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 .
The Applicant’s amendment filed on August 24, 2026 was received. No claims were amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued January 8, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 24, 2026 has been entered.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as anticipated by Nemoto (US 2015/0077492) on claims 29, 33, 37 and 39-40 are maintained. The rejections are restated below.
Regarding claim 29: Nemoto discloses a plasma treatment apparatus (10) which includes a moving surface formed of a dielectric (12) conveyor belt, as well as a discharge device formed as a discharge electrode (11) paired with a counter electrode (14), each arranged on opposite sides of the plane formed by the dielectric (12) conveyor, where the treatment target (20) is moved by the dielectric (12) conveyor to be treated by the electrical discharge between the two electrodes (11, 14), such that the discharge electrode (11) generates an electrical discharge and the counter electrode (14) controls the electrical potential, and further where the purpose of the plasma treatment is to help an ink or liquid adhere to surface when applied by an ink-jet recording device (170) (par. 35-36, 41-43, 59, 62 figures 2 and 9).
While Nemoto does not explicitly disclose that the ink or liquid is a bacteriophage, the limitation “for treating an object by attaching bacteriophage thereto” is deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the apparatus is concerned. In apparatus claims, a claimed intended use 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. MPEP § 2111.02. In the instant case, the apparatus of Nemoto is capable of using a bacteriophage as its ink or liquid applied.
Regarding claim 33: Nemoto shows that the dielectric (12) conveyor is located between the two electors (11, 14) (see figure 2).
Regarding claim 37: Nemoto discloses a plasma treatment apparatus (10) which includes a moving surface formed of a dielectric (12) conveyor belt, as well as a discharge device formed as a discharge electrode (11) paired with a counter electrode (14), each arranged on opposite sides of the plane formed by the dielectric (12) conveyor, where the treatment target (20) is moved by the dielectric (12) conveyor to be treated by the electrical discharge between the two electrodes (11, 14), such that the discharge electrode (11) generates an electrical discharge and the counter electrode (14) controls the electrical potential, and further where the purpose of the plasma treatment is to help an ink or liquid adhere to surface when applied by an ink-jet recording device (170) (par. 35-36, 41-43, 59, 62 figures 2 and 9).
While Nemoto does not explicitly disclose that the applied ink or liquid is a bacteriophage, the limitations “for carrying out a continuous method for attaching bacteriophage to an object comprising the steps of… contacting the object with the bacteriophage to be attached” and “for treating an object by attaching bacteriophage thereto” are deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the apparatus is concerned. In apparatus claims, a claimed intended use 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. MPEP § 2111.02. In the instant case, the apparatus of Nemoto is capable of performing the same steps and using a bacteriophage as its ink or liquid applied.
Regarding claim 39: Nemoto shows that the discharge electrode (11) is located above the dielectric (12) conveyor and the counter-electrode (14) is located below the dielectric (12) conveyor (see figure 2).
Regarding claim 40: Nemoto discloses that the dielectric (12) is a conveyor platform such as a conveyor belt (par. 43, figure 2).
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as unpatentable over Jorgensen (US 2004/0086433) in view of Nemoto on claims 29-31, 33, 37 and 39-40 are maintained. The rejections are restated below.
Regarding claim 29: Jorgensen discloses a system for treating an object with an electrical discharge to make it more receptive to an ink or adhesive (par. 17) which includes a conveyor (30) which is a moving surface and a pair of electrodes (32, 34) forming an electrical discharge device, the electrodes (32, 34) positioned on opposite sides of each conveyor section in a plan view (par. 24, figure 3). Jorgensen teaches that the purpose of the system is to prepare an object surface for better adhesion to inks, adhesives or other liquids (par. 37) such that a means for contacting the object with the inks, adhesives or other liquids is inherently needed.
