RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to the specification and claims 1, 8-10, 13, 17 and 20, filed on 29 September 2025, have been entered in the above-identified application. Claims 5 and 12 have been cancelled by applicant. Claims 1-4, 6-11, and 13-20 are pending.
WITHDRAWN REJECTIONS
The objections to the specification, made of record on page 2, paragraph 4 of the office action mailed 29 May 2025 have been withdrawn due to Applicant’s amendments in the response filed 29 September 2025.
The objections to claims 5, 8, 9, 10, 12, 17, and 20 made of record on page 3, paragraph 6 of the office action mailed 29 May 2025 have been withdrawn in part due to Applicant’s amendments. The non-withdrawn objection is repeated below.
The 35 U.S.C. § 102 rejection of claims 1-3, 5, 7, 8, 10-15, 17, 19, and 20 over Maa (U.S. Pub. 2019/0336626), made of record on page 3, paragraph 8 of the office action mailed 29 May 2025 has been withdrawn due to Applicant’s amendment in the response filed 29 September 2025. In particular, Maa does not specify the particle diameter of the titanium dioxide nanoparticles to be less than 20 nm as presently claimed.
The 35 U.S.C. § 103 rejection of claims 6, 9, and 18 as over Maa and of claims 4 and 16 over Maa in view of Kuo (U.S. Pub. 2012/0328863), made of record on pages 6-7, paragraphs 11-12 of the office action mailed 29 May 2025 have been withdrawn. In particular, Maa does not specify the particle diameter of the titanium dioxide nanoparticles to be less than 20 nm as presently claimed, and Kuo does not remedy this deficiency.
NEW REJECTIONS AND NEW AND REPEATED OBJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 11 and 17 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 11, the claim has an extraneous comma in the phrase “…organic particles[[,]] and microbes.”
Regarding claim 17, the phrase “Silver doped titanium dioxide” should be in lower case letters, i.e. “silver doped titanium dioxide.”
Claim Rejections - 35 USC § 103
Claims 1-3, 6-11, 13-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maa (U.S. Pub. 2019/0336626) in view of Kashima (U.S. Pub. 2018/0161765).
Regarding claims 1 and 13, Maa discloses a carrier film having a photocatalytic outer surface coating and an attaching mechanism, see abstract and p. 1, [0006]. The photocatalytic film coated on the surface of the carrier film is rhombus shape anatase-type titanium dioxide, and nano silver particles may be added to the titanium dioxide, see p. 1-2, [0010]. As seen in FIGS. 1-2, the carrier has a sheet shape having a length and width each greater than its thickness. The attaching mechanism may be an adhesive which is at least partially coated on the carrier. For example, when the carrier is used to protect a touchscreen display, the adhesive is on the inner surface of the carrier while the photocatalytic coating is on the outer surface of the carrier. See p. 2, [0015], p. 3, [0032], and FIG. 2. Note that the carrier may be made of a flexible material, see p. 1, [0009].
Maa teaches including nano silver particles with the titanium dioxide, see p. 1-2, [0010], reading on silver-doped titanium dioxide. As the titanium dioxide is rhombus shaped anatase-type titanium dioxide, this reads on a crystalline material as claimed.
Maa does not specify that the titanium dioxide nanoparticles have an average size of less than 20 nm as claimed.
However, Kashima describes titanium dioxide particles used as photocatalysts which absorb in the visible spectrum range of 450 to 750 nm, see abstract and p. 1, [0003-0005]. The volume average particle diameter of the titanium dioxide particles is preferably from 10 nm to 200 nm, more preferably from 15 nm to 200 nm, see p. 4, [0070]. A particle size in this range results in a low amount of aggregation of particles, and thus the photocatalyst function is highly shown, see p. 4, [0071]. Note that this overlaps the claimed particle size range. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Note that although Kashima does not use the term “titanium dioxide”, the reference teaches that the ratio of oxygen “O” atoms and titanium “Ti” atoms is 2.0, see p. 4, [0067].
Maa and Kashima are analogous as they each describe photocatalytic titanium dioxide particles which function in the visible light wavelength range.
