`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwusptogov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`12/243,755
`
`10/01/2008
`
`C. Steven McDaniel
`
`5842—02001
`
`1750
`
`EXAMINER
`.
`C. Steven McDanIel —
`W1 —
`”90
`”598
`300 West Ave., Suite 1316
`RAGHU, GANAPATHIRAM
`Austin, TX 78701
`ART UNIT
`PAPER NUMBER
`
`1652
`
`MAIL DATE
`
`07/23/2013
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Applicant(s)
`Application No.
` 12/243,755 MCDANIEL ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`1652GANAPATHIRAMA RAGHU [SENS
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`Status
`
`1)IZI Responsive to communication(s) filed on 9 May 2011.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| 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 Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZI Claim(s) 1-182 184 186187189 and 190 is/are pending in the application.
`5a) Of the above claim(s) See Continuation Sheet is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s) See Continuation Sheet is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\WNI.LIsnto. ov/ atentS/init events/
`
`
`
`h/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I 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)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some * c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in 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) D Notice of References Cited (PTO-892)
`
`3) D Interview Summary (PTO-413)
`
`Paper N°ISI/Ma" Date' —
`PTO/SB/08
`t
`t
`St
`I
`D'
`1'
`r
`2 IZI I
`
`)
`4) I:I Other:
`Isc osure
`n orma Ion
`)
`a emen (s) (
`Paper No(s)/Mai| Date 11/04/10 02/14/12.
`
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 05-13)
`
`Part of Paper No./Mai| Date 20130718
`
`Office Action Summary
`
`
`
`Continuation Sheet (PTOL-326)
`
`Application No. 12/243,755
`
`Continuation of Disposition of Claims: Claims withdrawn from consideration are 4-34,36-64,69,74,76,83-93,96,99-104,109-
`112,116,117,124,125,131,140-142,144-154,157,159-168,170-172 and 174-182.
`
`Continuation of Disposition of Claims: Claims rejected are 1-3,35,65-68,70-73,75,77-82,94,95,97,98,105-108,113-115,118—123,126-
`130,132-139,143,155,156,158,169,173,184,186,187, 189 and 190.
`
`
`
`Application/Control Number: 12/243,755
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`Page 2
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`Art Unit: 1652
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`Application Status
`A request for continued examination under 37 CFR 1.114,
`
`including the
`
`fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection.
`
`Since this application is eligible for continued examination under 37 CFR 1.114,
`
`and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the
`
`previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's
`
`submission filed on 05/09/11 has been entered.
`
`In
`
`response to FINAL-Office Action mailed on 11/08/10, applicants’
`
`response dated 05/09/11 is acknowledged;
`
`in said response applicants’ have
`
`added a new claim 190.
`
`Thus, claims 1-182, 184, 186, 187, 189 and 190 are pending in this
`
`application, claims 4-34, 36-64, 69, 74, 76, 83-93, 96, 99-104, 109-112, 116, 117,
`
`124, 125, 131, 140-142, 144-154, 157, 159-168, 170-172, and 174-182 remain
`
`withdrawn, as said claims are directed to non-elected inventions; and claims E,
`
`35 65-68 70-73 75 77-82 94 95 97 98 105-108 113-115 118-123 126-130
`
`132-139 143 155 156 158 169 173 184 186 187 189 and 190 are now
`
`under consideration.
`
`Objections and rejections not reiterated from previous action are hereby
`
`withdrawn.
`
`Information Disclosure Statement
`
`The information disclosure statements (IDS) submitted on 11/04/10 and
`
`02/14/12 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the
`
`examiner has considered and initialed the IDS statement.
`
`
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`Application/Control Number: 12/243,755
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`Page 3
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`Art Unit: 1652
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`Acknowledgment
`
`Maintained-Priority
`is made of a claim for domestic priority under 35
`
`U.S.C. 119(e)
`
`to the US Provisional Application No.: 60/976,676 filed on
`
`10/01/2007 and 60/409,102 filed on 09/09/2002. Applicants’ claim for the benefit
`
`of a prior-filed application under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
`
`This application is a CIP of 10/655,345 filed on 09/04/2003. However, please
`
`note that the instant claims are only granted the priority date of the instant
`
`application filed on 10/01/2008, as the elected species “lysozyme” was only
`
`disclosed in US Provisional Application No.: 60/976,676 filed on 10/01/2007 and
`
`the limitation in the amended claim 1 “...wherein the antimicrobial peptide
`
`comprises a peptide seguence of SEQ ID NO: 40 has been disclosed for the first
`
`time in the instant application filed on 10/01/2008.
