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 the Claims
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/31/2025 has been entered.
Claims 1-6 are withdrawn.
Claim 13 is newly added.
Claims 7-13 are under current examination.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Information Disclosure Statement
The information disclosure statement (IDS) filed 06/17/2026 has been considered by the
Examiner.
Claim Rejections - 35 USC § 112(b)
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.
Claims 7-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 7 recites “wherein carboxylic groups of the natural oil-derived fatty acid derivative remain intact”. This is indefinite as it is unclear if the claim requires that the fatty acid derivative comprises multiple carboxylic groups or not. The instant claim recites “providing a functionalized natural oil-derived fatty acid derivative” but does not further limit the identity of the derivative or require that it comprises multiple carboxylic groups. For purposes of examination and applying prior art, it is interpreted that any carbonyl (C=O)-containing functional groups present in the fatty acid derivative remain intact.
Claims 8-12 are rejected under 35 U.S.C. 112(b) by virtue of their dependency on indefinite claim 1 and failure to cure the deficiency noted above.
Claim 10 recites “wherein the natural oil-derived fatty acid is derived by epoxidizing the soybean oil”. This is indefinite as epoxidation of soybean oil is not known to result in a fatty acid (see for example Fig. 2 of the instant specification). It is suggested that claim 10 should recite “wherein the natural oil-derived fatty acid derivative is derived by epoxidizing the soybean oil”. For purposes of examination and applying prior art, the claim is interpreted to mean that the method comprises a step of epoxidizing soybean oil.
Claim 13 recites (emphasis added) “providing at least one quaternary ammonium salt moiety and at least one siloxane moiety on a functional group of an aliphatic chain of the functionalized natural oil-derived fatty acid derivative”. This is indefinite as it is unclear if the claim requires (a) that the fatty acid derivative comprises an aliphatic chain which is a functional group and the least one quaternary ammonium salt moiety and at least one siloxane moiety are provided on the aliphatic chain or (b) that the fatty acid derivative comprises a functional group attached to an aliphatic chain and the least one quaternary ammonium salt moiety and at least one siloxane moiety are provided on this functional group. For purposes of examination and applying prior art, it is interpreted that the fatty acid derivative comprises a functional group attached to an aliphatic chain, and the least one quaternary ammonium salt moiety and at least one siloxane moiety are provided on this functional group
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.
Claims 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Gharibi et al. (“Green and non-leaching anti-bacterial and cytocompatible coating with build-in quaternary ammonium salt derived from methoxysilane functionalized soybean oil” Materials Science & Engineering C 2019, 99, 887-899; included on IDS submitted 02/20/2025 (5 pages)), hereafter “Gharibi” in view of Weide et al. (WO 2005/056741 A1; published June 23, 2005), hereafter “Weide”, and further in view of Xia et al. (“Antibacterial Soybean-Oil Based Cationic Polyurethane Coatings Prepared from Different Amino Polyols” ChemSusChem 2012, 5, 2221-2227; included on IDS submitted 02/20/2025 (9 pages)), hereafter “Xia”.
Regarding instant claims 7 and 13, Gharibi teaches the preparation of non-leaching antimicrobial polymeric coatings derived from soybean oil that show high bactericidal activity (see entire document, particularly abstract); as the coatings of Gharibi have bactericidal activity, they are interpreted as biocidal agents. In the preparation, epoxidized soybean oil is reacted with CO2 to form functionalized carbonated soybean oil, which is further reacted to form methoxysilane functionalized carbonated soybean oil with a urethane linkage, denoted Si-SBU (see pg. 888, section 2.2 and Scheme 1, reproduced below).
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Gharibi further teaches that the preparation includes crosslinking the Si-SBU with a methoxysilane functionalized quaternary ammonium containing fatty amid compound derived from soybean oil, denoted Si-SBQ (see pg. 888, sections 2.3-2.4 and Scheme 2, reproduced below). This results in siloxane cross-linked networks with quaternary ammonium salts chemically anchored to the coating backbone (pg. 888, column 1, paragraph 2). The process taught by Gharibi is the same as that set forth in the instant specification (see paragraphs [0008], [0054], and Figures 1A and 1B), and the process of Gharibi is interpreted as providing a functionalized natural oil-derived fatty acid derivative and providing at least one quaternary ammonium salt moiety and at least one siloxane moiety on a functional group of an aliphatic chain of the functionalized natural oil-derived fatty-acid derivative. Gharibi further teaches that the coatings that contain ionic quaternary ammonium moieties exhibit significantly enhanced hydrophilicity (pg. 894, section 3.2, paragraphs 1-3).
