`
`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
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
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`
`
`
`
` F ING DATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
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`12/243,755
`
`10/01/2008
`
`C. Steven McDaniel
`
`5842—02001
`
`1750
`
`”90
`”OW
`CStevenMcDaniel —
`c/0 Daffer McDaniel, LLP
`RAGHU, GANAPATHIRAM
`130' BOX 684908
`ART UNIT
`PAPER NUMBER
`Austin, TX 78768-4908
`652
`
`—1
`
`MAIL DATE
`
`11/08/2010
`
`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)
`
`
`
`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`12/243,755
`
`MCDANIEL ET AL.
`
`Examiner
`
`GANAPATHIRAMA RAGHU
`
`Art Unit
`
`1652 -
`
`-- 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 (6) 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)IXI Responsive to communication(s) filed on 28 October 2010.
`
`2a)IZI This action is FINAL.
`
`2b)I:I This action is non-final.
`
`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`
`4)IZI Claim(s) 1-182 184 186 187 and 189 is/are pending in the application.
`
`4a) Of the above Claim(s) See Continuation Sheet is/are withdrawn from consideration.
`
`5)I:I Claim(s) _ is/are allowed.
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`6)IXI Claim(s) 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
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`155 156 158 169 173 184 186 187 and 189 is/are rejected.
`
`7)IXI Claim(s) 2 and 189 is/are objected to.
`
`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`
`10)I:I 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).
`
`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)I:I All
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`b)I:I Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No.
`
`
`
`3.I:I 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)
`
`4) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5) I:I Notice of Informal Patent Application
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`
`6) D Other: _ U.S. Patent and Trademark OfficePaper No(s)/Mai| Date _.
`PTOL-326 (Rev. 08-06)
`Office Action Summary
`Part of Paper No./Mai| Date 20101103
`
`
`
`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.
`
`
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`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
`In response to the Office Action mailed on 04/28/10, Applicants’ response filed
`
`on 10/28/10 is acknowledged;
`
`in said response Applicants’ have amended claims 1,
`
`109, 155-182, 184, and 186 and canceled claim 188. Furthermore, Applicants’ in said
`
`response have indicated claim 190 is added herein, however examiner would like to
`
`point out that there is no claim numbered 190 and the only added new claim has been
`
`assigned number 189. Claims 1-182, 184, 186, 187 and 189 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 are withdrawn, as
`
`said claims are directed to non-elected inventions and 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 and 189 are now under consideration.
`
`Objections and rejections not
`
`reiterated from previous action are hereby
`
`withdrawn.
`
`Acknowledgment is made of a claim for domestic priority under 35 U.S.C. 119(e)
`
`Priority
`
`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 10/01/2008l as the elected
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`species “lysozyme” was only disclosed in US Provisional Application No.: 60/976,676
`
`
`
`Application/Control Number: 12/243,755
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`Page 3
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`Art Unit: 1652
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`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: “...However, the instant application is CIP
`
`of US Patent Application 10/655,345 filed on 09/04/2003, which discloses the enzyme,
`
`lysozyme, at paragraph [0273]. That
`
`the composition of the claims comprises an
`
`enzyme is disclosed throughout the specification of US Patent Application 10/665,345,
`
`such as paragraphs [0120] and [0127] to [0132]. Applicants’ respectfully request that
`
`priority for “lysozyme” be corrected to at least the filing date of 09/04/2003 for US Patent
`
`Application 10/655,345 (see page 33 of Applicants’ REMARKS dated 10/28/10).
`
`ELM Applicants’ arguments have been considered but are found to be non-
`
`persuasive for the following reasons: At the outset for the record examiner would like to
`
`state that
`
`the original
`
`specification of US Patent Application10/655,345 filed on
`
`09/04/2003 does n_ot have any paragraph notations, therefore Applicants’ are advised in
`
`their response to cite the page number(s) and line number(s) where the asserted
`
`support
`
`can
`
`be
`
`found
`
`in
`
`the
`
`original
`
`original
`
`specification
`
`of US Patent
`
`Application10/655,345 filed on 09/04/2003. However, examiner was able to find the
`
`asserted paragraphs [0273], [0120] and [0127] to [0132] in USPGPUB 20040109853
`
`(publication of US Patent Application10/655,345). Perusal of [0273], [0120] and [0127]
`
`to [0132]
`
`in USPGPUB 20040109853 failed to show any support for Applicants’
`
`assertion of support in said paragraphs. Paragraph [0273] is drawn to a method of cell
`
`
`
`Application/Control Number: 12/243,755
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`Page 4
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`Art Unit: 1652
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`lysis using lysozyme in host cells expressing the polypeptide of interest and does not
`
`recite “A coating composition comprising lysozyme”. Paragraph [0120] is drawn coating
`
`compositions comprising generic enzymes and not to “lysozyme”; paragraph [0127] is
`
`drawn to coating compositions comprising “oxidoreductase” and not to “lysozyme”; and
`
`paragraph [0132]
`
`is drawn to coating compositions comprising “ligase” and not to
`
`“lysozyme”. Therefore, examiner takes the position that
`
`the sections/paragraphs,
`
`Applicants’ are referring to in
`
`their REMARKS dated 10/28/10 is
`
`incorrect and
`
`misleading. 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.