`
`Applicants’ have traversed the granting of priority date for the claims
`
`under examination with the following arguments (see pages 32-36 of
`
`Applicants’ REMARKS dated 05/09/11):
`
`Applicants provide evidence in the passages below that any errors in
`
`correct citation of text in the REMARKS of the response dated 10/28/10 arose
`
`without deceptive intent on part of Applicants. Applicants have attached a copy of
`
`the specification of US Patent Application No 10/655,345 (“US 10/655,354”) as
`
`Exhibit A for the convenience of the Examiner in referring to the citations made
`
`here... Applicants maintain that
`
`this assertion is
`
`factually based and not
`
`misleading, as this text does disclose lysozyme as an example of enzymes...
`
`That the specific sentence disclosing lysozyme does not recite “a coating” in it is
`
`
`
`Application/Control Number: 12/243,755
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`Page 4
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`Art Unit: 1652
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`immaterial in light of teachings of US 10/655,354 that explicitly disclose a coating
`
`with an enzyme, that “enzyme” encompasses any enzyme and that lysozyme is
`
`disclosed as an enzyme... In particular [0120] of USPGPUB 20040109853, found
`
`in US 10/655,354 at page 35, lines 7-11, states: “The selection of biomolecules...
`
`found in US 10/655,354 at page 35, line 20 to page 38, line 36 describe various
`
`enzymes...as these examples of enzymes genera and sub-genera specified by
`
`the disclosed EC Commission numbers encompass virtually all known enzyme
`
`species... Additionally evidenced herein, claims 1, 2, 8, 10, and 11 at page 262,
`
`lines 37, 24-25 and 31 -36 of US 10/655,354 filed on 09/04/2003 specify coatings
`
`with various enzymes...Applicants respectfully request that priority for at least
`
`“lysozyme” be corrected to at least the filing date of 09/04/2003 for US 10/655,
`
`354”.
`
`ELM Applicants’ arguments have been considered but are found to be
`
`non-persuasive for the following reasons: Applicants arguments are tangential
`
`and does not provide specifically any clear cut evidence regarding “A coating
`
`composition comprising lysozyme”. The cited sections by the applicants’ in US
`
`10/655,345 [sic “US 10/655,354”] with filing date of 09/04/2003 does not recite
`
`in proper context
`
`“A coating composition comprising lysozyme” and thus
`
`applicants’ have not provided any evidence regarding “A coating composition
`
`comprising lysozyme” and simply asserting “That the specific sentence disclosing
`
`lysozyme does not recite “a coating” in it is immaterial in light of teachings of US
`
`10/655,354 that explicitly disclose a coating with an enzyme,
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`that “enzyme”
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`encompasses any enzyme and that lysozyme is disclosed as an enzyme...” is
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`
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`Application/Control Number: 12/243,755
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`Page 5
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`Art Unit: 1652
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`not persuasive. Therefore, the scope of the subject matter as claimed was not
`
`contemplated in the specification as originally filed,
`
`i.e., in US 10/655,345 with
`
`filing date of 09/04/2003 (see Purdue Pharma L.P. v. Faulding Inc., 230 F .3d
`
`1320, 1326, 56 USPQ2d 1481, 1486 (Fed. Cir. 2000). The court noted that with
`
`respect to In Re Rusehing 379 F.2d 990, 154 USPQ 118 (CCPA 1967) that
`
`“Rusching makes clear
`
`that one cannot disclose a forest
`
`in
`
`the original
`
`application, and then later pick a tree out of the forest and say “here is my
`
`invention”. In order to satisfy the written description requirement, the blaze marks
`
`directing the skilled artisan to that tree must be in the originally filed disclosure.
`
`For the above cited reasons, please note that the instant claims are only
`
`granted the priority date of the instant application filed on 10/01/2008.
