DETAILED ACTION
Specification
The disclosure is objected to because of the following informality: paragraph 17 recites a “HAZE value”. As no acronym has been defined, it appears that “HAZE” should be “haze”. Appropriate correction is required.
Double Patenting
The rejections made on the grounds of double patenting are withdrawn in view of Applicant’s amendment, filed November 4, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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 5 and 9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claims contain subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In particular, claim 5 recites “the surfactant is an abietic acid-based compound”, but depends from claim 1, which recites that “the surfactant is chlorhexidine”. This combination of limitations constitutes new matter because, as discussed below, chlorhexidine is not an abietic acid compound, because the instant disclosure does not teach chlorhexidine as one of the types of abietic acid compounds that may be used, and because the instant disclosure does not appear to teach an embodiment that includes both chlorhexidine and an abietic acid-based compound as the surfactant in the coating film. Appropriate correction is required.
Claim 9 also appears to be unsupported by the instant disclosure because it recites “wherein the hole diameter of the holes is 1 nm or less”, but depends from claim 1, which recites that the holes are “capable of carrying the surfactant, wherein the surfactant is chlorhexidine”. Although the instant disclosure does discuss holes being smaller than 1 nm, it discloses a list of surfactants, which does not include chlorhexidine (Applicant’s published application, par. 119), that may be used in such a product. As there is no disclosure of chlorhexidine being the surfactant in a product having hole diameters of less than 1 nm, claim 9 appears to be directed to a different embodiment from claim 1, and the combined embodiment that claim 9 recites constitutes new matter. For the sake of compact prosecution, the claimed product is interpreted herein as being required to include both holes that are capable of carrying chlorhexidine and holes that are smaller than 1 nm. Appropriate correction is required.
Claim 10 also appears to be unsupported by the instant disclosure because it depends from claim 1, which requires a ceramic film, but requires that the lipophilic group of the surfactant is adsorbed, while the hydrophilic group is exposed. However, as the only ceramics disclosed are metal or metalloid oxides (e.g. Applicant’s published application, par. 76), which, as evidenced by Bae, are well-known to have hydrophilic surfaces absent steps being taken to produce a hydrophobic surface (p. 5762, left col. of Bae et al., Langmuir, 2019, 35, p. 5762-5769), the claim 10 requirement that the lipophilic group of the surfactant faces the film appears to be directed to a different embodiment (i.e. an embodiment that requires the film to have a lipophilic or hydrophobic surface) than claim 1, which requires a ceramic film. Additionally, there is no disclosure of a ceramic film having chlorhexidine molecules arranged as claimed. As such, the limitation appears to constitute new matter. Appropriate correction and explanation are required.
Claims 4, 5, 9, and 13 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.
Claim 4 is indefinite because it depends from claim 3, which is now cancelled. For the sake of compact prosecution, claim 4 is interpreted herein as depending from claim 1. Appropriate correction is required.
Claim 5 is indefinite because it recites that “the surfactant is an abietic acid-based compound”, which is inconsistent with claim 1 from which it depends because claim 1 recites that “the surfactant is chlorhexidine”, which is not an abietic acid-based compound. Appropriate correction is required.
The meaning of claim 13 is unclear because it recites “the coating film having a transparency of 10 % or less in terms of haze value”. Although the limitation appears to place an upper limit on the transparency of the film (i.e. “transparency of 10 % or less”), the instant disclosure appears to consider the transparency of the film to be high, stating that the coating is a “highly visible transparent antiviral coating having a HAZE of 10 % or less”. As such, it is unclear from the claim language if the film is required to have a high transparency or not. For the sake of compact prosecution and because it seems consistent with the intent of the instant disclosure, the limitation is interpreted herein as conveying that the film has a transparency to light such that it demonstrates a haze value of 10 % or less. Appropriate correction is required.
Claim 5 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.
As noted above, claim 5 recites “the surfactant is an abietic acid-based compound”, but depends from claim 1, which recites that “the surfactant is chlorhexidine”, which is not an abietic acid-based compound. Therefore, claim 5 fails to incorporation the limitations of claim 1. 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 § 102
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 1, 2, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito (JP 2020040267 A), cited herein according to the English language translation provided by Applicant on 12/22/2022. 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, 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.
