PATENT
`
`RESPONSE UNDER37 C.F.R. 1.116 - EXPEDITED
`PROCEDURE- EXAMINING GROUP 1774
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Confirmation No.: 4281
`11/997,227
`Appl. No.:
`Applicant(s):|Andersonef al.
`Filed:
`July 3, 2008
`Art Unit:
`1774
`Examiner:
`Christopher VanDeusen
`Title:
`INACTIVATION OF GRAM-POSITIVE BACTERIA
`
`031749/340085
`Docket No.:
`Customer No.: 00826
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`AMENDMENTAFTER FINAL UNDER37 C.F.R. § 1.116
`
`Commissioner:
`
`In responseto the Final Office Action dated April 25, 2014, please amend the above-
`
`identified application as follows:
`
`Amendments to the Claimsare reflected in the listing of claims beginning on page 2 ofthis
`paper.
`
`Remarks/Arguments begin on page 3 ofthis paper.
`
`An Appendix containing a reference by Kawadaet al. (Journal ofDermatological Science
`
`(2002) Vol. 30, pp. 129-135) is attached immediate following page 11 of this paper.
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`Clear-Vu Lighting, Exhibit 1020
`
`Clear-Vu Lighting, Exhibit 1020
`
`1
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`

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`Appl. No.: 11/997,227
`Amat. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
`
`Amendmentsto the Claims
`
`1,
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`(Currently Amended) A methodfor disinfecting air, contact surfaces, or materials
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`by inactivating methicillin-resistant Staphylococcus aureus (MRSA)inthe air, on the contact
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`surfaces, or on the materials, said method comprising exposing the MRSAtovisible light
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`without using a photosensitiser, wherein the visible light for inactivating the baeteria€MRSA
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`consists of wavelengths in the range of 400-420 nm, and wherein the method is performed
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`outside of a human body,the contact surfaces or the materials are non-living, and the air, contact
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`surfaces or materials are not exposedto a disinfecting dose oflight at a wavelength above 500
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`nm.
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`Claims 2-5.
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`(Canceled)
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`6.
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`(Previously Presented) A method as claimed in claim 1 wherein the light consists
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`of wavelength 405 nm.
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`Claims 7-18.
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`(Canceled)
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
`
`REMARKS/ARGUMENTS
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`Status of the Claims
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`Claims 1 and 6 remain pendingin the application. Claim 1 has been amendedto recite
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`“the visible light for inactivating the MRSA”in order to provide correct antecedent basis. No
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`new matter is added by way of this amendment, nor does this amendmentraise new issues with
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`regard to patentability of the claimed subject matter. Entry of this claim amendmentintothis
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`application is respectfully requested in order to place the application in condition for allowance
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`or in better condition for appeal.
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`Reconsideration of the claimsis respectfully requested in view of the following remarks.
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`Any new arguments addressed herein were not previously presented as Applicants believed that
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`the previously pending claims were allowable in view of the arguments of record. The
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`Examiner’s rejections in the Final Office Action are addressed below in the orderset forth
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`therein.
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`The Rejections of the Claims Under 35 U.S.C. § 103 Should Be Withdrawn
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`Claims | and 6 were rejected under 35 U.S.C. § 103 as being unpatentable over Jones et
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`al. (U.S. Application Publication No. 2005/0055070) in view of Burnie ef al. (U.S. Patent No.
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`6,627,730) as evidenced by Bek-Thomsenet al. Journal ofClinical Microbiology (2008) Vol.
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`46, No. 10, pages 3355-3360). This rejection of the claims is respectfully traversed.
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`Applicants’ claimed invention is drawn to a method for disinfecting air, contact surfaces,
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`or materials by inactivating methicillin-resistant Staphylococcus aureus (MRSA)using visible
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`blue light consisting of wavelengths in the range of 400-420 nm (claim 1), or visible blue light at
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`a specific wavelength of 405 nm (claim 6). Applicants’ claimed methods also require (i) that the
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`methods are performed outside of a human body,(ii) that the contact surfaces or materials that
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`are disinfected are non-living, and(iii) that the air, contact surfaces, or materials are not exposed
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`to a disinfecting dose of light at a wavelength above 500 nm.
