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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/14/26 has been entered.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2 should recite “the ENIG, or ENEPIG, or ENIPIG, or EP, or EPIG first coating of the second electrode” for the best grammar and antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 23 both recite “the second electrode excludes a second coating being selected from the group of an ENIG, ENEPIG, ENIPIG, EP, or EPIG coating” which lacks support in the disclosure as filed. The application supports at least one coating including those coatings but nowhere in the specification as filed does it support the exclusion of another coating that includes one of those coatings. The limitation therefore is directed towards subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention at the time of filing. The limitation is a negative limitation which excludes subject matter from the claim, and therefore the application failing to consider the exclusion of a second coating at all is insufficient to support the explicit exclusion of it in the claim. Therefore, the claims are rejected as being directed towards new matter.
The remaining claims are rejected for depending on one of the claims above.
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.
Claims 1-2, 5, and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hijnen (NPL 2014).
Regarding claim 1, Hijnen (NPL 2014) (cited on IDS, copy relied upon present in file wrapper) discloses –
An electrode arrangement for generating a non-thermal plasma (Abstract, “Dielectric barrier discharges” on page 9, fig. 4), comprising:
a first electrode and a second electrode (par. 1.3, fig. 4 showing two electrodes), wherein
the first electrode and the second electrode are electrically insulated from each other and spaced from each other by a dielectric element (Fig. 5 shows a dielectric discharge barrier system with two electrodes separated by a dielectric section 1.3 disclosing a dielectric), characterized in that:
the second electrode comprises a first coating, the first coating being selected from a group consisting of an Electroless Nickel Immersion Gold (ENIG) coating, an Electroless Nickel Electroless Palladium Immersion Gold (ENEPIG) coating, an Electroless Nickel Immersion Palladium Immersion Gold (ENIPIG) coating, an Electroless Palladium (EP) coating, or an Electroless Palladium Immersion Gold (EPIG) coating, or the dielectric element comprises a woven glass reinforced hydrocarbon ceramic (par. 1.3 discloses the electrodes made from ENIG as claimed, satisfying the claimed limitations in alternative), wherein the second electrode excludes a second coating being selected from the group of an ENIG, ENEPIG, ENIPIG, EP, or EPIG (section 1.3 disclose “an electrode material” being copper with “an” ENIG surface, which discloses a singular surface and does not require a second coating).
Regarding the limitation that the plasma generated is configured to refresh porous materials and fabrics: Apparatus claims cover what a device is, not what a device does and a 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 (see MPEP 2114, II). The electrode arrangement disclosed by Hijnen is used to produce plasma using the same structure as claimed, and is therefore reasonably capable of and expected to be capable of using that plasma to refresh porous materials and fabrics as claimed. Therefore, all the limitations of the claim are met.
Regarding claim 2, Hijnen further discloses the thickness of the first electrode view in a direction towards the second electrode comprises a thickness of at least 10 um and at most 50 um (par. 1.3 discloses a thickness of the electrode being 18 um, the term thickness in view of Figs. 4-5 clearly referring to the claimed direction). The claim only recites alternatives so the teaching of one of the clauses meets all the required limitations of the claim.
Regarding claim 5, Hijnen further teaches the electrodes being made from and comprising copper (see par. 1.3).
Regarding claim 7, Hijnen further teaches the first electrode is flat (see fig. 4 and 5).
Regarding claim 8, Hijnen further teaches the second electrode is linear with a straight line (section 1.3 figs. 4 shows a second electrode that is linear and includes a mesh head, a mesh by definition including straight lines of overlapping or woven lines, therefore including at least one straight line).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3-4, 6, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hijnen (NPL 2014) as applied to claim 1 above and further in view of Morfill (WO 2017/013211).
Regarding claim 3, Hijnen is set forth above with regards to claim 1 but appears to be silent with regards to a dielectric cover element arranged on a side of a second electrode facing away from the dielectric element, wherein the cover element viewed in a direction comprises a thickness of .2 to 30 um.
Morfill discloses a dielectric cover element arranged on a side of a second electrode facing away from the dielectric element, wherein said elements are stacked in a stacking direction of the electrode and the cover element viewed in a stacking direction comprises a thickness of .2 to 30 um (see claim 2 disclosing this limitation exactly). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that there is a dielectric cover element on a side of the second electrode as claimed with the claimed thickness as disclosed by Morfill to arrive at the claimed invention. One would have been motivated to do so to create and control the discharge characteristics as desired to arrive at an improved electrode arrangement for generating plasma. The combination of familiar prior art elements for the same purpose together as separate, such as electrodes and dielectric elements for plasma generation, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Regarding claim 4, Hijnen is set forth above with regards to claim 1 but appears to be silent with regards to a dielectric base element arranged on a side of the first electrode facing away from the dielectric element.
