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 II, claims 3-6 in the reply filed on 06/01/2026 is acknowledged.
Claim Interpretation
Claim 4 recites silver oxides (AgO, Ag2O, Ag2O2, and Ag2O3) as this is all possible silver oxides there is nothing indefinite about this claim the (AgO, Ag2O, Ag2O2, and Ag2O3) in parentheses are merely other names or all of the chemical formulae which belong to silver oxides as claimed. That is to say this is not an instance of a range within a range or it being unclear if this is meant to be part of the claim or not. These are just all of the possible chemical formulae of silver oxides claimed.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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.
Claim 4 is indefinite because it recites that the silver precursor is one selected from silver nitrate, silver perchlorate,…and mixtures of two or more thereof. Mixtures or two or more thereof are not “one” as is required by applicant’s claim. Thus, it is indefinite whether applicant’s actually want only one silver precursor or if mixtures of silver precursors can be utilized in the reaction process. Based on the specification, it appears that applicant’s envision using one or mixtures of the silver precursors in their claimed process. The examiner suggests removing the word “one” from the claim which would overcome this rejection.
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.
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) 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olson et al. (US20140328890) and further in view of Choi et al. (Journal of Applied Biomaterials & Functional Materials, 2019, https://doi.org/10.1177/2280800019847067).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 3, Olson teaches antibacterial coating methods for various implants/medical implants comprising applicant’s claimed step (a) immersing a titanium base/titanium implant in a coating solution in which a silver precursor is dissolved with a concentration of about 4000-5000 ppm, and (b) hydrothermally treating the coating solution by heating (see entire document; e.g. [0004]; [0010]; [0016]; [0025]; [0034-0035]; [0038-0039]; [0041]; [0048]; [0052-0057]; [0065-0066]; [0069]; [0073]; [0080]; [0090]; [0125]; [0135]; [0140-141]; [0144-0162]; [0173-0174]; [0177]; [0183-0184]; Examples 1-2). Olson teaches wherein the silver coating thickness on the titanium implant is affected by the concentration and as such it would be obvious to optimize the concentration of the silver in the solution to achieve the desired coating thickness and desired antimicrobial activity from the silver coating (see entire document; e.g. [0004]; [0010]; [0016]; [0025]; [0034-0035]; [0038-0039]; [0041]; [0048]; [0052-0057]; [0065-0066]; [0069]; [0073]; [0080]; [0090]; [0125]; [0135]; [0140-141]; [0144-0162]; [0173-0174]; [0177]; [0183-0184]; Examples 1-2).
Regarding claim 4, Olson teaches wherein their silver solution is specifically selected from silver salts which provide silver ions, specifically Ag+, Ag++, and Ag+++ and can be a mixture of silver salts/compounds which provide the silver ions for forming the coating on the titanium implants and while they prefer silver iodates they do not specifically limit the silver compounds which provide the claimed silver ions to silver iodates (See entire document; [0073]; [0051-0056]; [0059]; [0069]; [0077]).
Regarding claim 5, Olson teaches wherein the titanium/titanium implants/titanium cords can be washed with water prior to performing a reaction ([0100]; [0102]).
Regarding claim 6, Olson teaches wherein the hydrothermal reaction can be performed at temperatures of up to 150 °C which read on the claimed range and teach reaction of times of approximately 3 hours which reads on the claimed time range (see entire document; e.g. [0004]; [0010]; [0016]; [0025]; [0034-0035]; [0038-0039]; [0041]; [0048]; [0052-0057]; [0065-0066]; [0069]; [0073]; [0080]; [0090]; [0111]; [0125]; [0135]; [0140-141]; [0144-0162]; [0173-0174]; [0177]; [0183-0184]; Examples 1-2).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 4, Olson does not specifically teach wherein the source of silver ions are the claimed silver compounds/silver salts. However, this deficiency in Olson is addressed by Choi.
Choi teaches that silver nitrate can be a source of silver ions for coating titanium when immersed in the silver solutions and wherein the silver nitrate can be used in various concentrations (See abstract).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have substituted the silver nitrate of Choi as the silver ion source in Olson. One of ordinary skill in the art would have been motivated to do this to provide additional useful silver salts as a source of silver ions for coating the titanium especially since Olson does not specifically limit the source of silver ions as is discussed above.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed method when looking to Olson because Olson teaches immersing titanium base implants etc. in solutions comprising silver salts/silver precursors and hydrothermally treating the coating solution with heating temperatures and reaction timings which overlap the claimed conditions and Olson teaches wherein the concentrations of silver ions can be optimized as well as the time and temperature of the hydrothermal reaction in order to form silver coatings on the titanium having a desired/useful thickness and appropriate antimicrobial effects. Thus, as discussed above it would be obvious to optimize the conditions of the prior art method taught by Olson in order to develop the claimed method in order to form the most effective method of silver coating titanium base materials/implants for antimicrobial activity. It would be obvious to perform such optimizations because, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It also would be obvious to include the claimed pre-treatment washing step in the method of Olson because Olson teaches that it was known in the art to wash the titanium base material/titanium implants before immersing them in the solution containing the silver ions/silver precursor and performing the hydrothermal step for coating the titanium base material/titanium implants with the antimicrobial silver coating. One would do this to allow better adherence of the silver to a clean surface for use in medical implants and to ensure the implant is clean/sterile prior to coating the implant with the silver.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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