 1-2, 4-6, 8-9, 11, 16, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2022/0380944 A1).
Ma et al. (WO 2020/223525 A1) (hereafter referred to as Ma) is drawn to fibers made from polymers, as of Ma, title and abstract.
As to the required polyurethane, Ma teaches this as of page 10, paragraph 0039.
Ma teaches a polymer with the following formula, as of Ma, page 10, top of page, relevant structure reproduced below.
As to the requirement of part (i) of claim 1, Ma teaches a heterocyclic moiety as of page 19, relevant text reproduced below with annotation by the examiner.
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As to the required zwitterionic moiety of part (ii) of claim 1, Ma teaches this as of page 34, relevant figure reproduced below with annotation by the examiner.
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As to claim 1, Ma appears to teach all of the requirement of the instant claims, but not in the same embodiment. As such, while the prior art teaches all of the claimed components, the prior art is not anticipatory insofar as these components must be selected from various lists/locations in the prior art reference. It would have been prima facie obvious; however, to have selected the recited components from various lists/locations in the prior art reference and to have combined them together. This is because such a modification would have represented nothing more than the predictable use of prior art components according to their established functions. Combining separate prior art components (from a single prior art reference) according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 2, the heterocyclic group pointed out above has two nitrogen ring heteroatoms.
As to claim 4, Ma teaches a hydantoin derivative as of page 33, paragraph 0134, as well as the above-reproduced figure.
As to claims 5-6, May teaches a halamine that appears to be part of the hydantoin, as of page 33, paragraph 0134.
As to claims 8-9, Ma teaches a sulfobetaine functional group as of page 34, relevant figure reproduced above.
As to claim 11, Ma teaches fibers, as of the title and abstract.
As to claim 16, as best understood by the examiner from the above-reproduced figure, the polymer with the heterocyclic hydantoin group appears to be separate from the polymer with the zwitterionic sulfobetaine group.
As to claims 20-21, Ma teaches a nanofibrous membrane, as of Ma, pages 5-6, paragraph 0016.
Regarding Ma et al. (US 2022/0380944 A1), this appears to have essentially the same disclosure as Ma et al. (WO 2020/223525 A1); as such, this rejection applies to Ma et al. (US 2022/0380944 A1) for the same reason that the rejection applies to Ma et al. (WO 2020/223525 A1).
Note Regarding Reference Date: The instant application ultimately claims priority to a provisional application filed on 18 August 2021. Ma et al. (WO 2020/223525 A1) was published on 5 November 2020. This is less than a year earlier than the effective filing date of the instant application. Ma et al. (WO 2020/223525 A1) was also effectively filed earlier than the effective filing date of the instant application.
Regarding AIA 35 U.S.C. 102(a)(1), the examiner notes that MPEP 2153.01(a), third paragraph, states the following.
If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies.
This fact pattern appears to be applicable to this rejection. As there is no evidence that an exception under AIA 35 U.S.C. 102(b)(1) is applicable, it is the examiner’s position that Ma et al. (WO 2020/223525 A1) is prior art under AIA 35 U.S.C. 102(a)(1).
Regarding AIA 35 U.S.C. 102(a)(2), the examiner notes that MPEP 2154.01(c) states the following:
To qualify as prior art under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent application publication, or WIPO published application ("U.S. patent document") must "name[ ] another inventor." This means that if there is any difference in inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination, the U.S. patent document satisfies the "names another inventor" requirement of AIA 35 U.S.C. 102(a)(2).
In this case, there is a difference in inventive entity between the Ma et al. (WO 2020/223525 A1) publication and the instant application; as such, Ma et al. (WO 2020/223525 A1) is prior art under AIA 35 U.S.C. 102(a)(2).
Regarding Ma et al. (US 2022/0380944 A1), this reference was effectively filed prior to the effective filing date of the instant application and is prior art under AIA 35 U.S.C. 102(a)(2), but is not prior art under AIA 35 U.S.C. 102(a)(1).
Claim(s) 1-2, 4-9, 17, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2020/0172741 A1).
Ma et al. (hereafter referred to as Yong after the second inventor) is drawn to an antimicrobial and antifouling hydrogel coating, as of Yong, title and abstract. Yong teaches the following composition, as of figure 24, reproduced below with annotation by the examiner.
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As such, Yong teaches a polymer comprising (i) a five membered hydantoin heterocyclic ring attached thereto, and (ii) a zwitterionic sulfobetaine attached thereto.