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Regarding instant claims 8-10, as noted above, the method of Gharibi comprises the use of epoxidized soybean oil, which is interpreted to mean that the soybean oil has gone through the step of being epoxidized. As shown above in Scheme 1, epoxidized soybean oil is functionalized with epoxy groups on the fatty acid chain of the soybean oil. As shown above in Scheme 2, the method further comprises amidation of a fatty acid chain derived from soybean oil.
Regarding instant claim 11, as noted above, the method of Gharibi comprises the amidation of soybean oil to form Si-SBQ (pg. 888, section 2.3; Scheme 2; pg. 891, paragraph 3).
Gharibi does not teach binding a non-ionic surfactant to each of the at least one quaternary ammonium salt moiety (instant claims 7 and 13) wherein carboxylic groups of the natural oil-derived fatty acid derivative remain intact (instant claim 7).
Weide teaches the use of non-ionic surfactants to reduce the adhesion of microorganisms such as yeast, bacteria, and fungi to surfaces, and compositions containing these substances (see entire document, particularly abstract and claims 1-5). The non-ionic surfactants can be used in carrier-bound form (claim 6), particularly in the form of a silica ester (claim 7). Alcohol ethoxylates with an average of 2 to 8 EO or 5 to 15 EO per mole are preferably used as non-ionic surfactants (see pg. 17, paragraph beginning “Non-ionic surfactants”).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the method of Gharibi to bind alcohol ethoxylate nonionic surfactant to the Si portion of the quaternary ammonium moieties, leaving carboxylic groups intact, as suggested by Weide. As the non-ionic surfactant of Weide is consistent with those in the instant specification (paragraph [0012]), it is interpreted that this modification will result in an agent with a lipophilic core with polar extremities.
One of ordinary skill in the art would have been motivated to do so in order to achieve an agent that inhibits a variety of microorganisms, including yeasts, molds, and fungi, from adhering to a wide variety of surfaces, including medical devices made of plastic or metal, and which can be effective even in low final concentration, as suggested by Weide (claims 1-5 and 18; pg. 15, 2nd paragraph from bottom; and pg. 16, paragraph beginning “Treatment of surfaces”-pg. 17, paragraph 1). There is a reasonable expectation of success as the method of Gharibi is directed to the preparation of Si-group containing antimicrobial coatings which act against bacterial contamination of metallic biomedical devices (abstract).
While Gharibi teaches that the coatings that contain ionic quaternary ammonium moieties exhibit significantly enhanced hydrophilicity (pg. 894, section 3.2, paragraphs 1-3), Gharibi does not explicitly teach that the biocidal agent is water soluble (instant claims 7 and 13). Gharibi further does not teach the step of solubilizing the biocidal agent in water (instant claim 12).
Xia teaches the preparation of antibacterial soybean-oil-based cationic polyurethane coatings which incorporate amino polyols (abstract). Water soluble polyurethane dispersions were achieved using PDE cationic ammonium ions that have a greater number of water soluble ions present (pg. 2222, “Results and Discussion”; Figure 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the method of Gharibi to incorporate cationic ammonium ions capable of making the soybean-oil-based polyurethanes water soluble and to solubilize the biocidal agent in water, as suggested by Xia. One of ordinary skill in the art would have been motivated to do so in order to achieve an environmentally friendly waterborne antimicrobial coating with low viscosity and good applicability that has wide-ranging applications in protective coatings, as suggested by Xia (pg. 2221, “Introduction”). There is a reasonable expectation of success as the method of Gharibi similarly prepares soybean-oil derived polyurethane-linked antimicrobial coatings comprising ionic ammonium moieties, and Gharibi teaches that hydrophilicity can be increased with the inclusion of such ionic moieties, which can lead to promising biocidal activity (pg. 894, section 3.2, paragraphs 1-3).