`
`Withdrawn-Claim Rejections: 35 USC § 112-First Paragraph
`Previous rejection of 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 and
`
`186-187 with the recited elected species, rejected under 35 U.S.C. 112, first paragraph,
`
`as failing to comply with the written description and enablement requirement, is being
`
`withdrawn due to claim amendments and persuasive arguments.
`
`Withdrawn-Claim Rejections 35 USC § 102
`Previous rejection of 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 and
`
`186-187 are rejected under 35 U.S.C. 102(b) as being anticipated by McDaniel et al.,
`
`(Prog. Org. Coatings., 2006, Vol. 55: 182-188),
`
`is being withdrawn due to claim
`
`amendments.
`
`Withdrawn-Claim Rejections 35 USC § 103
`
`
`
`Application/Control Number: 12/243,755
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`Page 5
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`Art Unit: 1652
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`Previous rejection of 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 and
`
`186-188 are rejected under 35 U.S.C. 103(a) as being unpatentable over 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) is being withdrawn due to claim amendments.
`
`Claim Objections
`Claims 2 and 189 is objected to, due to the following informality: Claims 2 and
`
`189 recite non-elected subject-matter. Appropriate correction is required.
`
`Maintained-Double Patenting 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 USPQZd 1226
`(Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQZd 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 and 189, with the
`
`recited elected species are provisionally rejected under the judicially created doctrine of
`
`obviousness-type double patenting as being unpatentable over claims 1-98 of McDaniel
`
`et al., (US Application No.: 12/696,651). An obviousness-type double patenting rejection
`
`
`
`Application/Control Number: 12/243,755
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`Page 6
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`Art Unit: 1652
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`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
`
`98 105-108 113-115 118-123 126-130 132-139 143 155 156 158 169 173 184
`
`186, 187 and 189 of the instant 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 encompass coating compositions which
`
`overlaps with the genus of instant claims. This is a provisional obviousness-type double
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`patenting rejections, because the conflicting claims have not in fact been patented.
`
`
`
`Application/Control Number: 12/243,755
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`Page 7
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`Art Unit: 1652
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`Applicants’ have traversed the above rejection with the following
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`arguments (see page 34 of Applicants’ REMARKS dated 10/28/10).
`
`“Applicants respectfully note the provisional
`
`rejection and will
`
`file a terminal
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`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.
`
`New-Claim Rejections: 35 USC § 103
`A Iicants’ amendments to claims have necessitated recastin
`
`the 103a
`
`obviousness rejection:
`
`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. 103(a), the
`This application currently names joint inventors.
`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 and 189, are
`
`rejected under 35 U.S.C. 103(a) as being unpatentable over McDaniel et al.I jProg. Org.
`
`Coatings, 2006, Vol. 55: 182-1881, Bonaventura et al., (US Patent No.: 5,998,200 in
`
`
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`Application/Control Number: 12/243,755
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`Page 8
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`Art Unit: 1652
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`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 and 189, are
`
`directed to any coating compositions or paints comprising: i) an active enzyme having
`
`
`enz matic activities
`like
`li ase
`Isoz me
`libiase
`esterase
`h drolase...'
`ii
`an
`
`
`antimicrobial
`e tide com risin
`the se uence of SEQ ID NO: 40 and iii said coatin
`
`composition or paint having 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 compositions in
`
`construction products such as stucco, roof mastics, wall mastics and masonry coatings
`
`(column 4, lines 27-30).
`
`
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`Application/Control Number: 12/243,755
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`Page 9
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`Art Unit: 1652
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`Dalla Riva Toma, JM., (supra) clearly suggest various biostatic compositions
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`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
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`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 compositions or
`
`paints comprising:
`
`i) polypeptides having enzymatic activities like lipase,
`
`lysozyme,
`
`libiase, esterase, hydrolase... and ii) antimicrobial peptide having antimicrobial activity
`
`
`
`Application/Control Number: 12/243,755
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`Page 10
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`Art Unit: 1652
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`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
`
`a_l., 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 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
`
`
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`Application/Control Number: 12/243,755
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`Page 11
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`Art Unit: 1652
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`ordinary skill has good reason to pursue the known options within his or her technical
`
`ras .
`
`If this leads to the antici ated success it
`
`is likel
`
`that
`
`roduct was not of
`
`innovation but of ordinary skill and common sense.
`
`In that instance the fact that a
`
`combination was obvious to tr mi ht show that it was 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 and 189,
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over McDaniel et al., (Prog.