While Jorgensen does not explicitly disclose that the ink, adhesive or other liquid is a bacteriophage, the limitation “for treating an object by attaching bacteriophage thereto” is deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the apparatus is concerned. In apparatus claims, a claimed intended use 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. MPEP § 2111.02. In the instant case, the system of Jorgensen is capable of applying a bacteriophage as its disclosed ink, adhesive or other liquid.
The limitations “for generating an electrical discharge” and “for controlling the electrical potential” are deemed to be statements with regard to the intended use of the apparatus similarly to the above. In the instant case, the electrodes can and do operate in the same manner, despite Jorgensen using different terminology- Jorgensen teaches two electrodes (32 and 34) set up to generate a discharge therebetween, and specifically notes that one of the electrodes can be supplied power while the other can be grounded, such that the one supplied power generates the discharge and the grounded one controls the potential of the space therebetween (par. 22), exactly as claimed.
Jorgensen discloses that the electrodes (32, 34) are placed on opposite sides of the workpiece and conveyor but within the same plane formed by the conveyor, such that neither is below the conveyor or on opposite sides of that plane (figure 6). However, Nemoto discloses a similar corona discharge plasma device in which one electrode (11) is provided above the conveyor (12) and a counter electrode (14) is provided below the conveyor (12), such that they are on opposite sides of a plane formed by the conveyor (12) (par. 41, figure 2). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the electrodes of Jorgensen in the way done by Nemoto because Nemoto teaches that the arrangements and positions of the electrodes can be changed in a number of different ways (par. 41), using a known technique for a known purpose is not considered to be a patentable advance (MPEP 2143), trying from a finite number of solutions (i.e. electrodes arranged horizontally opposed or vertically opposed) is not considered to be a patentable advance (MPEP 2143E) and simple rearrangement of parts is not considered to be a patentable advance (MPEP 2144.04).
Regarding claim 30: Jorgensen discloses that the conveyor (30) can take many different forms including rollers, which have indentations, or a plurality of flexible belts (50) which can also have indentations as seen in figure 3 (pars. 24-25).
Regarding claim 31: Jorgensen discloses that a number of different materials can be used for the conveyor (30) outside of urethane (pars. 24-25), but fails to explicitly disclose using a conductive material. However, Jorgensen does describe that a guide part (36) of the conveyor (30) can be made from a number of different materials such as a metal, which is conductive (par. 33). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to choose a conductive metal for the conveyor similarly to how the guide (36) can be metal because Jorgensen teaches that just like the conveyor the guide can be made from any type of material and remain functionally equivalent (par. 24-25, 30) and simple substitution of functional equivalents is not considered to be a patentable advance (MPEP 2143, 2144.06).
Regarding claim 33: Jorgensen and Nemoto et al. teach the above combination in which one electrode is provided above the conveyor and one below such that the conveyor is between the two electrodes (see Nemoto et al. figure 2).
Regarding claim 37: Jorgensen discloses a system for treating an object with an electrical discharge to make it more receptive to an ink or adhesive (par. 17) which includes a conveyor (30) which is a moving surface and a pair of electrodes (32, 34) forming an electrical discharge device (par. 24, figure 3). Jorgensen teaches that the purpose of the system is to prepare an object surface for better adhesion to inks, adhesives or other liquids (par. 37) such that a means for contacting the object with the inks, adhesives or other liquids is inherently needed.
While Jorgensen does not explicitly disclose that the applied ink, liquid or adhesive is a bacteriophage, the limitations “for carrying out a continuous method for attaching bacteriophage to an object comprising the steps of… contacting the object with the bacteriophage to be attached” and “for treating an object by attaching bacteriophage thereto” are deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the apparatus is concerned. In apparatus claims, a claimed intended use 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. MPEP § 2111.02. In the instant case, the system of Jorgensen is capable of performing the claimed method steps and applying a bacteriophage as its disclosed ink, adhesive or other liquid.
