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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/13/2026 has been entered.
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.
Claims 1 and 10-11 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.
Regarding claim 1, the limitation “an adhesion layer” in line 12 renders the claim indefinite because it is unclear whether the limitation is referring to the adhesion layer of line 4 or a different adhesion layer.
Claim 1 recites the limitation "the morphology" in lines 13-14. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 1, the limitation “does not change the morphology of the nanostructure” renders the claim indefinite because it is unclear what are metes and bounds of the phrase “does not change morphology” because it appears to involve a degree of change that has not been defined by the claim or specification. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
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(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN110407302A, refer English language machine translation for claim mapping).
Regarding claim 1, Chen teaches a porous material with surface-modified nanoarrays (abstract), comprising:
a porous material substrate (refer page 3 disclosing foam copper as substrate); and
nanostructure arrays that are in-situ grown on the porous material substrate; wherein the nanostructure is elongated, the nanoarrays are arrays selected from the group consisting of nanospike arrays, nanowire arrays, and nanorod arrays (refer page 3 disclosing in situ generation of needle hydroxide nanometer line array structure),
an adhesion layer having a thickness of 20 nm is coated on the surface of the nanoarrays (refer example 4 disclosing 20nm carbon layer thickness) and does not change the morphology of the nanostructure (as indicated in fig. 1a-d, nanostructures have a morphology of nanopillar/nanospikes which does not change by coating of carbon).
The limitation “the adhesion layer is configured to increase an adhesion force between the nanostructures and microbes so as to physically rupture the microbes when the microbes flow near the porous material, wherein in the rupture, the microbes are ruptured by a hydrodynamic force of the flow and the adhesion force between the nanostructures and the microbes” does not impart additional structure. The rupturing of microbes is inherent to the nanowire structure. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding adhesion layer having thickness of 5-15 nm, "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Absent any showing of criticality of the range, one of ordinary skill in the art would have arrived at the claimed range through routine optimization to ensure silver nanoparticles are present between nanowire and carbon layer coating.
Chen teaches that the nanostructure has axial height of 15-20 µm and radial dimension of 150-200 nm (refer page 3). "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Absent any showing of criticality of the range, one of ordinary skill in the art would have arrived at the claimed range through routine optimization by controlling the etching process which generates nano array structure.
The limitation regarding the adhesion layer not changing the morphology of the nanostructure, Chen disclosing providing nanometer scale coating of carbon and Ag nanoparticles and does not change the structure of nanospikes since the nanospikes are nanospikes after the coating and therefore considered not changing morphology of the nanostructure.
Regarding claim 11, Chen teaches limitations of claim 1 as set forth above. Chen teaches that the coating layer comprises carbon (refer page 3). Whether to apply only carbon or combination of carbon and Ag nanoparticles would have been an obvious matter of design choice to one of ordinary skill in the art.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN110407302A, refer English language machine translation for claim mapping), in view of Erkoc et al. (Nanotechnology-Based Antimicrobial and Antiviral Surface Coating Strategies. Prosthesis 2021, 3, 25–52.).
Regarding claim 10, Chen teaches limitations of claim 1 as set forth above. Chen does not teach that the adhesion layer is a layer selected from the group consisting of a layer comprising gelatin and a layer comprising poly-L-lysine.
Erkoc teaches a surface coating providing biocidal activity (refer abstract). Erkoc discloses that coatings including Gelatin and poly-L-lysine are known in the art to provide antibacterial properties (refer table 1).
Selecting the coating material such as gelatin or poly-L-lysine to provide antimicrobial properties on the nanostructure of Chen would have been obvious to one of ordinary skill in the art because Erkoc establishes that gelatin and poly-L-lysine are known in the art to provide antimicrobial properties.
Claim(s) 1 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20190073691A, refer English language machine translation for claim mapping), in view of Zhang et al. (Applied Catalysis A, General 583 (2019) 117145).
Regarding claims 1 and 7, Lee teaches a porous material with nanoarrays (refer page 1 disclosing ZnO nanowires formed on polymer sponge structure), comprising:
a porous material substrate (refer page 1 disclosing polymer sponge as substrate); and
nanostructure arrays that are in-situ grown on the porous material substrate; wherein the nanostructure is elongated, the nanoarrays are arrays selected from the group consisting of nanospike arrays, nanowire arrays, and nanorod arrays (refer page 1 disclosing ZnO nanowires, and refer page 3 disclosing in-situ growth of ZnO nanowires).
Lee discloses that the nanowire structure causes lysis of cells (refer page 4 – paragraph starting with “The term “cell lysis…”).
