DETAILED ACTION
Status of the Claims
Claims 1-3, 5-22 and 25-28 are pending in the instant application. Claims 11-18 and 28 have been withdrawn based upon Restriction/Election. Claims 1-3, 5-10, 19-22 and 25-27 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The instant Application is a Continuation Application of PCT/US2025/059117 filed 12/11/2025, and claims priority to U.S. Provisional Application No. 63/730,754 (hereafter ‘754) filed 12/11/2024; and NL-2039406 filed 12/19/2024. The examiner notes that a certified copy of NL-2039406 has not been made of record in the instant Application.
The U.S. effective filing date for claims 1-10 and 19-23 and 25-27 has been determined to be 12/11/2024, the filing date of the ‘754.
Claim Rejections - 35 USC § 112(b)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 5 is rejected as being indefinite because the claim recites “The residual hydrophobic coating that neutralizes urine and/or degrades urine of claim 34” (in lines 1-2). The claims end at claim 28 and therefore there is no claim 34. Appropriate clarification is required. For purposes of examination herein the examiner is reading claim 5 as depending from claim 3.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-10, 19-22 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over MCDANIEL (US 2020/0299521 A1; published September, 2020) in view of Dorfan et al. (“The Utilization of Bacillus subtilis to Design Environmentally Friendly Living Paints with Anti-mold Properties,” 2024, MDPI, Microorganisms, Vol. 12, Article 1226, pp. 1-13); UEDA (US 2016/0115326 A1; published April, 2016); HINMAN (GB 2,362,814 A; published 12/05/2001) and KLINGMAN (US 2021/0009922 A1; published January, 2021).
Applicants Claims
Applicant claims a residual hydrophobic coating that neutralizes urine odor and/or degrades urine comprising: (a) microbial spore(s) and an enzyme
, wherein the microbial spore(s) and the enzyme comprise 42.0 wt% to 83 wt% of an overall weight of the residual hydrophobic coating; and (b) a clear film, comprising 15 wt% to 60 wt% of an overall concentration of the residual hydrophobic coating, having the microbial spore(s) and the enzyme composition homogenously dispersed therein (instant claim 1).
Applicants have elected the following species in the reply filed 05/21/2026: (a) A species of a residual hydrophobic coating that neutralizes urine odor and/or degrades urine with specificity to (i) a species of microbial spores(s) is Bacillus subtilis; (i) a species of an enzyme is lipase; (ii) a species of a clear film with specificity to the polymer(s) therein is anionic acrylic homopolymer.
Determination of the scope
and content of the prior art (MPEP 2141.01)
MCDANIEL teaches peptide-containing antimicrobial coating compositions (Title, see whole document), and particularly “Disclosed herein are peptide-containing anti-microbial coating compositions. The peptide-containing anti-microbial\ coating compositions can comprise an acrylic latex coating composition, an anti-microbial enzyme dispersed within the acrylic coating composition and an anti-microbial peptide dispersed within the acrylic coating composition. The antimicrobial enzyme and the anti-microbial peptide are jointly selected to synergistically enhance lysis efficacy of the coating composition in comparison to lysis efficacy of the coating composition with the anti-microbial enzyme alone. The acrylic coating can be an acrylic latex coating composition is an acrylic latex paint.” (abstract).
MCDANIEL teaches that: “In general, the invention features an antibiological composition for reducing microbial growth in an uncured polymeric material during storage prior to curing, comprising: at least two or more antibiological agents selected from a lipolytic enzyme, a peptidase, […] wherein the antibiological agents are present in a concentration sufficient to inhibit the growth or adherence of at least one or more microbial specie within or upon the surface of the uncured polymeric material; and wherein the uncured polymeric material is at least one selected from a coating, a plastic, an elastomer, a composite, a laminate, an adhesive, a sealant and a textile finish.” ([0006]). And that: “In certain embodiments, the lipolytic enzyme is at least one selected from a lipase,” ([0007])(instant claims 1(a) – an enzyme, instant claims 21-22).
MCDANIEL teaches that: “An antimicrobial agent often acts as a deodorant by reducing the growth of odor producing microorganism, particularly in a fiber (e.g., a textile) and/or a polymeric film application for packaging of food and/or trash.”
