DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
The claim set submitted on 18 FEBRUARY 2026 is acknowledged and considered. In the claim set, Claims 1, 2, 4, 6-9 and 13-20 are ‘Original’ or ‘Previously Presented’.
Current pending claims are Claims 1, 2, 4, 6-9 and 13-20.
Response to Arguments
Applicant's arguments filed 18 FEBRUARY 2026 have been fully considered but they are not persuasive.
In the REMARKS filed on 18 FEBRUARY 2026, Applicant asserts that the functional language “apparatus is adapted to produce …” adds a patentably distinct claim limitation distinguishing the present application from Lee.
However, the claim language presented in the claim set filed on 18 FEBRUARY 2026 does in fact not use the phrase ‘adapted to’. The ‘wherein’ in the last paragraph of Claim 1 is directed towards how the device work or how it is intended to be used. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Furthermore, claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) .
It is observed by the Examiner that the REMARKS filed on 18 FEBRUARY 2026 , pages 6 of 8 to 7 of 8 is the exact same arguments/assertions as the REMARKS filed on 29 JULY 2025, pages 5 of 8 to 7 of 8.
The argument presented on 18 FEBARUARY 2026 do not bring up any new arguments and reference amendments which are not presented in the claims on 18 FEBRUARY 2026 but rather the previous set.
Since the arguments in response to the 102 rejection was previous presented and replied to in the Non- Office Action on 18 AUGUST 2025, the response on 18 FEBRUARY 2026 is basically non-responsive.
The ‘Response to Amendment/Response to Arguments’ is copy/pasted here below.
In addition, since no amendment to the claims were presented, the rejection from 18 AUGUST 2025 is also copy/pasted below.
Applicant’s arguments, see REMARKS, filed 29 JULY 2025, with respect to the 112(a) rejection have been fully considered and are persuasive. The 112(a) rejection has been withdrawn.
Applicant's arguments filed 29 JULY 2025 have been fully considered but they are not persuasive.
It is noted by the Examiner that the REMARKS submitted on 29 JULY 2025, Section I. Claim Rejection 35 USC 102, is basically exactly the same as those submitted on 10 DECEMBER 2024, Section II. Claims Rejection 35USC 102.
In the REMARKS filed on 29 JULY 2025, Applicant has submitted assertions in regards to the JAMES, US Publication No. 2009/004167, on page 7 of 8.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
It is noted by the Examiner that the REMARKS submitted on 29 JULY 2025, Section I. Claim Rejection 35 USC 102, is basically exactly the same as those submitted on 10 DECEMBER 2024, Section II. Claims Rejection 35USC 102.
In the REMARKS filed on 29 JULY 2025, Applicant has submitted assertions in regards to the WO 2015/171633 to LEE as evidence by ASHFORD in view of HOLT. Applicant has characterized this rejection as a 102, but in fact it is a 103 rejection. See Final Office Action, pages 10-11, see heading paragraph 32.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
In the REMARKS filed on 29 JULY 2025, Applicant has asserted that the amendment to the claim further clarify the subject matter of the claimed invention; and asserts that the LEE reference and Claim 1 differ in two aspects: the lack of water molecules surrounding the hydrogen peroxide and the regulation of the hydrogen peroxide concentration.
Applicant asserts that the language in LEE, to generate hydrogen peroxide substantially free of ozone, not completely free of ozone. According to MPEP 2173.05(b): The term "substantially" is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). The court held that the limitation "which produces substantially equal E and H plane illumination patterns" was definite because one of ordinary skill in the art would know what was meant by "substantially equal." Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 6 USPQ2d 2010 (Fed. Cir. 1988).
According to the Cambridge Dictionary, ‘substantially’ is ‘to a large degree’. While Applicant asserts and argues that ‘substantially free of ozone’ is not the same as ‘free of ozone’; Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). See MPEP 2145.
Applicant has not presented evidence that the catalyst in LEE is any different structurally or would produce any different result in a catalyst that is completely free of ozone generation.
While rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997).
