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.
Claims 14 and 27 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 14 recites:
14. The material of claim 1, wherein a composition of the antimicrobial surface topology includes the metal or alloy, or compounds of the metal or alloy in combination with one or more of oxygen, nitrogen, carbon, phosphorous, sulfur, or chlorine. Emphasis added.
Claim 14 is indefinite because it is unclear if “in combination with one or more of” only modifies “compounds of the metal or alloy” or if it modified both “the metal or alloy” and “compounds of the metal or alloy.” To overcome this rejection, claim 14 could be amended to read:
14. The material of claim 1, wherein a composition of the antimicrobial surface topology includes the metal or alloy in combination with one or more of oxygen, nitrogen, carbon, phosphorous, sulfur, or chlorine, or compounds of the metal or alloy in combination with one or more of oxygen, nitrogen, carbon, phosphorous, sulfur, or chlorine.
Claim 27 recites:
27. The material of claim 1, wherein the metal or allow surface comprises a grain size distribution ranging between 0.2 microns and 50 microns. Emphasis added.
Claim 27 is indefinite because “the…allow” lacks antecedent basis. To overcome this rejection, claim 27 could be amended to read:
27. The material of claim 1, wherein the metal or alloy surface comprises a grain size distribution ranging between 0.2 microns 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, 5–14, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Wantanabe et al., US 2020/0188881 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 at least one of a ledge, ridge, or channel without needles or nanowires protruding from the surface, as claimed.
But Watanabe teaches a metal base material that is subjected to an etching process to roughen the surface, where the etching process creates recesses 20 (channels) and edges 21 (ledges, ridges), without needles or nanowires protruding from the surface. See Watanabe Fig. 2B, [0007].
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It would have been obvious for the etched, roughened surface of the copper particle of Donaldson to comprises recesses and edges, without needles or nanowires protruding from the surfaces, because this is a conventional structure that is created when a material is etched to roughen the surface.
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 5, Donaldson as modified teaches that the surface topology of the particle includes the edges 21 (the “ledge,” “ridge”) and recesses 20 (the “channel”), as noted above. The edges 21 and recesses 20 have a “characteristic dimension,” which is some measurable extent of the edges 21 and recesses 20.
Regarding claims 6, 9, 10, and 12, Donaldson as modified teaches the limitations of claims 1 and 5, as explained above.
Donaldson as modified differs from claims 6, 9, 10, and 12 because it is silent as to the dimensions of the particle. Therefore, the reference fails to provide enough information to teach the characteristic dimension is 50 nm or less (claim 6), the channel having a width between 0.1 and 5 microns, inclusive (claim 9), the channel has a depth greater than 0.1 microns (claim 10), or the ridge has inter-ridge spacings of less than 50% of a largest grain dimension at a surface of the material (claim 12).
But the particle has a surface area of 7 to 45 microns. See Donaldson [0042]. Also, the particle is etched to roughen the surface. Id. at [0043]. Donaldson also suggests that the dimensions of the etched surface are result effective because they affect the surface area available for reaction. Id. It would have been obvious to use routine experimentation to determine the optimal dimensions of the recesses 20 and edges 21 of the etched surface of the particle of Donaldson to achieve the desired surface area available for reaction. 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 in achieving the claimed ranges of the characteristic dimension is 50 nm or less, the recess 20 (the “channel”) having a width of 0.1 to 5 microns, the recess 20 having a depth of greater than 0.1 micron, and the edge 21 (the “ridge”) having inter-ridge spacings of less than 50% of a largest grain dimension at a surface of the material, because the recesses 20 and edges 21 are on formed on the surface of the particle, with the particle itself being relatively small at 7 to 45 microns.
Regarding claim 7, Donaldson as modified teaches that the characteristic dimension is a radius of curvature, which is the radius of curvature of each recess 20 formed on the particle, which is interpreted as being roughly spherical.
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 edge 21 (the “ledge”) extends along 100% of a total length of an upper portion of the recess 20 (the “channel”), as seen in Fig. 2B of Watanabe. This reads on “the ledge extends along 70% or more of a total length of an upper portion of the channel.”
Regarding claim 13, Donaldson as modified teaches that the particle comprises the edges 21, as explained in the rejection of claim 1 above, and one of the edges 21 reads on the “nodule.” The edge 21 is located in an intra-grain region, as claimed, because it is on the particle.
Donaldson as modified differs from claim 13 because it is silent as to the dimensions of the particle. Therefore, the reference fails to provide enough information to teach the edge 21 has a characteristic dimension of 80 nm or less. But the particle has a surface area of 7 to 45 microns. See Donaldson [0042]. Also, the particle is etched to roughen the surface. Id. at [0043]. Donaldson also suggests that the dimensions of the etched surface are result effective because they affect the surface area available for reaction. Id. It would have been obvious to use routine experimentation to determine the optimal dimensions of the edge 21 to optimize the surface area available for reaction. A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of 80 nm or less because the edges 21 are on formed on the surface of the particle, with the particle itself being relatively small at 7 to 45 microns.
