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 .
DETAILED ACTION
Claims 1, 3-6, 12, 13 and 27-30 are under consideration.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 3-6, 12, 13 and 27-30, drawn to an amorphous, porous silica material comprising 5 to 15 w% copper hydroxide distributed within the pores in the reply filed on September 3, 2026 is acknowledged.
Claims 21 and 23-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1, 3-6, 12, 13 and 27-30 as filed on January 2, 2025 are under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 2, 2025 was considered.
Specification
The disclosure is objected to because of the following informalities: at page 15, line 19 “pasta” should presumably recite “paste”. Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: “200m2/g” should recite “200 m2/g”. Appropriate correction is required.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Uhlmann et al. (US 2012/0301528, published November 29, 2012, of record) in view of Furness (US 2,738,283, published March 13, 1956) and Santra (US 2013/0108702, published May 2, 2013, of record).
Uhlmann teaches antimicrobial particles comprising at least one inorganic copper salt; an antimicrobially effective amount of (copper) ions are released into the environment of a microbe (title; abstract; claims; paragraph [0004]), as required by instant claim 3. The compositions may be for example applied to marine surfaces as an antifouling coating of an article such as a boat hull; copper has long been used to protect against barnacles and mussels (paragraphs [0128]-[0129], [0003]; also, Table 1).
The particles may comprise porous silica carrier particles containing the copper salt within the pores; the preferred silicas have a pore size from 2 to 100 nm, preferably from 4 to 20 nm (paragraphs [0025], [0098], [0220]), as required by instant claim 5. Copper salts include cuprous oxide (paragraph [0059]).
Uhlmann exemplifies an embodiment drawn to the infusion of metal compounds into hydrophilic silica gel (amorphous) having a pore size of 6 nm (porous), a pore volume of about 0.8 mL/g and a surface area of greater than 450 m2/g; the silica product was found to comprise 1.88 wt% copper (Example 40), as required by instant claims 4-6.
Uhlmann further teaches the amount of infused material may be adjusted (paragraph [0220]).
Uhlmann does not teach 5 to 15 wt% copper hydroxide as required by claim 1.
This deficiency is made up for in the teachings of Furness and Santra.
Furness teaches copper bearing antifouling shipbottom paints (title). Cupric hydroxide, Cu(OH)2, has a higher degree of toxicity than other copper compounds when used for antifouling purposes, and may be employed in smaller quantities, thereby providing a means for saving large amounts of copper which are now lost by excessive leaching into the sea (column 1, lines 15-22). Cupric hydroxide is superior to the standard toxic agent cuprous oxide (column 1, lines 28-55).
Santra teaches copper silica nanoparticles comprising about 2 to 30 wt% copper; the nanoparticles are antimicrobial (title; abstract; claims, in particular 1, 2; paragraph [0003]). Santra further discloses copper hydroxide (claim 5; paragraphs [0046], [0053]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute cupric hydroxide (copper hydroxide) as taught by Furness for the at least one inorganic copper salt of the antimicrobial particles of Uhlmann inclusive of those comprising porous silica carrier particles inclusive of those as exemplified in Example 40 because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. One of ordinary skill in the art would have been motivated to make the substitution when the antimicrobial particles of Uhlmann are employed as antifouling coatings because Furness teaches the superiority of cupric hydroxide for this purpose.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the content of the at least one inorganic copper salt that is cupric hydroxide of the antimicrobial particles of Uhlmann and Furness within the range of 2 to 30 wt% as taught by Santra because this range is suitable for including copper within silica particles for the purpose of achieving antimicrobial activity. Additionally or/and alternatively, it would have been obvious to optimize the content of the at least one inorganic copper salt that is cupric hydroxide of the antimicrobial particles of Uhlmann and Furness in order to release an antimicrobially effective amount of copper ions into the environment. It is prima facie obvious to optimize such result-effective variables within prior art conditions or through routine experimentation. "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Claims 12, 13 and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Uhlmann et al. (US 2012/0301528, published November 29, 2012, of record) in view of Furness (US 2,738,283, published March 13, 1956) and Santra (US 2013/0108702, published May 2, 2013, of record) as applied to claims 1 and 3-6 above, and further in view of Tofte Jespersen et al. (US 2010/0269731, published October 28, 2010) and Wallstroem (EP 3,587,505, published January 1, 2020).
The teachings of Uhlmann, Furness and Santra have been described supra.
They do not teach a silica density of 0.005 to 1 g/cm3, of 0.025 to 0.5 g/cm3, or of 0.05 to 0.1 g/cm3 as alternatively required by claims 12, 27, 28.
They do not teach a composition density of 0.100 to 0.400 g/cm3, of 0.150 to 0.350 g/cm3, or of 0.200 to 0.300 g/cm3 as alternatively required by claims 13, 29, 30.
These deficiencies are made up for in the teachings of Tofte Jespersen and Wallstroem.
Tofte Jespersen teaches anti-fouling compositions comprising an aerogel (amorphous); the aerogel may be silica (title; abstract; claims, in particular 1, 4, 113). The aerogel has a density of 0.05 to 1 g/mL (claim 18; paragraph [0053]), as required by instant claims 12, 27, 28. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. The aerogel has a pore size of 1 to 25 nm (claim 20). The aerogel may further comprise encapsulated bioactive agents which are released from the aerogel over time; bioactive agents include small inorganic molecules (claims 34, 35; paragraph [0073]). Aerogels are hydrophilic (paragraph [0063]).
Wallstroem teaches silica aerogels with a high to very high loading (60 to 90 wt%) of encapsulated biocide and/or biorepellant compounds suitable for anti-fouling compositions; the bulk density of the loaded aerogel is at most 0.5 g/mL (title; abstract; claims; paragraphs [0051]-[0053]). The skilled person can for a given combination of aerogel and active can easily calculate the bulk density (paragraph [0055]). The density is also a function of the concentration of the entrapped biocide (paragraph [0121]).
Regarding claims 12, 27 and 28, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the silica aerogel particles of Tofte Jespersen having a density of 0.05 to 1 g/mL for the porous silica carrier particles of the antimicrobial particles of Uhlmann because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because the silica aerogel particles have a pore size falling within the range embraced by Uhlmann.
Regarding claims 13, 29 and 30, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the antimicrobial particles of Uhlmann, Furness, Santra and Tofte Jespersen comprising silica aerogel infused with cupric hydroxide are characterized by a density that differs from the density of the pure silica aerogel because Wallstroem teaches such. It would have been obvious to modify the density of the antimicrobial particles to be at most 0.5 g/mL as taught by Wallstroem because this density is suitable for loaded silica aerogels suitable for anti-fouling compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner Art Unit 1600
