DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 21, 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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 2, 4, 8, 12, 13, 16, and 17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
The meaning of claim 1 is unclear because it recites a coating film comprising a ceramic and a surfactant, “wherein the ceramic film consists of ceramic particles without a binder”. The limitation is firstly unclear because, although Applicant has argued that ceramic films employing a sol qualify as having a “binder” (Applicant’s Remarks, p. 6), the instant disclosure teaches that a method for forming a porous film by the sol-gel method is a method that is “without using a binder” (Applicant’s published application, par. 147). As such, it is not clear what is meant by the term “binder” in the context of the claims. For the sake of compact prosecution, a “binder” is considered herein to refer to an organic polymer, such as polyvinyl chloride, as is exemplified in Applicant’s disclosure (Applicant’s published application, par. 5). Appropriate explanation and correction are required.
Claim 1 is further unclear because although it now recites that the ceramic film “consists of ceramic particles without a binder”, the claim also recites that the film is “capable of carrying the surfactant”, which is positively recited to be present. As such, it is not clear if a ceramic film carrying a surfactant can qualify as a film that “consists of particles” or, alternatively, as the claim only recites that the film is “capable of carrying the surfactant”, it is unclear if the film is actually required to include surfactant in the pores of the ceramic or not. For the sake of compact prosecution and because the claim does not actually recite that the surfactant is carried by the holes of the ceramic film, the claimed coating film is considered herein to only be required to include a porous ceramic film and a surfactant, but with no requirements about how the components are positioned relative to each other. Given that the instant disclosure makes clear that the surfactant (120) is carried “in” the ceramic (110) of the disclosed coating films (see, for example, Figs. 2A, 3, 5, etc.) the claim limitation about what the ceramic film “consists of” is not interpreted as excluding a surfactant from being “in” the ceramic film. Appropriate explanation and correction are required.
Claim 3 is also indefinite because it recites “the porous film”, which has insufficient antecedent basis in the claim because “a porous film” has not been previously recited. Appropriate correction is required.
Claims 2, 4, 8, 12, 13, 16, and 17 are also rejected under 35 U.S.C. 112(b) because they depend from and/or require all of the limitations of claim 1.
Claim 2 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Although claim 1 recites that “the surfactant is chlorhexidine”, claim 2 recites “wherein the surfactant has the lipophilic group of 5 or more carbons”. The quoted claim 2 limitation fails to incorporate all of the limitations of and, in fact, broadens claim 1 because “5 or more carbon atoms” recites an open-ended range that extends beyond that of what is included in chlorhexidine. Appropriate correction is required. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1, 2, 8, 12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP 2020040267 A), cited herein according to the English language translation provided by Applicant on 12/22/2022, and, optionally, further in view of Park (US PG Pub. No. 2021/0301152). Evidence for claim 1 is provided by Azo Materials (Azo Materials, “Silica-Colloidal Silica (Silicon Dioxide)”, 2002, p. 1-2). Evidence for claim 2 is provided by Chemical Book 1.
Regarding claims 1, 2, 8, and 12, Ito teaches an article having a coating film on its surface, wherein the coating film comprises a ceramic film having cracks (i.e. “holes”) on its surface and a functional component, which may be chlorhexidine (Abstract; par. 21, 27, 31, 51, 52). Given that no hole shapes are recited, the cracks that open to the surface of Ito’s ceramic film qualify as “holes” in the context of the instant claims.
The teachings of Ito may be considered to differ from the current invention in that his ceramic film is not taught to consist of ceramic particles and no binder. However, as noted above, the term “binder” in the context of the instant claims is considered herein to refer to an organic polymer and the requirement that the ceramic film “consists of ceramic particles” is not considered herein to exclude the ceramic film from including/carrying a surfactant, such as chlorhexidine, because the instant disclosure makes clear that the surfactant can be “in” the ceramic film. Therefore, the portion of Ito’s film that is ceramic is considered herein the “ceramic film” in the claim context, and the other portion(s), which include the surfactant chlorhexidine are not considered part of the “ceramic film” (i.e. and are not excluded by the claim language).
