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 .
Claim Rejections - 35 USC § 112(b)
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.
Claim 11 recites:
11. The material of claim 9, further comprising the ledge, wherein the ledge extends along 70% or more of a total length of an upper portion of the channel. Emphasis added.
Claim 11 is indefinite because “the ledge” lacks antecedent basis. To overcome this rejection, claim 11 could be amended to read:
11. The material of claim 9, further comprising [[the]] a ledge, wherein the ledge extends along 70% or more of a total length of an upper portion of the channel.
Claim 12 recites:
12. The material of claim 1, further comprising the ridge, wherein the ridge has inter-ridge spacings of less than 50% of a largest grain dimension at a surface of the material. Emphasis added.
Claim 12 is indefinite because “the ridge” lacks antecedent basis. To overcome this rejection, claim 12 could be amended to read:
12. The material of claim 1, further comprising [[the]] a ridge, wherein the ridge has inter-ridge spacings of less than 50% of a largest grain dimension at a surface of the material.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4–14, and 27 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tertuliano et al., US 2022/0305553 A1.
Regarding claim 1, Tertuliano teaches a nanotextured copper powder, which reads on the claimed “material including a metal or alloy surface.” See Tertuliano [0013].
The powder comprises a surface topology comprising spacing between adjacent asperities (i.e., a channel) without needles or nanowires protruding from the surface, formed by an etching process. See Tertuliano [0013], [0030].
The channel is located where substrate grain boundaries intersect the surface, as claimed, because ethe etchant has grain boundary selectivity. See Tertuliano [0030]. The channel has a width of 50 nm to 1 micron, which anticipates the claimed range of a width between 0.1 and 5 microns. Id. at [0013].
With respect to the limitations describing the surface topology being “antimicrobial” and being “configured to kill or deactivate microbes,” the surface topology of Tertuliano is capable of killing or deactivating microbes because it comprises copper, which is an antimicrobial solid material. See Spec. [0004] (“common antimicrobial solids such as silver or copper deactivate pathogenic bacterial and viruses”)
Regarding claim 2, Tertuliano teaches that the metal content of the surface is 100% (as it is copper), which reads on “60 weight percent or greater.” See Tertuliano [0013].
Regarding claim 4, Tertuliano teaches that the surface is a three-dimensional solid polycrystalline substrate, as claimed, because it is copper with grain boundaries. See Tertuliano [0030]. The limitations indicating that the substrate is “formed by at least one of casting, forging, rolling, drawing, wrought, deposition, coating, or additive manufacturing” fail to patentably distinguish over the prior art because they describe the process of making the product with there being no evidence that the process limitations imply structure. See MPEP 2113, subsection I.
Regarding claims 5 and 6, Tertuliano teaches that the surface topology further comprises an asperity (a ledge, ridge or nodule), with a height (characteristic dimension) of 50 nm to 1 micron (anticipating “50 nm or less”). See Tertuliano [0013].
Regarding claim 7, Tertuliano teaches that a radius of curvature of an asperity (a ledge) at an intersection of the channel is of 50 nm to 1 micron (as the height of the asperity can be 50 nm to 1 micron), which anticipates the claimed range of 50 nm or less. See Tertuliano [0013].
Regarding claim 8, Tertuliano teaches that the material is a powder, as claimed. See Tertuliano [0013].
Regarding claim 9, Tertuliano teaches that the channel has a width of 50 nm to 1 micron, which anticipates the claimed range of 1 to 2 microns. See Tertuliano [0013].
Regarding claim 10, Tertuliano teaches that the channel has a depth of 50 nm to 1 micron, which anticipates the claimed range of greater than 0.1 microns. See Tertuliano [0013].
Regarding claim 11, Tertuliano teaches that the powder comprises an asperity (a ledge) that forms one side of the channel and therefore extends the entire length of the channel. See Tertuliano [0013]. This reads on “extends along 70% or more of a total length of an upper portion of the channel.”