Regarding claim 14, Donaldson as modified teaches that the composition of the antimicrobial surface topology includes copper (the “metal”). See Donaldson [0005]. Donaldson as modified differs from claim 14 because it is silent as to the copper including one or more of oxygen, nitrogen, carbon, phosphorous, sulfur, or chlorine. But the copper particles are exposed to air, and copper oxidizes when exposed to oxygen in air. See Donaldson [0003]. Therefore, it would have been obvious for some of copper of the surface topology to oxidize when exposed to air because the copper particle is exposed to air and copper oxidizes when exposed to air. This reads on the “antimicrobial surface topology includes the metal…in combination with…oxygen.”
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
Regarding claim 26, Donaldson teaches a filtration system for air, which reads on the claimed “air filter.” See Donaldson [0003], [0005].
The filtration system comprises:
A barrier layer made from a textile filter media. See Donaldson [0005], [0054]. The barrier layer reads on the “fibrous filter media.”
Copper particles coated on the barrier layer. See Donaldson [0005], [0053]. Copper particles read on the “plurality of metal or alloy particles coupled to a surface of fibers of the filter media.”
The copper particles have an “antimicrobial surface topology,” as claimed, because copper has antimicrobial properties. See Donaldson [0048]. The surface topology of the copper particles comprises a roughened surface formed by etching. Id. at [0043]. The surface topology of the copper particles is configured to kill or deactivate microbes, as claimed. Id. at [0048].
The copper particles have 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 particles have “an average grain size between 0.2 and 50 microns.”2
Donaldson differs from claim 26 because it is silent as to the structure of the etched, roughened surface of each copper particle. Therefore, the reference fails to provide enough information to teach the etched, roughened surface of each copper particle comprises at least one of a ledge, ridge, or channel without needles or nanowires protruding from the surface, as claimed.
But Watanabe teaches a metal base material that is subjected to an etching process to roughen the surface, where the etching process creates recesses 20 (channels) and edges 21 (ledges, ridges), without needles or nanowires protruding from the surface. See Watanabe Fig. 2B, [0007].
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It would have been obvious for the etched, roughened surface of the copper particles of Donaldson to comprises recesses and edges, without needles or nanowires protruding from the surfaces, because this is a conventional structure that is created when a material is etched to roughen the surface.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Wantanabe et al., US 2020/0188881 A1 and in further view of “Copper” (May 21, 2020)3.
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 having the recesses 20 and edges 21 of Wantanabe.
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).
Claim Rejections - 35 USC § 103
Claims 1, 2, 5–14, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Nakahara et al., US 2016/0121005 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 is configured to kill or deactivate microbes, as claimed. Id.
Donaldson differs from claim 1 because it is silent as to the surface topology comprising at least one of a ledge, ridge, or channel without needles or nanowires protruding from the surface.
But the surface of the particles can be roughened through etching. See Donaldson [0043]. Also, as noted, the particles are antimicrobial. Id. at [0048].
With this in mind, Nakahara teaches an antimicrobial structure comprising a film having nanopillars that extend from the surface of the film. See Nakahara [0001], [0074]. Each nanopillar is a “ledge” or “ridge” because each nanopillar is a pillar. Also, the space between adjacent nanopillars is a “channel.” The nanopillars are not needles or nanowires, at least because each nanopillar is a conical structure with a tip portion that is rounded. Id. The nanopillars are beneficial because they kill bacteria. Id. at [0009].
It would have been obvious for the roughness on the surface of the particle of Donaldson to be the nanopillars of Nakahara to improve the ability of the particle to kill microbes.
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 5, Donaldson as modified teaches that each nanopillar (the “ledge,” or “ridge”) and space between adjacent nanopillars (the “channel”) have a “characteristic dimension,” which is a dimension of the nanopillar and space between adjacent nanopillars.
Regarding claim 6, Donaldson as modified teaches that the characteristic dimension is 20 to 100 nm, which overlaps with the claimed range of 50 nm or less. See Nakahara [0018].
Regarding claim 7, Donaldson teaches that the characteristic dimension is a radius of curvature of the space between adjacent nanofibers, as the space will have a radius of curvature as it is provided on the side of the particle of Donaldson, which is interpreted as being roughly spherical.
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 9, Donaldson as modified teaches that the space between adjacent nanopillars (the “channel”) has a width (Dint) between 20 to 1,000 nm (0.02 to 1 micron). See Nakahara [0069]. The prior art range of 0.02 to 1 micron overlaps with the claimed range of 0.1 to 5 microns, establishing a prima facie case of obviousness.