Although Ito refers to his ceramic film as including an “inorganic binder”, Ito discloses that it is desirable that the binder is an inorganic material that may be one of several types of metal/metalloid oxide sols, such as a silica sol (par. 79). During formation of the film, Ito teaches that a coating is applied to a surface and dried (par. 89). While Ito does teach that the coating material my further include an inorganic polymer, he merely teaches that such an inclusion is preferable (par. 80). Therefore, it would have been obvious to one of ordinary skill in the art to configure Ito’s ceramic film to include/be made from one of the taught types of sols, e.g. a silica sol, as the “binder” without further including an inorganic polymer because Ito explicitly teaches that it is desirable for his inorganic “binder” to be a sol, such as a silica sol, and merely discloses inorganic polymers as being preferable and, as such, optional, in his coating film. As evidenced by Azo Materials, ceramic sols, such as a silica sol consist of a dispersion of the named type of particles, e.g. silica particles, usually having a size on the order of less than 100 nm (p. 1), which are in a solvent. Therefore, upon drying, the ceramic coating rendered obvious by Ito consists of ceramic particles and no “binder”.
To the extent that Ito’s teachings of “cracks” might be considered a difference from the instant claim requirement that the ceramic film include “holes” capable of carrying the surfactant in its surface, it is noted that Ito teaches that the film may also comprise porous inorganic zeolite particles and/or a porous ceramic adsorbent, either of which also include pores (i.e. “holes”) that open to the surface of the ceramic film (par. 17). Accordingly, it would have been obvious to one of ordinary skill in the art to configure Ito’s cracked ceramic film, which includes chlorhexidine as discussed above, to also include porous ceramic zeolite or ceramic adsorbent particles because Ito explicitly teaches doing so to be appropriate.
Ito further teaches that his zeolite particles may be loaded with a metal, such as silver, as a functional component and inorganic antiviral agent (par. 47, 105). Park further teaches using silver-loaded inorganic (i.e. ceramic) zeolite particles that may have a pore size of 0.3 to 10 nm as adsorbents in an antimicrobial coating (par. 29, 30, 35). It is noted that “silver-loaded” zeolite particles still qualify as “ceramic particles” because they are primarily ceramic. Park discloses that the disclosed zeolites are excellent in adsorption of foreign substances due to their numerous nanopores, and that silver-loaded zeolites can exhibit bactericidal and antimicrobial effects (par. 32, 33). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the zeolite particles in Ito’s product to be ceramic, such as the types disclosed by Park, and to include pore with sizes in the range of 0.3 to 10 nm because Park discloses that such zeolite particles are capable of carrying silver for providing or enhancing antimicrobial activity, are excellent at adsorbing foreign substances, and are appropriate and useful as an adsorbent and antimicrobial agent. The instantly claimed pore sizes, including pores that are smaller than 1 nm, are overlapped and rendered obvious by Park. See MPEP 2144.05.
As evidenced by instant disclosure, chlorhexidine is a surfactant that has a lipophilic group with five or more carbons and has a length of 2.5 to 3.5 nm (Applicant’s published application, par. 97). Therefore, the cracks in the surface of the ceramic film, which may have widths of 0.1 to 1.5 µ, are capable of carrying the surfactant chlorhexidine. As evidenced by Chemical Book, which teaches that chlorhexidine has a boiling point of about 641 °C (p. 1), chlorhexidine does not evaporate at room temperature.
Regarding claim 16, the teachings of Ito might be considered to differ from the current invention in that he does not explicitly refer to a thickness of his ceramic film. However, in discussing the cracks in the ceramic film, Ito does state that it is desirable that “the thickness” is 5 µm, which he discloses makes it easy for a virus to be trapped inside the a crack (par. 10). As such, Ito’s discussion of thickness appear to refer the ceramic film thickness and it would have been obvious to one of ordinary skill in the art to configure the film to have a thickness of 5 µm for this reason and to achieve a good virus-trapping ability within the film. Additionally, as no criticality has been established, the recitation appears to be a prima facie obvious selection of dimension that does not distinguish the claimed invention over the prior art. See MPEP 2144.04. Furthermore, it would have been obvious to one of ordinary skill in the art to select an appropriate film thickness according to the mechanical properties and virus-trapping abilities required/desired of the film.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ito, and optionally, Park, as applied above and evidenced by Azo Materials, and further in view of Masao (JP H 09-48868 A), cited herein according to an English language translation.
