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 § 102/103
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.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over ZAATREH, Sarah et al., Fast corroding, thin magnesium coating displays antibacterial effects and low cytotoxicity, Biofouling, 2017, vol. 33(4), pp. 294-305 (p. 294, "Abstract", p. 302, left column, lines 1-4, page 303, "Conclusion", tables 1, 2, fig. 1-6, p. 298, left column, line 1 to right column, line 5). Zaatreh discloses an antibacterial implant for reducing implant-related infections, and indicates that, inter alia: a sample in which a cylindrical titanium alloy [Ti6Al4V] base [page 295, right side] (having a surface roughness Ra of about 0.31 µm) [page 298, bottom, left side] is coated by a magnesium thin film (corresponding to the "biocompatible film" of claim 1 of the present application) [Figure 2(c)] which was manufactured by sputtering [page 295, right side]; the magnesium-coated sample was dissolved in a cell culture medium and made to release magnesium, and this release kept the pH of the culture medium alkaline and suppressed the growth of Staphylococcus epidermidis (p. 294, "Abstract", tables 1-2, fig. 1-6, p. 298, left column, line 1 to right column, line 5).
Zaatreh also indicates that magnesium is known to have an antibacterial effect against Staphylococcus aureus, that it is important to consider parameters such as amorphousness in order to regulate the solubility (corrosivity) of magnesium, and that the sample is useful as artificial bone (p. 302, left column, lines 1-4, p. 303, "Conclusion").
Since the coating only contains Mg, it is free of Mg2Ca.
Zaatreh does not explicitly indicate that the magnesium-coated sample has the property in claim 1 of "having such antibacterial properties that the antibacterial activity value is 2.0 or above", the property in claims 2 and 3 of "having such antibacterial properties that when inoculation is performed with 0.16 µl/mm2 of a test bacterial solution in which the viable Staphylococcus aureus bacteria count is 2.5 x 105 to 10 x 105 cells/ml, the average number of viable bacteria after 24 hours is 75% or below of that at the time of inoculation", or the property in claim 4 in which "the biocompatible film has such dissolution properties that the biocompatible film dissolves in a Hanks balanced solution”.
However, Zaatreh discloses using sputtering to manufacture a metal film in which a titanium alloy serving as a biocompatible base is covered by magnesium. The film in Zaatreh is crystalline, which applicant’s film is, and both are formed by sputtering with no intentional heating. See Specification (Figure 1: Mg(hcp)). Thus, it would be expected that the film in Zaatreh and applicant’s film are the same or substantially the same in terms of composition and structure and so they would be expected to have the same properties being claimed.
Response to Amendment
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (a) enablement rejection of the Office Action mailed on 19 February 2026. Rejection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (b) rejection of the Office Action mailed on 19 February 2026. Rejections are withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the section 102/103 rejection over Zaatreh and the section 103 rejection over Zaatreh, and the section 103 rejection over Zaatreh in view of Yang of the Office Action mailed on 19 February 2026. All rejections are withdrawn except for the section 102/103 rejection over Zaatreh that applies to Claim 3 as set forth above. Applicant argues that Claim 3 requires Ca in the composition, but Claim 3 characterizes Ca as optional, but being 5 to 35 wt. %, if present (line 2). With regard to it being absent, rejection applies.
Allowable Subject Matter
Claims 1, 2, 4, and 6-11 are allowed.
Regarding Claims 1, 2, 4, and 6-11, the reviewed prior art does not teach or suggest the subject matter of these claims. Particularly, the reviewed prior art does not teach or suggest films consisting of Mg and Ca in claimed amounts, being free of Mg2Ca, and exhibiting claimed antibacterial properties, in the claimed context. For example, ZAATREH, Sarah et al., Fast corroding, thin magnesium coating displays antibacterial effects and low cytotoxicity, Biofouling, 2017, vol. 33(4) (pp. 294-305) in view of Yang USPA 2010/0075162 fails to expressly teach or suggest the combination of features or provide basis for establishing inherency of these features for the reasons persuasively argued by applicant. See Zaatreh (p. 294, "Abstract", p. 302, left column, lines 1-4, page 303, "Conclusion", tables 1, 2, fig. 1-6, p. 298, left column, line 1 to right column, line 5), Yang (paragraphs 47 and 51; and entire document), and Applicant’s Response filed on 19 May 2026 (page 11).
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 MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
26 June 2026
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