`
`Maintained-Double Parenting rejection
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
`harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is
`appropriate where the conflicting claims are not identical, but at least one examined application
`claim is not patentably distinct from the reference claim(s) because the examined application
`claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g.,
`In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re
`Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ
`619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d) may be
`used to overcome an actual or provisional rejection based on a nonstatutory double patenting
`ground provided the conflicting application or patent either is shown to be commonly owned with
`this application, or claims an invention made as a result of activities undertaken within the scope
`of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
`
`Claims 1-3 35 65-68 70-73 75 77-82 94 95 97 98 105-108 113-115
`
`118-123 126-130 132-139 143 155 156 158 169 173 184 186 187 189
`
`and 190, with the recited elected species are provisionally rejected under the
`
`
`
`Application/Control Number: 12/243,755
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`Page 6
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`Art Unit: 1652
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`judicially created doctrine of obviousness-type double patenting as being
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`unpatentable over claims 1-98 of McDaniel et al.,
`
`(US Application No.:
`
`12/696,651). An obviousness-type double patenting rejection is appropriate
`
`where the conflicting claims are not identical, but an examined application claims
`
`are not patentably distinct from the reference claims, because the examined
`
`claims are either anticipated by, or would have been obvious over reference
`
`claims. See, e.g., In re Berg, 140 F.3d 1428,46 USPQ2d 1226 (Fed. Cir. 1998);
`
`In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.1993); In re Longi 759
`
`F.2d 887,225 USPQ 645 (Fed. Cir. 1985). Although the conflicting claims are not
`
`
`identical, they are not patentably distinct from each other. Claims 1-3 35 65-68
`
`70-73 75 77-82 94 95 97 98 105-108 113-115 118-123 126-130 132-139
`
`
`
`
`
`
`
`
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`155143 the instant 156 158 169 173 184 186 187 189 and 190 of
`
`
`
`
`
`
`
`
`
`
`
`
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`application are directed to a coating composition comprising an active enzyme
`
`and an antimicrobial peptide, wherein the antimicrobial enzyme comprises a
`
`lysozyme and the antimicrobial peptide having the sequence of SEQ ID NO: 40.
`
`Claims 1-98 of McDaniel et al.,
`
`(US Application No.: 12/696,651) are also
`
`directed to a coating composition comprising an active enzyme and an
`
`antimicrobial peptide, wherein the antimicrobial enzyme comprises a lysozyme
`
`and the antimicrobial peptide having the sequence of SEQ ID NO: 40, said SEQ
`
`ID NO: 40 of the reference McDaniel et al., (US Application No.: 12/696,651) has
`
`100% sequence identity to SEQ ID NO: 40 of
`
`the instant application (see
`
`provided sequence alignment). The co-pending claims 1-98 of the reference
`
`application McDaniel
`
`et
`
`al.,
`
`(US Application No.: 12/696,651),
`
`therefore
`
`
`
`Application/Control Number: 12/243,755
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`Page 7
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`Art Unit: 1652
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`encompass coating compositions which overlaps with the genus of
`
`instant
`
`claims. This
`
`is a provisional obviousness-type double patenting rejections,
`
`because the conflicting claims have not in fact been patented.
`
`In support of their request for the above Double Patenting rejection
`
`be withdrawn, applicants’ provide the following arguments (see page 37 of
`
`Applicants’ REMARKS dated 05/09/11).
`
`“Applicants will file a terminal disclaimer to obviate the rejection upon
`
`receiving notice that some or all of the claims in the captioned application are
`
`allowed”.
`
`Reply: Applicants’ arguments have been considered but are found to be
`
`non-persuasive for
`
`the following reasons: None of
`
`the instant claims are
`
`allowable, therefore, the rejection is maintained.
`
`Maintained-Claim Rejections: 35 USC § 103
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for
`
`all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
`
`In considering patentability of the claims under 35 U.S.C.
`inventors.
`This application currently names joint
`103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time
`any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the
`obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly
`owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C.