MCDANIEL teaches that: “the coating comprising an antibiological agent may comprise any component for a coating described herein or as would be known to one of ordinary skill in the art in light of the present disclosures.” ([0102]). And that: “A clear-coating refers to a coating that is not opaque (e.g., transparent, semi-transparent, translucent) and/or does not produce an opaque solid film after application and cure, but may coating may be colored or non-colored.” ([0103])(instant claim 1, a clear film). And further that: “A coating generally comprises one or more component materials that contribute to the properties of the coating, the ability of a coating to be applied to a surface, the ability of the coating to undergo film formation, and/or the properties of the produced film. Examples of such a coating component include a binder, a liquid component, a colorant, an additive, or a combination thereof, and such materials are contemplated for used in a coating.” ([0104]).
MCDANIEL teaches that: “A binder ("polymer," "resin," "film former") comprises a molecule capable of film formation. Film formation refers to a physical and/or a chemical change of a binder in a coating, wherein the change converts the coating into a film. Often, a binder converts into a film through a polymerization reaction, wherein a first binder molecule (e.g., a monomer) covalently bonds with at least a second binder molecule (e.g., a monomer) to form a polymer. A thermoplastic binder and/or a coating reversibly softens and/or liquefies when heated. Film formation for a thermoplastic coating generally comprises a physical process, typically the loss of the volatile (e.g., liquid) component from a coating. A thermosetting binder undergoes film formation by a chemical process, typically the crosslinking of a binder into a network polymer.” And including “an acrylic resin (e.g., a thermoplastic acrylic resin, a water borne thermoplastic acrylic, a thermosetting acrylic resin such as an acrylic-epoxy combination, an acrylic-amino combination, an acrylic-urethane combination, a waterborne thermosetting acrylic, etc.)” ([0105]).
MCDANIEL teaches that: “This Example demonstrates a lipase assay determining the efficacy of lipase in a coating (e.g., paint). Films of Sherwin-Williams Acrylic Latex comprising lipase were assayed 7 months after they were prepared. Materials used are shown in the table below.” ([0348], Example 38).
MCDANIEL claims: “A coating composition, comprising: an acrylic latex coating material; and an anti-microbial additive dispersed within the acrylic latex coating material, wherein the anti-microbial additive comprises an anti-microbial enzyme and an antimicrobial peptide, wherein the anti-microbial enzyme and the anti-microbial peptide are jointly selected to synergistically enhance lysis efficacy of the coating composition in comparison to lysis efficacy of the coating composition with the anti-microbial enzyme alone.” (claim 1), and including acrylic latex paints (claims 10 & 21). MCDANIEL does not expressly teach the residual coating is hydrophobic (e.g. dried latex paint), however one of ordinary skill would have implicitly recognized this feature as dried paint is generally hydrophobic in nature (instant claim 1, “A residual hydrophobic coating”)(MPEP §2144.01). Similarly, one of ordinary skill would have recognized that a dried paint is “covalently bound, electrostatically bound, or adhered by physical interaction(s) to the substrate.” (instant claim 2).
MCDANIEL claims “The coating composition of claim 1 wherein the antimicrobial enzyme and the antimicrobial peptide are present in the coating composition in respective amounts sufficient to provide a final dry coating weight of the coating composition between about 7% and about 28% greater than a final dry weight of the acrylic latex coating material.” (claims 7, 18 & 22).
MCDANIEL teaches an acrylic latex binder in an amount of “About 0.000000001 % to about 80%” ([0212], Table 24)(instant claims 1 & 7-10, amount of clear coating/anionic acrylic polymer).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of MCDANIEL is that MCDANIEL does not expressly teach: (1) adding microbial spores to the compositions, (2) the acrylic polymer is an anionic acrylic homopolymer; (3) the “residual hydrophobic coating” “neutralizes urine odor and/or degrades urine”.
Dorfan et al. teaches the utilization of Bacillus subtilis to design environmentally friendly living paints with anti-mold properties (title, see whole document). And particularly that: “The anti-fungal properties of the probiotic bacterium Bacillus subtilis have been studied extensively in agriculture and ecology, but their applications in the built environment remain to be determined. Our work aims to utilize this biological component to introduce new diverse anti-mold properties into paint. “Mold” refers to the ubiquitous fungal species that generate visible multicellular filaments commonly found in household dust. The development of mold leads to severe health problems for occupants, including allergic response, hypersensitivity pneumonitis, and asthma, which have significant economic and clinical outcomes. We here demonstrate the robust effect of a commercial paint enhanced with Bacillus subtilis cells against the common mold agent, Aspergillus niger, and identify three biosynthetic clusters essential for this effect. Our results lay the foundation for bio-convergence and synthetic biology approaches to introduce renewable and environmentally friendly bio-anti-fungal agents into the built environment.” (abstract).
Dorfan et al. teaches that: “While living paints with B. subtilis for mold prevention were not evaluated previously, anti-corrosive paints based on B. subtilis and related specie were previously reported. Therefore, developing environmentally friendly anti-mold surfaces and paints with B. subtilis bears economic and clinical importance.” And that: “As Bacillus subtilis is a probiotic agent, recognized as GRAS (generally recognized as safe) for human consumption, we here asked whether we can harvest its antifungal properties to enhance the anti-mold properties of paints. Among our goals, we aimed to test whether the different antifungal agents encoded by this bacterium productively interact to increase their potency towards fungi. By using natural producers to develop sustainable biopesticides for the construction industry, we can reduce our reliance on current chemical solutions and greatly benefit human health.” (p. 2, paragraphs 2-3).
Dorfan et al. teaches that: “Our results indicated that B. subtilis was an effective agent in reducing A. niger spread through multiple plates (Figure 3A,B). B. subtilis application was even efficient compared with a commercial mold containing the broad-spectrum anti-fungal biocide (Figure 4). Results were reproduced in independent experiments and with multiple technical repeats, suggesting high compatibility of this bacterium as an anti-mold paint additive in industrial settings.” (paragraph bridging, pp. 6-7).
Dorfan et al. teaches that: “Most paints consist of the same essential components: pigments, binders, and additives, in addition to liquid solutions. As we mixed bacterial culture with the paint in a 1:1 ratio, nutrients were available to support bacterial growth further.” (p. 7, last paragraph).
Dorfan et al. teaches that: “Our findings that B. subtilis can efficiently replace chemical supplements to generate anti-mold paint (Figure 4) highlight the advantage of a living agent as an anti-mold substance, producing multiple (here, at least three) active agents simultaneously and thereby reducing the change for the emergence of antibiotic resistance.” (p. 9, last paragraph). And that: “The anti-mold activity of B. subtilis in paint is not trivial. First, it indicates that the chemical and biological properties of the products of srf and pps operons are maintained in the complex commercial solutions. Second, it allows a living agent to be integrated into the paint. As sporulation commences (Figure 5) within the paint, re-activating anti-mold activities by germinating the spores is feasible. These unique aspects are significant as current anti-mold paints are associated with environmental toxicity. They are based on the incorporation of living agents rather than non-renewable chemicals whose activities decay over time. The prolonged survival of B. subtilis spores, estimated to be at least hundreds of years, not only provides advantages in terms of mold prevention but also offers a hopeful prospect for sustainable solutions. […] These results strongly support that an approach of gradually replacing the anti-mold components of paint with probiotic bacteria is an applicable and appealing approach. Moreover, in 2015, the United Nations issued an urgent call exemplified by 17 sustainable development goals (SDGs) to improve health and education while tackling climate change. Goal 11 calls explicitly to ‘make cities and human settlements inclusive, safe, resilient and sustainable’. Within this framework, the improvement of the built environment, as well as the generation of sustainable live bio-paints, becomes a cardinal milestone.” (p. 10, 1st paragraph).
UEDA teaches cold-curing photocatalytic coating material (title, see whole document) including “an acrylic emulsion-type resin including acrylic resin particles with an average particle diameter of 80 nm to 200 nm, in which a glass transition temperature is 20° C. or less.” (abstract). And that: “A cold-curing coating composition according to a fourth aspect of the present invention is the cold-curing coating composition according to either one of the second and third aspects, wherein the coating material containing the homopolymer is an anionic coating material.” ([0014]). And further that: “The present invention relates to a cold-curing photocatalytic coating material, a cold-curing coating composition and an interior material. More specifically, the present invention relates to a cold-curing photocatalytic coating material, a cold-curing coating composition, each of which enhances film physical properties while obtaining high antibacterial properties and antiviral properties, and to an interior material applied therewith.” ([0001]).
UEDA teaches that: “Note that in a case of the cold curing coating composition of this embodiment, it is preferable to use an anionic coating material as the homopolymer coating material.” (elected species of polymer(s) of clear coating – instant claims 1, 3, 5-9).
UEDA teaches that: “Moreover, as the application target material, there
are also preferable: a construction material such as a ceiling material, a tile, glass, wallpaper, a wall material, a flooring material and a standing finish fixture; […] Moreover, as the application target material, for example, there are also preferable a door, a door handle, a knob, a handrail, an interior counter, furniture, a kitchen, a toilet, a bath, a lighting fixture, a touch panel, a switch, a sheet for use in these purposes, and the like. The film composed of the cold-curing photocatalytic coating material or cold-curing coating composition of this embodiment has high antibacterial properties and antiviral properties, and accordingly, is particularly effective for such surfaces with which human bodies and the like are frequently brought into contact.” [emphasis added]([0072])(instant claims 25-27).
HINMAN teaches a Urinal cleaning method using a cleaning composition containing a bacteria or an enzyme (title, see whole document). HINMAN teaches that: “The Bacillus subtilis acts on those elements in urine, which would tend to produce blockages, uric scale formulation and malodours, to degrade, alter or break them down.” (p. 4, 3rd paragraph). The examiner notes that while claim limitation - the “residual hydrophobic coating” “neutralizes urine odor and/or degrades urine” – is clearly an intended use, the HINMAN reference clearly suggest Bacillus subtilis degrades, alters or breaks down those elements in urine which tend to form malodours (instant claims 1, 19).
KLINGMAN teaches methods and compositions for reducing persistent odor in clothing and mitigating biofilms (title, see whole document), and particularly that: “Novel methods and compositions for treating textiles and other materials are disclosed in which persistent odor or other symptoms of biofilm presence can be reduced through the use of compositions comprising a biofilm attack agent such as N-acetyl cysteine or certain enzymes, coupled with surfactants and other agents.” (abstract). KILINGMAN teaches the inclusion of bacterial spores and other microbial agents ([0100] through [0108]), and particularly that: “The spores are obtained from non-pathogenic spore-forming microorganisms that are capable of reacting with and removing various organic substances. Such spores can produce extracellular enzymes that may include protease enzymes, […] lipase enzymes […]. Such spore concentrates may comprise from 1 % to 50% of the compositions described herein, or from 5% to 30% or from 10% to 25%. […] Alternatively, the number of colony forming units (CFU) per ml in the concentrate or diluted mixture may be 1x105 to 1x1010 […], or 1x105 to 1x108.” ([1010])(instant claims 19-22). KILNGMAN teaches that: “The bacillus spores may have an average particle diameter of about 2-50 microns, such as from about 10 to 45 microns. Bacillus spores are commercially available in blends in aqueous carriers. Commercially available bacterial spore blends include without limitation Freshen Free™ CAN (l0x), from Novozymes Biologicals, Inc.; J-Zyme AB-20XNF of JTech Sales (Baton Rouge, Fla.), a 20x liquid concentrate comprising spores from Bacillus subtilis;” ([0102])(instant claims 19-21).
KLINGMAN teaches that: “Enzymatic treatments may include enzymes in liquid or powder form that, when mixed in an aqueous solution and applied to clothing, may help attack a biofilm or remove energy sources for odorous bacteria. […] Enzymes may be incorporated in the ready-to-use product at levels from 0.01 % to 20% of active enzyme by weight of the composition, or from 1 % to 15%, 2% to 12%, and the like.” ([0114]).
Regarding the amount of the microbial spore(s) and the enzyme (instant claim 1, 42 wt% to 83 wt%), and the enzyme (claim 22, “a concentration ranging from 0.5% to 5.0 wt%”), the prior art clearly suggest an enzyme such as lipase in a coating composition, MCDANIEL claims “The coating composition of claim 1 wherein the antimicrobial enzyme and the antimicrobial peptide are present in the coating composition in respective amounts sufficient to provide a final dry coating weight of the coating composition between about 7% and about 28% greater than a final dry weight of the acrylic latex coating material.” (claims 7, 18 & 22). And KLINGMAN teaches the “Enzymes may be incorporated in the ready-to-use product at levels from 0.01 % to 20% of active enzyme by weight of the composition” ([0114]), and that: “Such spore concentrates may comprise from 1 % to 50% of the compositions described herein, or from 5% to 30% or from 10% to 25%. […] Alternatively, the number of colony forming units (CFU) per ml in the concentrate or diluted mixture may be 1x105 to 1x1010 […], or 1x105 to 1x108.” ([1010]). The combination of microbial spores and enzyme(s) such as lipase encompasses the claimed range, for example enzyme(s) at a concentration of 12 wt%, or more, and microbial spores at a concentration of 30 wt.%, or more, encompasses 42 wt% to 83 wt.% (instant claims 1). Alternatively, a lower concentration of enzymes (e.g. 4 wt%) and a higher concentration of microbial spores (e.g. 40%)(instant claims 1, 22-23). MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding the amount of the anionic acrylic homopolymer in the coating (instant claims 1, 7 & 10) MCDANIEL teaches an acrylic latex binder in an amount of “About 0.000000001 % to about 80%” ([0212], Table 24)(instant claims 1 & 7-10, amount of clear coating/anionic acrylic polymer). MPEP §2144.05 - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Alternatively, it would have been prima facie obvious to optimize the amount of same in a enzyme/bacillus coating (e.g. clear paint) to act as a binder (known function of acrylic resin in latex paints) in the same (MPEP §2144.05-II).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a coating composition such as a clear/transparent paint including an enzyme such as a lipase, as suggested by MCDANIEL, and further to include a bacterial spore such as Bacillus subtilis, as suggested by Dorfan et al. as a “living paint” for “environmentally friendly” “anti-mold” agent in the same, the coating including an anionic acrylic homopolymer binder, as suggested by UEDA, and being capable of degrades, alters or breaks down those elements in urine which tend to form malodours, as suggested by HINMAN, the combination of Bacillus subitlis and an enzyme such as lipase suggested by KLINGMAN, for odor control coatings.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because it would have required no more than an ordinary level of skill to formulate an anionic acrylic homopolymer coating comprising a lipase/ Bacillus subitlis combination for anti-microbial and odor control. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Response to Arguments:
Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive.
Applicant argues that “McDaniel discloses a peptide-containing paint composition including an antimicrobial enzyme and antimicrobial peptide that synergistically improve the efficacy of the composition compared with the enzyme alone. See Abstract. Thus, McDaniel teaches a composition that cannot remove the antimicrobial peptide without lowering the efficacy of the composition. One of ordinary skill in the art would not be motivated to remove the peptide and/or replace the peptide with another component (i.e., bacterial spores) due to the synergistic effect observed with the enzyme and peptide in McDaniel's composition. McDaniel does not teach and/or suggest the combination of an enzyme and microbial spores as recited in the claims. Indeed, McDaniel teaches the combination of an enzyme and peptides. Moreover, in paragraph [0064] (part of paragraph [0064] reproduced below), McDaniel teaches the antimicrobial peptides, etc. can be used in the composition to enhance the long-term antimicrobial properties of the paint and/or coating by preventing/killing bacteria ( e.g., a Bacillus spp.). Thus, McDaniel teaches a paint/coating composition that prevents and/or kills bacteria (e.g., Bacillus subtilis) on the surface of the substrate.” (p. 3, last paragraph).
In response the examiner argues that the Non-Final Office Action dated 06/17/2026 makes no suggestion to “to remove the peptide and/or replace the peptide with another component (i.e., bacterial spores)”. Therefore, the Applicants argument is not convincing because the instantly rejected claims are open-ended (“A residual hydrophobic coating that neutralizes urine odor and/or degrades urine comprising: […].”), MPEP §2111.03(I) - The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Thus, Applicant’s argument is not convincing because the examiner makes no substitution argument, and the Applicant’s position is not commensurate with the open-ended claims.
Applicant argues that: “Dorfan discloses environmentally friendly paints including Bacillus subtilis with antimold properties. Thus, Dorfan includes Bacillus subtilis in paint to provide anti-mold properties. Dorfan does not include any other component (e.g., enzymes, clear film, etc.) from claim 1 in their paint composition. Additionally, as discussed above regarding McDaniel, a paint composition would not include the same components and/or provide the same properties as the claimed composition (i.e., using a paint composition as a cleaning composition in a bathroom). Thus, Dorfan does not teach and/or suggest the combination and/or concentration of bacterial spores and an enzyme as recited in claim I nor does Dorfan teach the coating composition recited in the claims.” (p. 4, 2nd paragraph). And that: “Hinman discloses a cleaning composition containing bacteria and/or an enzyme. Although Hinman discloses bacteria and/or enzymes in their compositions, Hinman does not disclose the concentrations of either component or the concentration/ratio of both components in their compositions. Thus, Hinman does not teach and/or suggest the combination of an enzyme and bacterial spores in the claimed concentrations. Similarly, Klingman discloses compositions for reducing odors in clothing and mitigating biofilms that can include enzymes and bacterial spores. The bacterial spores are an optional component of their compositions. Additionally, Klingman does not teach and/or suggest the combined concentration of enzymes and microbial spores in their compositions as recited in claim 1. Thus, neither Hinman nor Klingman teach and/or suggest the concentration of enzymes and microbial spores in their compositions. And further that: “Ueda discloses cold-curing photocatalytic coating materials that includes acrylic emulsion-type resins and copper compound-supported titanium oxide. The compositions of Ueda are evaluated for their antibacterial activity and do not include bacterial spores. One of ordinary skill in the art would be dissuaded and/or have no motivation to include bacterial spores and/or enzymes in the compositions of Ueda. Ueda includes copper compound-supported titanium oxide in their compositions which would negatively affect the claimed bacterial spores. Ueda does not teach and/or suggest including enzymes and/or microbial spore(s) in their compositions. In view of the above, claim 1 is novel and non-obvious over McDaniel, Dorfan, Ueda, Hinman, and/or Klingman. Because the dependent claims depend directly or indirectly from claim 1, each dependent claim is patentable for at least this reason as well as the additional features they each recite.” (p. 5, 2nd paragraph).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that MCDANIEL, Dorfan et al., UEDA, HINMAN and KLINGMAN do not teach the concentration of the clear film recited in claim 1.
Applicant particularly argues that: “Amended claim 1 recites, "a clear film, comprising 15 wt% to 60 wt% o fan overall concentration of the residual hydrophobic coating, having the microbial spore(s) and the enzyme homogeneously dispersed therein." McDaniel does not teach and/or suggest the clear film and/or the concentration of the clear film (i.e., the anionic acrylic homopolymer) as recited in the claims. Dorfan, Ueda, Hinman, and Klingman do not cure the deficiencies of McDaniel” (p. 5, last paragraph). And that: “McDaniel discloses various acrylate or acrylic polymers including adhesives, elastomers, or thermoplastic/thermosets. These acrylic compounds would create a coating that lasts longer than the claimed coating (e.g., more than 1 day to 14 days) and/or have undesirable properties (e.g., flexibility). Additionally, the disclosed acrylic compounds in McDaniel could have negative effects on the bacterial spores/enzymes due to the undesirable properties. The Examiner asserts McDaniel teaches the claimed concentration of the clear film (i.e., the anionic acrylic homopolymer) due to the disclosure of "about 0.000000001 to about 80%" of acrylic latex binder in paragraph [0212]. However, an acrylic latex binder is not the claimed anionic acrylic homopolymer. Acrylic latex binders (used for paint, etc.) are highly durable and flexible. The flexibility of acrylic latex binders allow them to expand and contract increasing the lifespan of the coating. The acrylic latex binders would last longer than 1 day to 14 days. Thus, McDaniel does not teach the claimed clear film (i.e., the anionic acrylic homopolymer) or the claimed concentration of the clear film.” (p. 6, 1st paragraph).
In response the examiner argues that MCDANIEL teaches that their coatings include: “A clear-coating refers to a coating that is not opaque (e.g., transparent, semi-transparent, translucent) and/or does not produce an opaque solid film after application and cure, but may coating may be colored or non-colored.” ([0103]). And that: “A coating generally comprises one or more component materials that contribute to the properties of the coating, the ability of a coating to be applied to a surface, the ability of the coating to undergo film formation, and/or the properties of the produced film. Examples of such a coating component include a binder, a liquid component, a colorant, an additive, or a combination thereof, and such materials are contemplated for used in a coating.” ([0104]). And teaches “an acrylic resin (e.g., a thermoplastic acrylic resin, a waterborne thermoplastic acrylic, a thermosetting acrylic resin such as an acrylic-epoxy combination, an acrylic-amino combination, an acrylic-urethane combination, a waterborne thermosetting acrylic, etc.) […]” ([0105]). And teaches that: “Acrylic Latex (Binder) About 0.000000001 % to about 80%” ([0212], Table 24). The examiner notes that acrylic latex implies an acrylic emulsion which includes acrylic acid which includes -COOH groups that are ionizable to form anionic groups and thus an anionic acrylic homopolymer (MPEP §2144.01). The examiner is interpreting “clear” as recited in the instant claims as encompassing transparent and translucent (MPEP §2111).
In response to Applicants position that: “Additionally, the disclosed acrylic compounds in McDaniel could have negative effects on the bacterial spores/enzymes due to the undesirable properties.” The examiner sees no evidence supporting this position.