In the REMARKS, Applicant has only provided arguments and merely state that “claim 1 includes a functional limitation that is both substantive and patentably distinct”, but has not any evidence that the structure of pending prior art does not meet the claimed properties.
In the REMARKS, Applicant asserts that the applied prior arts do not teach or suggest features of the apparatus while in use. Applicant’s invention is directed towards an apparatus and Applicant has not point out how structurally different the applied prior art is different than the instant invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4, 6-9, and 13-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over LEE, JAMES, US Publication No. 2009/0041617 A1, herein referred ‘JAMES’.
Applicant’s invention is drawn towards an apparatus.
Regarding Claim 1, the JAMES reference discloses an apparatus for the production of hydrogen peroxide from ambient air, abstract, device for providing microbial control and/or disinfection/remediation of an environment, [0021], comprising: a) a substrate, Figure 1 and 2, shell 2, [0046], consisting of a substantially triboelectrically neutral material, with a triboelectric affinity of 0 + 10 nC/J, [0046], wherein the substrate is a three-dimensional shape encompassing a volume of air, Figure 1 and 2, [0045], any suitable shape that is three dimensional; b) a catalyst disposed upon the substrate, Figure 1 and 2, [0025, 0029]; and c) an energy source proximate the substrate and the catalyst, Figure 1 and 2, [0031]; and wherein the catalyst aids oxygen and water vapor in ambient air to form hydrogen peroxide without generating any ozone as a byproduct, [0023, 0024 0027, 0029, 0032], and further wherein the apparatus produces hydrogen peroxide which is not insulated by water molecules or generated as an aqueous vapor because water vapor in ambient air is separated from the hydrogen peroxide, [0023], first set of equations, hydrogen peroxide gas may be produced by reduction of dioxygen in the photocatalytic process, [0024, 0025], and further wherein the hydrogen peroxide is regulated to between 0.02 and 0.03 parts per million, [0036].
The JAMES reference is silent regarding the properties of when the apparatus is in use. However, since JAMES reference anticipates the claimed invention including all of the structural properties, it is reasonably expected that these properties are met by the prior art.
It should be noted that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. The catalyst taught by JAMES in [0025, 0029] and catalyst material as claimed in Claim 8, will have the expected property of “wherein the catalyst aids formation of hydrogen peroxide without generating any ozone as a byproduct, and further wherein the apparatus is adapted to produce hydrogen peroxide which is not insulated by water molecules or generated as an aqueous vapor because water vapor in ambient air is separated from the hydrogen peroxide.” Since the JAMES reference teaches the same material (as well as the same structural orientation of the catalyst disposed on the substrate) as disclosed by Applicant, the property of the device for the production of hydrogen peroxide wherein the catalyst aids formation of hydrogen peroxide without generating any ozone as a byproduct, and further wherein the apparatus is adapted to produce hydrogen peroxide which is not insulated by water molecules or generated as an aqueous vapor because water vapor in ambient air is separated from the hydrogen peroxide has been satisfied.
