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 .
FINAL ACTION
Response to Amendment
The amendment filed on 4/07/2026 has been received and claims 1-19 and 21 are pending.
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 13-19 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. Specifically, there is no written description support for the configuration set forth by the limitation “an artificial UV source is directed to impinge ultraviolet ("UV") radiation onto the interior object when the artificial UV source is powered on, the artificial UV source being designed to emit radiation at a UVC wavelength suitable for disinfection” within the Specification, particularly the configuration where the interior object comprises an artificial UV source since Figure 1 and [0021]-[0022] indicates that a system 10 comprises an artificial UV source along with an interior object rather than an interior object which comprises an artificial UV source.
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 13-19 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.
In Claim 13, it is not clear whether the limitation “wherein an artificial UV source is directed to impinge ultraviolet ("UV") radiation onto the interior object when the artificial UV source is powered on, the artificial UV source being designed to emit radiation at a UVC wavelength suitable for disinfection” is attempting to set forth that the interior object comprises “an artificial UV source … [that is] designed to emit radiation at a UVC wavelength suitable for disinfection” or that the interior object is positioned/utilized in a location where an external/artificial light source such as an artificial UV source can/will irradiate the interior object for disinfection purposes.
Claim Rejections - 35 USC § 102
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(s) 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshikawa (20050260786).
As to Claims 13-14, Yoshikawa (‘786) discloses an object (i.e. wall material) capable of being an interior object in the form of an interior/indoor wall comprised of:
a polymer substrate (21; 39A; 41a; 41b; 40A; 40B); and
a continuous inorganic film (22; 39C; 39E) on the polymer substrate (21; 39A; 41a; 41b; 40A; 40B), the continuous inorganic film (22; 39C; 39E) having a property of absorbing UV radiation at a UVC wavelength (intrinsically present in sunlight) suitable for disinfection;
wherein an artificial UV source is capable of being directed to impinge ultraviolet ("UV") radiation onto the interior object when the artificial UV source is powered on, the artificial UV source capable of being designed to emit radiation at a UVC wavelength suitable for disinfection; and
wherein the continuous inorganic film (22; 39C; 39E) comprises a semiconductor comprising tin oxide, fluorinated tin oxide and mixtures thereof (see entire document, particularly p. 20 [0319] and [0321], p. 25 [0404] and [0420]).
The limitation “wherein an artificial UV source is directed to impinge ultraviolet ("UV") radiation onto the interior object when the artificial UV source is powered on, the artificial UV source being designed to emit radiation at a UVC wavelength suitable for disinfection” is deemed to be directed to an intended use of the claimed interior object where “an artificial UV source” is deemed not to be a component of an interior object and thus, does not have patentable weight.
As to Claim 15, Yoshikawa (‘786) discloses that the polymer substrate (21; 39A; 41a; 41b; 40A; 40B) comprises a polymer chosen from polyethylene terephthalate (PET), polyvinyl chloride (PVC), polyurethanes, polyethylene, or any combination thereof (see entire document, particularly p. 16 [0247], p. 18 [0296], p. 25 [0404] and [0420]).
As to Claim 16, the semiconductor of Yoshikawa (‘786) intrinsically (due to possessing the same/as claimed semiconductor material) comprises a bandgap that is greater than 3.1 eV and less than or equal to 6.9 eV.
As to Claim 17, Yoshikawa (‘786) discloses that the semiconductor further comprises a material chosen from titanium dioxide, anatase, indium tin oxide and mixtures thereof (see entire document, particularly p. 20 [0319] and [0321]).
As to Claims 18-19, Yoshikawa (‘786) discloses that the continuous inorganic film (22; 39C; 39E) is an insulator in the form of indium oxide (see entire document, particularly p. 20 [0321]).
Allowable Subject Matter
Claims 1-12 and 21 are allowed.
The following is an examiner’s statement of reasons for allowance: the primary reason for allowance of the claims is due to amendment of the claims which overcomes the prior art of record (i.e. Honda (20130236710) in view of Noda (Cn101148099). In addition, while prior art of Yoshikawa (20050260786) discloses an object capable of being an interior object such as a wall comprised of a continuous inorganic semiconductor film (22; 39C; 39E) comprising a material such as fluorine-doped tin oxide (see rejection of claim 13 in paragraph 5 above) on a polymer substrate (21; 39A; 41a; 41b; 40A; 40B), Yoshikawa (‘786) discloses that s source of UV radiation is from a natural UV source (i.e. sun) rather than from an artificial UV source; thus, it would not have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the object of Yoshikawa along with an artificial ultraviolet source as is in the claimed invention for a UV radiation disinfection system as set forth in claims 1 and 21.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 4/07/2026 have been fully considered but they are not persuasive. Specifically, as to applicant’s argument in lines 1-11 on p. 7 of Remarks, examiner points out that 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. In addition, as to applicant's argument in lines 7-8 on p. 7 of Remarks, examiner points to the rejections as set forth in paragraphs 3, 6 and 8 above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 REGINA M YOO whose telephone number is (571)272-6690. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at (571)270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REGINA M YOO/ Primary Examiner, Art Unit 1758
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