DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Preliminary Amendments and Remarks, filed 29 November 2024, in the matter of Application N° 18/870,573. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No claims have been added or canceled.
Claims 3 and 5 have been amended to depend only from claim 1.
No new matter has been added.
Thus, claims 1-5 continue to represent all claims currently under consideration.
Information Disclosure Statement
Two Information Disclosure Statements (IDS) filed 29 November 2024 and 4 November 2025 are acknowledged and have been considered.
Claim Rejections - 35 USC §102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Agarwal (WO 2021/207178 A1; IDS/ISR reference of record).
The instantly claimed invention is directed to a composition comprising silver nanoparticles having a protection agent adsorbed on the surface thereof. The nanoparticles are further recited as having a dispersed particle diameter of 1000 nm (1 micron) or less and a primary particle (i.e., the silver nanoparticles alone) diameter of 500 nm or less.
The particles of the instant composition additionally recite possessing the property of an antiviral activity value greater than 0.3 based on JIS R1756:2020 in a dark place, while the composition exhibits an antiviral activity value that is positively affected by light irradiation based on JIS R1756:2020.
The Examiner submits that the broadest reasonable interpretation of the instant invention is that it is directed to silver nanoparticles that are coated with the aforementioned protection agent. The instant specification defines such an agent as being embodied by tannic acid, for instance, or by a surfactant. Thus, where the prior art discloses the recited composition, structure, and dimensions, it will be considered to anticipate the instant invention, whether or not the recited properties are recognized. See MPEP §2112(II). Furthermore, where said composition is disclosed by the art, the recited properties will also be considered met. See MPEP §2112.01(I). The Examiner notes lastly, that the recited properties are definitions that are set forth by Applicants as being tethered to the claimed composition. See MPEP §2111.01(IV).
Agarwal discloses silver nanoparticles that are used for treating antiviral conditions in humans (see e.g., claims 3 and 4). Said nanoparticles are further defined as being prepared by reducing silver nitrate salt with tannic acid (protecting agent) (see e.g., claim 33). The silver nanoparticles are also disclosed as being formulated in an aqueous suspension (see e.g., claim 10).
The reference additionally discloses that the silver nanoparticles range in size from 1-100 nm, from 1-50 nm, and 1-10 nm in size (see e.g., claims 7-9).
Such is considered to teach both of the recited diameter limitations recited by instant claim 1, particularly as any further complexation (e.g., with tannic acid) would be considered to be part of the formed silver nanoparticles, as evidenced, for instance, by claim 33.
The recited mass ratio of protecting agent (tannic acid) to silver nanoparticles is also met by the reference. Example 5, for instance, discloses preparing stabilized AgNPs (silver nanoparticles) by combining 2 mL of 100 mM silver nitrate salt (169.9 g/mol) and 2 mL of 5.8 mM tannic acid (1701.2 g/mol). The aforementioned components calculate to a mass of about 19.7 mg of tannic acid and about 34 mg of silver nitrate, resulting in a weight ratio of about 0.58:1, thereby meeting the claim.
The foregoing is thus considered to expressly teach the limitations recited by claims 1-3 and 5.
Claim 22 discloses that the practiced composition may be formulated as a nasal spray. Such a disclosure is considered to meet the limitations recited by claim 4 which requires a “member” comprising the composition of claim 3.
The Examiner notes that “member” is broadly defined in the instant specification as having “no particular restrictions on the types of such members” and that “examples of the materials in such [a] member include organic and inorganic materials” (see Spec., ¶[0055]).
As such, application of the composition of the reference to an organic surface such as nasal tissue is considered to meet the invention of instant claim 4. Similarly, the nasal spray bottle containing the delivered composition, while not defined in terms of the material used, would be understood as being a bottle prepared of a synthetic material, thereby also meeting the recited limitations of a “member”.
Thus, the reference discloses the instantly claimed invention.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khalid et al. (J. Hazardous Materials; 2019).
The limitations of the claimed invention are discussed above.
Khalid discloses biosurfactant (protecting agent) coated silver nanoparticles for the purposes of blocking the production of hazardous biofilms, wherein the biosurfactant is rhamnolipid (see e.g., Abstract). Section 2.2.1. discloses the production of the rhamnolipid (RL) coated silver nanoparticles (RL-Ag NPs).
Section 3.1. (Characterization) discloses that the RL coated Ag NPs had an average hydrodynamic diameter of 48 nm, thereby meeting both of the instantly recited diameter limitations of claim 1.
The reference additionally discloses that the effect of RL coated NPs on preformed biofilms was evaluated by soaking them into RL coated NP suspensions for 24-48 hours (see pg. 444, right col., first full paragraph). The Examiner submits that this teaches the limitations recited by instant claims 4 and 5.
Thus, the reference is considered to meet each of the instantly claimed limitations.
Nonstatutory 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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/870,206 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 1 recites:
An antiviral composition comprising silver nanoparticles as an active component, said silver nanoparticles having a protection agent adsorbed on the surface thereof and having a dispersed particle diameter of 1000 nm or less and a primary particle diameter of 500 nm or less, wherein the composition exhibits an antiviral activity value greater than 0.3 based on JIS R1756:2020 in a dark place, while the composition exhibits an antiviral activity value that is positively affected by light irradiation based on JIS R1756:2020.
Reference claim 1 discloses:
An antiviral composition comprising two types of particles of:
i) photocatalyst particles; and
ii) silver nanoparticles having a protection agent adsorbed on the surface thereof and having a dispersed particle diameter of 1000 nm or less and a primary particle diameter of 500 nm or less,
wherein the composition exhibits an antiviral activity value greater than 0.3 based on JIS R1756:2020 in a dark place, while the composition exhibits an antiviral activity value brought by light irradiation of 0.3 or more based on JIS R1756:2020.
The difference between the instant and reference claims 1 is emphasized in reference claim 1. Based on this disclosure alone, were it available as prior art, reference claim 1 would anticipate instant claim 1.
The limitations of reference claim 2 disclose the presence of a binder component, but also the composition of reference claim 1. The instantly claimed invention does not preclude the presence of a binder, and so claim 2 would also anticipate the instant invention.
Reference claim 3 reads directly on instant claim 2.
Reference claim 4 and instant claim 4 recite the exact same language as one another. However, reference claim 4 requires the composition of reference claim 1 (above) and thus also contains the photocatalyst particles. Thus, the two claims contain the same distinction as the two independent claims 1. Nevertheless, reference claim 4 anticipates instant claim 4.
The same comparison of claim language between reference and independent claims 5 is at issue.
Thus, were the reference ‘206 application available as prior art, the instant claims would be readily anticipated by their disclosure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
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