Morfill further teaches this limitation exactly (see claim 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that there is a dielectric base element on a side of the first electrode as claimed to arrive at the claimed invention. One would have been motivated to do so to create and control the discharge characteristics as desired to arrive at an improved electrode arrangement for generating plasma. The combination of familiar prior art elements for the same purpose together as separate, such as electrodes and dielectric elements for plasma generation, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Regarding claim 6, Hijnen further teaches the dielectric element is made of a plastic (1.3 discloses the dielectric layer is made from polyimide, a plastic), but appears to be silent with regards to a dielectric base element arranged on a side of the first electrode facing away from the dielectric element.
Morfill further teaches this limitation exactly (see claim 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that there is a dielectric base element on a side of the first electrode as claimed to arrive at the claimed invention. One would have been motivated to do so to create and control the discharge characteristics as desired to arrive at an improved electrode arrangement for generating plasma. The combination of familiar prior art elements for the same purpose together as separate, such as electrodes and dielectric elements for plasma generation, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Regarding claim 21, Hijnen is set forth above with regards to claim 1 but appears to be silent with regards to the first electrode having a thickness of 35 um.
Morfill discloses a first electrode and a second electrode, where the first electrode, when viewed in a direction towards the second electrode, has a thickness of at least 10 um, overlapping with the claimed value of 35 um (see Fig. 1, claim 1 disclosing the first electrode thickness). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that the electrode has a thickness of 35 um when viewed in a direction towards the second electrode as disclosed by Morfill to arrive at the claimed invention. One would have been motivated to do so to construct the electrode arrangement according to known-effective dimensions to arrive at a successful device. Furthermore, the claimed thickness falls within a range disclosed by the prior art, and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hijnen (NPL 2014) in view of Persson (US 2016/0123927).
Regarding claim 23, Hijnen teaches –
An electrode arrangement that generates a non-thermal plasma (Abstract, “Dielectric barrier discharges” on page 9, fig. 4), comprising:
a first electrode and a second electrode (par. 1.3, fig. 4 showing two electrodes), wherein
the first electrode and the second electrode are electrically insulated from each other and spaced from each other by a dielectric element (Fig. 5 shows a dielectric discharge barrier system with two electrodes separated by a dielectric, section 1.3 disclosing a dielectric barrier), characterized in that the second electrode comprises a first coating, the first coating being selected from a group consisting of an ENIG coating (par. 1.3 discloses the electrodes made from ENIG as claimed), ), wherein the second electrode excludes a second coating being selected from the group of an ENIG, ENEPIG, ENIPIG, EP, or EPIG (section 1.3 disclose “an electrode material” being copper with “an” ENIG surface, which discloses a singular surface and does not require a second coating).
Regarding the limitation that the plasma generated is configured to refresh porous materials and fabrics: Apparatus claims cover what a device is, not what a device does and a 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 (see MPEP 2114, II). The electrode arrangement disclosed by Hijnen is used to produce plasma using the same structure as claimed, and is therefore reasonably capable of and expected to be capable of using that plasma to refresh porous materials and fabrics as claimed. Therefore, the limitation is met. Hijnen appears to be silent with regards to the dielectric element comprising a woven glass reinforced hydrocarbon ceramic.
Persson (US 2016/0123927) discloses a dielectric material for plasma generation made from woven glass reinforced hydrocarbon ceramic (par. 65 discloses glass and fiberglass reinforced hydrocarbon ceramic). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that the dielectric element is a woven glass reinforced hydrocarbon ceramic as taught by Persson to arrive at the claimed invention. One would have been motivated to do so to use a known and conventional dielectric material as the dielectric material in a plasma generating electrode arrangement to arrive at an improved device. The combination of familiar prior art elements, including materials known to be appropriate for dielectrics as a dielectric in a system that requires one, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Regarding claim 24, modified Hijnen discloses all the limitations of claim 22 but appears to be silent with regards to the first coating of the second electrode has a thickness of at least .3 to at most 10 um. However, this modification would only be the result of routine experimentation and therefore would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention. MPEP 2144.05(II)(A).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Hijnen (NPL 2014) in view of Yildirim (US 2020/0038673).