`103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
`
`Claims 1-3 35 65-68 70-73 75 77-82 94 95 97 98 105-108 113-115
`
`118-123 126-130 132-139 143 155 156 158 169 173 184 186 187 189
`
`and 190, are rejected under 35 U.S.C.103(a) as being unpatentable over
`
`McDaniel et al., jProg. Org. Coatings, 2006, Vol. 55: 182-188), Bonaventura et
`
`
`
`Application/Control Number: 12/243,755
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`Page 8
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`Art Unit: 1652
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`al., (US Patent No.: 5,998,200 in IDS), Sherba et al., (US patent No.: 5,069,717,
`
`in IDS), Dalla Riva Toma, JM.,
`
`(US Patent No.: 6,054,504) and in view of
`
`Edwards D., (US patent No.: 6,020,312).
`
`Claims 1-3 35 65-68 70-73 75 77-82 94 95 97 98 105-108 113-115
`
`118-123 126-130 132-139 143 155 156 158 169 173 184 186 187 189
`
`and 190, are directed to any coating compositions or paints comprising: i) an
`
`active enzyme having enzymatic activities like lipase, lysozyme, libiase, esterase,
`
`
`h drolase...' ii an antimicrobial
`e tide com risin the se uence of SEQ ID NO:
`
`40 and iii
`
`said coatin
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`com osition or
`
`aint havin
`
`the recited functional
`
`limitations.
`
`McDaniel et al.,
`
`(supra) disclose active enzymes and other bioactive
`
`molecules
`
`sequestered in paints
`
`and coatings
`
`including
`
`lysozyme
`
`and
`
`antimicrobial peptides (Abstract, page 187, column 2, and first paragraph).
`
`Bonaventura et al., (supra) teach antifouling compositions and methods
`
`for preventing fouling that comprises affixing biologically active chemical to a
`
`surface intended for use (coating composition or paint), wherein the chemical is
`
`an enzyme, said enzyme is a lysozyme (Abstract, Table III) and preparation of
`
`said coating compositions by immobilization in polyurethane (column 19,
`
`Example V; claims, columns 36-38).
`
`Sherba et al.,
`
`(supra) also teach a synergistic antialgal compositions
`
`comprising small molecules that have antialgal activity and lysozyme enzyme
`
`(Abstract), said compositions in the form antifouling compositions and use of said
`
`
`
`Application/Control Number: 12/243,755
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`Page 9
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`Art Unit: 1652
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`compositions in construction products such as stucco, roof mastics, wall mastics
`
`and masonry coatings (column 4, lines 27-30).
`
`Dalla Riva Toma,
`
`JM.,
`
`(supra)
`
`clearly suggest various
`
`biostatic
`
`compositions comprising biostatic agents and methods for conjugating said
`
`biostatic agents to various functional groups of hydrophilic polymers, said
`
`functional group capable of
`
`reacting with and covalently bonding to an
`
`antimicrobial agent without effectively reducing antimicrobial property (Abstract);
`
`said hydrophilic polymer can be, but not
`
`limited to a polyurethane, a maleic
`
`anhydride, a polyol, a polyamine, an acrylate, an ethylene oxide or modified
`
`forms of said polymers (column 3, line 29-34) and suitable solvents (column 3,
`
`lines 45-50) and claims (columns 12-18).
`
`
`McDaniel et al. Bonaventura et al., Sherba et al., and Dalla Riva Toma,
`
`JM., are silent regarding said coating compositions comprising an antimicrobial
`
`peptide having the peptide sequence of SEQ ID NO: 40.
`
`Edwards D., (supra) disclose the isolation and structure of an antifungal
`
`peptide having 100% sequence homology to SEQ ID NO: 40 of the instant
`
`invention (see provided sequence alignment), said reference also teaches the
`
`use of said peptide in various compositions as an antimicrobial agent (Abstract)
`
`in the form of coating mixture comprising a noninterfering carrier and an effective
`
`quantity of
`
`the antimicrobial composition (columns 7 and 10), method for
`
`encapsulation of said antimicrobial peptide (columns 27-28).