In addition, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
Additional Disclosures Included are: Claim 2: wherein the apparatus of claim 1, wherein the substrate is selected from the group consisting of: a) wool; b) a steel; c) cotton; d) paper; e) wood; f) aluminum; g) a fiberglass; h) a composite; or i) combinations thereof, [0046, 0058].; Claim 4: wherein the apparatus of claim 1, wherein the substrate comprises projections or holes to maximize the surface area of the catalyst exposed to air, [0046].; Claim 6: wherein the apparatus of claim 1, wherein the substrate has a thermal conductivity of less than 1 W/Mk, [0046], polymers have thermal conductivity of less than 1 W/Mk.; Claim 7: wherein the apparatus of claim 1, further comprising a fan for moving ambient air across the substrate and the catalyst and/or for moving hydrogen peroxide away from the substrate and the catalyst, Figure 1 and 2, [0030].; Claim 8: wherein the apparatus of claim 1, wherein the catalyst comprises: a) titanium; b) silver; c) rhodium; or d) copper, [0025].; Claim 9: wherein the apparatus of claim 1, wherein the energy source is a light, [0031, 0045].; Claim 13: wherein the apparatus of claim 1, wherein the energy source is disposed within the three-dimensional shape, Figure 1 and 2, [0031].; Claim 14: wherein the apparatus of claim 9, wherein the light is provided by a light bulb, [0028, 0031].; Claim 15: wherein the apparatus of claim 14, wherein the light bulb does not emit light of wavelengths from 160 nanometers (nm) to 240 nm, [0025, 0031], light can produce at least one range of wavelengths, in ultraviolet range, which is known to be up to 400nm.; Claim 16: wherein the apparatus of claim 14, wherein the light bulb does not emit light of wavelengths from 160 nm to 254 nm, [0025, 0031], light can produce at least one range of wavelengths, in ultraviolet range, which is known to be up to 400nm.; Claim 17: wherein the apparatus of claim 14, wherein the light bulb emits only light of wavelengths above 254 nm, [0025, 0031], light can produce at least one range of wavelengths, in ultraviolet range, which is can be 254nm.; Claim 18: wherein the apparatus of claim 14, wherein the light bulb emits only light of wavelengths above 280 nm, [0025, 0031], light can produce at least one range of wavelengths, in ultraviolet range, which is can be 280nm.; Claim 19: wherein the apparatus of claim 14, wherein the light bulb emits light of wavelengths from 280 nm to 400 nm, [0025, 0031], light can produce at least one range of wavelengths, in ultraviolet range, which is can be up to 400nm.; and Claim 20: wherein the apparatus of claim 14, wherein the light bulb emits light of wavelengths from 280 nm to 700 nm, [0025, 0031], light can produce at least one range of wavelengths, in ultraviolet range, which is can be up to 400nm.
Claims 1, 2, 4 , 6-9 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over by LEE, WO 2015/171633 A1, as evidenced by ASHFORD, Unwanted Currents Can Damage Electronics Equipment, Avionics News, January 2010, pages 36-39, and further in view of HOLT, US Publication No. 2011/0183598 A1.
Applicant’s invention is drawn towards an apparatus.
Regarding Claim 1, the reference LEE discloses an apparatus for the production of hydrogen peroxide from ambient air, abstract, [0002], comprising :a) a substrate consisting of a substantially triboelectrically neutral material, with a triboelectric affinity of 0 ± 10 nC/J, [0046, 0077, 0081, 0082], Figure 1, structure ; b) a catalyst disposed upon the substrate, [0046]; and c) an energy source proximate the substrate and the catalyst [0046], Figure 1, source of light.
Regarding the limitation of with a triboelectric affinity of 0 ± 10 nC/J is a property of the claimed substrate. For examination purposes, the Examiner interprets the substrate be selected from a material listed in Claim 2, and recited in the instant specification, the “substrate can be a substantially triboelectrically neutral material, such as a steel, cotton, paper, wood, aluminum, a fiberglass, a composite, or combinations thereof”, [0029].
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. The triboelectric affinity is a property of the substrate material. Since the substrate in LEE teaches the preferred claimed substrate material, the triboelectric affinity property that is claimed is exists.
Furthermore, the ASHFORD reference teaches well known triboelectric affinities of materials including at least, cotton (+5 nC/J), paper (+10 nC/J), wood (+7 nC/J), aluminum, a fiberglass, a composite (see page 37, Table, it is interpreted by the Examiner that a composite is a material made of a combination of material). There are nine (9) materials listed with a triboelectric affinity in the claimed range.
In LEE, [0085], “Catalysts of the present disclosure include, but are not limited to, titanium dioxide, copper, copper oxide, zinc, zinc oxide, iron, iron oxide, or mixtures thereof. Suitable catalysts are provided, for example at Table 2.” In addition in LEE, [0088], “Co-catalysts of the present disclosure include, but are not limited to, platinum, gold, silver, copper, nickel, cesium, or palladium. In some aspects, the co-catalyst is a noble metal selected from the group consisting of gold, platinum, silver, rhodium, ruthenium, palladium, osmium, and iridium.”