Regarding claim 27, Hijnen teaches –
An electrode arrangement for generating a non-thermal plasma (Abstract, “Dielectric barrier discharges” on page 9, fig. 4), comprising:
a first electrode and a second electrode (par. 1.3, fig. 4 showing two electrodes), wherein
the first electrode and the second electrode are electrically insulated from each other and spaced from each other by a dielectric element (Fig. 5 shows a dielectric discharge barrier system with two electrodes separated by a dielectric section 1.3 disclosing a dielectric), characterized in that:
the second electrode comprises a first coating, the first coating being selected from a group consisting of an Electroless Nickel Immersion Gold (ENIG) coating, an Electroless Nickel Electroless Palladium Immersion Gold (ENEPIG) coating, an Electroless Nickel Immersion Palladium Immersion Gold (ENIPIG) coating, an Electroless Palladium (EP) coating, or an Electroless Palladium Immersion Gold (EPIG) coating, or the dielectric element comprises a woven glass reinforced hydrocarbon ceramic (par. 1.3 discloses the electrodes made from ENIG as claimed, satisfying the claimed limitations in alternative), wherein the second electrode excludes a second coating being selected from the group of an ENIG, ENEPIG, ENIPIG, EP, or EPIG (section 1.3 disclose “an electrode material” being copper with “an” ENIG surface, which discloses a singular surface and does not require a second coating).
Regarding the limitation that the plasma generated is configured to refresh porous materials and fabrics: Apparatus claims cover what a device is, not what a device does and a 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 (see MPEP 2114, II). The electrode arrangement disclosed by Hijnen is used to produce plasma using the same structure as claimed, and is therefore reasonably capable of and expected to be capable of using that plasma to refresh porous materials and fabrics as claimed. Therefore, this limitation of the claim is met.
Hijnen appears to be silent with regards to the second electrode being electrically connected to a conductive surface which is in contact with a user of the electrode arrangement, wherein the conductive surface is part of a housing in which the electrode is contained.
Yildirim (US 2020/0038673) discloses an electrode arrangement for producing plasma (abstract) where the electrode is contained within and connected to a conductive surface that is part of a housing (par. 151, Fig. 11B conductive spacer 174 is a part of housing 110b). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that the device includes a housing for the electrodes that includes a conductive surface to arrive at the claimed invention. One would have been motivated to do so to protect the electrode from damage within the housing to arrive at an improved device. Regarding the limitation that the device is in contact with a user: the device disclosed by modified Hijnen is well capable of performing this function and is expected to do so, and therefore this limitation is similarly met. MPEP 2114, II.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Hijnen (NPL 2014) in view of Yildirim (US 2020/0038673) as applied to claim 27 above and further in view of Persson (US 2016/0123927).
Regarding claim 28, modified Hijnen appears to be silent with regards to the claimed dielectric material.
Persson (US 2016/0123927) discloses a dielectric material for plasma generation made from woven glass reinforced hydrocarbon ceramic (par. 65 discloses glass and fiberglass reinforced hydrocarbon ceramic). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Hijnen such that the dielectric element is a woven glass reinforced hydrocarbon ceramic as taught by Persson to arrive at the claimed invention. One would have been motivated to do so to use a known and conventional dielectric material as the dielectric material in a plasma generating electrode arrangement to arrive at an improved device. The combination of familiar prior art elements, including materials known to be appropriate for dielectrics as a dielectric in a system that requires one, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Allowable Subject Matter
Claims 22 and 25 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Applicant’s arguments with respect to claims 22 and 25 and the coating material are persuasive.
Response to Arguments
Applicant's arguments filed 2/9/26 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim 1 are not persuasive. Applicant argues that HIjen teaches a plasma plaster for a medical application which is not persuasive because a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Hijnen discloses electrodes that produce plasma, and the plaster need not be directly attached to a porous material in order to produce plasma for application to it. The porous material or fabric is not part of the claimed invention, and the claim is directed towards a device that generates non-thermal plasma, and the prior art device is capable of performing the claimed function. Therefore, all of the claims limitations are met.
Regarding claims 22 and 25, Applicant’s arguments are persuasive and the claim is indicated as allowable above.
Conclusion
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/BRENDAN A HENSEL/Examiner, Art Unit 1758