It would have been obvious to have used photocatalytic titanium dioxide with a particle size of from 10 nm to 200 nm as disclosed in Kashima as the photocatalytic titanium dioxide of Maa to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to do so as Kashima teaches that this range of particle sizes results in a low amount of aggregation of particles, and thus the photocatalyst function is highly shown, see p. 4, [0071].
Regarding claims 2, 3, 14, and 15, the adhesive-coated carrier sheet described above in regards to claims 1 and 13 reads on both a sticker and a tape as claimed.
Regarding claims 6 and 18, Maa discloses a photocatalytic-coated adhesive sheet as described above in regards to claims 1 and 13. Maa does not specify that the titanium dioxide coating is applied as a suspension. However, being applied as a suspension is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Maa also discloses a carrier sheet coated on one side with the photocatalytic titanium dioxide and coated on the other side with an adhesive material.
However, Kashima notes that the titanium dioxide particles are present as a dispersion with a binder in the form of an emulsion, see p. 6, [0102].
Regarding claims 7 and 19, Maa teaches using the adhesive-coated carrier sheets to protect various articles including the touchscreen of a cell phone (see FIG. 2 and paragraph [0032]), a keyboard (see FIG. 3 and paragraph [0034]), or used as a food wrap (see FIG. 4 and paragraph [0035]). While Maa does not specify adhering the carrier to a handle, such a limitation is directed to the intended use of the claimed device and is not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use 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. See MPEP § 2111.02. In this case, Maa teaches that the carrier may be flexible (see p. 1, [0009] and Claim 2) and is capable of being used to adhere to articles such as touchscreens, and thus may be used to adhere to a handle such that the outermost exposed surface is the one with the photocatalytic coating.
Regarding claims 8 and 10, Maa teaches that the photocatalytic film is activated by visible light with a wavelength greater than 400 nm, see p. 4, [0035].
Kashima likewise teaches that the titanium dioxide particles are used as photocatalysts which absorb in the visible spectrum range of 450 to 750 nm, see p. 1, [0003-0005].
Regarding claim 9, Maa teaches that the photocatalytic film is activated by visible light with a wavelength greater than 400 nm. This overlaps the claimed range of at least 500 nm light. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kashima likewise teaches that the titanium dioxide particles are used as photocatalysts which absorb in the visible spectrum range of 450 to 750 nm, see p. 1, [0003-0005].
Regarding claims 11 and 20, Maa teaches that the photocatalytic coating can effectively inhibit the growth of bacteria, virus, fungus, and microbial particles on the surface of a food item, see p. 4, [0035]. The film is activated by exposure to visible light with a wavelength greater than 400 nm, see id.
Regarding claim 17, Maa teaches including nano silver particles with the titanium dioxide, see p. 1-2, [0010], reading on silver-doped titanium dioxide. As the titanium dioxide is rhombus shaped anatase-type titanium dioxide, this reads on a crystalline material as claimed.
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Maa (U.S. Pub. 2019/0336626) and Kashima (U.S. Pub. 2018/0161765) in further view of Kuo (U.S. Pub. 2012/0328863).
Regarding claims 4 and 16, Maa and Kashima is relied upon as described above to teach a photocatalytic-coated adhesive sheet as described above in regards to claims 1 and 13. Although Maa teaches that the carrier may be flexible (see claim 2 and p. 1, [0009]), Maa does not specify that the sheet in in the form of a roll of tape.
However, Kuo describes adhesive materials which may be present in roll form with the adhesive agent layer placed inwardly, see p. 1-2, [0013] and p. 13, [0131]. The sheet substrate of Kuo may include a functional layer including a photocatalyst such as titanium dioxide to provide for antibacterial properties, see p. 12, [0118].
Maa and Kashima and Kuo are analogous because they are similar in structure and function, as each describe adhesive-coated carrier sheets having photocatalytic titanium dioxide coatings to provide for antibacterial/antifungal properties.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form the flexible adhesive sheet materials of modified Maa in the form of a roll of tape as disclosed in Kuo to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to form a roll because this structure has the adhesive surface inwardly located in the roll so that it is not exposed until needed.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 29 September 2025 regarding the 35 U.S.C. § 102 and 103 rejections of the of record over Maa or over Maa and Kuo have been considered but are moot due to the new grounds of rejection.
Conclusion
All claims are rejected.
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 extension fee 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.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759