Regarding claim 4, the teachings of Ito differ from the current invention in that he does not disclose the porosity of his ceramic film. However, as discussed above, Ito’s film has antibacterial activity. Masao further teaches a porous antibacterial film and discloses that the film porosity provides increased contact between the environment and the antibacterial agents in the film, thereby enhancing the film’s antibacterial property (Abstract; par. 1, 5, 29, 44). Masoa further teaches that films with a porosity of at least 50 % demonstrate good antibacterial properties (par. 26). Therefore, it would have been obvious to one of ordinary skill in the art to configure Ito and, optionally, Park’s porous ceramic film to demonstrate a porosity of at least 50 % in order to achieve a good and/or enhance its antibacterial property. The instantly claimed porosity range is overlapped and rendered obvious in view of Masao. See MPEP 2144.05.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ito, and optionally, Park, as applied above and evidenced by Azo Materials, and further in view of Tamura (US PG Pub. No. 2009/0252970).
Regarding claim 13, as discussed above, Ito and, optionally, Park teach a ceramic film meeting the requirements of claim 1.
The teachings of Ito differ from the current invention in that he does not teach a haze value for his ceramic film. However, Ito does disclose that his film may be applied to a variety of different household and consumer items as well as decorative items (par. 23, 83). Tamura further teaches a coating for various items and discloses that the coating should have a haze of less than 2 % in order to avoid cloudiness and provide transparency to the film (par. 57). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the ceramic film of Ito et al. to demonstrate a haze of less than 2 % in order to avoid cloudiness and provide the film with good transparency, thereby more easily revealing the surface(s) that it coats, and in order to achieve a desired aesthetic effect.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ito, and optionally, Park, as applied above and as evidenced by Azo Materials, and, optionally, further in view of Srinivas (US PG Pub. No. 2014/0041905).
Regarding claim 17, as discussed above, Ito and, optionally, Park teach or render obvious an article having a coating film on its surface, wherein the coating film comprises a ceramic film having cracks (i.e. “holes”) on its surface and a functional component, which may be chlorhexidine (Abstract; par. 21, 27, 31, 51, 52). The article further comprises as resin base material (i.e. “base film”) on which the ceramic film is arranged.
The teachings of Ito differ from the current invention in that the ceramic film is not explicitly taught to include an anchor layer having ceramic particles that semi-embed into a surface of the base film. However, Ito does teach using hot-pressing and pressure-bonding to adjoin the ceramic layer to an underlying resin substrate (par. 95-97). As Ito makes no disclosure of the layers being chemically bonded and discloses that inadequate adhesion between the layers occurs when the material is insufficiently heated (par. 97), one of ordinary skill in the art would understand that the taught bonding operation results in at least some of the particles of Ito’s ceramic layer becoming partially embedded into the surface of the resin layer, thereby forming an “anchor layer” within the ceramic coating.
As discussed above, Ito’s ceramic coating is made from a sol, such as a silica sol, and includes ceramic particles. Srinivas further teaches adjoining coatings of particles, such as ceramic particles, to polymer substrates by at least partially embedding the particles in the substrate in order to securely attach the particles to the surface (par. 11, 12, 68, 69 74, 77, 81, 90, 92). Therefore, it would have been obvious to one of ordinary skill in the art to at least partially embed a portion of the particles in Ito’s ceramic layer in the surface of the base film, thereby creating an “anchoring layer”, in order to enhance or create a secure bond between the particles of the coating (and the coating, as a whole) and the base film.
Claims 1, 2, 8, 12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Johnston (US PG Pub. No. 2008/0305027). Evidence for claim 2 is provided by Chemical Book 1 (Chemical Book, “55-56-1 (Chlorhexidine) Product Description”, 2017, p. 1-2).