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 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-12 of copending Application No. 18/937,329 in view of Weide et al. (WO 2005/056741 A1; published June 23, 2005), hereafter “Weide”.
Both the instant claims and those of copending Application No. 18/937,329 recite a method of producing a biocidal agent, the method comprising the steps of: providing a functionalized natural oil-derived fatty acid derivative derived from soybean oil which includes functionalizing by epoxidizing soybean oil, and includes at least one of amidation and transesterification; providing at least one quaternary ammonium salt moiety and at least one siloxane moiety on the functionalized natural oilderived fatty acid derivative; binding a non-ionic surfactant to each of the at least one quaternary ammonium salt moiety to form a lipophilic core with polar extremities to form a water soluble biocidal agent; and solubilizing the biocidal agent in water.
The claims of co-pending Application 18/937,329 do not recite that carboxylic groups of the natural oil-derived fatty acid derivative remain intact, as required by instant claim 7.
Weide teaches the use of non-ionic surfactants to reduce the adhesion of microorganisms such as yeast, bacteria, and fungi to surfaces and compositions containing these substances (see entire document, particularly abstract and claims 1-5). The non-ionic surfactants can be used in carrier-bound form (claim 6), particularly in the form of a silica ester (claim 7). Alcohol ethoxylates with an average of 2 to 8 EO per mole or 5 to 15 EO per mole are preferably used as non-ionic surfactants (pg. 17, paragraph beginning “Non-ionic surfactants”).
It would have been prima facie obvious to one of ordinary skill in the art to modify the method of copending Application No. 18/937,329 to bind alcohol ethoxylate nonionic surfactant to the Si portion of the quaternary ammonium moieties, leaving carboxylic groups intact, as suggested by Weide. One of ordinary skill in the art would have been motivated to do so in order to achieve an agent that inhibits a variety of microorganisms, including yeasts, molds and fungi, from adhering to a wide variety of surfaces, including medical devices made of plastic or metal, and which can be effective even in low final concentration, as suggested by Weide (claims 1-5 and 18; pg. 15, 2nd paragraph from bottom; and pg. 16, paragraph beginning “Treatment of surfaces”-pg. 17, paragraph 1).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments filed 12/31/2025 have been fully considered.
Regarding the claim rejections under 35 U.S.C. § 103, Applicant argues that Applicant’s method is unrelated to the method described by the prior art of Crosby, which is focused on the carboxylic part of fatty acids only while Applicant’s claimed method targets the epoxy functions present on aliphatic chains of esterified fatty acids. Applicant argues that their synthesis method is based on a different organic chemistry approach, and Applicant’s soybean oil derivative compound had a higher killing efficacy than compounds obtained by the Crosby method due to the stereospecific optimization of the compound produced by the invention.
Applicant’s arguments with respect to Crosby have been considered but are moot because the new ground of rejection applied above does not rely on Crosby for any teaching or matter specifically challenged in the argument.
Applicant further argues that the inventors found that the killing efficacy of their water-soluble soybean oil derivative was enhanced and increased from Log4 in the epoxy polymer (Gharibi) to Log 6 reduction in the water-soluble compound, where normally one sees a decrease of killing efficacy in water-based compounds versus alcohol-based (see pg. 3 of Remarks).
These arguments are unpersuasive as no direct comparison of the biocidal agent produced by the method of the instant claims to that produced by the method of Gharibi is found on the record. The instant specification provides efficacy results of test substances “Green Biocide #1” and “Green Biocide #2” (paragraphs [00122]-[00130]), but the specification does not set forth the components of these test substances and does not compare the efficacy to any compositions of the prior art. Per MPEP 2145 I., “Arguments presented by the Applicant cannot take the place of evidence in the record”, and per MPEP 716.02(e) I., “An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).”
Regarding the provisional nonstatutory double patenting rejection over the claims of co-pending Application No. 18/937,329, Applicant argues that, as this is only a provisional rejection, Applicant will keep this issue in mind as examination continues in the two applications.
In response, the Examiner notes that Application No. 18/937,329 is still pending and, as set forth above, the amended instant claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-12 of copending Application No. 18/937,329 in view of the prior art of Weide.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
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