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 .
Status of Application
Claims 1, 3-5 and 9-25 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 4/22/2026, with respect to claim 21, have been fully considered but they are not persuasive. The Applicant argues that the amendment to define the monomers is not disclosed by Quintero-Quiroz. However, the Examiner disagrees and notes that Quintero-Quiroz teaches the monomer is a vinyl terminated polydimethylsiloxane. This compound includes alkenes as it is vinyl terminated and would meet the limitation of the monomer being alkenes. Therefore, the rejection of claim 21 is maintained.
Applicant’s arguments with respect to the remaining claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
1. Claim 20 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20 and 25 of copending Application No. 18/630239 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 20 and 25 of Application No. 18/630239 anticipate claims 20 and 21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
2. Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Quintero-Quiroz et al. (“Synthesis and characterization of a silver nanoparticle-containing polymer composite with antimicrobial abilities for application in prosthetic and orthotic devices”).
Regarding claim 21, Quintero-Quiroz teaches a process for forming a polymer product comprising: adding silver nanoparticles into a monomer component of a multi-component thermosetting polymer composition (see Figure 1 where the silver nanoparticles are added to a liquid catalyst component and the monomer); mixing multiple components of a thermosetting polymer composition to disperse the nanoparticles in the thermosetting polymer composition (see Figure 1 and Composite formulation section); followed by forming the composition into a desired film shape and then curing to solidify into the desired shape wherein the metal nanoparticles are dispersed in the thermoset polymer product (Figure 1 and Composite formulation section). Quintero-Quiroz teaches the monomer component is thermoset Ecoflex 00-50 (see Composite formulation section) which is a vinyl terminated polydimethylsiloxane (thereby meeting the limitation that the monomer is selected from a group including alkenes). Quintero-Quiroz teaches all the limitations of claim 21; therefore, Quintero-Quiroz anticipates the claim.
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.
3. Claim(s) 1, 3, 4, 19, 20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (WO 2005/085339) in view of Schwenke et al. (“Laser-Based Generation of Matrix Binder-Free Nanoparticle Polymer Composites for Bioactive Medical Devices”, reference is made to the provided English machine translation) and Karandikar (EP 2789235).
I. Regarding claims 1, 3, 20, and 22, Choi teaches a process for forming an antibacterial polymer composite product (abstract) comprising: applying a nonionic silver nanoparticle solution in water (a volatile solvent) to polypropylene (which is a thermoplastic) polymer granules in a container (Example 2, pages 13-14); removing the water solvent leaving the nanoparticles on the granules (Example 2, page 14); heating the granules to melt the polymer to disperse the nanoparticles through the polymer melt and then forming the molten polymer into the polymer product incorporating the silver nanoparticles (Example 2, page 14 and Example 7, page 16). Choi fails to teach the silver nanoparticles formed by laser ablation, the nanoparticle solution including a volatile organic solvent, and removing the volatile solvent by evaporation, potentially by application of heat, infrared, microwave, dry gas, reduced pressure or vacuum.
First, Schwenke teaches a similar process for forming an antibacterial product using silver nanoparticles (abstract and title) that are mixed with polymer to generate a polymer product incorporating the silver nanoparticles (Figure 1 and Section 2, page 741). Schwenke further teaches that the silver nanoparticles are produced by laser ablation (abstract and Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute silver nanoparticles produced by laser ablation for Choi’s generic silver nanoparticles. One would have been motivated to make this modification as Schwenke teaches that generating the silver nanoparticles by laser ablation can prevent their agglomeration and provide products with improved properties with improved nanoparticle distribution (Section 4, pages 745-746).
Second, Karandikar teaches preparing compositions of silver nanoparticles in water or volatile organic solvent or a combination of water and volatile organic solvent (0020-0022) and then removing the solvent by evaporation under vacuum (0014). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke’s process by substituting a mixed solvent of water and a volatile organic solvent for the water in Choi in view of Schwenke’s process and removing the solvent by evaporation under reduced pressure. One would have been motivated to make this substitution as one could have substituted one known solvent combination and evaporation conditions for silver nanoparticles for another with a reasonable expectation of success (Karandikar makes clear a mixture of organic solvent and water or simply water or simply solvent can be used), and the predictable result of providing a nanoparticle solution which can then have solvent removed by reduced pressure.
II Regarding claim 4, Choi in view of Schwenke and Karandikar make obvious claim 1, and Karandikar additionally teaches that the nanoparticle solution can be sprayed (0014). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke and Karandikar’s process by applying the silver nanoparticle solution by spraying as disclosed by Karandikar. One would have been motivated to make this modification as one could have substituted spraying for the generic method of applying with a reasonable expectation of success (as any method of providing the solution to the polymer granules would result in the same mixture), and the predictable result of providing the polymer granules having silver nanoparticles on the surface.
