`
`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.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`12/243,755
`
`10/01/2008
`
`C. Steven McDaniel
`
`5842—02001
`
`1750
`
`7590
`””009
`CStevenMcDaniel —
`c/0 Daffer McDaniel, LLP
`SWOPE, SHERIDAN
`130' BOX 684908
`ART UNIT
`PAPER NUMBER
`Austin, TX 78768-4908
`652
`
`—1
`
`MAIL DATE
`
`09/ 10/2009
`
`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)
`
`12/243,755
`
`MCDANIEL ET AL.
`
`Office Action Summary
`
`Examiner
`
`SHERIDAN SWOPE
`
`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 1 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 01 October 2008.
`
`2a)I:I This action is FINAL.
`
`2b)IZI 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
`
`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)IZI Claim(s) 1-187 is/are pending in the application.
`
`4a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`5)I:I Claim(s) _ is/are allowed.
`
`6)I:I Claim(s) _ is/are rejected.
`
`7)I:I Claim(s) _ is/are objected to.
`
`8)IXI Claim(s) M 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.
`
`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
`
`b)I:I Some * c)I:I None of:
`
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No.
`
`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.
`
`Attach ment(s)
`
`1) D Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date
`.
`U.S. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _
`5) I:I Notice of Informal Patent Application
`6) D Other:
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20090904
`
`

`

`Application/Control Number: 12/243,755
`
`Page 2
`
`Art Unit: 1652
`
`Claims 1-187 are pending.
`
`DETAILED ACTION
`
`Election/Restrictions
`
`Restriction to one of the following inventions is required under 35 USC. 121:
`
`I.
`
`Claims 2-182, 184, 186, and 187, drawn to a coating or composition comprising an
`
`enzyme, classified in class 106, subclass 15.05.
`
`II.
`
`Claim 183, drawn to a method for inhibiting microbial growth on a surface using a
`
`coating comprising an enzyme, classified in class 510, subclass 392.
`
`III.
`
`Claim 185, drawn to an article of manufacture having enzyme activity, classified in
`
`class 435, subclass 183.
`
`Claim 1 is a generic claim linking the sub-inventions of Claims 2-182.
`
`It is noted that Claim 187 is recited as dependent from Claim 271. However, there is not a
`
`Claim 271. It is assumed that Claim 187 is meant to be dependent from Claim 186.
`
`For each of Inventions I-III above, restriction to one of the following is also required under
`
`35 USC 121. Therefore, election is required of one of Inventions I-III fl one or more of the sub-
`
`Inventions, as indicated below.
`
`
`If Invention I is elected elect one of:
`
`One specific type of coating or composition encompassed by Claims 1-182
`If clear coating is elected, elect one of: lacquer, varnish, shellac, stain water
`repellent, or one specific combination thereof (84)
`If architectural coating is elected, elect one of: wood, masonry, artist’s, plastic, or
`metal coating or one specific combination thereof.
`°Elect one of: (i) the coating does not comprise an immobilization carrier or (ii) the coating
`does comprise an immobilization carrier. (67)
`If (ii) is elected, elect one specific immobilization carrier.
`-Elect one of: (i) water-based, (ii) solvent based, or (iii) powder based (113/175)
`If (ii) is elected, elect one specific type of solvent encompassed by Claims 1-182
`
`