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`Jones et al. teaches a method and device for the treatment of skin conditions, particularly
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`Acne Vulgaris. The method of Jonesef a/. utilizes visible light to activate bacterial porphyrins in
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
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`the skin, using preferred ranges of 580 to 590 nm orbluelight in the range of 390 to 420 nm
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`(see, paragraph [0029]). Burnie et al. teaches a staphylococcal ABC transporter. The Office
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`Action cites this reference as teaching that both MRSAbacteria and coagulase-negative
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`staphylococcus (CNS)bacteria are drug-resistant species and that new therapies are needed for
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`both. Bek-Thomsenef a/. teaches that acne is not associated with yet-uncultured bacteria. The
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`Office Action alleges that this reference provides evidence that Staphylococcus epidermis
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`contributes to the symptoms of Acne Vulgaris and, therefore, could be disinfected by the method
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`of Jones ef al.
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`The Office Action asserts that the presently claimed methods are obvious in view of these
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`cited prior art references. Applicants respectfully disagree for at least the reasons previously
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`made of record and those further set forth below.
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`A,
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`There Was No Expectation ofSuccess That the Claimed Methods Would Be Effective
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`Against MRSA -— Results Were Not Predictable
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`The Office Action asserts that the cited prior art references provide an expectation of
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`success that the method of Jones et al. could be used to achieve the claimed invention by
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`disinfecting methicillin-resistant Staphylococcus aureus (MRSA)bacteria. The Office Action
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`further asserts that such an outcome would bepredictable in view ofthe cited priorart.
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`Applicants respectfully disagree with these conclusions. On the contrary, Applicants provide in
`the attached Appendix a priorart reference by Kawadaet al. (Journal ofDermatological Science
`(2002) Vol. 30, pp. 129-135) demonstrating that disinfection of MRSA bacteria using visible
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`blue light would not have been predictable and that there would have been no expectation of
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`SUCCESS.
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`Kawadaet al. describes phototherapy with a high-intensity, enhanced, narrow-band, blue
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`light source for the treatment of acne. This reference teaches a study wherein patients were
`treated with visible blue light in the range of 407 to 420 nm to inactivate bacteria in the skin.
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`This rangeofblue light wavelengthsis within the range taught by Jonesetal. (i.e., 390 to 420
`nm). As described in the sectiontitled “3.4. Bacterial isolates,” and shown in Table 2,bacterial
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`Appl. No.: 11/997,227
`Amat. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
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`samples from 24 patients were obtained, cultured, andidentified (see, page 133). Applicants
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`note that certain Staphylococcal species of bacteria are commensal and would be expected to be
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`found on the skin of any patient. As such, their presence on the skin of acne patients does not
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`indicate that they contribute to acne symptoms. Rather,it is evident from its “Introduction” that
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`Kawadaet al. is primarily concerned with Propionibacterium acnes as the causative species for
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`acne.
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`Notably, one patient sample was shownto be positive for Propionibacterium acnes,
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`Staphylococcus epidermis, and MRSA bacteria. With regard to this patient, Kawadaetal. states:
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`Patients who had MSSA [methicillin-sensitive Staphylococcus aureus] and
`MRSAdiscontinued the treatment with the complaint of ‘worsened’ that was also
`confirmed by the investigator to be worsened [emphasis added]. (page 133)
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`Thus, Kawadaef al. teachesthat treatment with visible blue light in the range of 407 to 420 nm
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`was not effective in treating a patient that was co-infected with MRSAbacteria. Rather,
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`phototherapy worsenedthe patient’s condition to the degree that treatment was discontinued.
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`Kawadaetal. goes on to conclude that:
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`Two patients in our study who showed MSSA or MRSA co-cultured with
`P. acnes and S. epidermis discontinued the study because of ineffectiveness of
`phototherapy. The main pathogenin acnelesions of these patients may have been
`S. aureus that did not respond to blue light [emphasis added]. (page 134)
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`Thus, Kawadaet al. clearly suggests that MRSA bacteria were not inactivated by the use of
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`visible blue light between 407 to 420 nm.
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`Therefore, the state of the art at the relevant time indicates that a person of ordinary skill
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`in the art would not have predicted that the method of Jonesef al. could use visible blue light to
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`disinfect MRSAbacteria. Furthermore, the skilled artisan would have had no expectation of
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`success, as Kawadaet al. clearly suggests that visible blue light would not be effective against
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`MRSAbacteria. Accordingly, Applicants’ claimed method was unpredictable in view of the
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`priorart, and a case for obviousness cannot be made.