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`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 this rejection with the following arguments, said
`
`arguments are relevant
`
`for new rejection (see pages 55-61 of Applicants’
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`REMARKS dated 10/28/10):
`
`(A) “...One skilled in the art would not consider a coating composition comprising
`
`an antimicrobial peptide comprising a peptide sequence of SEQ ID NO: 40...as per the
`
`amended claim 1... Edwards fails to teach or suggest incorporating such a sequence
`
`into a coating composition. A coating composition-the noun and not the gerund, as the
`
`gerund form describing application of a material is often used in Edwards...|t is noted
`
`that Examiner’s broad interpretation of the term “coating composition” to read on any
`
`liquid compositions is erroneous...Edwards is directed to only specific suitable carriers
`
`
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`Application/Control Number: 12/243,755
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`Page 12
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`Art Unit: 1652
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`and is not a coating composition as would be understood in the art...” (see pages 55-57
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`of Applicants’ REMARKS dated 10/28/10).
`
`Reply (A): Applicants’ arguments have been considered but are found to be non-
`
`persuasive for the following reasons: Examiner has recast
`
`the rejection and the
`
`reference of McDaniel et al., 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 such, the disclosure of McDaniel
`
`
`et al., and the disclosure of an antimicrobial peptide by Edwards et al.,
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`said
`
`antimicrobial peptide having 100% sequence homology to the antimicrobial peptide of
`
`the instant invention would certainly motivate a skilled artisan to combine the teachings
`
`and therefore renders the instant invention obvious i.e., any coating compositions or
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`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 com osition or
`aint havin
`the recited functional
`
`limitations.
`
`Furthermore, Applicants’ arguments
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`“Edwards
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`fails
`
`to teach or
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`suggest
`
`incorporating such a sequence into a coating composition. A coating composition-the
`
`noun and not the gerund, as the gerund form describing application of a material
`
`is
`
`often used in Edwards...lt is noted that Examiner’s broad interpretation of the term
`
`
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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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`“coating composition” to read on any liquid compositions is erroneous” is considered to
`
`be an exercise in linguistic semantics rather than scientific reasoning for the following
`
`reasons: a disclosure may be express, implicit or inherent. This line of argument
`
`is supported by the sections of the MPEP. 2144 [R-6] Supporting a Rejection
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`Under 35 U.S.C. 103.
`
`I. >< RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM
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`COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART-
`
`RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT
`
`The rationale to modify or combine the prior art does not have to be expressly
`stated in the prior art; the rationale may be expressly or impliedly contained in the prior
`art or it may be reasoned from knowledge generally available to one of ordinary skill
`in
`the art, established scientific principles, or legal precedent established by prior case
`law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d
`347, 21 USPQ2d 1941 (Fed. Cir. 1992). See also In re Kotzab, 217 F.3d 1365, 1370, 55
`USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re
`EliLi/ly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance
`on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed.
`Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte
`Clapp, 227 USPQ 972 (Bd. Pat. App. & lnter. 1985) (examiner must present convincing
`line of reasoning supporting reiection); and Ex parte Levengood, 28USPQ2d 1300 (Bd.
`Pat. App. & lnter. 1993) (reliance on logic and sound scientific reasoning).
`
`ll. >< THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST
`
`RATIONALE FOR COMBINING REFERENCES
`
`The strongest rationale for combining references is a recognition, expressly or
`impliedly in the prior art or drawn from a convincing line of reasoning based on
`established have been produced by their combination.
`In re Sernaker, 702 F.2d 989,
`994-95, scientific principles or legal precedent,
`that some advantage or expected
`beneficial result would 217USPQ 1, 5-6 (Fed. Cir. 1983). >See also Dystar Textilfarben
`GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641,
`
`1651(Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to
`combine exists not only when a suggestion may be gleaned from the prior art as a
`whole, but when the improvement’ is technology-independent and the combination of
`references results in a product or process that is more desirable, for example because it
`is stronger, cheaper, cleaner, faster,
`lighter, smaller, more durable, or more efficient.
`Because the desire to enhance commercial opportunities by improving a product or
`process is universal-and even common-sensical-we have held that there exists in these
`
`
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`Application/Control Number: 12/243,755
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`Page 14
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`Art Unit: 1652
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`situations a motivation to combine prior art references even absent any hint of
`suggestion in the references themselves.”).
`
`Applicants further argue (B): “...Bonaventura et a|., Sherba et a|., and Dalla
`
`Riva Toma et a|., do not provide a skilled artisan any motivation to combine their
`
`compositions with the peptide of Edwards, nor does any of these references alone or in
`
`combination with the teachings of Edwards, provides reasonable expectation of
`
`success....” (see pages 58-58 of Applicants’ REMARKS dated 10/28/10).
`
`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:
`
`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 Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
`
`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.
`
`Eaxminer has provided references that provide a “string of continuity”,
`
`i.e.,
`
`i)
`
`McDaniel et a|., 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
`
`
`
`Application/Control Number: 12/243,755
`
`Page 15
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`Art Unit: 1652
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`have reported the design and characterization of biological additives for latex coatings
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`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 forms of said
`
`polymers (column 3,
`
`line 29-34) and suitable solvents (column 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
`
`
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`Application/Control Number: 12/243,755
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`Page 16
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`Art Unit: 1652
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`use of said peptide in various compositions as an antimicrobial agent (Abstract) in the
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`form of coating mixture comprising a noninterfering carrier and an effective quantity of
`
`the antimicrobial composition (columns 7 and 10), method for encapsulation of sai