DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of t/e previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/28/2025 has been entered.
Status of Application
The Examiner acknowledges receipt of the amendments filed on 4/28/2025 wherein claim 1 has been amended and claim 38 has been added.
Claims 1, 2, 4-7, 14, 24, 37 and 38 are presented for examination on the merits. The following rejections are made.
Response to Applicants’ Arguments
Applicant’s amendments/arguments filed 4/28/2025 overcome the rejection of claims 1, 2, 4-7, 14 and 24 made by the Examiner under 35 USC 102(a)(1) over Kelleher et al. (US 2017/0183545). This rejection is withdrawn as Kelleher requires an intermediate layer (adhesive layer) between the metallic antimicrobial film and the surface to be modified by the film. Thus, the metal is not applied directly to the surface as required by the instant claims.
Applicant’s amendments/arguments filed 4/28/2025 regarding the rejection of claims 1, 2, 4-7, 14 and 24 made by the Examiner under 35 USC 102(a)(1) over Roussel et al. (US 8962086) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 12/27/2025.
In regards to the 102(a) rejection, Applicant asserts the following:
Roussel does not teach the two main claim elements that are required by the currently pending claims, namely the application to common touch surfaces to impart antimicrobial effect. Roussel is instead focused on improving electroless deposition. Roussel’s method teaches the use of an autocatalytic step which is neither taught not suggested by the claimed invention.
In response to A, the structure of Roussel remains identical to that sought and so any properties, recognized and unrecognized, would inherently be present. See MPEP 21112. That is, the electroless metal coating layer providing antibacterial activity would a necessary result of the structure claimed.
Regarding the two main elements pointed to in the response, these are not seen as differentiating. In the first regard, surfaces being ‘common touch’ are identified by instant claim 7 and include ‘a hand grip, hand hold, a hand actuator, and the common touch surface includes a location designed for repeatable contacted by a hand of multiple hosts.” Roussel identifies myriad surfaces, some which would be fairly characterized as “common touch”, including “a door handle”. As to instant claim 7, “a door handle” would read on a hand grip, a hand actuator or a location designed for repeatable contact by a hand of multiple hosts.
As to the antimicrobial activity of the surface, the nature of Roussel’s invention would necessarily yield an antimicrobial surface. As discussed above, the structure of Roussel’s composition is the same as that claimed and thus would possesses the same properties absent evidence otherwise.
The argument that the oxidation layer of Roussel puts an intermediate layer between the substrate and the metal layer is not persuasive. The oxidation of the surface is still the surface of the substrate. The oxidation process just renders the surface able to bond and retain the deposited metal. Roussel states that their “invention relates to a substrate made of nonmetallic material, at least one surface of which is coated with a metal activation layer constituted of atoms of a metal that are bonded, through metal-ligand interaction, directly to the constituent material of the substrate by carboxylic (--COOH), hydroxyl (--OH), alkoxyl (--OR), carbonyl (--C=O), percarbonic (--CO--O--OH), nitro (N=O) or amide (--CONH) groups, said activation layer being covered with a layer of an identical or different metal deposited by autocatalytic deposition”. See column 9, lines 32-41. Thus, Roussel’s oxidation process provides a surface that enables the metal to be directly bound to the surface via metal-ligand interaction. The Examiner is not persuaded that the oxidative process described by Roussel results in an intervening layer contrary to that claimed as the ligands produced from oxidative process produces a surface that enables the metal to be “directly” bonded to the surface being treated.
Regarding an autocatalytic step, this is a product-by-process limitation and not considered relevant to the resulting structure so long as the outcome is a structure overlapping with that claimed. Applicant’s arguments are not considered persuasive.
Maintained Rejections, of Record and New Rejection, Necessitated by Amendment (instant claim 37)
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 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, 4-7, 14, 24, 37 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roussel et al. (US 8962086; of record).
Roussel is directed to a substrate comprising a nonmetallic metallic surface coated with a metallic layer (see claim 1) wherein the metallic layer (e.g. copper metal, silver metal; see column 5, lines 50-55) has a thickness ranging from a few nanometers to several hundred microns (see column 4, lines 12-15) (see instant claims 1, 24 and 37). It is noted that ‘a few nanometers’ lies directly within the ranges set forth by instant claims 1 and 24.
Metallic copper is understood as synonymous with ‘elemental copper’ as recited by instant claims 4 and 5.
Exemplified substrate surfaces include automobile body elements, aircraft fuselage or wing elements and door handles (i.e. ‘hand grip’, ‘hand hold’, ‘hand actuator’) (see column 3, line 66 to column 4, line, 2) (see instant claims 7, 14 and 37). Each of these substrate surfaces fall under the broad category of ‘transportation equipment’ (the elected species).
Regarding the metal layer being applied to the surface without a presence of an intervening layer, Roussel states that their “invention relates to a substrate made of nonmetallic material, at least one surface of which is coated with a metal activation layer constituted of atoms of a metal that are bonded, through metal-ligand interaction, directly to the constituent material of the substrate by carboxylic (--COOH), hydroxyl (--OH), alkoxyl (--OR), carbonyl (--C=O), percarbonic (--CO--O--OH), nitro (N=O) or amide (--CONH) groups, said activation layer being covered with a layer of an identical or different metal deposited by autocatalytic deposition”. See column 9, lines 32-41. Roussel’s describes a surface that enables the metal to be “directly” bound to the surface via metal-ligand interaction.
Instant claim 2 requires ‘the antimicrobial metal layer is not applied to areas of the device that are not at the common touch surface’, however, as the entire surface of the substrate is defined as the ‘common touch surface’ the carrying forward of Roussel’s disclosure on the noted substrates, e.g. door handles, would result in a coating being applied only on to an area broadly considered ‘common touch’ as Roussel clearly defines the surfaces to be coated (which overlap with the claimed surfaces). It is noted that ‘common touch’ is extremely broad and does not provide any guidance as to what surface would/would not be considered ‘common touch’.
Regarding instant claim 3, this is a product-by-process claim (‘wherein the antimicrobial metal layer is an electroless deposition of an elemental metal layer or an electroless deposition of metal alloy layer position on the common touch surface’). See MPEP 2113. Generally, product-by-process limitations do not limit the patentability of a product unless the process results in a structurally distinguishing result. Here, however, Roussel discloses a substrate surface comprising a metal layer coated thereon wherein the metal coating is provided by electroless deposition (see column 3, lines 18-19) resulting in a product identical with that claimed.
Roussel states that the nonmetallic surface must first be treated so as to obtain good adhesion of the metal layer to the surface. Such surface treatments include the cleaning of all contaminants (see column 3, lines 37-40) (see instant claim 38). Further, regarding instant claim 38, this appears to be a product-by-process limitation as the claim describes the process of making the metallicized surface rather than describe structure/limitations relevant to the surface. Nonetheless, Roussel describes the means by which the surface is treated prior to application of the metal which overlaps with that claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611