`

`Application/Control Number: 12/243,755
`
`Page 3
`
`Art Unit: 1652
`
`°Elect one of: the coating comprises one of a binder, liquid, colorant, additive, or one
`specific combination thereof.
`If binder is elected, elect one of: thermoplastic, thermosetting, or both (121).
`If additive is elected, elect one specific additive, or one specific combination of
`additives encompassed by Claims 1-182. (134)
`°Elect one of: (i) does not comprise a preservative or (ii) comprises a preservative (135)
`If (ii) is elected, elect one specific preservative (structure) or one specific
`combination of preservatives (structures) encompassed by Claims 1-182.
`°Elect one of: (i) single coat system or (ii) multicoat system (85)
`If (ii) is elected, elect one of (a) one layer comprises the enzyme (b) more than one
`layer comprises the enzyme. (87)
`If (ii) is elected, elect one of sealer, water repellent, primer, undercoat, topcoat, or
`one specific combination thereof. (91)
`°Elect one of: (i) layers comprise different enzymes or (ii) layers do not comprise different
`enzymes. (89)
`°Elect one of: (i) no film formation or (ii) film formation. (94)
`If (ii) is elected, elect one of (i) film formation not by baking or (ii) film formation
`by baking. (96)
`If (ii) is elected, elect one of (i) film formation not by cross-linking or (ii) film
`formation by cross-linking. (99)
`If (ii) is elected, elect one of (i) film formation not by irradiation or (ii) film
`formation by irradiation. (101)
`If (ii) is elected, elect one of (i) not self-cleaning film or (ii) self-cleaning film (102)
`If (ii) is elected, elect one of (i) not temporary film or (ii) is not temporary film (103)
`°Elect one of: (i) single pack or (ii) multipack. (140)
`°Elect one of: (i) no pH indicator or (ii) with pH indicator. (145)
`°Elect one of: (i) not chemical agent resistant or (ii) is chemical agent resistant. (166)
`
`
`If Invention I is elected also elect one of:
`
`°Elect one of: (i) one specific enzyme, mediating one specific enzymatic reaction, or (ii) one
`specific combination of enzymes, mediating specific enzymatic reactions, encompassed by Claims
`1-182
`
`One specific organism, from which the enzyme(s) is derived, encompassed by Claims 1-
`
`l 82
`
`°Elect one of: (i) mesophilic, (ii) thermophilic, or (iii) psychrophilic enzyme.
`°Elect one of: (i) halophilic or (ii) not halophilic enzyme.
`°Elect one of: (i) the coating does not comprise a stimulator of enzyme activity or (ii) the
`coating comprises a stimulator of enzyme activity. (66)
`If (ii) is elected, elect (a) one specific enzyme (specific reaction) and (b)one specific
`inhibitor (structure).
`°Elect one of: (i) the enzyme is unpurified or (ii) the enzyme is purified.
`°Elect one of: (i) the enzyme does not comprise a cell-based particulate matter or (ii) the
`enzyme does comprise a cell-based particulate matter.
`
`

`

`Application/Control Number: 12/243,755
`
`Page 4
`
`Art Unit: 1652
`
`°Elect one of: (i) the enzyme is not prepared in a material that is attenuated or (ii) the
`enzyme is prepared in a material that is attenuated. (74)
`°Elect one of: (i) the enzyme is not prepared in a material that is sterilized or (ii) the enzyme
`is prepared in a material that is sterilized. (75)
`°Elect one of: (i) the enzyme does not comprise a particulate matter or (ii) the enzyme does
`comprise a particulate matter. (78)
`°Elect one of: (i) the enzyme is not microencapsulated or (ii) the enzyme is
`microencapsulated. (144)
`
`
`If Invention II is elected elect one of:
`
`° Elect one specific type of coating encompassed by Claim 183.
`° Elect one specific enzyme (specific reaction) or one specific combination of enzymes
`encompassed by Claim 183.
`
`
`If Invention III is elected elect one of:
`
`Elect one specific article of manufacture encompassed by Claim 185.
`Elect one specific enzyme (specific reaction) or one specific combination of enzymes
`encompassed by Claim 185.
`
`Inventions are distinct if it can be shown that they are not disclosed as capable of use
`
`together and they have different modes of operation, different filnctions, or different effects (MPEP
`
`§ 806.04, MPEP § 808.01). Also, product and process inventions are distinct if any of the following
`
`can be shown: (1) that the process as claimed can be used to make another and materially different
`
`product, (2) that the product claimed can be used in a materially different process of using that
`
`product, or (3) that the product claimed can be made by another and materially different process
`
`(MPEP § 806.05(h)). These inventions are different or distinct for the following reasons.
`
`The method of Invention II is related to the product of Invention I as a product and process
`
`of using. The inventions are distinct because the product can also be used for painting lines in the
`
`street, ie, making traffic markers.
`
`Inventions I and III are distinct because the products of Inventions I and III are physically
`
`and filnctionally distinct chemical entities.
`
`

