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 Status
Claims 7, 10, 17, 20, 25, and 28 are cancelled. Claim 5 is withdrawn as not being toward elected species. Claims 1-6, 8-9, 11-16, 18-19, 21-24 and 26-27 are pending. Claims 1-4, 6, 8, 9, 11-16, 18-19, 21-24 and 26-27 are under examination.
Priority
This application is a national stage entry of PCT/US2022/045507 filed on 10/3/2022, which claims priority to US provisional application 63/253,326 filed on 10/7/2021.
Restriction/Election
Applicant's election with traverse of species A) and B) in the reply filed on 7/22/2026 is acknowledged. The traversal is on the ground(s) that the shared technical feature is not merely organo-selenium plus a textile and that the shared special technical feature contributes over Reid and that unity is present. This is not found persuasive because the election were toward species. For species elections, the examiner does not have to break unity, but instead provide that the genus groups would contain alternatives that do not share common structural features and the alternatives do not all belong to a recognized class of chemical compounds (page 5 of the restriction mailed on 5/22/2026). Note claims 1, 11 and 21 provide organo-selenium compound which would cover any organic compound that incorporates selenium in the structure. The various possibilities for the organic portion or the organo-selenium compound would be diverse and have varying functions depending the structures. Not all will fit under the same class of chemical compounds (e.g. some may be carboxylic acids, but some may be amines or some do not have to carry any hydroxyl or carboxylic acid groups; some may have ring structures and some may consist of straight or branched chains). In regard to the textile, this is a large genus of diverse and functionally distinct materials where not all of them fit into the same class of chemical compounds. For example, cotton a cellulosic compound is structurally and functionally diverse that nylon, which is a polyamide. Both of these are diverse to acrylic polyesters, which have acrylic groups. The cited art shows that there are different organo-selenium compounds in the prior art and that these can be used for various textile products mentioning acrylate polymer matrices or plastic materials. Note the applicant’s elected compound has an organo component with particular ring structures each having 3 nitrogens each and chlorine substituents (cyanuric chloride groups). Note the elected textile is cotton, which is not an acrylate polymer or plastic material. Again, note that claims 1, 11 and 21 do not have organo-selenium compounds of defined structures and do not provide for particular textile materials. Therefore, the species contained in the groups where election is required do not have common structural features and do not fit into one class of chemical compounds.
The requirement is still deemed proper and is therefore made FINAL.
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/22/2026. Note these claims do not provide for elected species of A) or B) and limit to other diverse species. Although claim 26 does not mention cotton, it allows for the option of types of materials like cloth, clothing, undergarments, etc that can be made up of cotton.
The elected species of A) was not found in the prior art with motivation for the invention of the claims. Thus, examiner moved to next species found in the prior art that would read on the claims. Note that claim 4 is noted as free of the prior art when considered with the limitations of claim 1.
Information Disclosure Statement
The information disclosure statements filed on 8/2/2024 and 7/15/2025 have been considered by the examiner.
Claim Objections
Claims 3 and 15 are objected to for double use of the word “water” in the same list of ingredients.
Claims 8, 18 and 26 are objected to for providing “ramie” and “jute” twice in the group of the claim.
Claim 4 is objected to for being dependent on a claim that is rejected over the prior art. If this limitation is added to limit claim 1, then applicant may have an allowable claim barring any issues that might be added due to an amendment. Claim 4 was not found in the prior art in regard to a search of applicant’s claims and this limitation.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 9, 16, 19 and 22-24 and 26-27 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.
Claims 6 and 16 are indefinite as it is unclear if these are meant to be properties of the textile before the contacting or after the contacting as presented in claims 1 and 11, respectively. Note that the textile will be present before and after, but in one instance it is unchanged and in the other it has been contact with the antimicrobial agent comprising organo-selenium compound. For the purpose of compact prosecution, the examiner will consider this to be the textile after the contacting.
Claim 22 is indefinite for being dependent on itself, and thus, not having antecedent basis for “the textile” or “the antimicrobial agent”. Note that if changing to dependency to claim 21, the antimicrobial agent of claim 21 does not have a limitation to “or a cross-linking agent”.
Claims 23-24 and 26 are rejected as being dependent on this indefinite claim.
Claims 9, 19 and 27 contains the trademark/trade name vinalon. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe “polyvinyl formal” and, accordingly, the identification/description is indefinite.
Claim 23 is indefinite for “or crosslinking structures” as this appears in a group of organo-selenium compound, but does not provide “structures”. In this manner, it may be broader than just crosslinking structures that are organo-selenium compounds, and thus, unclear how it fits into this group of alternatives for “organo-selenium compound”.
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.
