www.uspto.gov
`
`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
`
`10/26/2022
`
`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 8/22/22.
`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.
`1) Claim(s)__ is/are allowed.
`Claim(s) 1-7 and 16 is/are rejected.
`)
`Claim(s) 6 is/are objectedto.
`O Claim(s
`are subject to restriction and/or election requirement
`)
`* 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)L) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)C] 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)C1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)LJ None of the:
`b)L) Some**
`a)LJ All
`1.2 Certified copies of the priority documents have been received.
`2..) Certified copies of the priority documents have beenreceived in Application No.
`3.0.) 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 20221018
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 2
`
`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/22/22
`
`has been entered.
`
`Priority
`
`Application claims priority to 62/607,688 provisional application with an effective
`
`filing date of 12/19/17. Claims of the instant application are supported by the provisional
`
`application and thus haveapriority date of 12/19/17.
`
`Claims 1-16 are pending. Claims 8-15 are withdrawn. Amended claims 1-7 and
`
`16 are under examination herein.
`
`Information Disclosure Statement
`
`The IDS filed on 9/3/22 has been fully considered except where references have
`
`been lined through.
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 3
`
`Claim Objections
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`Claim 6 is objected to because of the following informalities: The group of
`
`enzymes recited in claim 6 contains two non-enzymes, butyrate and arabinoside.
`
`Examiner recommends deleting the non-enzyme membersfrom the list of enzymes.
`
`The phrase “selected from the group of consisting of’ is grammatically incorrect.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
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`ownedasofthe effectivefiling date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 4
`
`Claims 1-7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Lee (Lee, |., et a/. (2016). Antibacterial performance of various amine functional
`
`polymers coatedsilica nanoparticles. Polymer, 83, 223-229) in view of Albert (Albert,
`
`H., et al (1998). Biological indicators for steam sterilization: characterization of a rapid
`
`biological indicator utilizing Bacillus stearothermophilus spore-associated alpha-
`
`glucosidase enzyme. Journal of applied microbiology, 85(5), 865-874.) and Ghosh
`
`(Ghosh, et a/ "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 water to kill the bacteria (p 224 right
`
`column lines 4-19, p224 right column lines 32-39, and figure 1). Lee further teaches that
`
`the tertiary amine-modified silica nanoparticles are able to kill both gram positive and
`
`gram negative bacteria (abstract, figure 5 and 6, p227left column lines 5-10). Examiner
`
`notes claim 1 contains the limitation of an organic solvent, if present. Examiner has
`
`interpreted this to mean that organic solvent can be lacking from the composition. Lee
`
`teaches that the nanoparticles are in distilled water (liquid medium) which is inherently
`
`free of organic solvent and thus meets the limitation on an “organic solvent, if present”
`
`(p 224 right column lines 4-19).
`
`Lee fails to teach an indicator compound or explicitly teach that the amine groups
`
`are covalently attachedto the silica nanoparticle surface.
`
`Albert teaches biological indicators for sterilization (title). Albert teaches that
`
`sterilization monitoring is important to ensure adequatesterilization and that biological
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`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 5
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`indicators are the mosteffective method (p865 left column lines 14-16). Albert teaches
`
`using a-glucosidase for a spectrophotometric measurement using p-nitrophenyl-alpha-
`
`D-glucoside (PNPG) as an indicator compoundasa read outfor sterilization of spore
`
`forming bacteria (p866 left column lines 27-34, p867 left column lines 15-43). Albert
`
`teachesthat a-glucosidase is a useful predictor of spore survivalasit is present in both
`
`viable and vegetative cells and the enzyme survives just longer than the spore following
`
`the sterilization (p872 right column lines 17-20).
`
`Lee and Albert fail to teach that the amine groups are covalently attached to the
`
`silica 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 bond is the strongest (p6075left column lines
`
`37-40, figure 1).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify the anti-bacterial composition containing
`
`tertiary amine silica nanoparticle of Lee by adding the indicator compound of Albert and
`
`generating the tertiary amine silica nanoparticle through covalent bonds as taught by
`
`Ghosh. One of ordinary skill in the art would be motivated to do so because Albert
`
`teachesthe utility of using indicatorsfor 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 Ghosh teachesthat 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 same field of endeavor ofkilling bacteria and
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 6
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`Lee and Ghosh are in the same field of endeavor of amine surface-modified silica
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`nanoparticles.
`
`Regarding claims 2 and 3, Lee teaches contacting tertiary amine-nanoparticles
`
`with the bacterial strains E. coliand S. aureus (bacteria) (p224 right column lines 33-
`
`39).
`
`Regarding claim 4, while Lee teaches bacteria, Lee fails to 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
`
`spectrophotometric measurementusing p-nitrophenyl-alpha-D-glucoside (PNPG) anda
`
`fluorimetric detection using 4-methylumbelliferyl-alpha-D-glucoside (4- MUG) (p867left
`
`column lines 15-43). Readout of the p-nitrophenol from the substrate p-nitrophenyl-
`
`alpha-D-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 water to kill the bacteria (p 224
`
`right column lines 4-19, p224 right column lines 32-39, and figure 1). Lee does not teach
`
`the covalent attachment of the tertiary amine groupsto the surface ofthe silica
`
`nanoparticles. However, Ghosh teachesthat there are different ways to bind APS
`
`(primary amine) to the silica nanoparticle and that a covalent bond is the strongest
`
`(p6075 left column lines 37-40, figure 1). Ghosh further teaches a variety of functional
`
`groupsare able to be attached covalently to the silica nanoparticle (figure 1).
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 7
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`Regarding claim 16, Ghosh teachesthat the reaction between the silica
`
`nanoparticle and the amine results in a Si-O-Si bond (p6074 left column lines 3-8, figure
`
`1).
`
`Responseto Arguments
`
`Applicant's arguments, see p5 last paragraph, filed 8/22/22, with respect to the
`
`rejection of claims 1-7 under 35 USC 103 have been fully considered and are
`
`persuasive. Therefore, the rejection has been withdrawn. A new ground ofrejection is
`
`made. Seethe rejection of claims 1-7 and 16 abovefor details.
`
`Conclusion
`
`No claims are allowed.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TREVOR L KANE whosetelephone number is
`
`(571)272-0265. The examiner can normally be reached M-F 7:00 am-4:00pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Louise Humphrey can be reached on (571)272-5543. The fax phone
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`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`

`

`Application/Control Number: 16/772,588
`Art Unit: 1657
`
`Page 8
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`
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`
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`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/TREVOR L KANE/
`Examiner, Art Unit 1657
`
`/LOUISE W HUMPHREY/
`Supervisory Patent Examiner, Art Unit 1657
`
`