Regarding claim 12, Tertuliano teaches that the powder comprises an asperity (a ridge) having spacing between adjacent asperities (inter-ridge spacing) of 50 nm to 1 micron (see Tertuliano [0013]), while the powder has a mean diameter of 10 to 70 microns (id. at [0016]), anticipating the claimed range of “inter-ridge spacings of less than 50% of a largest grain dimension at a surface of the material.”
Regarding claim 13, Tertuliano teaches that the powder comprises an asperity (a nodule) having a width, height or spacing (characteristic dimension) of 50 nm to 1 micron (anticipating “80 nm or less”). See Tertuliano [0013]. The asperity is located in an inter-grain region, as claimed, at least because the asperity of formed by etching the grain boundaries. Id. at [0030].
Regarding claim 14, Tertuliano teaches that a composition of the surface topology includes the metal (copper), as claimed. See Tertuliano [0013].
Regarding claim 27, Tertuliano teaches that the copper particle has a surface area of 10 to 70 microns. See Tertuliano [0016]. This reads on the copper particle has “a grain size distribution ranging between 0.2 and 50 microns.”
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.
Claims 1, 2, 8, 11, 12, 14, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Chung et al., US 2021/0324505 A1 and in further view of Tertuliano et al., US 2022/0305553 A1.
Regarding claim 1, Donaldson teaches a copper particle, which reads on the claimed “material including a metal or alloy surface.” See Donaldson [0043]. The surface topology of the copper particle is an “antimicrobial surface topology,” as claimed, because copper has antimicrobial properties. Id. at [0048]. The surface topology of the copper particle comprises a roughened surface formed by etching. Id. at [0043]. The surface topology of the copper particle is configured to kill or deactivate microbes, as claimed. Id. at [0048].
Donaldson differs from claim 1 because it is silent as to the structure of the etched, roughened surface. Therefore, the reference fails to provide enough information to teach the etched, roughened surface comprising a channel without needles or nanowires protruding from the surface, with the channel having a width between 0.1 to 5 microns, as claimed.
But Chung teaches an antimicrobial surface formed on a copper alloy steel by etching the surface of the metal to create a plurality of channels on the surface. See Chung [0021]. The width of each channel can be 100 nm to maximize contact between SARS-CoV-2 coronavirus with the surface of the material. Id.
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It would have been obvious for the etched, roughened surface of the copper particle in Donaldson to have channels, with each channel having a width of 100 nm to maximize contact between the surface of the particle and SARS-CoV-2 coronavirus. The prior art range of 100 nm (0.1 microns) is within the claimed range of 0.1 and 5 microns.
Donaldson as modified also differs from claim 1 because it is silent as to the channel being located where substrate grain boundaries intersect the surface.
But Tertuliano teaches a copper powder that is etched to create a nanotextured surface (surface features 50 nm to 1 micron). See Tertuliano [0013]. The etching creates spacing between asperities (i.e., channels) located where substrate grain boundaries, intersect, as claimed, because the etching technique uses an etchant with grain boundary selectivity. Id. at [0030].
It would have been obvious to use the etching technique of Tertuliano (etchant with grain boundary selectivity) as the etching process of Donaldson as modified, because this is a suitable technique for creating a roughened surface on a copper particle.
Regarding claim 2, Donaldson as modified teaches that a metal content of the surface of the copper particle is 100 weight percent because the copper particle is made of copper. See Donaldson [0005]. The prior art value of 100 weight percent is within the claimed range of 60 weight percent or greater.
Regarding claim 8, Donaldson as modified teaches that the material is in the form of a particle, which reads on “powder.” See Donaldson [0005].
Regarding claim 11, Donaldson as modified teaches that the copper particle comprises a ledge forming either side of the channel, as seen in Fig. 3 of Chung. The ledge extends along the total length of an upper portion of the channel, as seen in Fig. 3, reading on “extends along 70% or more of a total length of an upper portion of the channel.”