`
`Hence, it would have been obvious to a person of ordinary skill in the art
`
`to combine the teachings in
`
`the cited references to generate a coating
`
`
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`Application/Control Number: 12/243,755
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`Page 10
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`Art Unit: 1652
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`compositions or paints comprising: i) polypeptides having enzymatic activities like
`
`lipase,
`
`lysozyme,
`
`libiase, esterase, hydrolase... and ii) antimicrobial peptide
`
`having antimicrobial activity against any microorganism and iii) said antimicrobial
`
`polypeptide comprising the sequence of SEQ ID NO: 40. Motivation to do so
`
`derives from the fact that coating compositions or paints comprising non-toxic
`
`antimicrobial/antifouling agents such as enzymes and antimicrobial peptides
`
`have wide use in various industrial applications. The expectation of success is
`
`high, because methods and design for producing coating compositions or paints
`
`comprising:
`
`i) polypeptides having enzymatic activities like lipase,
`
`lysozyme,
`
`libiase, esterase, hydrolase... and ii) antimicrobial peptide having antimicrobial
`
`
`activity against any microorganism were well known in the art (McDaniel et al.
`
`Bonaventura et al., Sherba et al., and Dalla Riva Toma, JM.,) and iii)
`
`the
`
`structure of the key antimicrobial peptide comprising the sequence of SEQ ID
`
`NO: 40 is also well known in the art (Edwards D.,).
`
`Given this extensive teaching in prior art Le, a coating compositions or
`
`paints comprising:
`
`i) polypeptides having enzymatic activities
`
`like
`
`lipase,
`
`lysozyme,
`
`libiase, esterase, hydrolase... and ii) antimicrobial peptide having
`
`antimicrobial activity against any microorganism and iii)
`
`said antimicrobial
`
`polypeptide comprising the sequence of SEQ ID NO: 40, as taught by the instant
`
`invention is not of innovation but of ordinary skill in the art and the expectation of
`
`success for a process for production of a coating compositions or paints
`
`comprising:
`
`i) polypeptides having enzymatic activities like lipase,
`
`lysozyme,
`
`libiase, esterase, hydrolase... and ii) antimicrobial peptide having antimicrobial
`
`
`
`Application/Control Number: 12/243,755
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`Page 11
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`Art Unit: 1652
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`activity against any microorganism and iii)
`
`said antimicrobial polypeptide
`
`comprising the sequence of SEQ ID NO: 40 and use of the same in various
`
`industrial applications as disclosed in the instant invention is extremely high Le,
`
`“a person of ordinary skill has good reason to pursue the known options within
`
`his or her technical grasp. If this leads to the anticipated success, it is likely that
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`product |was| not of innovation but of ordinary skill and common sense.
`
`In that
`
`instance the fact that a combination was obvious to try might show that it was
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`Obvious under § 103.”KSR, 550 U.S. at, 82 USPQZd at 1397”.
`
`
`Therefore, Claims1-3 35 65-68 70-73 75 77-82 94 95 97 98 105-
`
`108 113-115 118-123 126-130 132-139 143 155 156 158 169 173 184
`
`
`186
`187
`189 and 190, are rejected under 35 U.S.C.103(a) as being
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`unpatentable over McDaniel et al., (Prog. Org. Coatings, 2006, Vol. 55: 182-
`
`188), Bonaventura et al., (US Patent No.: 5,998,200 in IDS), Sherba et al., (US
`
`patent No.: 5,069,717, in IDS), Dalla Riva Toma, JM., (US Patent No.: 6,054,504)
`
`and in view of Edwards D., (US patent No.: 6,020,312).
`
`Applicants’ have traversed the above 103(a)
`
`rejection with the
`
`following arguments (see pages 37-43 of Applicants’ REMARKS dated
`
`05/09/11):
`
`Applicants’ argue (A) “...Applicants submit that, as described above in
`
`the remarks for the priority of the instant application, the instant application is a
`
`Continuation in Part of US Patent application 10/655,345 filed on 09/04/2003,
`
`which discloses coatings and paintings comprising enzyme(s) which includes
`
`lysozyme as it
`
`is a disclosed enzyme...McDaniel et al.,
`
`is removed from the
`
`
`
`Application/Control Number: 12/243,755
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`Page 12
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`Art Unit: 1652
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`rejection from the rejection’s “string of continuity” in combining teachings of
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`McDaniel et al., Bonaventura et al., Sherba et al., and Dalla Riva Toma, JM., in
`
`view of Edwards D...” (see page 39 of Applicants’ REMARKS dated 05/09/11).
