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 .
Receipt is acknowledged of Applicant’s Restriction Requirement Response filed on 11/17/2025; and IDS filed on 11/18/2025 and 11/26/2022.
Claims 1-18 are pending in the instant application.
Claims 10-18 are withdrawn from further consideration.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on 11/17/2025 is acknowledged.
Applicant's specie election with traverse of “silver oxide, silver hydroxide, silver halogenide and/or silver sulfide” (claim 8) in the reply filed on 11/17/2025 is acknowledged. The traversal is on the ground(s) that the Office has not provided the required reasoning why the species election is warranted. E.g., no reasoning under MPEP 1893.03(d) was provided (nor under MPEP 803). This is not found persuasive because, as discussed in the restriction requirement, these species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1, especially when the features of the silver semiconductor of the second half cell are in different claims. However, upon further examination, it appears claims 6-7 only recites the functional properties of claim 8. Thus, the species of claim 6-7 will not be withdrawn from further consideration.
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 17/926,580 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-application recites hybrid material provided as an additive relating to materials, substances and/or coating materials for producing an antimicrobial, antiviral and/or fungicidal effect comprising: particles, each of which comprising at least one carrier material being at least partially coated with at least two different metals, wherein at least one first metal and one second metal of the two different metals are, at least with their respective surfaces, in electrically conductive contact to each other, wherein the first metal comprises at least one semiconductive compound of at least one transition metal element, which exhibits multiple oxidation states and allows a change of the oxidation states via catalytically active centers, and the second metal comprises at least one electrically conductive silver semiconductor, wherein both, the first metal and the second metal, establish half cells which are short-circuited in presence of water and oxygen and thus develop an antimicrobial, antiviral and/or fungicidal effect, and wherein the carrier material further comprises at least one material adapted to the substance and/or the coating material and a use of the substance and/or the coating material (see claim 1), wherein the transition metal compound of the first metal comprises ruthenium present in one or both of the oxidation states VI and IV.
The difference between instant application and the patented claims is that the patent claims include additional limitations. Thus, the invention of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”, and, therefore, the application claims are not patentably distinct from the claims of the patent and are rejected on the ground of nonstatutory obviousness-type double patenting. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1, 3-4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JYONOSONO et al (Preparation of Silver Sulfide-Coated Nickel Sulfide Monodispersed Fine Particles for Use in Solid-State Nickel Ion Selective Electrodes. Sensors and Materials, Vol.12, No. 8 (2000) 491-507; see IDS filed on 11/28/2022).
JYONOSONO teaches an electrode composition comprised of: particles of silver sulfide and nickel sulfide, wherein the particles are in contact of each other (see pg. 495, Fig1(b), wherein the Fig1(b) is provided below),
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which reads on the first half cell comprises a transition metal element, such as nickel sulfide (see Applicant’s claims 3-4), and the second half cell comprises silver, such as silver sulfide (see Applicant’s claims 8).
Note, the recitation of an intended use or an effect of a composition merely has a descriptive character. Applicant may have to demonstrate that the recited use or the effect is not possible with reference’s composition which has the same ingredients as claimed by Applicant.
Claim(s) 1-4, 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CLAUSS et al (Stress response of a clinical Enterococcus faecalis isolate subjected to a novel antimicrobial surface coating. Microbiological Research 207 (2018) 53–64).
CLAUSS teaches the prior art had known of a micro-galvanic element (see abstract) composition for antimicrobial coating (see title) called AGXX® (see abstract) comprised of: silver and ruthenium (see abstract), wherein the silver is silver chloride., which reads on the second half is a silver semiconductor and ruthenium reads on the first half is a transition metal element.
Additional disclosures include: “Two metals in electrical contact form a galvanic cell. The AGXX® surface consists of micro-galvanic elements formed by Ag and Ru. Ag
represents the anode and is oxidized to Ag+-ions or insoluble silver halides (depending on the electrolyte) and Ru represents the cathode. According to the electrochemical series the redox potential of Ag/Ag+ is more positive than that of Ru/Ru3+. In the presence of chloride ions (Cl−) the redox potential of Ag shifts to more negative potentials due to the formation of silver chloride (AgCl). In an aqueous environment Ru forms insoluble hydrous oxides (with different oxidation states), which exhibit good catalytic properties with regard to generation and reduction of O2 and electrical conductivity. The reduction of O2 can take place in two 2-electrontransfers with H2O2 being formed as an intermediate. Depending on the pH-value two different reactions are possible that each lead to a pH-shift to the alkaline range. The cell voltage of a galvanic cell depends on the material of the electrodes and the composition of the electrolyte. We measured the cell voltage between sheets of Ag and Ru immersed in an electrolyte containing different concentrations of Cl−” (see pg. 58-59, at section 3.9; and pg. 62 at Fig. 6, which is provided below).
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Claim(s) 1-4, 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LANDAU (LandauU. (2013). AGXX - Eine nachhaltige Lösung für die Entkeimung wässriger Lösungen. Galvanotechnik11, 2169–2184; See IDS filed on 11/28/2022, wherein a machine translation is provided) as evidence by CLAUSS et al (Stress response of a clinical Enterococcus faecalis isolate subjected to a novel antimicrobial surface coating. Microbiological Research 207 (2018) 53–64).
LAUNDAU teaches AGXX®, which is comprised of silver chloride and ruthenium, immersed in K2S (potassium sulfide) solution resulting in a layer of silver sulfide generated on the AGXX silver chloride surface (see translated page 8 and Fig. 8).
As discussed above, CLAUSS teaches a micro-galvanic element (see abstract) composition for antimicrobial coating (see title) called AGXX® (see abstract) comprised of: silver and ruthenium (see abstract), wherein the silver is silver chloride., which reads on the second half is a silver semiconductor and ruthenium reads on the first half is a transition metal element. Additional disclosures include: “Two metals in electrical contact form a galvanic cell. The AGXX® surface consists of micro-galvanic elements formed by Ag and Ru. Ag represents the anode and is oxidized to Ag+-ions or insoluble silver halides (depending on the electrolyte) and Ru represents the cathode. According to the electrochemical series the redox potential of Ag/Ag+ is more positive than that of Ru/Ru3+. In the presence of chloride ions (Cl−) the redox potential of Ag shifts to more negative potentials due to the formation of silver chloride (AgCl). In an aqueous environment Ru forms insoluble hydrous oxides (with different oxidation states), which exhibit good catalytic properties with regard to generation and reduction of O2 and electrical conductivity. The reduction of O2 can take place in two 2-electrontransfers with H2O2 being formed as an intermediate. Depending on the pH-value two different reactions are possible that each lead to a pH-shift to the alkaline range. The cell voltage of a galvanic cell depends on the material of the electrodes and the composition of the electrolyte. We measured the cell voltage between sheets of Ag and Ru immersed in an electrolyte containing different concentrations of Cl−” (see pg. 58-59, at section 3.9; and pg. 62 at Fig. 6, which is provided below).
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE MINH VU whose telephone number is (571)272-8148. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
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/JAKE M VU/Primary Examiner, Art Unit 1618