DETAILED ACTION
Claims 1-15 are currently pending and under examination.
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 .
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 07/09/2026 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Withdrawn Rejection
The previously applied rejection over claims 7-11 under 112(b) is withdrawn as a result of Applicant amending the instant claims to provide clear antecedent basis and remover “or prepared therefrom” in claim 10.
Examiner’s Note
Applicant's amendments and arguments filed 07/23/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 07/23/2026, it is noted that claims 1-2, 7 and 10 have been amended and no new matter or claims have been added.
Modified Rejections:
The following rejections have been modified based on Applicant’s claim amendments.
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) 1-9 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 10369440 (Applicant provided) in view of US 6,034,129 (previously applied).
Regarding claim 1-2 and 5, the limitation of an antibacterial resin comprising a copolymer comprising a first unit derived from styrene and a second unit derived from a monomer presented by Chemical Formula 1 is met by the ‘440 publication teaching nano-polymer antibacterial agent obtained using organic nanotechnology of emulsion polymerization via one step process (abstract). The nanopolymer antibacterial agent used as an antibacterial material is prepared by reacting 3g of methacryloyloxy ethyl hexadecyl dimethyl ammonium bromide with 12 g of styrene (abstract, claims 1, 9, 10, [0040]-[0042], example 3). This corresponds to wherein R1, R2, R4 are methyl, R3 is hexadecyl, L1 is ethylene and X- is Br -.
Regarding the limitation of wherein the antibacterial resin has a thermal decomposition temperature of 150 degrees C or higher is met by the ‘440 publication teaching the nanopolymer antibacterial agent is a stable structure and still has antibacterial function in high temperature environment of about 300 degrees C without causing the color of the product to change [0040], thus teaching stability at a temperature of higher than 150 degrees C claimed. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 6, the ‘440 publication teaching nano-polymer antibacterial agent obtained using organic nanotechnology of emulsion polymerization via one step process (abstract). The nanopolymer antibacterial agent used as an antibacterial material is prepared by reacting 3g of methacryloyloxy ethyl hexadecyl dimethyl ammonium bromide with 12 g of styrene (abstract, claims 1, 9, 10, [0040]-[0042], example 3). Monomers are taught to include methacryloxyloxyethyl dodecyl dimethyl ammonium bromide [0034]. This corresponds to wherein R1, R2, R4 are methyl, R3 is hexadecyl, L1 is ethylene and X- is Br -.
Regarding claim 7-9 and 11, the limitation directed to the antibacterial activity of the antibacterial resin is met by the ‘440 publication teaching the claimed resin, the nanopolymer antibacterial agent used as an antibacterial material is prepared by reacting 3g of methacryloyloxy ethyl hexadecyl dimethyl ammonium bromide with 12 g of styrene (abstract, claims 1, 9, 10, [0040]-[0042], example 3), which would necessarily result in the antibacterial activity claimed.
Regarding claim 12, the limitation of wherein styrene is an amount ranging from 55 to 99.7 parts by weight based on 100 parts by weight of the compristion for forming an antibacterial resin and wherein the monomer present by Chemical Formula 1 is an amount ranging from 0.2 to 40 parts by weight based on 100 parts by weight of the compristion for forming an antibacterial resin is met by the nanopolymer antibacterial agent used as an antibacterial material is prepared by reacting 3g of methacryloyloxy ethyl hexadecyl dimethyl ammonium bromide with 12 g of styrene (abstract, claims 1, 9, 10, [0040]-[0042], example 3). Monomers are taught to include methacryloxyloxyethyl dodecyl dimethyl ammonium bromide [0034] thus teaching 1:4 parts or 80% parts by weight of the composition forming the resin the remaining being polymer methacryloyloxy ethyl hexadecyl dimethyl ammonium bromide. MPEP 2113 - “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The ‘440 publication does not specifically teach the copolymer has a weight average molecular weight of 10,000 g/mol to 1,000,000 g/mol (claim 1) wherein the antibacterial resin has a molecular weight distribution ranging from 1 to 3 (claim 14) and the second unit range from 1 to 10,000 units (claim 15).
The ‘440 publication does not specifically teach wherein a molar ratio of the first unit to the second unit ranges from 100:0.5 to 100:50 (claim 3) wherein the copolymer is a random copolymer (claim 4).