Lee further teaches that the nanostructure has a length of 10 to 50 µm (refer page 3 – paragraph starting with “According to an exemplary embodiment, diameter of…”). Lee also teaches that “The term "nanostructure" or "nanostructure" refers to a feature or texture having a dimension or size of nanoscale (e.g., about 0.1 to 1000 nm, May refer to any nanoscale object, including, for example, a nanopile, a nanorod, a nanowire, a nanowire, a nanoweb, and the like. However, it can also be understood that it includes a feature having a dimension or size of several micrometers in a broad sense” (refer page 4). "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Lee does not disclose an adhesion layer having a thickness of 5-15 nm coated on surface of the nanoarrays and does not change morphology of the nanostructure.
Zhang teaches coating of carbon layer on ZnO nanowires to provide photocatalytic property under UV light (refer abstract), wherein the carbon coating has a thickness of 3 to 8.5 nm (refer abstract). Zhang also teaches that the thickness can be precisely tuned by controlling carbon source amount (Refer abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the nanowires of Lee to include carbon coating to provide photocatalytic property as taught by Zhang.
Regarding claim 11, modified Lee teaches limitations of claim 1 as set froth above. Zhang teaches that the coating consist of carbon (refer abstract).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20190073691A, refer English language machine translation for claim mapping), in view of Zhang et al. (Applied Catalysis A, General 583 (2019) 117145), in view of Erkoc et al. (Nanotechnology-Based Antimicrobial and Antiviral Surface Coating Strategies. Prosthesis 2021, 3, 25–52.).
Regarding claim 10, modified Lee teaches limitations of claim 1 as set forth above. Modified Lee does not teach that the adhesion layer is a layer selected from the group consisting of a layer comprising gelatin and a layer comprising poly-L-lysine.
Erkoc teaches a surface coating providing biocidal activity (refer abstract). Erkoc discloses that coatings including Gelatin and poly-L-lysine are known in the art to provide antibacterial properties (refer table 1).
Selecting the coating material such as gelatin or poly-L-lysine to provide antimicrobial properties on the nanostructure of modified Lee would have been obvious to one of ordinary skill in the art because Erkoc establishes that gelatin and poly-L-lysine are known in the art to provide antimicrobial properties.
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Regarding rejection of claim 1 under 35 USC 103(a) as being unptatentable over Chen et al. (CN110407302A), applicant argued that “Claim 1 recites that the adhesion layer is configured to increase the adhesion force between the nanostructures and microbes, thereby
enabling the physical rupturing of the microbes through a synergistic tearing action between the hydrodynamic force of a flowing fluid and the adhesion force from the nanostructures. Chen does not disclose an adhesion layer that is selected from the group consisting of a carbon layer, a layer comprising gelatin, and a layer comprising poly-L-lysine and does not alter the morphology of the nanostructures.” This is not found to be persuasive because the claim is directed to a product/apparatus. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Chen discloses coating of carbon which is substantially same as claimed adhesive layer comprising carbon. The claimed function “configured to increase an adhesion force between the nanostructures and microbes” does not impart additional structure.
Applicant further agued that “The rejection alleges that Chen teaches a carbon layer;
however, the carbon layer of Chen contains embedded conductive particles (see, for example, the third paragraph from the bottom of page 3 of the English translation), and is structurally,
functionally, and mechanistically different from the carbon layer recited in claim 1.” This is not found to be persuasive because limitation of claim 1 do not exclude additional particles from being present in the carbon layer.
Regarding rejection of claim 1 under 35 USC 103(a) as being unptatentable over Lee (KR220190073691), in view of Zhang (Applied Catalysis A, General 583 (2019) 117145), applicant argued that “The porous material of claim 1 has beneficial features that it temporarily adheres microbes, and thereby enables a hydrodynamic force to exert an outward tensile stress on the microbial cell membrane, leading to its irreversible tearing of the microbes. This effect is achieved by using a thin, uniform adhesion layer, specifically composed of materials known for bio-adhesion (gelatin, poly-L-lysine) or a carbon film. Applicant submits that the combination of Lee and Zhan does not teach or suggest the material of claim 1, and further, the beneficial features obtained therefrom could not have been expected”. This is not found to be persuasive because the claim is directed to a product/apparatus. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Lee disclosing rupturing of membrane cell (refer bottom portion of page 4), and Zhang discloses advantage of providing carbon layer. Claimed function of carbon layer does not impart additional structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lin et al (Materials Science & Engineering C 81 (2017) 321–326 teaches gelatin coating on zinc oxide.
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