Claim(s) 1-2, 6, 8, 11-16, 18, 21-24, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tran et al (Biomedicines, March 2020, volume 8, pages 1-10).
In regard to claim 11 and its dependent claims, it provides for product-by-process limitations (MPEP 2113) with materials and solutions used for “contacting”. The claims are read for the product that is formed as a materially similar product may be made by different methods.
In regard to claim 21, this system will be read as a method for making as the claim imparts steps and is to “A system for making” and contains the step of “contacting”. “Attaching” will read on some type of linking or interlinking that helps the organo-selenium compound remain on the textile material.
Tran teaches an organo-selenium containing polyester bandage that inhibits bacterial biofilm growth on the bandage and the wound (title and abstract). Tran teaches a method of coating the polyester dressing with polymerized Se-AAEMA (seleno-2-(methacryloyloyloxy)ethyl acetoacetate) (section 2.1). This compound can crosslink to polymerize, and thus, is organo-selenium crosslink agent. Tran teaches “Excess AAEMA or Se-AAEMA was removed from the dressings by passing the soaked bandage through a roller press (mechanical cloth wringer). The AAEMA or Se-AAEMA polyester dressings were then sprayed with H2O2 using a bottle sprayer to initiate free radical polymerization. This has little or no effect on the bandage material. As a result of the in situ polymerization, the polymer
is held in place by a combination of van derWaals forces and physical interlinking with the dressing material.” (section 2.1). Tran teaches ivory polyester fabric (section 2.1). Tran teaches growth inhibition of gram negative and gram positive bacteria (section 3.1 and figure 6). Tran teaches the stability of the bandage (figure 7 and section 3.5). Although a container is not mentioned, stock solutions/solutions would be made in containers such as beakers, tubes, cylinders or other containers to hold the liquid. Tran does teach a bottle sprayer, which is one type of container that combines a bottle with sprayer mechanism (section 2.1).
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.
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 1-3, 6, 8, 9, 11-13, 15-16, 18-19, 21-24 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Reid US 20100158966.
Reid teaches “Biocidal formulations that include a selenium compound selected from the group consisting of RSeH, RSeR′, RSeSeR, RSeSeR′, and RSeX, wherein each of R and R′ include an aliphatic or phenolic residue, and wherein X is a protecting group selected from the group consisting of a halogen, an imide, a cyanide, an azide, a phosphate, a sulfate, a nitrate, a carbonate, selenium dioxide, and combinations thereof, are provided. The selenium compounds may be incorporated into an acrylate polymer matrix, or may be incorporated into a molten plastic material” (abstract and paragraph 76, also paragraph 24). Reid teaches Se-MAP non-covalent attachment to cellulose discs (example 5) and mentions it could help develop selenium based coatings for cotton materials (example 5). Reid teaches “As a result of the in situ polymerization, the polymer is held in place by a combination of van der Waals forces and physical interlinking with the cellulose material” (paragraph 115). The physical interlinking and polymerization provide for reactions. Example 1 teaches selenium content for a bandage coating. Example 1 of Reid teaches “To 150 g of a standard sample of a non-latex cohesive formulation (Andover Coated Products, Inc., Salisbury, Mass.), 0.9 g of the organo-selenium-methacrylate compound (selenocyantoacetoxy) butoxyethyl methacrylate (SCABEM) (agent that can crosslink) was added drop-wise with mixing, resulting in a cohesive solution having 0.00126 gram Se/gram soln. (0.9 g/150 g non-latex cohesive=0.006 g SCABEM/g ctg; Se is 21% by weight of SCABEM=0.006 g×0.21=0.00126 gram Se/gram soln.). A portion (3.43 g) of this sample was drawn onto a composite cohesive elastic bandage (Andover Coated, Inc., Salisbury, Mass.), air dried for 5 min and then flash dried for 2 min at 100° C.” Further, Reid provides “sufficient quantity to kill bacteria and/or other microbes (paragraphs 94-96). Reid teaches “Plastics can be pressed into thin layers, formed into objects, or drawn into fibers for use in textiles” (paragraph 68). Paragraphs 98-101 provides for an activated (plastic) lens reacted with Selenocyanatopropyl amine (agent that can form crosslink) (paragraph 101). Reid teaches “ 6 mg/ml of diphenyl diselenide” for lens treatments (paragraph 99). Reid teaches “The IOL was activated by washing in analytical-grade water, placing in a well of a tissue culture plate, and adding 1 ml of a solution prepared by dissolving 540 mg sulfo-NHS and 480 mg EDC in 100 ml 0.25M, pH 6.0 MES buffer. “ (paragraph 103). Reid next teaches “A selenocystamine solution was prepared by dissolving 400 mg selenocystamine.2HCL (a salt) in 40 ml water and 40 ml ethanol, and a solution of 210 mg NaHCO3 in 20 ml water was then added into the above solution” (paragraph 104) and lastly the coupling of the selenium compound to the lens (paragraph 105). Selenocystamine is a compound that can act as a crosslinking agent. NaHCO3 is both a salt and an alkalizing agent. Reid teaches no significant leaching (paragraphs 99 and 111). Paragraph 32 provides that Se-MAP inhibits P aeruginosa (gram negative) and S. aureus (gram positive) biofilm formation (paragraphs 32-33). Paragraph 68 provides for use of plastics and provides examples of polyvinyl chloride, methyl methacrylate, polystyrene, polyurethane and the like. Paragraph 78 provides for rayon, nylon, carbohydrate, or polyester among various matrix materials including cellulose (as cellulose pad). Paragraph 45 provides for a further acrylate compound.