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 10, although Ito does not explicitly teach that the chlorhexidine is situated such that its lipophilic group is adsorbed to the surface of the ceramic film with its lipophilic group exposed, Ito does disclose that the functional component (i.e. chlorhexidine) is mixed into and uniformly dispersed in the inorganic material forming the film and that cracks are formed in the dried film, thereby exposing the functional component and creating a structure wherein the functional component is present on the exposed surface(s) of the film (par. 8, 52, 79). As no specific structural arrangement (e.g. a conformal coating, etc.) of the surfactant is claimed, the chlorhexidine molecules present on the surfaces of the cracks in Ito’s film have the structure required of being “adsorbed in the holes on the surface of the film”. Additionally, as Ito’s material is uniformly mixed, thereby uniformly distributing the chlorhexidine within the material, and then cracked after being dried without any disclosed regard for the orientation of any chlorhexidine molecules, at least some of the chlorhexidine molecules present in the mixed film along the inner faces of the cracks are expected to be oriented such that their lipophilic groups face/are attached to the ceramic material and their hydrophilic groups are exposed.
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, 8-10, 12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ito and further in view of Park (US PG Pub. No. 2021/0301152). Evidence for claim 2 is provided by Chemical Book 1. Claim 16 is also rejected under 35 U.S.C. 103 as being unpatentable over Ito, as applied to claim 1 above.
Regarding claims 1, 2, 8-10, and 12, as discussed above, Ito teaches an article having a coating film on its surface that is considered herein to meet the requirements of claims 1, 2, 8-10, and 12.
To the extent that Ito’s teachings of “cracks” might be considered a difference from claim requirement that the ceramic film include “holes” capable of carrying the surfactant in its surface might be considered a difference from the current invention, 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). 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 noted above and evidenced by Applicant’s disclosure, chlorhexidine has a length of 2.5 to 3.5 nm (Applicant’s published application, par. 97). As also 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), Ito and Park render obvious a ceramic porous film including pores (i.e. “holes”), “wherein a hole diameter of the holes is smaller than a virus size”. See MPEP 2144.05.
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.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ito, and optionally, Park, as applied above, and further in view of De Leij (US PG Pub. No. 2013/0045954). Evidence for claim 2 is provided by Chemical Book 4 (Chemical Book, “1740-19-8(Dehydroabietic acid) Product Description”, 2017, p. 1-2).
Regarding claims 2 and 5, the teachings of Ito differ from the current invention in that his product is not taught to include an abietic acid-based compound. However, Ito does teach including antibacterial components in his coating (par. 1). De Leij further teaches that abietic acid-based compounds, such as neo-abietic acid and dehydroabietic acid, are safe and can be used to increase the antimicrobial activity of antimicrobial agents (par. 45, 46). De Leij also teaches such antimicrobial compositions may be used to combat bacteria (i.e. the “antimicrobial” compositions are “antibacterial”) (par. 62). Accordingly, it would have been obvious to one of ordinary skill in the art to configure Ito’s product to include an abietic acid compound, such as neo-abietic acid and dehydroabietic acid, in combination with antibacterial agent, such as one disclosed by Ito and such as chlorhexidine, because Ito teaches including antibacterial agents in his coating film and in order to safely enhance the antimicrobial/antibacterial activities of the antibacterial/antimicrobial agents, as disclosed by Leij. As evidenced by Chemical Book 4, dehydroabietic acid meets the requirements of claim 2 (p. 1).
Claims 4 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ito, and optionally, Park, as applied above, and further in view of Masao (JP H 09-48868 A), cited herein according to an English language translation.
Regarding claims 4 and 15, 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 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.
Response to Arguments
Applicant's arguments filed November 11, 2025 have been fully considered but they are not persuasive or are moot in view of the current rejections.
Applicant has argued that the amendment to claim 13 overcomes the previous rejection made under 35 U.S.C. 112(b). However, although Applicant’s amendment is appreciated, the claim is still indefinite for the reasons discussed above.
Applicant’s arguments with respect to the previously cited prior art are moot because the arguments do not apply to the current rejections and because the rejections citing those references have been withdrawn in view of Applicant’s amendment filed on November 11, 2025.
It is also noted that, although Applicant has made arguments about the synergistic effects of combining a zinc oxide or titanium oxide ceramic film with a particular form of chlorhexidine while arguing about the previously-cited prior art, claim 1 is not limited to a particular type of ceramic or a particular form of chlorhexidine. Such arguments would not be persuasive in establishing non-obviousness because they are not commensurate with the claims.
Conclusion
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 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 JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784