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
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 10 is 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.
In regard to claim 10, it is noted that the compositions of titanium oxide, titanium dioxide, tungsten oxide, tungsten trioxide and zinc oxide were recited in claim 9 as the compositional options for the ultraviolet or fluorescent light-assisted photocatalyst. Thus, it is unclear whether the limitation of claim is met by the presence of photocatalyst material which is nano-sized or whether a separate composition need be present as well. It is noted that the specification does not disclose any coating compositions comprising three components of the recited options. Therefore, it is viewed that the limitation of claim 10 is met by the presence of a nano-sized photocatalyst of the recited compositions of claim 9.
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.
Claims 9-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Siaw (WO 2016/186569).
In regard to claims 9-10 and 15, Siaw discloses an antimicrobial coating composition for use in surface disinfection and a method for preparing the coating composition comprising: providing a nano-sized metal oxide selected from the group consisting of silver oxide, copper oxide, and combinations thereof (see page 3, lines 1-3 and page 4, lines 27-31); and an ultraviolet or fluorescent light-assisted photocatalyst (an inherent material property) selected from the group consisting of nano-sized titanium oxide, titanium dioxide, and combinations thereof (mixtures of the nano-sized metal oxides of titanium which would inherently include titanium oxide and dioxide; see page 3, lines 1-3 and page 4, lines 27-31), and a nano-sized metal oxide of titanium oxide, titanium dioxide, tin oxide, gold oxide or combinations thereof (mixtures of the nano-sized metal oxides of titanium, tin, and gold which would inherently include titanium oxide and dioxide; see page 3, lines 1-3 and page 4, lines 27-31); wherein atoms of the composition are subjected to bombardment with a vibration force at a frequency of 0.5 kHz to 500 kHz for at least 24 hours (the range heavily overlaps with the disclosed range of 20 kHz to 1000 kHz for at least 24 hours; see page 7, lines 9-13). As Siaw discloses that the “metal oxide” can be a mixture of the recited nano-sized metal oxide components, it is held that the disclosure of Siaw anticipates the disclosed coating composition and preparation method.
In regard to claims 11 and 13, Siaw discloses that the nano-sided metal oxide and photocatalyst component can be applied as a mixture of 0.1 parts to 10 parts by weight with the other components being presented in a ratio format. Thus, it is held that the disclosed ratio of 0.1 to 10 parts by weight of the mixture of metal oxides heavily overlaps with the disclosed range of 0.01 to 30.0% by weight of each of the nano-sized metal oxide and photocatalyst as the range of ratios of the components would produce a composition which reads on the disclosed weight percentage range during a large majority of the possible permeations of the composition when a mixture of the above photocatalyst and metal oxide compositions are included.
In regard to claim 14, Siaw discloses wherein the composition can include a binder (page 5, lines 22-28), a liquid carrier (page 5, lines 9-20) and a surface additive (page 5, line 30 through page 6, line 10).
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.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Siaw.
In regard to claims 9-15, the above rejections are applied in the same manner. It is noted that Siaw does not disclose the entire range of frequency, weight percentage of nano-sized metal oxide, weight percentage of photocatalyst or the particle size range of the nano-sized metal oxide. It is noted that Siaw recognizes that smaller particles of metal oxide with larger surface area is useful for capturing, hold and releasing of the vibration energy. See page 4, lines 28-29. Therefore, it would have been within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum or workable range of frequency, weight percentage of nano-sized metal oxide, weight percentage of photocatalyst and the particle size range of the nano-sized metal oxide through routine experimentation without creating any new or unexpected results in order to optimize the performance of the antimicrobial coating composition. “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774