Regarding claim 12, Donaldson teaches that the copper particle can have surface area (large grain dimension at a surface of the material) of 5 to 45 microns (see Donaldson [0043]), while Chung teaches that the ridge on either side of the channel has a spacing of 100 nm (as this is the channel width) (see Chung Fig. 3, [0021]). This reads on “the ridge has inter-ridge spacings of less than 50% of a largest grain dimension at a surface of the material.”
Regarding claim 14, Donaldson as modified teaches that the composition of the antimicrobial surface topology includes copper (the “metal”). See Donaldson [0005].
Regarding claim 27, Donaldson teaches that the copper particle has a surface area of 5 to 45 microns. See Donaldson [0043]. The surface area is interpreted as diameter, because the units are in microns instead of square microns. This reads on the copper particle has “a grain size distribution ranging between 0.2 and 50 microns.”1
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Chung et al., US 2021/0324505 A1 in view of Tertuliano et al., US 2022/0305553 A1 and in further view of “Copper” (May 21, 2020).2
Regarding claim 4, Donaldson teaches that the surface of the copper particle (the “metal or alloy surface”) is a three-dimensional solid substrate, as claimed, at least because it is an etched surface.
Donaldson differs from claim 4 because it is silent as to whether the copper is polycrystalline.
But “Copper” teaches that copper is usually supplied in a polycrystalline form, which has greater strength than monocrystalline forms. See “Copper” (Characteristics, Physical).
It would have been obvious for the copper of the copper particle of Donaldson to be polycrystalline to increase the strength of the material.
The limitations of the surface being “formed by at least one of casting, forging, rolling, drawing, wrought, deposition, coating, or additive manufacturing” fails to patentably distinguish over the prior art because they describe the process of making the claimed product with there being no evidence that the process steps structurally distinguish over the prior art. See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production unless the process steps impart structure).
Claims 5–7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Chung et al., US 2021/0324505 A1 in view of Tertuliano et al., US 2022/0305553 A1 and in further view of Barzel et al., US 2020/0131540 A1.
Regarding claims 5–7 and 13, Donaldson as modified teaches the limitations of claim 1, as explained above.
Donaldson as modified differs from claims 5–7 because it is silent as to the surface topology further comprising one or more of a ledge, ridge, or a nodule with a characteristic dimension being 50 nm or less (claim 6), a radius of curvature of the ledge at an intersection of the channel with the surface being 50 nm or less (claim 7), or the nodule having a characteristic dimension of 80 nm or less with the nodule being located in an intra-grain region (claim 13).
But Chung teaches that that, in addition to the channels, the surface topology further comprises pillars (ledge, ridge, or nodule) with a characteristic dimension selected to increase maximize an amount of surface area of the target microbe, with the dimensions of the pillars selected depending on the target microbe. See Chung [0021]. Also, Barzel teaches that viruses typically range in diameter from about 20 to 300 nm. See Barzel [0032].
It would have been obvious for the surface topology of the copper particle of Donaldson to comprise pillars (a ledge, ridge, or nodule) to maximize contact between the microbe and the copper particle. It also would have been obvious to use routine experimentation to determine the desired dimensions of each pillar depending on the target microbe. See MPEP 2144.05, subsection II (where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation). A person of ordinary skill in the art would have had a reasonable expectation of success of achieving the ranges of claims 6, 7, and 13 because Barzel teaches that viruses can range from 20 to 300 nm in diameter. For claim 13, each would be located in an intra-grain region because the etching technique of Tertuliano uses an etchant with grain boundary selectivity. See Tertuliano [0030].
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Chung et al., US 2021/0324505 A1 in view of Tertuliano et al., US 2022/0305553 A1 and in further view of Griffith, US 2016/0038650 A1.
Regarding claims 9 and 10, Donaldson as modified teaches the limitations of claim 1, as explained above.