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
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`Furthermore, Applicants note that Kawadaet al. does not anticipate or render the claimed
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`invention obvious. Kawada ef al. only uses visible blue light on MRSAbacteria that are present
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`in the skin of a patient. At no point is MRSAisolated from the skin and then exposedto visible
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`blue light outside of a human body on a non-living contact surface or material, as required by
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`instant claim 1. Moreover, Kawadaef al. does not teach or suggest that MRSA could even be
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`disinfected with visible blue light in the range of 400 to 420 nm.
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`B.
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`The Cited Prior Art Does Not Teach That the MethodofJoneset al. Is Effective Against
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`CNS Bacteria
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`In making a case for obviousness, the Office Action cites the method of Jonesef al.,
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`whichis directed to the use ofvisible blue light in the range of 390 to 420 nm to inactivate
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`bacteria in the skin. The Office Action acknowledges that Jones ef al. does not teach the
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`disinfection of MRSA,but alleges that the method of Jones ef al. would be broadly effective
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`against any bacteria that “contribute to the symptoms of Acne Vulgaris”(see, page 4 of the
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`Office Action).
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`Bek-Thomsenef al. is then cited as purported evidence that Staphylococcus epidermis, a
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`coagulase-negative staphylococcus (CNS)bacteria, allegedly contributes to Acne Vulgaris. The
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`Office Action combinesthe teachings of these references to conclude that Staphylococcus
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`epidermis would be disinfected by the method of Jones ef al., and relies on this interpretation of
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`the art to formulate a case for obviousness. However, Applicants respectfully submit that this
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`interpretation and conclusion are flawed.
`
`Onthe contrary, it is evident from Kawadaef al. that the method of Jones ef al. would not
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`be effective against Staphylococcus epidermis bacteria. Specifically, Kawadaetal. describes
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`experiments wherein Propionibacterium acnes bacteria and Staphylococcus epidermis bacteria
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`were isolated from patients and then irradiated in vitro with visible blue light in the range of 407
`
`to 420 nm (see, page 133, sectiontitled “3.5. Bacterial effects in vitro”). As shown in Table 3,
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`Propionibacterium acnes bacteria were susceptible to the effects of visible blue light treatment,
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`with a significant reduction in the numberof cultured bacteria after 60 minutes. However,
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
`
`visible blue light treatment had no effect on Staphylococcus epidermis bacteria. Kawada etal.
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`states at page 133:
`
`As shown in Table 3, P. acnes was decreased in numberafter irradiation whereas
`S. epidermis was not [emphasis added].
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`Thus, the Office Action’s argumentis flawed, as a person of ordinary skill in the art would have
`
`concluded from Kawadaet al. that visible blue light, such as that used by Jones etal., could not
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`have been usedto disinfect Staphylococcus epidermis bacteria. Accordingly, the Office Action’s
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`case for obviousness cannot be made,asit directly relies on this flawed interpretation of the prior
`
`art.
`
`Moreover, Applicants submit Jones ef al. is not directed to the treatment of any bacteria
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`that contributes to the symptomsof Acne Vulgaris, as asserted by the Office Action. Rather,it is
`clear from the disclosure of Jones ef al. that this reference is so/ely directed to the treatment of
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`Propionibacterium acnes bacteria in the skin.
`In support ofits position, the Office Action points to paragraph [0037] of Jones efal.,
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`which states that its apparatus:
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`... may be used to treat a region of skin affected by the condition Acne Vulgaris
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`by causing a photochemicalreaction in said region that stimulates the production
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`of free radicals that react with, and at least partially disable or destroy, bacteria
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`that contribute to the symptoms of Acne Vulgaris [emphasis added].
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`However, Jones etal. specifically defines such contributing bacteria as Propionibacterium acnes
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`bacteria throughoutthe specification. For example, paragraphs [0004] and [0005] describe the
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`factors that cause Acne Vulgaris and its development, referring only to Propionibacterium acnes
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`bacteria as being present and rapidly multiplying in clogged pores. Paragraph [0023] directly
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`states that the method of Jonesef al. is drawn to the disinfection of Propionibacterium acnes
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`bacteria, stating:
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
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`Advantageously, a photo-chemical reaction is caused that disables or destroys,
`wholly or partially,
`the bacteria Propionibacterium_acnes, which,_as described
`above, is one of the causes of Acne Vulgaris {emphasis added].
`
`Paragraphs [0024] and [0025] also directly support this point, stating:
`
`Porphyrin is a naturally
`The chromophore targeted is preferably porphyrin.
`occurring substance produced by the bacteria Propionibacterium_acnes [emphasis
`added]. (paragraph [0024]); and
`
`Thus, by exciting Porphyrin in the manner outlined aboveit is possible to disable
`or destroy the bacterium responsible for Acne Vulgaris in a pain-free, non-
`invasive and efficient manner [emphasis added]. (see, paragraph [0025])
`
`Jones et al. further clarifies that its method is directed to Propionibacterium acnes bacteria at
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`least in paragraphs [0029] and [0093] as well. Importantly, Jones ef a/. does not teach or suggest
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`that any bacteria other than Propionibacterium acnesis involved in the development of Acne
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`Vulgaris or is affected by its method of using visible blue light.
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`Therefore, when the reference is considered as a whole,it is clear that Jonesefal. is only
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`directed to the treatment and disinfection of Propionibacterium acnes bacteria in the skin. The
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`passage of paragraph [0037] cited by the Office Action is not intended to broadly mean that the
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`method could be used on any bacteria that might contribute to Acne Vulgaris. Rather, this
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`passage simply refers to the bacteria that Jones ef al. defines as contributing to Acne Vulgaris
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`(i.e., Propionibacterium acnes). Accordingly, the Office Action’s case for obviousness cannot
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`be made, asit directly relies on this flawed interpretation ofthe priorart.
`
`Cc.
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`Official Notice Is Improperly Applied
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`Furthermore, Applicants believe that Official Notice is improperly applied by the Office
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`Action when making its case for obviousness. Specifically, the Office Action states that a
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`reasonable expectation of success exists because the same bacterial vulnerability of CNS bacteria
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`(e.g., Staphylococcus epidermis) “would be exploited” when applying the method of Jonesefal.
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
`
`to MRSAbacteria (page 6 of the Office Action, emphasis added). Here, the Office Action
`asserts that MRSA bacteria would be expected to be as vulnerable to visible blue light as any
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`other species of Gram-positive bacteria.
`However, the Office Action fails to cite any documentary evidence to provide support for
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`this conclusion, either in the cited references or elsewhere. In fact, Kawadaet al. clearly
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`illustrates this point, indicating that MRSA bacteria are resistant to visible blue light whereas
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`other Gram-positive bacteria (i.e., Propionibacterium acnes)are not.
`
`The Office Action uses Official Notice to allege this fact in order to makeits case for
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`obviousness. While Examiners mayrely on Official Notice of facts in lieu of providing
`documentary evidence in some circumstances, the facts must be “capable of such instant and
`unquestionable demonstrationas to defy dispute” (in re Ahlert, 424 F.2d 1088, 1091, 165
`U.S.P.Q. 418, 420 (C.C.P.A. 1970), citing In re Knapp Monarch Co., 296 F.2d 230, 132
`U.S.P.Q. 6 (C.C.P.A. 1961)). Applicants respectfully submit that the Office Action’s conclusion
`that MRSA bacteria are similar to other Gram-positive bacteria and, therefore, would be as
`susceptible to visible blue light, is not “capable of such instant and unquestionable demonstration
`as to defy dispute.” Jd.
`Indeed, the teachings of Kawadaet al. dispute the Office Action’s
`conclusion. Therefore, the Office Action cannot properly rely on such an unsupported allegation
`
`of facts in rejecting the claims of the instant application for obviousness.
`In summary, a case for obviousness cannot be madein view of the cited prior art for at
`least the reasonsset forth above. Accordingly, Applicants respectfully request that this rejection
`
`of the claims be withdrawn.
`
`CONCLUSIONS
`
`In view of the foregoing remarks, the Examineris respectfully requested to withdraw the
`
`rejections of the claims under 35 U.S.C. § 103. Pursuant to 37 C.F.R. § 1.116 and MPEP
`§ 714.12, any amendmentthatwill place the application in condition for allowance may be
`enteredafter final rejection. Accordingly, in view of the above remarks, Applicants believe that
`this application is now ready for allowance. Early noticeto this effect is solicited. If in the
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`Appl. No.: 11/997,227
`Amdt. Dated June 30, 2014
`Reply to Office Action of April 25, 2014
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`opinion of the Examinera telephone conference would expedite the prosecution of the subject
`
`application, the Examineris invited to call the undersigned.
`
`It is not believed that extensions of time or fees for net addition of claims are required,
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`beyond those that may otherwise be provided for in documents accompanying this paper.
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`However, in the event that additional extensions of time are necessary to allow consideration of
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`this paper, such extensionsare hereby petitioned under 37 CFR § 1.136(a), and any fee required
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`therefor (including fees for net addition of claims) is hereby authorized to be charged to Deposit
`
`Account No. 16-0605.
`
`Respectfully submitted,
`
`/effrey a. sunman/
`
`Jeffrey A. Sunman
`Registration No. 66,666
`
`Customer No. 00826
`ALSTON & BIRD LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`Tel Research Triangle Area Office (919) 862-2200
`Fax Research Triangle Area Office (919) 862-2260
`
`ELECTRONICALLY FILED USING THE EFS-WEB ELECTRONIC FILING SYSTEM OF THE UNITED STATES PATENT &
`TRADEMARK OFFICE ON June 30, 2014.
`
`LEGAL02/34814107v1
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`10 of 10
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`APPENDIX
`
`Copy of Kawadaet al. (Journal ofDermatological Science (2002) Vol. 30, pp. 129-135)
`
`Submitted concurrently with Amendment After Finalfiled June 30, 2014, for:
`
`11/997,227
`Appl. No.:
`Applicant(s): Andersonefal.
`Filed:
`July 3, 2008
`Confirmation No.: 4281
`Examiner:
`Christopher VanDeusen
`Title:
`INACTIVATION OF GRAM-POSITIVE BACTERIA
`
`11
`
`11
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`

`

`Electronic AcknowledgementReceipt
`
`19447607
`
`11997227
`
`Application Number:
`
`International Application Number:
`
`Confirmation Number:
`
`U.S. National Stage under 35 USC 371
`
`Title of Invention:
`
`Inactivation of Gram-Positive Bacteria
`
`First Named Inventor/Applicant Name:
`
`John Galloway Anderson
`
`Customer Number:
`
`826
`
`Jeffrey Allen Sunman/Donna Miles
`
`Filer Authorized By:
`
`Jeffrey Allen Sunman
`
`Attorney Docket Number:
`
`031749/340085
`
`Receipt Date:
`
`Filing Date:
`
`30-JUN-2014
`
`03-JUL-2008
`
`Time Stamp:
`
`11:32:24
`
`Application Type:
`
`Paymentinformation:
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`Submitted with Payment
`
`File Listing:
`
`6967
`
`Pages
`Multi
`File Size(Bytes)/
`DocumentDescription
`Document
`
`
`
`Number Message Digest|Part/.zip|P (if appl.)
`968369
`
`340085_Amendment_After_Fi
`nal.pdf
`
`67ec688af725ca31a9e978f0d094512653d5}
`
`12
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`12
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`

`

`Multipart Description/PDF files in .zip description
`
`AmendmentCopying Claims - Not in Response to Examiner Suggesting
`Claims
`
`1
`
`1
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shownon this AcknowledgementReceiptwill establish the international filing date of
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`Applicant Arguments/Remarks Made in an Amendment
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`This AcknowledgementReceipt evidences receipt on the noted date by the USPTOofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable.It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
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`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfora filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shownonthis
`AcknowledgementReceiptwill establish thefiling date of the application.