One of ordinary skill in the art before the time of filing would have produced the methods and compositions claimed by applicant as Reid recognizes crosslinking organo-selenium compounds and their interactions and reactions with textile materials using means such as solution based methods of applicant’s claims. Reid provides for textiles that are plastics, cellulosic and provides the basis for using cotton. Reid also recognizes the antimicrobial properties and no significant leaching from its produced materials. Therefore, there was a reasonable expectation of success in using the teachings of Reid to produce methods and compositions of applicant’s claims that will have antimicrobial and reduce leaching properties.
Claims 1-3, 6, 8, 11-13, 15-16, 18, 21-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Reid US 20100158966 and Joshi et al (Materials Today Chemistry June 2020, volume 16, pages 1-19).
This rejection is made for compact prosecution to provide for the limitation of dye for the organo selenium compound antimicrobial agent.
Reid’s teachings are provided above.
Reid does not provide organo selenium compounds that would be perceived as dyes, although it allows for diverse R groups including phenolic groups.
Joshi teaches biological applications of 1,2,3-selenadiazoles and “In addition, the increased interest in synthesis of N containing bioactive compounds with other heteroatoms such as selenium, sulfur, etc is mainly because of their tremendous potential as antioxidants, additives, dyes for polymers, and as insecticides, in solvent extraction, and in nanotechnology (abstract). Joshi teaches that derivatives of 1,2,3-selenadiazoles have been shown to have antimicrobial activity (section 1.7 and 1.7.1). Joshi teaches “Many of selenadiazoles and their compounds show antimicrobial activity against E. coli, S. aureus, and C. albicans e.g. 3-aryl-3-[4-aryl-1,2,3-selenadiazol-5 yl]-2-phenyl-2-propenenitrile” (section 1.7.1). Antimicrobial selenadiazoles are provided in figure 11. Additional selenadiazoles are provided in figures 12-14. Also, see figure 1 with other types of organo-selenium compounds.
One of ordinary skill in the art before the time of filing would have utilized other organo selenium compounds of the prior art that have antimicrobial activity such as the selenadiazoles taught in Joshi in the materials and methods of Reid with the reasonable expectation of success in obtaining new antimicrobial organo-selenium textile materials.
Claim 14 in addition to Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Reid US 20100158966 and Koola US20020020025A1.
Reid teaches the claims as discussed above.
Reid does not teach a solution as in claim 14 for the process.
Koola teaches a crosslinking process for cellulosic materials (abstract). Koola teaches a process for crosslinking and finishing cellulosic materials using curing catalyst, aqueous solution and ingredients such as wetting agents (paragraph 24). Koola teaches the cellulosic material is immersed in the finishing bath for treatment. Koola teaches cellulosic fibers such as cotton, flax, jute, ramie, rayon and others (paragraph 26). Koola teaches finishing the textiles to make them wrinkle resistant and/or iron free (paragraph 1).
As Reid provides for cellulosic material to add the organo selenium compounds to, one of ordinary skill in the art before the time of filing would look to treat the materials with a finishing solution as provided in Koola to crosslink the cellulosic material for finishing of the textile material to make it wrinkle resistant or iron free. Thus, there was a reasonable expectation of success in combining the teachings of the references to obtain a treatment solution for the process that contains catalyst, wetting agent and water along with an organo-selenium compound for the cellulosic material treatment.
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 11-16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9-12 and 14 of U.S. Patent No. 9370187.
Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set provides for textile composition where crosslinking organo-selenium compound is disposed on the surface or impregnated throughout a substrate that may be a textile material such as fabrics, cellulose pads and others. Note that claims 11-16 and 18 are product-by-process claims (MPEP 2113- a materially similar product may be made by different processes). As the claims of ‘187 provide for textiles treated with organo-selenium compounds, it reads on the claims.
Conclusion
No claims are allowed. Note that claim 4 is objected to, but noted to be free of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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