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 .
Status of the Claims
Claims 9, 12-14, and 16-20 remain pending as amended in the application. All other claims have been canceled.
Withdrawn Rejections and Response to Arguments
Applicant’s arguments filed 8/27/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows. The amendments to the claims are noted. Al rejections of claim 10 are withdrawn in view of Applicant’s cancelation of this claim.
Regarding the rejections under 35 U.S.C. 103 over Isobe in view of Barr, Applicant argues that neither of these references teaches a reason to select the specific complex oxide ceramic recited in claim 9 as amended. Applicant argues that Barr’s cerium molybdate oxides are different from Isobe’s and that one would not have disregarded Isobe’s lanthanum compositions in favor of Barr’s complexes. Applicant details that Barr’s objective is to investigate valence distribution of cerium molybdenum oxides and not their antibacterial, antiviral, or other biological property. Applicant argues that Isobe’s exemplified compositions do not predict antibacterial or antiviral performance. Applicant argues that “the rejection appears to assume that the specific cerium molybdate oxides disclosed in Barr would have been expected to possess, or inherently possess, antiviral activity based solely on the presence of cerium and molybdenum” but that neither cited references explains this functional correlation or similar biological properties. Applicant then concludes that there is no motivation in the cited art to select the claimed oxides which are in Barr as the claimed antiviral ceramic or to mix these components as in claim 9.
In reply, this argument is not persuasive in view of the close structural similarity between chemical compounds. While a presumption of obviousness based on structural similarity may be overcome where there is no reasonable expectation of similar properties, there have been presented no objective data demonstrating a critical structural or functional difference. Unexpected results of practical and statistical significance supporting Applicant’s position have not been shown.
Applicant continues arguing on page 7 of Remarks that the evidence of record demonstrates that the complex oxide ceramic required by claim 9 possesses antiviral activity and performance exceeding molybdate materials in Isobe, allegedly constituting unexpected results as evidence of nonobviousness. Applicant argues on page 8 that a prima facie case of obviousness has not been established as to why one would have selected specific cerium molybdate oxides in Barr from the cerium molybdenum oxide materials known in the art and mix those with a separate photocatalyst and/or material having an oxide of La and Mo or La, Ce, and Mo as in claim 9. In reply, Applicant’s argument has been considered but is not persuasive since Isobe’s examples embody a compound as claimed in order to achieve antibacterial known efficacy in a solid surface by suppressing adhesion of water (see Isobe [0004]) and demonstrating antibacterial and/or antiviral properties (see [0006] and [0009]). It is maintained that Isobe teaches a complex ceramic containing molybdenum and in its composite oxide ceramic form, at least one of La and Ce wherein the complex demonstrates antibacterial and antiviral functionality; accordingly, it would have been obvious to combine Isobe’s complex containing molybdenum oxide with at least one selected from la and Ce and further to substitute Barr’s particular molybdenum oxide for Isobe’s generic molybdenum oxide, with a reasonable expectation of success. Moreover, the reason or motivation to modify the reference may suggest what the inventor has done but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Nevertheless, in the instant case, the secondary reference demonstrates structural similarities among the particular cerium and molybdenum oxides, serving at least as a starting point from which to utilize a compound as in the products of the primary reference. This may be considered an “obvious to try” argument that it would have been obvious to try Barr’s specific compounds in place of Isobe’s demonstrated structurally similar compounds, with a reasonable expectation of success. One would have been motivated to do so to achieve the known functionality of the structurally similar compounds.
Regarding claim 20, Applicant argues that Chen does not cure the alleged deficiency of Isobe and Barr. In reply, this argument is not persuasive in view of the aforementioned reply to Applicant’s arguments.
Maintained Rejections
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9, 12-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over WO2020/017493 (“Isobe” et al.; citations are to the translation included in the file wrapper with the IDS dated 1/13/2023; previously cited) in view of Barr (“Barr”, “A Spectroscopic Investigation of Cerium Molybdenum Oxides”, J. Chem. Soc. Dalton Trans, 1983, 1825; cited in IDS filed 1/13/2023 and included in file wrapper dated 1/13/2023; previously cited).
Claim 9 is drawn to functional material comprising a complex oxide ceramic comprising cerium and molybdenum wherein said complex oxide ceramic has antiviral activity and is mixed with a photocatalyst and/or a material having an antibacterial effect. The claim language pertaining to an active mixing step is interpreted to imply that the complex oxide ceramic has been mixed with a photocatalyst and/or a material having an antibacterial effect so that the functional material product claimed encompasses at least the two requisite components claimed.