As to claim 1, Yong is not anticipatory because the polymer in figure 24 of Yong does not appear to be polyurethane. Nevertheless, Yong teaches coating polyurethane in a list of polymers as of paragraphs 0067, 0109, and claim 5 of Yong. As such, the skilled artisan would have been motivated to have applied the coating of Yong to polyurethanes. As such, while the prior art teaches all of the claimed components, the prior art is not anticipatory insofar as these components must be selected from various lists/locations in the prior art reference. It would have been prima facie obvious; however, to have selected the recited components from various lists/locations in the prior art reference and to have combined them together. This is because such a modification would have represented nothing more than the predictable use of prior art components according to their established functions. Combining separate prior art components (from a single prior art reference) according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 2, the ring in figure 24 of Yong comprises two nitrogen atoms, which reads on the claimed requirement.
As to claim 4, Yong teaches halogenated hydantoin as of at least Yong, paragraph 0100 as well as figure 24.
As to claim 5-6, Yong teaches N-halamine, as of at least Yong, paragraphs 0085-0090. This appears to be present in the functional group in figure 24 of Yong.
As to claim 7, Yong teaches chlorine conjugated to halamine as of at least paragraph 0090 of Yong.
As to claims 8-9, Yong teaches sulfobetaine as of at least paragraph 0093 of Yong as well as figure 24.
As to claim 17, the composition of figure 24 of Yong appears to be a single polymer comprising functional groups that read on functional groups (i) and (ii). The skilled artisan would have been motivated to have rendered these as polyurethanes for the reasons set forth in the above rejection of claim 1.
As to claim 20, Yong teaches a catheter, sent, pump, etc. as of claim 4 of Yong; these read on the required articles.
As to claim 21, Yong teaches a catheter, sent, pump, etc. as of claim 4 of Yong; these read on the required tool.
Note Regarding Reference Date: Yong was published on 4 June 2020. This is over a year prior to the earliest effective filing date of the instant application, which is 18 August 2021. As such, Yong is prior art under AIA 35 U.S.C. 102(a)(1). The exceptions under AIA 35 U.S.C. 102(b)(1)(A) or 102(b)(1)(B) would not appear to be applicable here due to the publication date of over a year prior to the effective filing date of the instant application.
Claim(s) 1-2, 4-11, 16, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (Acta Biomaterialia, Vol. 8, 2012, pages 1498-1506) in view of Kwon et al. (Acta Biomaterialia, Vol. 61, 2017, pages 169-179).
Sun et al. (hereafter referred to as Sun) is drawn to an N-halamine modified polyurethane, as of Sun, page 1498, title and abstract, and page 1500, figure 1, reproduced in part below.
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The above-reproduced polyurethane is understood to read on the required five membered heterocyclic ring of part (i) of claim 1. The hydantoin and halamine modified polyurethane of Sun is used for antimicrobial purposes.
Sun does not teach part (ii) of claim 1; namely, the zwitterionic group modification.
Kwon et al. (hereafter referred to as Kwon) is drawn to zwitterionic sulfobetaine immobilized polymers, as of Kwon, page 169, title and abstract. The polymers may be polyurethane, as of Kwon, page 169, abstract. See also Kwon, page 173, Scheme 2, reproduced in part below.
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This modification appears to render the polyurethane resistant to bacterial adhesion, as of Kwon, page 169, paragraph entitled “Statement of Significance” and page 177, figure 9, reproduced below.
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See also Kwon, page 178, left column, first full paragraph.
Kwon does not teach the required heterocyclic group; the examiner notes that the para-hydroxylated aromatic ring in the above-reproduced figure is not a heterocycle because all of the ring atoms are carbons.
It would have been prima facie obvious for one of ordinary skill in the art to have combined the halamine-modified polyurethane of Sun with the sulfobetaine-modified polyurethane of Kwon. This is because both of these modifications to polyurethane have antimicrobial effects. The halamine-modification appears to kill bacteria, as taught by Sun, and the sulfobetaine modification of polyurethane appears to prevent bacteria from attaching. The skilled artisan would have been motivated to have combined these functions to have predictably resulted in an enhanced antimicrobial effect with a reasonable expectation of success. Combining prior art elements (e.g. halamine modification of polyurethane and sulfobetaine modification of polyurethane) according to known methods to yield predictable results (preventing bacterial contamination of said polyurethane) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 2, the halamine of Sun comprises two nitrogen heteroatoms; see Sun, page 1500, Scheme 1.