III. Regarding claim 19, Choi in view of Schwenke and Karandikar make obvious an identical process which yields an antibacterial polymer product (see above). Therefore, the product of Choi in view of Schwenke and Karandikar makes obvious the product as claimed in claim 19.
4. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Schwenke and Karandikar as applied to claim 1 above, and further in view of Markelonis et al. (“Nanoparticle film deposition using a simple and fast centrifuge sedimentation method”).
Regarding claim 5, Choi in view of Schwenke and Karandikar teach all the limitations of claim 1 (see above), but fail to teach applying the nanoparticle solution to the polymer granules using a centrifuge. However, Markelonis teaches a similar process of forming a polymer composite (abstract) of metal nanoparticles (Preparation of Au and PbS nanoparticles, page 458). Markelonis teaches that the metal nanoparticles can be applied to polymer substrates by using a centrifuge (Centrifuge deposition method, page 459). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke and Karandikar’s process by applying the silver nanoparticle solution to the polymer granules using a centrifuge as disclosed by Markelonis. One would have been motivated to make this modification as Markelonis teaches that a centrifuge application method provides uniform coating on uneven substrates and the nanoparticles show good stability and affinity for the substrate (Conclusion section, page 467).
5. Claim(s) 9-18 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Schwenke and Karandikar as applied to claim 1 and 20 above, and further in view of Niedermeyer (U.S. PGPUB No. 2016/0082513).
Regarding claims 9-18 and 23, Choi in view of Schwenke and Karandikar teach all the limitations of claims 1 and 20 (see above), but fail to teach the nanoparticles comprise gold or are spherical shaped, coral shaped, or a combination of silver and gold nanoparticles having mean diameters, particle size distributions and potentials as claimed and provide antimicrobial activity without the release of silver ions.
However, Niedermeyer teaches forming, by laser ablation (0049), a mixture of nonionic metal nanoparticles (0023) comprising spherical shaped nanoparticles and coral shaped nanoparticles in a ratio of spherical shaped particles to coral shaped being 5:1 to 20:1 (abstract). Niedermeyer teaches the mixture comprising a mixture of silver and gold nanoparticles (claim 13) in a ratio of 5:1 to 20:1 (claim 13, note that the silver particles are spherical and the gold are coral shaped). Niedermeyer additionally teaches the spherical shaped nanoparticles having a diameter in a range of 40 nm or less (see 0067, and note that overlapping ranges are prima facie evidence of obviousness), 99% of the spherical nanoparticles have a diameter within ±3 nm of the mean diameter (claim 6), and the nanoparticles have a ξ-potential of at least 10 mV (claim 7). Niedermeyer also teaches the nanoparticles used for their antibacterial properties (abstract) and provide antimicrobial activity without the release of silver ions (0115). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke and Karandikar’s process by substituting Niedermeyer’s mixture of laser ablated nanoparticles for the laser ablated nanoparticles of Choi in view of Schwenke and Karandikar. One would have been motivated to make this modification as Niedermeyer teaches that the use of a combination of different shaped nanoparticles can augment, potentiate or ameliorate desired or undesired effects of spherical shaped metal nanoparticles (see Niedermeyer at 0019).
6. Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quintero-Quiroz.
Regarding claim 25, Quintero-Quiroz teaches all the limitations of claim 21, but fails to teach a step of evaporating the solvent before forming the composition into the desired shape. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Quintero-Quiroz’s process by including an evaporation step. One would have been motivated to make this modification as removing the solvent earlier will allow for a shorter curing time after forming the composition into the desired shape.
7. Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quintero-Quiroz in view of Niedermeyer.
Regarding claim 24, Quintero-Quiroz teaches all the limitations of claim 21 (see above), but fails to teach that the silver nanoparticles provide antimicrobial activity without the release of silver ions.
However, Niedermeyer teaches forming, by laser ablation (0049), nonionic ground state silver nanoparticles (0023) comprising spherical shaped nanoparticles having no external edges (abstract). Niedermeyer teaches the nanoparticles provide antimicrobial activity (abstract) while not releasing silver ions (0115). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Quintero-Quiroz’s process by utilizing spherical silver nanoparticles prepared by laser ablation that provide antimicrobial activity without releasing silver ions as disclosed by Niedermeyer. One would have been motivated to make this modification as the use of Niedermeyer’s silver nanoparticles would allow for the elimination of toxic silver ions (see Niedermeyer at 0115).
Conclusion
Claims 1, 3-5 and 9-25 are pending.
Claims 1, 3-5 and 9-25 are rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
June 17, 2026Primary Examiner, Art Unit 1717
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