`
`Reply (A): Applicants’ arguments have been considered but are found to
`
`be non-persuasive for the following reasons: Examiner continues to maintain that
`
`the reference of McDaniel et al.,
`
`
`is valid and provides Teaching, Suggestion
`
`and Motivation for preparing enzyme based additives for paints and coatings,
`
`and as a proof of principle have shown active enzymes and other active
`
`biomolecules sequestered in paints and coatings and have reported the design
`
`and characterization of biological additives for
`
`latex coatings which impart
`
`catalytic detoxification or biodefensive capabilities to surfaces (Abstract, page
`
`182 and entire document). As argued above by the examiner, applicants
`
`arguments are tangential and does not provide specifically any clear cut
`
`evidence regarding “A coatin
`
`com osition com risin
`
`l 502 me”. The cited
`
`sections by the applicants’ in US 10/655,345 [sic “US 10/655,354”] with filing date
`
`of 09/04/2003 does not recite in proper context
`
`“A coating composition
`
`comprising lysozyme
`
`and thus applicants’ have not provided any evidence
`
`regarding “A coating composition comprising lysozyme” and simply asserting
`
`“That the specific sentence disclosing lysozyme does not recite “a coating” in it is
`
`immaterial in light of teachings of US 10/655,354 that explicitly disclose a coating
`
`with an enzyme, that “enzyme” encompasses any enzyme and that lysozyme is
`
`disclosed as an enzyme...” is not persuasive. Therefore, the scope of the subject
`
`matter as claimed was not contemplated in the specification as originally filed,
`
`
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`Application/Control Number: 12/243,755
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`Page 13
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`Art Unit: 1652
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`Le, in US 10/655,345 with filing date of 09/04/2003 (see Purdue Pharma L.P.
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`v. Faulding Inc., 230 F .3d 1320, 1326, 56 USPQ2d 1481, 1486 (Fed. Cir. 2000).
`
`The court noted that with respect to In Re Rusching 379 F.2d 990, 154 USPQ
`
`118 (CCPA 1967) that “Rusching makes clear that one cannot disclose a forest
`
`in the original application, and then later pick a tree out of the forest and say
`
`“here is my invention”. In order to satisfy the written description requirement, the
`
`blaze marks directing the skilled artisan to that tree must be in the originally filed
`
`disclosure. For the above cited reasons, please note that the instant claims
`
`are only granted the priority date of
`
`the instant application filed on
`
`10/01/2008 and thus the reference of McDaniel et al.: is relevant/valid and
`
`the reiection is maintained.
`
`Applicants further argue (B):
`
`Applicants find Bonaventure et al.,
`
`does not teach, suggest, or provide any motivation for combining an antimicrobial
`
`peptide of interest of the present claims in any of its compositions. Applicants find
`
`that Sherba et al. does not
`
`teach, suggest or provide any motivation for
`
`combining an antimicrobial peptide... Applicants find that Dalla Riva Toma JM.
`
`does not teach, suggest or provide any motivation for combining an antimicrobial
`
`peptide of the present claims...” (see page 40 of Applicants’ REMARKS dated
`
`05/09/11).