Isobe teaches a complex ceramic containing molybdenum and, in composite oxide ceramic form, at least one of La and Ce wherein said complex demonstrates antibacterial and antiviral functionality (see [0009] and for instance [0011] and [0012]). See also Example 1 at [0059] for instance and [0067] which demonstrates antibacterial/antiviral efficacy. The complex oxide ceramic is in the form of a dry powder which was ground and molded and further mixed; in mixing the calcined powder, the complex oxide ceramic is mixed with additional complex oxide ceramic such that a complex oxide ceramic having antiviral activity is mixed with a complex oxide ceramic having antibacterial effect to produce a functional material in the form of Isobe’s molded body in Isobe’s Example 1.
Isobe does not teach the particular complex oxide ceramic compound recited in claims 9 and 12-14 or the characteristics of these complexes and/or functional features thereof. Isobe and Barr in combination cure this deficiency.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to combine Isobe’s complex containing molybdenum oxide (see Isobe claim 1) with at least one selected from La and Ce (see Isobe claim 2) to produce a functional material comprising a composite oxide ceramic having components which are both cerium and molybdenum as well as a material having an antibacterial effect and comprising at least one of an oxide containing La and Mo, with a reasonable expectation of success. One would have been motivated to do so based on Isobe’s examples embodying a combination as claimed (see for instance Isobe claim 3) in order to achieve the desired article (see Isobe claim 10) in order to achieve known antibacterial performance in a solid surface by suppressing adhesion of water (see [0004]) and desirably demonstrating antibacterial/antiviral properties (see [0006] and [0009]).
Further, Barr cures Isobe’s deficiency with regard to the particular complex oxide to be employed. Barr teaches Ce2(MoO4)3 and additional cerium molybdenum oxides including Ce2Mo3O13 and Ce2Mo4O15 (see abstract, in particular; see also page 1825, column 1, paragraph 1, lines 10-12)(limitations of claims 9 and 13) and further teaches the compounds specified in claims 12 and 14(see page 1825, column 1, first full paragraph following abstract) thereby teaching a complex oxide ceramic comprising cerium and molybdenum.
Both Isobe and Barr pertain to cerium and molybdenum oxide complexes for use in products, articles, and systems. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute Barr’s particular cerium molybdenum oxides specified in place of Isobe’s generally disclosed cerium molybdenum oxides, with a reasonable expectation of success. One would have been motivated to do so based on Barr’s successful teaching of these components in systems including foil products.
Furthermore, and upon doing so, because a product and its properties are inseparable, Barr’s product is considered to have the claimed characteristic of having antiviral activity as recited in claim 9 and further as in claims 16 and 17 based on the specific complex oxides. Barr’s cerium molybdenum oxides are in the form of powders pressed into wafers which are considered functional materials (see “Experimental” section, end of first paragraph, “Materials”). As to claim 18 which recites that the complex oxide ceramic is a sintered body, this language appears to be product-by-process language pertaining to a method of making the claimed product, where Barr teaches the product claimed as addressed above. As to claim 19, Bar specifies that cerium molybdates are used as components in systems (see introduction first sentence); the systems are considered articles and inclusion is understood to take place wherein the complex oxide ceramic is present on at least a part of a surface in view of Barr’s teaching of systems including foil products including support system components (see column 1 immediately following abstract).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over WO2020/017493 (“Isobe” et al.; citations are to the translation included in the file wrapper with the IDS dated 1/13/2023) and Barr (“Barr”, “A Spectroscopic Investigation of Cerium Molybdenum Oxides”, J. Chem. Soc. Dalton Trans, 1983, 1825; cited in IDS filed 1/13/2023 and included in file wrapper dated 1/13/2023; previously cited) as applied to claims 9, 12-14, and 16-19 above, and further in view of CN106479278A (Chen et al., “Chen”).
The teachings of Isobe and Barr have been delineated above. As to claim 20, while Barr teaches that cerium molybdates are used as components in systems (see introduction, first sentence) and while Barr teaches foil products including support system components (see column 1 immediately following abstract), it is not apparent that Barr necessarily teaches an article as instantly specified.
Chen cures this deficiency. Chen teaches a self-cleaning air-purifying powder coating which may be prepared from a variety of products including cerium molybdate (see abstract, in particular). The powder coating is used as an air filter product which may be considered at least a medical supply as recited in claim 20.
Isobe, Barr, and Chen are all directed to various cerium molybdate compounds and/or functional materials thereof. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to use functional powder sheets of cerium molybdate in combination with additional antibacterial cerium molybdenum oxide components as taught by Isobe and Barr in medical supply products, with a reasonable expectation of success. One would have been motivated to do so to provide desirable air purifying benefits as suggested by Chen.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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