As to claim 4, Sun teaches a hydantoin; see Sun, page 1500, Scheme 1.
As to claim 5, Sun teaches a halamine; see Sun, page 1498, title.
As to claim 6, as best understood by the examiner, the halamine is present in the heterocyclic group taught by Sun.
As to claim 7, Sun appears to teach a conjugated chlorine, as of Sun, page 1499, right column, section 2.6, reproduced below.
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As best understood by the examiner, this would have resulted in the chlorine conjugation required by the instant claims.
As to claims 8-9, Kwon teaches the required sulfobetaine; see the above-reproduced figure from Kwon, page 173, Scheme 2, reproduced above.
As to claim 10, Sun teaches the following, as of page 1505, right column, reproduced below with annotation by the examiner.
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In view of the teaching from the title of item #11, the skilled artisan would have been motivated to have rendered the polyurethane to have been porous with a reasonable expectation of success.
As to claim 11, Sun teaches the following, as of page 1506, left column, relevant text reproduced below.
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In view of these teachings, the skilled artisan would have been motivated to have rendered the composition fibrous with a reasonable expectation of success.
As to claim 16, the skilled artisan would have expected that combination of the compositions of Sun and Kwon would have resulted in an admixture of a polyurethane comprising the heterocyclic group (i) in the absence of the zwitterionic group (ii), and a separate polyurethane comprising the zwitterionic group (ii) in the absence of the heterocyclic group (i).
As to claim 20, Kwon teaches implanted devices, as of Kwon, page 169, abstract. This is understood to read on the required article.
As to claims 20-21, Sun teaches a membrane, as of Sun page 1505, right column, reproduced in the above rejection of claim 10. Additionally, Kwon also teaches membranes, as of Kwon, pages 178-179, relevant text reproduced below.
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These are understood to read on the required filtration membrane as the term “membrane” implies that certain items pass through the membrane and that other items do not pass through the membrane.
Claim(s) 3 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (Acta Biomaterialia, Vol. 8, 2012, pages 1498-1506) in view of Kwon et al. (Acta Biomaterialia, Vol. 61, 2017, pages 169-179), the combination further in view of Hui et al. (Biomacromolecules, Vol. 14, 2013, pages 585-601).
Sun is drawn to an N-halamine modified polyurethane comprising hydantoin. Kwon is drawn to sulfobetaine modified polyurethane. See the rejection above over Sun in view of Kwon.
Neither Sun nor Kwon teach the five or six membered ring heterocycle comprising both nitrogen and oxygen ring heteroatoms. This is because the hydantoin ring comprises only nitrogen heteroatoms in the ring, and does not comprise oxygen heteroatoms in the ring. While hydantoin comprises oxygen atoms, these are carbonyl oxygens bound to carbon atoms in the ring. The oxygen atoms are therefore not in the ring themselves, and cannot be considered heteroatoms.
Hui et al. (hereafter referred to as Hui) is drawn to N-halamine polymers and coatings, as of Hui, page 585, title and abstract. Hui suggests a polyurethane coating as of page 588, right column, second to last paragraph and page 590, right column, second to last paragraph, citing art prior to Hui. Hui teaches various functional groups leading to N-halamines, as of Hui, page 586, figure 3, reproduced below.
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These molecules include hydantoin, as of #1, as well as a derivatized oxazolidinone, as of #3. These are for antimicrobial purposes, as of Hui, page 585, title and abstract.
Hui does not teach a zwitterionic group.
It would have been prima facie obvious for one of ordinary skill in the art to have substituted the derivatized oxazolidinone, as of #3 of Hui, in place of the hydantoin, as of Sun, to have been used in the composition of Sun in view of Kwon. Sun is drawn to a N-halamine containing polyurethane, and teaches the hydantoin functional group in order to make said polymer. Hui teaches that derivatized oxazolidinone can be used in place of hydantoin to form a N-halamine functionalized polymer. As such, the skilled artisan would have been motivated to have substituted the derivatized oxazolidinone #3 of Hui in place of the N-halamine of Sun in order to have predictably formed a N-halamine containing polymer with a reasonable expectation of success. The simple substitution of one known element (e.g. derivatized oxazolidinone #3 of Hui) in place of another (N-halamine) in order to achieve predictable results (anti-bacterial effect when combined with a polymer such as polyurethane) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
As to claim 17, Hui teaches the general concept of a block copolymer; see e.g. page 588, figure 8 as well as multiple other locations in the reference. As such, the skilled artisan would have been motivated to have formulated a polymer comprising a block of halamines/hydantoin and a block of zwitterionic groups as separate blocks on the same polymer.