The limitations “for generating an electrical discharge” and “for controlling the electrical potential” are also deemed to be statements with regard to the intended use of the apparatus similarly to the above. In the instant case, the electrodes can and do operate in the same manner, despite Jorgensen using different terminology- Jorgensen teaches two electrodes (32 and 34) set up to generate a discharge therebetween, and specifically notes that one of the electrodes can be supplied power while the other can be grounded, such that the one supplied power generates the discharge and the grounded one controls the potential of the space therebetween (par. 22), exactly as claimed.
Jorgensen discloses that the electrodes (32, 34) are placed on opposite sides of the workpiece and conveyor but within the same plane formed by the conveyor, such that neither is below the conveyor or on opposite sides of that plane (figure 6). However, Nemoto discloses a similar corona discharge plasma device in which one electrode (11) is provided above the conveyor (12) and a counter electrode (14) is provided below the conveyor (12), such that they are on opposite sides of a plane formed by the conveyor (12) (par. 41, figure 2). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the electrodes of Jorgensen in the way done by Nemoto because Nemoto teaches that the arrangements and positions of the electrodes can be changed in a number of different ways (par. 41), using a known technique for a known purpose is not considered to be a patentable advance (MPEP 2143), trying from a finite number of solutions (i.e. electrodes arranged horizontally opposed or vertically opposed) is not considered to be a patentable advance (MPEP 2143E) and simple rearrangement of parts is not considered to be a patentable advance (MPEP 2144.04).
Regarding claim 39: Jorgensen and Nemoto et al. teach the above combination in which one electrode is provided above the conveyor and one below (see Nemoto et al. figure 2).
Regarding claim 40: Jorgensen discloses the above conveyor (30) which has the form of a platform such that it can be considered a conveyor platform (par. 24, figures 3-6).
The claim rejection under 35 U.S.C. 103 as unpatentable over Jorgensen in view of Nemoto and Vioel et al. (WO 2007/124921) on claim 32 is maintained. The rejection is restated below.
Regarding claim 32: Jorgensen teaches in the above modification that the conveyor can be conductive, but fails to explicitly disclose that it is electrically grounded. However, Vioel et al. discloses a similar plasma treatment system in which the conveyor belt (13) is connected to ground (6) (page 9, figures 2-4). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to electrically ground the conveyor of Jorgensen as done in Vioel et al. because Vioel et al. teaches that this enhances the safety of the apparatus (page 8, top line).
Response to Arguments
Applicant's arguments filed August 24, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that Nemoto fails to disclose a second electrode which controls the potential of the moving surface, and that adding a dielectric between the two electrodes of Jorgensen as taught by Nemoto would require a substantial redesign of Jorgensen.
In response:
Regarding the “control” of the electrical potential, Applicant’s argument fails to consider that the mere presence of an opposed counter electrode connected to a power supply inherently controls the electrical potential. In fact, this function is the entire key to how Applicant’s own invention works- Applicant’s own disclosure provides absolutely no discussion of how a second electrode with an opposing charge controls this electrical potential beyond its mere presence. Applicant’s disclosure therefore supports the idea that the presence of a counter electrode is exactly how the invention “controls the electrical potential of the moving surface”. See paragraphs 30 and 85 of the published Application. Therefore, Nemoto clearly teaches the exact same feature, and anticipates the claim. Further, while Applicant seems to disagree, the phrase “for generating an electrical discharge” and “for controlling the electrical potential” are indeed intended use limitations which impart no patentable weight to the claims. The mere presence of the counter electrode (14) of Nemoto therefore clearly reads on the claim.
Regarding the combination with Jorgensen, Applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). While Jorgensen would indeed need to be redesigned and/or modified to use the teachings of Nemoto, this does not preclude the combination from being obvious. One of ordinary skill in the art could easily determine what requires a redesign and accommodate the new feature. Furthermore, Nemoto does teach that the dielectric is not always necessary, particularly for corona discharge processes (par. 41), such that it clearly covers the arrangement of Jorgensen which does not have a dielectric between the two electrodes.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
9/1/2026
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