Regarding claims 1, 2, and 12, Johnston teaches a porous ceramic material, which may in the form of a surface coating, including an open framework of calcium silicate particles and having an accessible pore volume that provides surfaces for receiving functional compounds, such as chlorhexidine (par. 8, 84, 100, 121, 181, 183, 184). As Johnston makes no disclosure of the ceramic material including a binder, the material, and a ceramic film formed therefrom, is presumed to consist of calcium silicate particles without a binder.
As shown in Figure 5, the ceramic material’s surface includes holes with sizes of hundreds of nanometers (Fig. 5). Johnston also teaches that the material includes pores with openings that approximate the widths of the platelet-shaped particles (i.e. about 50 to 500 nm) forming the film (par. 11, 13). As evidenced by instant disclosure, chlorhexidine is a surfactant that has a lipophilic group with five or more carbons and has a length of 2.5 to 3.5 nm (Applicant’s published application, par. 97). Therefore, the holes in the surface of Johnston’s ceramic material, which may have widths of 50 to 500 nm, are capable of carrying the surfactant chlorhexidine. As evidenced by Chemical Book, which teaches that chlorhexidine has a boiling point of about 641 °C (p. 1), chlorhexidine does not evaporate at room temperature.
The teachings of Johnston might be considered to differ from the current invention in that he does not explicitly teach a coating film on a substrate surface comprising the above-discussed calcium silicate framework with chlorhexidine. However, Johnston does teach forming antimicrobial surface coatings from the material combination, which may be used for pharmaceutical, nutraceutical, and packaging applications (par. 100). Therefore, it would have been obvious to one of ordinary skill in the art to make an article that includes a surface coating of porous calcium silicate material (i.e. “ceramic film”) and chlorhexidine as discussed above in order to provide the material with an antimicrobial property and to make it suitable for use in a pharmaceutical, nutraceutical, and packaging application. As noted above, the portion of Johnston’s film made up of ceramic particles is considered herein to be the “ceramic film”, as claimed, and other portion(s) that are not ceramic are not considered part of the “ceramic film” but, rather, as being carried by the ceramic film.
Regarding claim 8, as discussed above, Johnson’s film includes pores (i.e. “holes”) with sizes in the range of about 50 to 500 nm. Johnston also teaches that his porous ceramic film can be collapsed to control pore volume (par. 114), which will also necessarily controls and reduces pore size. Therefore, as evidenced by the instant disclosure, which teaches viruses having sizes of 50 to 200 nm and of 80 to 120 nm (Applicant’s published application, par. 48), Johnston teaches holes with a size that encompass and renders obvious the diameter range required of “smaller than a virus size” (e.g. Johnston’s 50-nm holes are “smaller than a virus size” of 80 to 120 nm). See MPEP 2144.05.
Regarding claim 16, the teachings of Johnston differ from the current invention in that he does not teach a thickness of his coating film. However, as no criticality has been established, the recitation appears to be a prima facie obvious selection of dimension that does not distinguish the claimed invention over the prior art. See MPEP 2144.04. Additionally, Johnston makes clear that his ceramic material is intended to carry various functional materials, such as antimicrobial agents and others (par. 93, 185-196, etc.). One of ordinary skill in the art would understand that the amount of material that can be carried by the ceramic film is directly affected by the amount of ceramic film, which includes in the ceramic film thickness, that is present. Therefore, it would have been obvious to one of ordinary skill in the art to select an appropriate ceramic film thickness according to the quantity of functional material it is intended to be carried.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Johnston, as applied above, and further in view of Masao (JP H 09-48868 A).