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`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903indicating acceptanceof the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
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`PATENT APPLICATION FEE DETERMINATION RECORDJ“plication or Docket Number Filing Date
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`Substitute for Form PTO-875 07/03/2008|LC] Tobe Mailed11/997 ,227
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`ENTITY:
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`[-]LaRGeE &X smatt [] micro
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`APPLICATION AS FILED — PART|
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`(Column 1)
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`NUMBER FILED
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`NUMBER EXTRA
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`37 CFR 1.16(k),
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`(i), or
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`(m
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`CL EXAMINATION FEE
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`TOTAL CLAIMS
`37 CFR 1.16(i
`INDEPENDENT CLAIMS
`37 CFR 1.16(h
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`LAPPLICATION SIZE FEE
`(37 CFR 1.16(s))
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`APPLICATION AS AMENDED - PARTII
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`hereNG p SREYOUSLY
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`PRESENTEXTRA
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`ADDITIONALFEE($)
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`C Application Size Fee (837 CFR 1.16(s))
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`Cc FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR 1.16(j))
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`(Column 1)
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`(Column 2)
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`(Column 3)
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`j
`minus 20 =
`J
`minus 3 =
`If the specification and drawings exceed 100 sheets
`of paper, the application size fee due is $310 ($155
`for small entity) for each additional 50 sheets or
`fraction thereof. See 35 U.S.C. 41(a)(1)(G) and 37
`CFR 1.16(s).
`[_] MULTIPLE DEPENDENTCLAIM PRESENT(37 CFR 1,16(j)
`* If the difference in column 1 is less than zero, enter “O” in column 2.
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`The “Highest Number Previously Paid For’ (Total or Independent) is the highest numberfound in the appropriate box in column 1.
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`AMENDMENT
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`AMENDMENT
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`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`+
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`Total (37 CFR
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`PRESENT EXTRA
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`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
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`Ind
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`esCdee
`[_] Application Size Fee (37 CFR 1.16(s))
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`Cc FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR 1.16(j))
`
`* If the entry in column 1 is less than the entry in column 2, write “O” in column 3.
`** If the “Highest NumberPreviously Paid For” IN THIS SPACEis less than 20, enter “20”.
`*** If the “Highest Number Previously Paid For’ IN THIS SPACEis less than 3, enter “3”.
`
`LIE
`/SHAREILL COLES/
`
`This collection of information is required by 37 CFR 1.16. The information is required to obtain or retain a benefit by the public whichis tofile (and by the USPTOto
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending uponthe individual case. Any comments on the amountof time you
`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and TrademarkOffice, U.S.
`Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMSTO THIS
`ADDRESS. SEND TO: Commissionerfor Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`14
`
`14
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`11/997,227
`
`07/03/2008
`
`John Galloway Anderson
`
`031749/340085
`
`4281
`
`
`ALSTON&BIRD LLP rE
`Al
`RD
`vee
`XAMINER
`
`BANK OF AMERICA PLAZA
`101 SOUTH TRYON STREET, SUITE 4000
`CHARLOTTE, NC 28280-4000
`
`VANDEUSEN, CHRISTOPHER
`
`1774
`
`
`
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/23/2014
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`usptomail @alston.com
`
`PTOL-90A (Rev. 04/07)
`
`15
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`

`

`would be allowable if submitted in a separate, timely filed amendment canceling the non-
`
`U.S. Patent and Trademark Office
`PTOL-303 (Rev. 08-2013)
`
`/Christopher K. VanDeusen/
`Primary Examiner, Art Unit 1774
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Part of Paper No. 20140711
`
`16
`
`Applicant(s)
`Application No.
`ANDERSONETAL.
`11/997,227
`Advisory Action
`
`Before the Filing of an Appeal Brief|Examiner Art Unit AIA (First Inventor to File) Status
`
`Christopher K. VanDeusen
`1774
`No
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`THE REPLYFILED 30 June 2014 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`NO NOTICE OF APPEAL FILED
`
`1. & Thereply wasfiled after a final rejection. No Notice of Appeal has beenfiled. To avoid abandonmentofthis application, applicant musttimelyfile
`oneof the following replies: (1) an amendment, affidavit, or other evidence, which places the application in condition for allowance;
`(2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or (3) a Request for Continued Examination (RCE) in compliance with
`37 CFR 1.114 if this is a utility or plant application. Note that RCEs are not permitted in design applications. The reply mustbefiled within one of
`the following time periods:
`a) Xx The period for reply expires 3months from the mailing date of the final rejection.
`b) | The period for reply expires on: (1) the mailing date of this Advisory Action; or (2) the date set forth in the final rejection, whicheveris later.
`In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`Cc) | A prior Advisory Action was mailed more than 3 monthsafter the mailing date of the final rejection in responseto a first after-final reply filed
`within 2 months of the mailing date of the final rejection. The current period for reply expires
`months from the mailing date of
`the prior Advisory Action or SIX MONTHS from the mailing date of the final rejection, whichever is earlier.