In response to Applicants position that: “However, an acrylic latex binder is not the claimed anionic acrylic homopolymer. Acrylic latex binders (used for paint, etc.) are highly durable and flexible. The flexibility of acrylic latex binders allow them to expand and contract increasing the lifespan of the coating. The acrylic latex binders would last longer than 1 day to 14 days.” Applicants argument is not convincing because the instantly rejected claims are open-ended (“A residual hydrophobic coating that neutralizes urine odor and/or degrades urine comprising: […].”), MPEP §2111.03(I) - The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. The claims are clearly open to an acrylic latex binder that is an anionic acrylic homopolymer (instant claims 1 & 5-10).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “These acrylic compounds would create a coating that lasts longer than the claimed coating (e.g., more than 1 day to 14 days) and/or have undesirable properties (e.g., flexibility).”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that: “As discussed above, Ueda discloses cold-curing photocatalytic coating materials that includes acrylic emulsion-type resins and copper compound-supported titanium oxide. However, Ueda states in paragraph [0028], "In the acrylic emulsion-type resin, the polymerizable unsaturated monomer and the acrylic resin particles are dispersed into water by using the surfactant. Therefore, in the event of preparing the acrylic emulsion-type resin, it is necessary to use the surfactant, and in particular, it is preferable to use at least a polymerizable surfactant." Thus, Ueda requires the addition of a surfactant to the composition to increase the dispersibility of the acrylic resin in solution (i.e., water). Moreover, Ueda does not teach and/or suggest the claimed concentration of the clear film (i.e., anionic acrylic homopolymer).” (p. 6, last paragraph).
In response the examiner argues that the claims do not exclude a surfactant, and UDEA specifically teaches that their coatings can include a homopolymer ([0012]), and specifically including “Moreover, as the homopolymers with high Tg, for example, acrylic acid (AA, homopolymer Tg: 87° C.),” ([0036]). UDEA further teaches that: “However, in a case where the acrylic emulsion-type resin is amphoteric, then it is less possible that the acrylic resin particles and the homopolymer may be aggregated whichever the homopolymer coating material may be anionic or cationic. Therefore, it is preferable to select the homopolymer coating material in consideration of polarity of the acrylic emulsion-type resin. Note that in a case of the cold curing coating composition of this embodiment, it is preferable to use an anionic coating material as the homopolymer coating material.” ([0064]). Furthermore, as discussed above acrylic latex implies an acrylic emulsion which includes acrylic acid which includes -COOH groups that are ionizable to form anionic groups and thus an anionic acrylic homopolymer (MPEP §2144.01).
Applicant further argues that: “Hinman does not teach and/or suggest a coating composition. The compositions in Hinman are either liquid (rinsed/flushed with water after application) or solid (blocks or pellets). The liquid compositions will only last up to 24 hours without rinsing as the compositions are removed via flushing (i.e., removed with water). Hinman does not teach and/or suggest clear films and/or anionic acrylic homopolymers or the concentrations of said clear films and/or anionic acrylic homopolymers in their compositions. Thus, the compositions in Hinman never form a coating that would last 1 day to 14 days.” (p. 7, 1st paragraph). And that: “ Klingman discloses their compositions can include rheology modifiers (e.g., acrylic polymer emulsions), which are optional components. Klingman does not teach and/or suggest the claimed concentration of the clear film (i.e., anionic acrylic homopolymers). Paragraph [0068] discloses the rheology modifiers are present in the composition up to 4%. Including only 4% of an acrylic emulsion would not be sufficient to create the claimed coating. Klingman does not provide any further guidance regarding the concentration of rheology modifiers or acrylic emulsions. Thus, Klingman does not teach and/or suggest the claimed concentration of the clear film and/or anionic acrylic homopolymers. Furthermore, Klingman does not teach and/or suggest the claimed coating that is capable of lasting for 1 day to 14 days.” (p. 7, 2nd paragraph).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Claims 1-3, 5-10, 19-22 and 25-27 are pending and have been examined on the merits. Claim 5 is rejected under 35 U.S.C. 112(b); and claims 1-3, 5-10, 19-22 and 25-27 are rejected under 35 U.S.C. 103. No claims allowed at this time.
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 IVAN A GREENE whose telephone number is (571)270-5868. The examiner can normally be reached M-F, 8-5 PM PST.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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