Regarding claim 4, the teachings of Johnston differ from the current invention in that he does not disclose the porosity of his ceramic film. However, as discussed above, Johnston’s film has antimicrobial activity. Masao further teaches a porous antibacterial film and discloses that the film porosity provides increased contact between the environment and the antibacterial agents in the film, thereby enhancing the film’s antibacterial property (Abstract; par. 1, 5, 29, 44). Masoa further teaches that films with a porosity of at least 50 % demonstrate good antibacterial properties (par. 26). Therefore, it would have been obvious to one of ordinary skill in the art to configure Johnston’s porous ceramic film to demonstrate a porosity of at least 50 % in order to achieve a good and/or enhance its antibacterial property. The instantly claimed porosity range is overlapped and rendered obvious in view of Masao. See MPEP 2144.05.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Johnston, as applied above, and further in view of Tamura.
Regarding claim 13, as discussed above, Johnston teaches or renders obvious a coating film meeting the requirements of claim 1.
The teachings of Johnston differ from the current invention in that he does not teach a haze value for his ceramic film. However, Johnston does disclose that his material may be used in a variety of different applications, including as a coating for packaging (par. 197). Tamura further teaches a coating for various items and discloses that the coating should have a haze of less than 2 % in order to avoid cloudiness and provide transparency to the film (par. 57). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the coating film of Johnston to demonstrate a haze of less than 2 % in order to avoid cloudiness and provide the film with good transparency, thereby more easily revealing the surface(s) that it coats, and in order to achieve a desired aesthetic effect.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Johnston, as applied above and as evidenced by Azo Materials, and further in view of Srinivas.
Regarding claim 17, as discussed above, Johnston teaches or renders obvious a coating film meeting the requirements of claim 1.
Although Johnston does not explicitly teach that his coating film is applied to a base film, which might be considered a difference from the current invention, Johnston does teach that the coating film may be applied to packaging materials to impart an antimicrobial function (par. 100). Therefore, it would have been obvious to one of ordinary skill in the art to apply Johnston’s coating film discussed above to a packaging material (i.e. “base film”) in order to provide the material with an antimicrobial property.
The teachings of Johnston differ from the current invention in that the ceramic film is not explicitly taught to include an anchor layer having ceramic particles that semi-embed into a surface of the base film. However, Johnston’s coating material is made up of ceramic particles (par. 8). Srinivas further teaches adjoining coatings of particles, such as ceramic particles, to polymer substrates by at least partially embedding the particles in the substrate in order to securely attach the particles to the surface (par. 11, 12, 68, 69 74, 77, 81, 90, 92). Therefore, it would have been obvious to one of ordinary skill in the art to at least partially embed a portion of the particles in Johnston’s ceramic layer to the surface of the base film, thereby creating an “anchor layer”, in order to enhance or create a secure bond between the particles of the coating (and the coating, as a whole) and the base film.
Response to Arguments
Applicant's arguments filed April 21, 2026 have been fully considered but they are not persuasive.
Applicant has argued that the claims are distinguished over Ito because they now recite a ceramic film that “consists of ceramic particles without a binder” and because Ito’s ceramic film includes what he refers to as an “inorganic binder”. However, as Applicant has acknowledged, Ito teaches that the binder may be a silica, alumina, titania, or zirconia sol. The instant disclosure teaches that a method for forming a porous film by the sol-gel method is a method that is “without using a binder” (Applicant’s published application, par. 147). Therefore, it does not appear that a “binder” in the context of the instant disclosure or claims is the same thing as a sol. Additionally, as evidenced by Azo Materials and discussed above, a “silica sol” consists of a dispersion of silica particles. As such, a dried coating formed from a silica sol “consists of ceramic particles without a binder”.
Applicant has further argued that Park teaches attaching zeolite particles to a substrate with urushiol, which is contrary to the claim requirement that the coating consists of ceramic particles without a binder. However, Applicant’s argument is not persuasive because Park was not cited for the presence or absence of a binder but rather for his teachings of zeolite pore sizes and types, which would have been obvious to apply to the zeolite particles in Ito’s coating for the reasons discussed above.
Applicant has also argued that neither of De Leij or Masao teaches films consisting of ceramic particles without a binder. However, in response to Applicant's arguments against the references individually, which also pertains to Applicant’s arguments about Park, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The claimed invention would have been obvious in view of the cited combination(s) of references for the reasons discussed above.
Conclusion
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights