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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 September 2025 has been entered.
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 23-25 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.
In regard to claims 23-25, the specification as originally filed does not provide support for wherein the UV light is “a UVC light” as recited in claim 23, “a wavelength in the spectrum of 200-315 nm” as recited in claim 24, nor “a wavelength of 254 nm” as recited in claim 25. Therefore, claims 23-25 are rejected for containing new matter. It is noted that the specification only discloses wherein the UV light can be UVB light and does not disclose any wavelength ranges or specific wavelengths which can be produced by the UV light.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-17 and 24-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation "the thickened end" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the claim is interpreted as being dependent on --claim 7-- instead of “claim 1.”
Claim 17 recites the limitation "the moisture escape opening" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In regard to claim 17, it is unclear if the limitation of “air movement means” referring to the same or different structure as the identical limitation recited in line 3 of claim 1. For the purpose of examination, the limitation is interpreted as --the air movement means--.
Claim 17 recites the limitation "the UV light" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “UVC light” in claim 24 is used by the claim to mean “the spectrum of 200 - 315 nm,” while the accepted meaning is “100-280 nm.” The term is indefinite because the specification does not clearly redefine the term.
Claim 25 recites the limitation "the UVC light" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the claim is interpreted as being dependent on --claim 24-- instead of “claim 16.”
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1, 7-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Levsen et al. (US 9,669,123; hereinafter “Levsen”).
In regard to claim 1, Levsen discloses a clothing item sterilizer (apparatus 10) comprising a base (base 12) and an elongate support (trees 90) extending operatively upright from the base capable of receiving a sleeve (not explicitly recited) thereover, a plurality of ventilation openings (series of openings 102 and/or vent openings 110) in the elongate support, air movement means (fan 116 forming blowers 117) to move air through the ventilation openings, a removable cover (upstanding housing 14 which is removably attached via tubular couplers 76 on the underside of the lower wall 54 of the housing which rest upon and mate with the tubular coupling fixtures 32 of base 12 using screws which are necessarily “removable”) in the form of an open-ended box locatable over the elongate support and a lower open end (defining conduit 80) of the cover to seat in a seat formation on the base with a removable lid (lid or cover 64) and an ozone source (ozone generator 118). See col. 3, line 41 through col. 4, line 56 and Figures 1-6.
It is noted that Levsen does not explicitly disclose wherein the apparatus can be used for prosthetic accessory sterilization as Levsen merely discloses that the apparatus can be used for clothing items such as shoes. However, the Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Levsen is silent to wherein the removable cover is in the form of an open-ended tube as Levsen teaches wherein the housing 14 is in the form of an open-ended box which includes the cover 64. However, the Courts have held that the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04). Therefore, it would have been within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the box-shaped housing to the tubular or cylindrical for the purpose of forming the device to have a more appealing aesthetic without creating any new or unexpected results.
In regard to claims 7 and 10, Levsen discloses wherein the elongate support terminates in a thickened end (head 96) capable of supporting part of the inside surface of the sleeve (not explicitly recited in the apparatus claim) thereon as recited in claim 7 and wherein the thickened end has a larger cross-section (the horizontal cross section of the head 96 is larger than the horizontal cross section of the tubular shank 92) than a cross-section of the support so that the sleeve (not explicitly recited) is capable of being spaced from the support when it is draped over the thickened end as recited in claim 10. See col. 4, lines 30-52 and Figures 4-5.
In regard to claims 8-9, Levsen discloses protrusions, which terminate in rounded ends as recited in claim 9, extending therefrom to support the sleeve thereon, spaced away from the thickened end as recited in claim 8 and depicted in Figure 5 as noted by the arrows in the image below.
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In regard to claims 11-12, Levsen discloses wherein the lid (lid or cover 64) at a top open end of the cover as recited in claim 11 which is also viewed to be equivalent to the claimed “closeable moisture escape opening” as the lid is capable of performing the function of allowing moisture to escape as recited in claim 12. See col. 4, lines 1-17 and Figures 1-6.
In regard to claim 14, Levsen discloses in which the sterilizer includes a UV light as the ozone generator 118 can be a UV generator. See col. 4, lines 53-56.
Claims 3-5, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Levsen in view of Rosseau et al. (US 2005/0204579; hereinafter “Rosseau”).
In regard to claims 3-5 and 19, Levsen is silent in regard to an oil diffuser. It is noted that oil is not explicitly required by the claim as oil is merely a material worked upon by the apparatus. The Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Rosseau discloses a sports equipment conditioning apparatus for drying, deodorizing and sanitizing sports equipment. The apparatus includes an oil diffuser (pad 20b placed in the airflow) as recited in claim 3 which is capable of diffusing oil (i.e. fragrance) from an oil reservoir (slidable tray 20a) as recited in claim 4, which is a tray slidingly removable from the base for refilling thereof as recited in claim 19, so that the diffused oil is forced through the elongate support (tubular members 30) and out of the ventilation openings (apertures 40) in the elongate support towards an inside surface of the supported item as recited in claim 5. See [0026]-[0027], [0036] and Figure 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the pad and slidably tray of Rosseau with the apparatus of Levsen for the purpose of applying fragrance to the item being worked upon.
In regard to claim 16, Levsen discloses an air flow path extends from outside the base through openings (vent openings 26 and 28) in the base into an operatively lower end of the elongate support, operatively upwards in the elongate support and out through the ventilation openings in the elongate support and the thickened end (head 96) at an upper end of the elongate support. See Figures 1-6.
Levsen is silent in regard wherein the openings are filter openings.
Rosseau discloses that a second tray 20c may be used to accommodate a filter to filter the airflow delivered by the tubular members 30. See [0036] and Figure 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the filter of Rosseau with the apparatus of Levsen for the purpose of providing clean, particle-free air to dry and condition the item being treated.