`Examiner Note: |f box 1
`is checked, check either box (a), (b) or (c). ONLY CHECK BOX (b) WHEN THIS ADVISORY ACTION IS THE
`FIRST RESPONSE TO APPLICANT’S FIRST AFTER-FINAL REPLY WHICH WAS FILED WITHIN TWO MONTHS OF THE FINAL
`REJECTION. ONLY CHECK BOX(c) IN THE LIMITED SITUATION SET FORTH UNDER BOX (c). See MPEP 706.07(f).
`Extensions of time may be obtained under 37 CFR 1.136(a). The date on whichthe petition under 37 CFR 1.136(a) and the appropriate
`extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The
`appropriate extension fee under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally
`setin the final Office action; or (2) as set forth in (b) or (c) above, if checked. Any reply received by the Office later than three months after the
`mailing date of the final rejection, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
`NOTICE OF APPEAL
`. Abrief in compliance with 37 CFR 41.37 mustbefiled within two monthsof the date offiling the
`2. CL] TheNotice of Appeal wasfiled on
`Notice of Appeal (37 CFR 41.37(a)), or any extension thereof (37 CFR 41.37(e)), to avoid dismissal of the appeal. Since a Notice of
`Appeal has beenfiled, any reply mustbefiled within the time period set forth in 37 CFR 41.37(a).
`AMENDMENTS
`3. Cc] The proposed amendmentsfiled after a final rejection, but prior to the date offiling a brief, will not be entered because
`a) CT] They raise new issues that would require further consideration and/or search (see NOTEbelow);
`b) CT] Theyraise the issue of new matter (see NOTE below);
`Cc) CT] They are not deemedto place the application in better form for appeal by materially reducing or simplifying the issues for
`appeal; and/or
`d) CL They present additional claims without canceling a corresponding numberoffinally rejected claims.
`NOTE:
`. (See 37 CFR 1.116 and 41.33(a)).
`4.(] The amendments are notin compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
`5. | Applicant's reply has overcomethe following rejection(s):
`6. Cc] Newly proposed or amended claim(s)
`allowable claim(s).
`7. X For purposesof appeal, the proposed amendmenit(s): (a) [1] will not be entered, or (b) X] will be entered, and an explanation of how the
`new or amendedclaims would be rejected is provided below or appended.
`AFFIDAVIT OR OTHER EVIDENCE
`:
`8. CT] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`9. 1 Theaffidavit or other evidencefiled after final action, but before or on the date offiling a Notice of Appealwill not be entered because
`applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and wasnot earlier
`presented. See 37 CFR 1.116(e).
`10. [] Theaffidavit or other evidencefiled after the date offiling the Notice of Appeal, butprior to the date offiling a brief, will not be entered
`becausethe affidavit or other evidence failed to overcome all rejections under appeal and/or appellantfails to provide a showing of good
`and sufficient reasons why it is necessary and was not earlier presented. See 37 CFR 41.33(d)(1).
`11. (J The affidavit or other evidence is entered. An explanation ofthe status ofthe claims after entry is below or attached.
`REQUEST FOR RECONSIDERATION/OTHER
`12. K] The request for reconsideration has been considered but does NOTplacethe application in condition for allowance because:
`See Continuation Sheet.
`
`13. [J] Note the attached Information Disclosure Statement(s). (PTO/SB/08) Paper No(s).
`14. [J Other:
`.
`STATUS OF CLAIMS
`
`15. The status of the claim(s) is (or will be) as follows:
`Claim(s) allowed:
`Claim(s) objected to:
`Claim(s) rejected: 1 and 6.
`Claim(s) withdrawn from consideration:
`
`16
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`

`

`Continuation Sheet (PTOL-303)
`
`Application No. 11/997,227
`
`Continuation of 11. does NOT place the application in condition for allowance because: Applicant's argumentsfiled 06/30/2014 have been
`fully considered but are not persuasive.
`
`Applicant argues that the teachings of the Kawada reference evidences that there was no expectation of success that the claimed methods
`would have been effective against MRSA, as the results would not have been predictable. The teachings of the Kawada reference have
`been fully considered but are not persuasive. The Kawada reference makes teachings with respect to a wavelength range of 407-420nm,
`which is part of the claimed range; however, wavelengths in the range o