The ‘129 patent teaches a polymer comprising an amino group or an ammonium group attached to the polymer backbone via an aliphatic spacer group, the polymer may be a copolymer (abstract). Formula I is taught to be a monomer in the polymer
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wherein R1, R2 may be methyl and R3 may be an alkyl chain from C1-C18 groups Z is a spacer group, Y is oxygen and X is a carbonyl group (column 4, lines 1-25). The copolymers comprise from 95-5 mole percent of Formula I and 95-5 mole percent hydrophobic monomer (column 6, lines 20-26) wherein the hydrophobic monomer is styrene (column 5, lines 5-15). The molecular weight of the polymer may range from 500 Daltons to about 500,000 Daltons (column 6, lines 35-45). The copolymerization may be non-random due to reactivity (column 6, lines 45-60) wherein random polymerization is taught.
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the ratio of monomers and molecular weight taught by the ‘129 patent for the copolymer taught by the ‘401 publication because the ‘401 publication and the ‘129 patent are directed to antimicrobial polymers formed from overlapping monomers and styrene. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to optimize the molecular weight and ratios of the monomers in the copolymer as the ‘401 publication and the ‘129 patent teach copolymers formed form overlapping monomers wherein the ‘129 patent teaches known molecular weight ranges and ratios of the monomers, thus teaching an optimizable parameter. As MPEP 2144.05 recites “where 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 optimization”.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 10369440 (Applicant provided) in view of US 6,034,129 as applied to claims 1-9 and 11-15 above, and further in view of JPH09123299 (previously applied).
As mentioned in the above 103(a) rejection, all the limitations of claims 1-9 and 11-15 are taught by the combination of the ‘440 publication and the ‘129 patent.
The ‘440 publication and the ‘129 patent teach the antibacterial resin according to claim 1.
The combination of references does not specifically teach a molded article comprising the antibacterial resin (claim 10).
The ‘299 publication teaches thermoplastic and thermosetting resins are molded using various molding techniques [0002]. An antibacterial resin is taught to have excellent antibacterial properties and can be used in a wide range of applications [0003]. The antibacterial resin is taught to be molded [0004] wherein the resin includes styrene and acrylates and combinations thereof [0005].
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to mold the resin as taught by the ‘440 publication to form a molded structure as the ‘299 publication teaches that it was known to mold antibacterial resins to obtain the molded product in the form of an article and the ‘440 publication teaches an antibacterial polymer. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the polymer of the ‘440 publication to form a molded article as the ‘299 publication teaches molded products of antibacterial polymers to be used in a wide range of fields such as sanitary products. It would be prima facie obvious to one of ordinary skill in the art to use a known method of forming the final polymer product for end use using methods of molding known to be used for antibacterial polymer containing overlapping monomers.
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 1-9 and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/576,260 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘260 application teaches a first repeating unit of formula I, overlapping with the formula I of the instant claims, and a second repeating unit derived form a monomer which may be styrene, the first repeating unit having a molar amount of 3-60% by weight and the copolymer having a molecular weight of 10,000 to 1,000,000 g/mol, reading on the instant claims and necessarily containing the claimed thermal decomposition. In re Spada.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments:
Applicant’s arguments have been fully considered and are not deemed to be persuasive.
Double Patenting:
Applicant argues the double patenting rejection be held in abeyance.
In response, Applicant has presented no substantive arguments thus the rejection will be maintained for reasons of record.
103:
Applicant argues the new limitation of “has a thermal decomposition temperature of 150 degrees or higher” is not taught. Applicant points to the instant specification ([0193], [0231]-[0235]) demonstrating the higher decomposition temperature. Applicant argues the ‘401 publication and the ‘129 patent are silent on thermal decomposition temperature.
In response, the ‘440 publication teaching the nanopolymer antibacterial agent is a stable structure and still has antibacterial function in high temperature environment of about 300 degrees C without causing the color of the product to change [0040], wherein the structure reads on the formula of claim 1 reacted with a styrene (abstract, claims 1, 9, 10, [0040]-[0042], example 3), thus teaching stability at a temperature of higher than 150 degrees C claimed. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). It is unclear if Applicant is presenting unexpected results. If so, the results are not commensurate in scope with the instant claims, as a few examples are taught wherein the formula of claims 1-2 encompasses many structures. Additionally, all tested examples have thermal stability inside the claimed range, none are presented outside the claimed range, thus not providing proper comparison data.
Conclusion
No claims are allowed.
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.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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, Brian-Yong Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDSEY M BECKHARDT/Examiner, Art Unit 1613
/BRIAN-YONG S KWON/Supervisory Patent Examiner, Art Unit 1613
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