Donaldson as modified differs from claim 9 because it is silent as to the channel having a width of 1 to 2 microns. Donaldson as modified differs from claim 10 because it is silent as to the channel having a depth greater than 0.1 microns.
But Chung teaches that the width of the channel is selected to match the diameter of the target microbe. See Chung [0021]. The microbes may be bacteria. See Chung [0023]. Also, Griffith teaches that most bacteria of 1 to 2 microns in diameter. See Griffith [0082]. Therefore, it would have been obvious for the width and depth of the channel to be 1 to 2 microns when the target microbe is bacteria.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Bernard, US 2006/0021302 A1 in view of Donaldson et al., US 2022/0143538 A1 in view of Chung et al., US 2021/0324505 A1 and in further view of Tertuliano et al., US 2022/0305553 A1.
Regarding claim 26, Bernard teaches an air filter, which reads on the claimed “air filter.” See Bernard [0002]. The air filter comprises:
A filter media 12 made of fibers, which reads on the “fibrous filter media.” See Bernard Fig. 1, [0019].
A plurality of prophylactic (i.e., antimicrobial) particles 26, which can be biocidal metals. See Bernard Fig. 2, [0024]–[0025].
The plurality of prophylactic particles are fused to the fibers by heating to a temperature sufficient to at least partially melt the fibers to fuse the particles to the fibers, as claimed. See Bernard [0042].
Bernard differs from claim 26 because it is silent as to the structure of the antimicrobial metal particles 26. Therefore, the reference fails to provide enough information to teach all of the claimed details regarding the “plurality of metal or alloy particles.”
But Donaldson teaches an air filter comprising antimicrobial copper particles having an average surface area (interpreted as grain size) of 5 to 45 microns. See Donaldson [0043]. Donaldson teaches that each copper particle has an antimicrobial surface topology formed by an etching process. Id. While Donaldson is silent as to the surface topology comprising a channel without needles or nanowires protruding from the surface, with the channel being located where grain boundaries of the particles intersect and having a width of 0.1 to 5 microns—Chung teaches an antimicrobial surface formed on a copper alloy steel by etching the surface of the metal to create a plurality of channels on the surface. See Chung [0021]. The width of each channel can be 100 nm to maximize contact between SARS-VoV-2 coronavirus with the surface of the material. Id. Also, Tertuliano teaches a copper powder that is etched to create a nanotextured surface (surface features 50 nm to 1 micron). See Tertuliano [0013]. The etching creates spacing between asperities (i.e., channels) located where substrate grain boundaries, intersect, as claimed, because the etching technique uses an etchant with grain boundary selectivity. Id. at [0030]. It would have been obvious for the etched, roughened surface of the copper particle in Donaldson to have channels, with each channel having a width of 100 nm to maximize contact between the surface of the particle and SARS-VoV-2 coronavirus. The prior art range of 100 nm (0.1 microns) is within the claimed range of 0.1 and 5 microns. It also would have been obvious to use the etching technique of Tertuliano (etchant with grain boundary selectivity) as the etching process of Donaldson as modified, because this is a suitable technique for creating a roughened surface on a copper particle.
It would have been obvious to use the modified copper particles of Donaldson as the antimicrobial metal particles 26 in Bernard to provide particles that have improved performance against SARS-CoV-2 coronavirus.
Response to Arguments
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections in light of the amendments.
35 U.S.C. 103 Rejections
Applicant’s arguments with respect to the elected claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Foss et al., US 2003/0170453 A1 (anti-microbial fiber having copper particles embedded in mutli-component fiber).
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 T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
1 Note that even if the surface area was reported in square microns, the prior art range of a surface area of 5 to 45 square microns converts to a diameter of 1.26 to 3.78 microns (assuming the particles are spherical). The prior art range of 1.26 to 3.78 microns is within the claimed range of 0.2 to 50 microns.
2 https://web.archive.org/web/202006020038929/https://en.wikipedia.org/wiki/Copper
