www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/772,588
`
`06/12/2020
`
`Kelvin J. Witcher
`
`79826US006
`
`8117
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`KANE, TREVOR LOGAN
`
`ART UNIT
`
`1657
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/22/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`LegalUSDocketing @ mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/772,588
`Examiner
`TREVOR L KANE
`
`Applicant(s)
`Witcheretal.
`Art Unit
`1657
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 8/7/23.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 8-15 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 1-7 and 16 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s)filed on 6/12/20 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a)C) All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230905
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 2
`
`DETAILED ACTION
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`Notice ofPre-AIA or AIA Status
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`Thepresentapplication, filed on or after March 16, 2013, is being examined underthe
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`first inventorto file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this applicationis
`
`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 pursuantto
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`37 CFR 1.114. Applicant's submission filed on 8/7/23 has been entered.
`
`Priority
`
`Application claimspriority to 62/607,688 provisional application with an effective
`
`filing date of 12/19/17. Claimsof the instant application are supported by the provisional
`
`application and thus havea priority date of 12/19/17.
`
`Claims 1-16 are pending. Claims 8-15 are withdrawn. Amended claims 1-7 and
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`16 are under examination herein.
`
`Information Disclosure Statement
`
`The IDS filed on 9/3/22 has beenfully considered except where references have
`
`been lined through
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 3
`
`Response to Amendment
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`This action is written in response to applicant’s amendments received on 8/7/23.
`
`Any objection or rejection not reiterated herein has been overcome by amendment.
`
`Claims 1-16 are pending. Claims 8-15 are withdrawn. Amended claims 1-7 and 16 are
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`under examination herein.
`
`Claim Rejections - 35 USC § 103
`
`The followingis a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore 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.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was commonly
`
`ownedas of the effective filing date of the claimed invention(s) absent any evidenceto the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned asofthe effective filing date
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`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) priorart against the later invention.
`
`Modified rejection due to amendment. Claims 1-7 and 16 are rejected under 35 U.S.C.
`
`103 as being unpatentable over Lee (Lee, I., et al. (2016). Antibacterial performance of various
`
`amine functional polymers coated silica nanoparticles. Polymer, 83, 223-229) in view of Albert
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 4
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`(Albert, H., et al (1998). Biological indicators for steam sterilization: characterization of a rapid
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`biological indicator utilizing Bacillus stearothermophilus spore-associated alpha-glucosidase
`
`enzyme. Journal of applied microbiology, 85(5), 865-874.) and Ghosh (Ghosh, et al "Surface
`
`modification of nano-silica with amides and imidesfor use in polyester nanocomposites."
`
`Journal of Materials Chemistry A 1.19 (2013): 6073-6080).
`
`Regarding claim 1, Lee teaches surface modification of silica nanoparticles with amines
`
`(abstract). Lee teaches tertiary amine-modified silica nanoparticles and using those nanoparticles
`
`in a liquid medium containing waterto kill the bacteria (p 224 right columnlines 4-19, p224
`
`right column lines 32-39, and figure 1). Lee further teaches that the tertiary amine-modified
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`silica nanoparticles are able to kill both gram positive and gram-negative bacteria (abstract,
`
`figure 5 and 6, p227 left column lines 5-10). Examiner notes claim 1 requires no greater than 30
`
`wt% organic solvent, and zero meetsthe limitation. Further, “less than 30%” must encompass
`
`0% as it was previously modified with the phrase “if present”. The phrase “comprising water and
`
`no greater than 30-wt% organic solvent” is construed herein to include compositions free of
`
`organic solvent because under BRI 0% isless than 30% and the claim was previously modified
`
`with the phrase “if present” indicating that the phrase necessarily includes compositions having
`
`no organic solvent within its scope. Lee teaches that the nanoparticles are in distilled water
`
`(liquid medium) whichis inherently free of organic solvent(less than 30 wt% organic solvent)
`
`and thus meets the limitation of less than 30wt% organic solvent (p 224 right column lines 4-19).
`
`Lee fails to teach an indicator compoundor explicitly teach that the amine groups are
`
`covalently attachedto the silica nanoparticle surface.
`
`Albert teaches biological indicatorsfor sterilization (title). Albert teaches that
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`sterilization monitoring is important to ensure adequatesterilization and that biological
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`

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`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 5
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`indicators are the most effective method (p865 left columnlines 14-16). Albert teaches using a-
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`glucosidase for a spectrophotometric measurementusing p-nitrophenyl-alpha-D-glucoside
`
`(PNPG)as an indicator compoundasa read out forsterilization of spore forming bacteria (p866
`
`left columnlines 27-34, p867 left columnlines 15-43). Albert teaches that o-glucosidaseis a
`
`useful predictor of spore survivalas it is present in both viable and vegetative cells and the
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`enzyme survives just longer than the spore followingthesterilization (p872 right columnlines
`
`17-20).
`
`Lee and Albert do not teach that the amine groups are covalently attached to thesilica
`
`nanoparticle surface.