Regarding claim 10, Donaldson as modified teaches that the space between adjacent nanopillars (the “channel”) has a depth of 50 to 500 nm (0.05 to 0.5 microns) because each nanopillar has a height of 50 to 500 nm. See Nakahara [0015]. The prior art range of 0.05 to 0.5 microns overlaps with the claimed range of greater than 0.1 microns.
Regarding claim 11, Donaldson as modified teaches that the nanopillar (the “ledge”) extends along 100% of a total length of an upper portion of the space between nanopillars (the “channel”), which is the length of an upper portion of the space formed along one of the nanopillars. The prior art range of 100% is within the claimed range of 70% or more.
Regarding claim 12, Donaldson as modified teaches that the nanopillar (the “ridge”) has a spacing between an adjacent nanopillar (Dint) (“inter-ridge spacings”) between 20 to 1,000 nm (0.02 to 1 micron). See Nakahara [0069]. The largest grain size of the particle is 45 microns. See Donaldson [0043]. Therefore, the “inter-ridge spacings” are 0.04 to 2% of a largest grain dimension at a surface of the particle, which is within the claimed range of less than 50%.
Regarding claim 13, Donaldson as modified teaches that the nanopillar (the “nodule”) has a height (“characteristic dimension”) of 50 to 500 nm. See Nakahara [0015]. The prior art range of 50 to 500 nm overlaps with the claimed range of 80 nm or less, establishing a prima facie case of obviousness. The nanopillar is located in an intra-grain region, as claimed, because the nanopillar is located on the surface of the particle.
Regarding claim 14, Donaldson as modified teaches that the composition of the antimicrobial surface topology includes copper (the “metal”). See Donaldson [0005]. Donaldson as modified differs from claim 14 because it is silent as to the copper including one or more of oxygen, nitrogen, carbon, phosphorous, sulfur, or chlorine. But the copper particles are exposed to air, and copper oxidizes when exposed to oxygen in air. See Donaldson [0003]. Therefore, it would have been obvious for some of copper of the surface topology to oxidize when exposed to air because the copper particle is exposed to air and copper oxidizes when exposed to air. This reads on the “antimicrobial surface topology includes the metal…in combination with…oxygen.”
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.”4
Regarding claim 26, Donaldson teaches a filtration system for air, which reads on the claimed “air filter.” See Donaldson [0003], [0005].
The filtration system comprises:
A barrier layer made from a textile filter media. See Donaldson [0005], [0054]. The barrier layer reads on the “fibrous filter media.”
Copper particles coated on the barrier layer. See Donaldson [0005], [0053]. Copper particles read on the “plurality of metal or alloy particles coupled to a surface of fibers of the filter media.”
The copper particles have an “antimicrobial surface topology,” as claimed, because copper has antimicrobial properties. See Donaldson [0048]. The surface topology of the copper particle is configured to kill or deactivate microbes, as claimed. Id.
The copper particles have 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 particles have “an average grain size between 0.2 and 50 microns.”5
Donaldson differs from claim 26 because it is silent as to the surface topology comprising at least one of a ledge, ridge, or channel without needles or nanowires protruding from the surface.
But the surface of the particles can be roughened through etching. See Donaldson [0043]. Also, as noted, the particles are antimicrobial. Id. at [0048].
With this in mind, Nakahara teaches an antimicrobial structure comprising a film having nanopillars that extend from the surface of the film. See Nakahara [0001], [0074]. Each nanopillar is a “ledge” or “ridge” because each nanopillar is a pillar. Also, the space between adjacent nanopillars is a “channel.” The nanopillars are not needles or nanowires, at least because each nanopillar is a conical structure with a tip portion that is rounded. Id. The nanopillars are beneficial because they kill bacteria. Id. at [0009].
It would have been obvious for the roughness on the surface of the particles of Donaldson to be the nanopillars of Nakahara to improve the ability of the particles to kill microbes.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al., US 2022/0143538 A1 in view of Nakahara et al., US 2016/0121005 A1 and in further view of “Copper” (May 21, 2020)6.
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 having the recesses 20 and edges 21 of Wantanabe.
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).
Response to Arguments
35 U.S.C. 112(a) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(a) rejection of claim 8 in light of the amendments.
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections in light of the amendments.
Claim Objections
The Examiner withdraws the previous objection to claim 4 in light of the amendments.
35 U.S.C. 103 Rejections
Applicant’s arguments with respect to the previous rejections under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made, as explained in more detail above.
Conclusion
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.
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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 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.
3 https://web.archive.org/web/202006020038929/https://en.wikipedia.org/wiki/Copper
4 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.
5 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.
6 https://web.archive.org/web/202006020038929/https://en.wikipedia.org/wiki/Copper
Prosecution Insights