Non-Statutory 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 1-2, 4-9, 17, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,912,894. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
The instant claims are drawn to a polyurethane polymer containing a heterocyclic functional group and a zwitterionic functional group.
The conflicting claims are drawn to a polymer, as of conflicting claim 1. The polymer is derivatized with a heterocyclic antimicrobial group such as hydantoin and N-halamine, as of conflicting claim 5. The polymer is also derivatized with an antifouling zwitterionic group, as of conflicting claim 6. The polymer may be polyurethane, as of conflicting claim 3.
The instant and conflicting claims differ because the conflicting claims recite multiple polymers other than polyurethane. Nevertheless, the skilled artisan would have been motivated to have made a composition comprising polyurethane derivatized with a heterocyclic antimicrobial group and a zwitterionic antifouling group in view of the requirements of the conflicting claims. This would have resulted in a prima facie case of obviousness-type non-statutory double patenting.
Additional Cited Prior Art
In selecting the references to be used in rejecting the claims, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid an unnecessary number of rejections over similar references. The examiner is not called upon to cite all references that may be available, but only the "best." (See 37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. See MPEP 904.03.
In the course of the examiner’s search, the examiner found multiple references that appear to be just as good as, but no better than the references cited above. Examples of such references will be discussed briefly below.
As relevant prior art, the examiner cites KR 10-2021-0023394. The examiner notes the following regarding this document. The examiner notes that the inventor names were written in Korean, and are unavailable to the examiner in English. The examiner has provided a translation from Google Translate at https://patents.google.com/patent/KR20210023394A/en?oq=KR+10-2312344 which was accessed on 27 February 2026.
KR ‘394 teaches the following polymer, as of the abstract of the reference, wherein the relevant portion of the document is reproduced below.
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The above-reproduced figure appears to show a polyurethane polymer modified with the heterocycle hydantoin, which is item (i) of claim 1. Nevertheless KR ‘394 does not teach modification of polyurethane with a zwitterion, which is item (ii) of claim 1. In view of this, the examiner takes the position that KR ‘394 is just as good as, but no better than Sun et al. (Acta Biomaterialia, Vol. 8, 2012, pages 1498-1506), which was cited above and also teaches a hydantoin/halamine functionalized polyurethane in the absence of the zwitterionic component (b).
As relevant prior art, the examiner cites Coneski et al. (US 2014/0024768 A1). Coneski et al. (hereafter referred to as Coneski) is drawn to zwitterionic functionalized polyurethane, as of Coneski, title and abstract, which reads on item (ii) of claim 1. Coneski does not teach polyurethane functionalized by a heterocyclic ring, which is item (i) of claim 1. As such, the examiner understands Coneski to be just as good as, but no better than Kwon et al. (Acta Biomaterialia, Vol. 61, 2017, pages 169-179), which was cited above and also teaches zwitterionic functionalized polyurethane.
Also as relevant, the examiner cites Ma et al. (US 2019/0389979 A1). Ma et al. (hereafter referred to as Ma) is drawn to a hydrogel, as of Ma, title and abstract. Ma teaches a polymer modified by both a zwitterionic group and a heterocyclic group, as of Ma, page 14, bottom of right column, figure reproduced below.
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Nevertheless, Ma differs from the claimed invention because Ma does not teach polyurethane. The polymer shown in the above-reproduced figure appears to be a polysaccharide, not polyurethane. As such, the examiner has not rejected the instant claims over Ma et al. (US 2019/0389979 A1).
Relevant Copending Application – No Double Patenting
The examiner notes copending application 17/253,228, which has overlapping inventors with the instant application. Claim 1 of the ‘228 application recites a copolymer with the following structure:
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This appears to be a hydantoin heterocyclic structure, such as that required by part (i) of claim 1.
Nevertheless, the claims of the ‘228 application do not disclose polyurethane, and do not disclose a zwitterionic group. As such, the examiner has not rejected the instant claims on the grounds of provisional non-statutory double patenting over the claims of the ‘228 application.
Conclusion
No claim is allowed.
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ISAAC . SHOMER
Primary Examiner
Art Unit 1612
/ISAAC SHOMER/ Primary Examiner, Art Unit 1612