Claim 17 rejected under 35 U.S.C. 103 as being unpatentable over Levsen in view of Rosseau and Benedek et al. (US 2018/0264157; hereinafter “Benedek”).
In regard to claim 17, Levsen discloses wherein the base houses electronic components (any of the various electrical structures), a moisture escape opening (vent openings 26 and 28), the air movement means (fan 116 forming blowers 117), a UV light (ozone generator 118 comprised of a UV generator on the underside of the housing 14 within the base 12 which was not made distinct from the ozone source) and the ozone source (ozone generator 118). See col. 3, line 41 through col. 4, line 56 and Figures 3-6.
Levsen does not disclose wherein an oil diffuser nor a UV light which is distinct from the ozone source is disclosed in the base.
Rosseau discloses that the oil diffuser (pad 20b placed in the airflow) and the oil reservoir (slidable tray 20a) are located in the base 20. Therefore, it would have further been obvious to of ordinary skill in the prior art before the effective filing date of the claimed invention to have located the oil diffuser of Rosseau in the base of the combined apparatus of Levsen and Rosseau as the airflow is originated in the base.
Benedek discloses an air treatment system which uses 185 nm UV light to create ozone for treatment of a material 34 and the use of 254 nm UV light as recited in claim 25, which is noted to be UVC light as recited in claim 23 and within the spectrum range of claim 24, for destroying the ozone after the material has been treated. See Figures 1-4 and paragraphs [0081], [0174] and [0182].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the ozone generator and ozone removal structure using 254 nm UV light as disclosed by Benedek for the ozone generator in the base of the above modified apparatus of Levsen for the purpose of destroying the created ozone after the ozone has treated the desired workpiece for the purpose of preventing the ozone to harm a person or object by allowing ozone to escape the containment of the housing.
Claims 14 and 23-25 is rejected under 35 U.S.C. 103 as being unpatentable over Levsen in view of Benedek et al. (US 2018/0264157; hereinafter “Benedek”).
In regard to claims 14 and 23-25, this rejection is included in case it is viewed that the recited UV light of claim 14 needs to be separate and distinct from the ozone source. Levsen also does not disclose wherein the UV light is a UVC light as Levsen disclose wherein the UV light is used to create ozone and it is well understood that UVB light is used to create ozone.
Benedek discloses an air treatment system which uses 185 nm UV light to create ozone (i.e. an ozone source) for treatment of a material 34 and the use of 254 nm UV light as recited in claim 25, which is noted to be UVC light as recited in claim 23 and within the spectrum range of claim 24, for destroying the ozone after the material has been treated. See Figures 1-4 and paragraphs [0081], [0174] and [0182].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the ozone generator and ozone removal structure using 254 nm UV light as disclosed by Benedek for the ozone generator of the above modified apparatus of Levsen for the purpose of destroying the created ozone after the ozone has treated the desired workpiece for the purpose of preventing the ozone to harm a person or object by allowing ozone to escape the containment of the housing.
Response to Arguments
Applicant's arguments filed 15 September 2025 have been fully considered but they are not persuasive.
Applicant discloses that Levsen does not disclose wherein the cover is removable or in the form of an open-ended tube as the housing of Levsen is “permanently affixed to the base” and has a different shape. The Examiner has fully considered the argument but has not found it to be persuasive. It is noted that the housing of Levsen, which is the structure viewed to be analogous to the recited “cover,” is attached to the base using screws which are well understood to be removable and not permanent as argued by Applicant. Further, while Levsen does disclose that the housing is box-like, it is held that to provide the housing in the shape of a tube would not result in any new or unexpected benefits as such a change in shape would merely be ornamental. It is noted that the instant claims do not recite a coaxial loop of air or an annular recirculation path, nor do the claims recite wherein the device is programmed so the fan switches off before the cycle ends. Additionally, it is viewed using the broadest reasonable interpretation that a hinged lid is still a removeable lid as the lid can be removed from the opening upon which it sits when closed.
Applicant argues that Rosseau does not “suggest adapting its pad/tray arrangement for the structural and functional context of prosthetic sterilisation” and the removable tray “does not suggest filter openings integrated into the base of a prosthetic sterilizer. The Examiner has fully considered the argument but has not found it to be persuasive. The Examiner did not cite Rosseau’s apparatus to be modified into a prosthetic accessory sterilizer. Rather, Rosseau was cited to show that the structures of an oil diffuser and filter openings were known in the prior art and would have been obvious to one of ordinary skill in the prior art to have combined with the apparatus of Levsen. It is held that the structures cited from Rosseau are capable of performing the cited intended use of releasing “oils for medicinal or lubricant purposes” and to provide “controlled, particle-free airflow” as argued by Applicant as Rosseau teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “safety features built into the device”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Levsen does not disclose a separate UV light and ozone source. The Examiner agrees with this statement, but notes that claim 14 may not explicitly require a separate UV light and ozone source using the broadest reasonable interpretation of the recited limitation and it is further noted that claim 17 has been rejected under §112b for multiple issues. Nonetheless, claim 17 is now rejected under a combination of Levsen in view of Rosseau and Benedek.
Applicant argues that Levsen does not disclose UVC light. The Examiner agrees with this statement, but notes that the instant specification also does not disclose UVC light. Nonetheless, the Examiner has relied upon Benedek for teaching UVC light to decompose ozone.
Applicant argues that Levsen does not “suggest such an arrangement in the context of sterilising prosthetic accessories.” The Examiner has fully considered the argument but has not found it to be persuasive. The Courts have held that “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). As the instant claims recite an apparatus, the article which is worked upon by the apparatus does not impart patentability to the claims as the apparatus of Levsen would be capable of sterilizing a prosthetic accessory.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774