`

`Application/Control Number: 12/243,755
`
`Page 5
`
`Art Unit: 1652
`
`Restriction for examination purposes as indicated is proper because all these inventions
`
`listed in this action are independent or distinct for the reasons given above fll there would be a
`
`serious search and examination burden if restriction were not required because one or more of the
`
`following reasons apply:
`
`(a) the inventions have acquired a separate status in the art in view of their different
`
`classification;
`
`(b) the inventions have acquired a separate status in the art due to their recognized divergent
`
`subject matter;
`
`(c) the inventions require a different field of search (for example, searching different
`
`classes/subclasses or electronic resources, or employing different search queries);
`
`(d) the prior art applicable to one invention would not likely be applicable to another
`
`invention;
`
`(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or
`
`35 U.S.C. 112, first paragraph.
`
`Applicant is advised that the reply to this requirement to be complete M include (i) an
`
`election of an invention and sub-invention(s) to be examined even though the requirement may be
`
`traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a right to
`
`petition, the election must be made with traverse. If the reply does not distinctly and specifically
`
`point out supposed errors in the restriction requirement, the election shall be treated as an election
`
`without traverse. Traversal must be presented at the time of election in order to be considered
`
`timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37
`
`

`

`Application/Control Number: 12/243,755
`
`Page 6
`
`Art Unit: 1652
`
`CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are
`
`readable on the elected invention.
`
`Should Applicants traverse on the ground that the inventions are not patentably distinct,
`
`Applicants should submit evidence or identify such evidence now of record showing the inventions
`
`to be obvious variants or clearly admit on the record that this is the case. In either instance, if the
`
`examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may
`
`be used in a rejection under 35 U.S.C. 103(a) of the other invention.
`
`These inventions are distinct for the reasons given above and have acquired a separate status
`
`in the art due to their recognized divergent subject matter. Furthermore, as explained above,
`
`searching more than one invention would be a burden on the Office. Therefore, restriction for
`
`examination purposes, as indicated, is proper. If Applicants should traverse the instant restriction
`
`based on an argument that the inventions or sub-inventions are not distinct, they should provide
`
`evidence as to why the skilled artisan would find any restricted inventions or sub-inventions
`
`obvious over their elected invention and sub-invention.
`
`Restriction between product and process claims has been required. Where Applicant elects
`
`claims directed to a product, and the product claim is subsequently found allowable, withdrawn
`
`process claims that depend from or otherwise include all the limitations of the allowable product
`
`claim will be rejoined in accordance with the Official Gazette notice dated March 26, 1996 (1184
`
`CG. 86; see also M.P.E.P. 821.04, In re Ochiai, and In re Brouwer). Process claims that depend
`
`from or otherwise include all the limitations of the patentable product will be entered as a matter of
`
`right, if the amendment is presented prior to final rejection or allowance, whichever is earlier.
`
`Withdrawn process claims that are not commensurate in scope with an allowed product claim will
`
`

`

`Application/Control Number: 12/243,755
`
`Page 7
`
`Art Unit: 1652
`
`not be rejoined. To be allowable, the rejoined claims must meet all criteria for patentability
`
`including the requirements of 35 U.S.C. 101, 102, 103, and 112.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
`
`inventorship must be amended in compliance with 37 CFR l.48(b) if one or more of the currently
`
`named inventors is no longer an inventor of at least one claim remaining in the application. Any
`
`amendment of inventorship must be accompanied by a request under 37 CFR l.48(b) and by the fee
`
`required under 37 CFR l.l7(i).
`
`To insure that each document is properly filed in the electronic file wrapper, it is requested
`
`that each of amendments to the specification, amendments to the claims, Applicants’ remarks,
`
`requests for extension of time, and any other distinct papers be submitted on separate pages. It is
`
`also requested that Applicants put the serial number on every page of their response.
`
`It is also requested that Applicants identify support, within the original application, for any
`
`amendments to the claims and specification.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Sheridan L. Swope whose telephone number is 571-272-0943. The examiner
`
`can normally be reached on M-F; 9:30-7 EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Andrew Wang, can be reached on 571-272-0811. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published application
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`

`

`Application/Control Number: 12/243,755
`
`Page 8
`
`Art Unit: 1652
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`applications is available through Private PAIR only. For more information about the PAIR system,
`
`
`see htt
`:/,/' air—directus to. 70v. Should you have questions on the access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`/SHERIDAN SWOPE/
`
`Primary Examiner, Art Unit 1652
`
`

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