Both the instant invention and the LEE reference teach the catalyst can be titanium dioxide, silver, rhodium, and/or copper. Since the LEE reference teaches the same material as disclosed by Applicant, the property of the device for the production of hydrogen peroxide ‘wherein the catalyst aids formation of hydrogen peroxide without generating any ozone as a byproduct, and further wherein the apparatus is adapted to produce hydrogen peroxide which is not insulated by water molecules or generated as an aqueous vapor because water vapor in ambient air is separated from the hydrogen peroxide, and further wherein the hydrogen peroxide is regulated to between 0.02 and 0.03 parts per million” has been satisfied. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In addition, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
LEE reference discloses the claimed invention, but is silent in regards to wherein the substrate is a three-dimensional shape encompassing a volume of air.
LEE discloses that the substrate can be configured to be a mesh with a network of spaces in a net or network, [0059, 0062]. LEE further teaches the device 20 as illustrated in Figure 2A to 2B comprise an enclosure 205 with a substrate disposed the top of the three-dimensional enclosure, Figure 2A, 2B, [00120].
HOLT disclose an apparatus for the production of hydrogen peroxide, abstract, [0010], comprising : a) a substrate, Figure 2, body 55; b) a catalyst disposed upon the substrate, [0021, Figure 2, catalyst 65 (not illustrated); and c) an energy source proximate the substrate and the catalyst [0021], light; and wherein the catalyst aids formation of hydrogen peroxide without generating any ozone as a byproduct, abstract, [0021], and further wherein the hydrogen peroxide is not insulated by water molecules or generated as an aqueous vapor, [0021], the limitations in the above mentioned claims are directed towards limitations related to a manner of operating the device. The manner of operating a device does not differential the apparatus claim from the prior art, see MPEP 2114; and wherein the substrate is a three-dimensional shape encompassing a volume of air, HOLT Figure 2, [0021].
In regards to the limitation of ‘and, further wherein the hydrogen peroxide is regulated to between .02 and .03 parts per million’; the product of HOLT identical to the claimed invention in regards to the requirement of elements a) – c); and “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In addition, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the substrate so that it is a three-dimensional shape encompassing a volume of air as taught HOLT because it is an art recognized equivalent and having the substrate be a three-dimensional shape encompassing a volume of air as taught by HOLT so that treated air can have a defined space for treating ambient air without outside influences.
Additional Disclosures Included are: Claim 2: wherein the apparatus of claim 1, wherein the substrate is selected from the group consisting of: a) wool; b) a steel; c) cotton; d) paper; e) wood; f) aluminum; g) a fiberglass; h) a composite; or i) combinations thereof, [0077, 0081, 0082].; Claim 4: wherein the apparatus of claim 1, wherein the substrate comprises projections or holes to maximize the surface area of the catalyst exposed to air, [0062].; Claim 6: wherein the apparatus of claim 1, wherein the substrate has a thermal conductivity of less than 1 W/Mk, [0077, 0081, 0082]. The materials disclosed in LEE that the substrates can be made of are substantially the same material as claimed; therefore it inherently has the same properties as claimed such as triboelectric affinity and/or the thermal conductivity.; Claim 7: wherein the apparatus of claim 1, further comprising a fan for moving ambient air across the substrate and the catalyst and/or for moving the hydrogen peroxide away from the substrate and the catalyst, [0048].; Claim 8: wherein the apparatus of claim 1, wherein the catalyst comprises: a) titanium; b) silver; c) rhodium; or d) copper, [0086-0088], Table 2.; Claim 9: wherein the apparatus of claim 1, wherein the energy source is a light, [0046].; Claim 13, the combination above teaches the apparatus of claim [[5]] 1, wherein the energy source is disposed within the three- dimensional shape, HOLT , Figure 2, [0021].; and Claim 14: wherein the apparatus of claim 9, wherein the light is provided by a light bulb, LEE [0086, 0099, 0100], HOLT [0021].
Regarding Claims 15-20, the combination of references suggest the claimed invention. LEE further teaches the wavelength of the light source is in the range of 190 to 410 nm, [0101] and the wavelength utilized depends on the catalyst used for the device, [0086].
The claimed wavelengths are within or overlap the wavelength taught by LEE.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797