`
`Reply (B): Applicants’ arguments have been considered but are found to
`
`be non-persuasive for the following reasons: Contrary to applicants’ arguments,
`
`examiner continues to hold the following position: Eaxminer has provided
`
`references that provide a “string of continuity”,
`
`i.e.,
`
`i) McDaniel et al., provides
`
`
`
`Application/Control Number: 12/243,755
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`Page 14
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`Art Unit: 1652
`
`Teaching, Suggestion and Motivation for preparing enzyme based additives
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`for paints and coatings, and as a proof of principle have shown active enzymes
`
`and other active biomolecules sequestered in paints and coatings and have
`
`reported the design and characterization of biological additives for latex coatings
`
`which impart catalytic detoxification or biodefensive capabilities to surfaces; ii)
`
`Bonaventura et al., (supra) teach antifouling compositions and methods for
`
`preventing fouling that comprises affixing biologically active chemical to a surface
`
`intended for use (coating composition or paint), wherein the chemical is an
`
`enzyme, said enzyme is a lysozyme (Abstract, Table III) and preparation of
`
`said coating compositions by immobilization in polyurethane (column 19,
`
`Example V; claims, columns 36-38);
`
`iii) Sherba et al.,
`
`(supra) also teach a
`
`synergistic antialgal compositions comprising small molecules that have
`
`antialgal activity and lysozyme enzyme (Abstract), said compositions in the
`
`form antifouling compositions and use of said compositions in construction
`
`products such as stucco,
`
`roof mastics, wall mastics and masonry coatings
`
`(column 4, lines 27-30), iv) Dalla Riva Toma, JM., (supra) clearly suggest various
`
`biostatic compositions comprising biostatic agents and methods for conjugating
`
`said biostatic agents to various functional groups of hydrophilic polymers, said
`
`functional group capable of
`
`reacting with and covalently bonding to an
`
`antimicrobial agent without effectively reducing antimicrobial property (Abstract);
`
`said hydrophilic polymer can be, but not limited to a polyurethane, a maleic
`
`anhydride, a polyol, a polyamine, an acrylate, an ethylene oxide or modified
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`forms of said polymers (column 3, line 29-34) and suitable solvents (column
`
`
`
`Application/Control Number: 12/243,755
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`Page 15
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`Art Unit: 1652
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`3, lines 45-50) and claims (columns 12-18) and v) Edwards D., (supra) disclose
`
`the isolation and structure of an antifungal peptide having 100% sequence
`
`homology to SEQ ID NO: 40 of the instant invention (see provided sequence
`
`alignment), said reference also teaches the use of said peptide in various
`
`compositions as an antimicrobial agent (Abstract) in the form of coating mixture
`
`comprising a noninterfering carrier and an effective quantity of the antimicrobial
`
`composition (columns 7 and 10), column 8 teaches various versions of
`
`compositions comprising said antimicrobial peptide in the form of creams,
`
`ointments,
`
`sprays,
`
`fogs, mists, powders
`
`i.e.,
`
`said antimicrobial peptide
`
`incorporated into various preparations comprising various solvents, said peptide
`
`is stable and active and therefore examiner considers Edwards D., as analogous
`
`art; method for encapsulation of said antimicrobial peptide, especially methods
`
`for stabilizing the peptide, encapsulation of peptides in microspheres (columns
`
`25-28; Example Xlll, Example XV) and a skilled artisan would recognize that said
`
`antimicrobial peptide will be amenable to be incorporated into paints and
`
`coatings.
`
`Therefore, examiner continues to hold the cited combination of references
`
`indeed render the instant invention prima facie obvious and thus;
`
`i) Applicants’ arguments are directed 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 Mere/<61 00., 800 F.2d 1091, 231 USPQ
`
`375 (Fed. Cir. 1986).
`
`
`
`Application/Control Number: 12/243,755
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`Page 16
`
`Art Unit: 1652
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`ii) Moreover, the objectives of the cited references need not be the same
`
`as the instant invention to be used in an Obviousness rejection. So long as the
`
`motivation or suggestion to combine the teaching of the cited references is
`
`known or disclosed in the prior art and is obvious to one skilled in the art. This is
`
`sufficient to establish a prima facie case of obviousness.
`
`Applicants further argue (C):
`
`The applicability of peptides taught by
`
`Edwards D is only limited to materials for use on plants and animal, and
`
`moreover,
`
`this applicability is further limited to particular types of carriers, as
`
`evidenced by Edwards D. teaching away from other carrier materials that may
`
`interfere with peptide, as described in column 7 of Edwards D., shown below:...”
`
`(see pages 40-41 of Applicants’ REMARKS dated 05/09/11).
`
`Reply (C): Applicants’ arguments have been considered but are found to
`
`be non-persuasive for the following reasons: Applicants’ are very selective in
`
`citing certain sections of Edwards D., reference i.e., “as described in column 7 of
`
`Edwards D., shown below:...”. However, Edwards D., has clearly envisaged the
`
`use of said ant-microbial peptides in various preparations and applicants’ are
`
`direct