`
`Ghoshteaches surface modification of silica nanoparticles with primary amines
`
`(abstract). Ghosh teachesthat there are different ways to bind APS (primary amine)to the silica
`
`nanoparticle and that a covalent bondis the strongest (p6075 left column lines 37 -40, figure 1).
`
`It would have been obvious to one of ordinary skill in the art before the effective filing
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`date of the claimed invention to modify the anti-bacterial composition containing tertiary amine
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`silica nanoparticle of Lee by adding the indicator compound of Albert and generatingthetertiary
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`aminesilica nanoparticle through covalent bonds as taught by Ghosh. Oneof ordinary skill in
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`the art would be motivated to do so because Albert teachesthe utility of using indicators for
`
`killing bacteria. One of ordinary skill would be further motivated to generate the tertiary amine
`
`silica nanoparticles using the covalent bond method of Ghosh as Ghoshteaches that a covalent
`
`bond results in the strongest amine modified silica nanoparticles. There would be a reasonable
`
`expectation of success as both Lee and Albert are in the samefield of endeavorof killing
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`bacteria and Lee and Ghosharein the samefield of endeavor of amine surface-modified silica
`
`nanoparticles.
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 6
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`Regarding claims 2 and 3, Lee teaches contacting the amine-nanoparticles with the
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`bacterial strains F. coli and S. aureus (bacteria) (p224 right column lines 33-39).
`
`Regarding claim 4, while Lee teaches bacteria, Lee does not teach spore forming
`
`bacteria. However, Albert teaches the use of the spore forming bacterium Bacillus
`
`stearothermophilus to measuresterilization (abstract, p866 left column lines 29-32).
`
`Regarding claims 5 and 6, Albert teaches using a-glucosidase for both a
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`spectrophotometric measurement using p-nitropheny1l-alpha-D-glucoside (PNPG) and a
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`fluorimetric detection using 4-methylumbelliferyl-alpha-D-glucoside (4-MUG)(p867 left
`
`column lines 15-43). Readout of the p-nitrophenol from the substrate p-nitrophenyl-alpha-D-
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`glucoside after cleavage by a-glucosidase was monitored at 410 nm (p867 left column lines 18 -
`
`21). One of ordinary skill in the arts would recognize that 410 nm corresponds to a color.
`
`Regarding claim 7, Lee teaches tertiary amine-modified silica nanoparticles and using
`
`those nanoparticles in a liquid medium containing waterto kill the bacteria (p 224 right column
`
`lines 4-19, p224 right columnlines 32-39, and figure 1). Lee does not teach the covalent
`
`attachmentof the tertiary amine groupsto the surface of the silica nanoparticles. However,
`
`Ghoshteaches that there are different ways to bind APS (primary amine) to thesilica
`
`nanoparticle and that a covalent bondis the strongest (p6075 left column lines 37 -40, figure 1).
`
`Ghoshfurther teaches a variety of functional groups are able to be attached covalently to the
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`silica nanoparticle (figure 1).
`
`Regarding claim 16, Ghosh teaches that the reaction betweenthesilica nanoparticle and
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`the amineresults in a Si-O-Si bond (p6074 left column lines 3-8, figure 1).
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 7
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`Response to Arguments
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`Applicant's arguments filed 8/7/23 have been fully considered but they are not
`
`persuasive. Applicant argues that Lee fails to disclose a liquid medium comprising water and no
`
`great than 30% organic solvent. (p5 4" full paragraph). Lee discloses the nanoparticles are in
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`distilled water whichis free of organic. 0% is not greater than 30% organic solvent and thus Lee
`
`meets the claimedlimitation. Further, “less than 30%” must encompass 0% as it was previously
`
`modified with the phrase “if present”. The phrase “comprising water and no greater than 30-wt%
`
`organic solvent” is construed herein to include compositions free of organic solvent because 0%
`
`is less than 30% and the claim waspreviously modified with the phrase “if present” indicating
`
`that the phrase necessarily includes compositions having no organic solvent within its scope.
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`The nanoparticles in water of Lee was discussedin the final rejection mailed on 3/14/23 p3 first
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`full paragraph and has been reproduced above with a discussion of how Leestill meets the
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`amended claim limitation.
`
`Applicant argues that Albert and Ghosh do not teach a medium comprising water and not
`
`greater than 30 wt% organic solvent (p5 4" full paragraph). As discussedin the final rejection
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`mailed on 3/14/23 and in the response to arguments above, Lee meets the new claim limitation.
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`Albert and Ghoshare not relied upon to meetthe claim limitation.
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`No claimsare allowed.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TREVOR L KANE whosetelephone numberis (571)272-0265.
`
`The examiner can normally be reached M-F 7:00 am-4:00pm.
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 8
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouragedto use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Louise Humphreycanbe reached on (571)272-5543. The fax phone numberfor the
`
`organization where this application or proceedingis assignedis 571-273-8300.
`
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`
`obtained from Patent Center. Unpublished application information in Patent Centeris available
`
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`
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`
`/TREVOR KANE/
`Examiner, Art Unit 1657
`
`/ROBERT J YAMASAKI/
`Primary Examiner, Art Unit 1657
`
`