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 .
Applicant has amended the claims thereby overcoming the previous rejections under section 112.
Applicant has filed two terminal disclaimers for consideration by the office in response to the obviousness double patenting rejections.
Applicant traverses the rejection under section 103. The remarks filed therewith ae not persuasive for the reasons more fully below set forth.
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.
Claim(s) 1-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horley et al (US 20008/0233204) alternatively as further evidenced by Oxygen-Vacancy Engineering of Cerium-Oxide Nanoparticles for Antioxidant Activity Cindy Gunawan,*,†,‡ Megan S. Lord,*,§ Emma Lovell,‡ Roong Jien Wong,‡,∥ Moon Sun Jung,§ Diana Oscar,‡ Riti Mann,† and Rose Amal‡ ACS Omega 2019 r, 9473-9479
Regarding Claims 1-7 and 9:
Horley et al (US 20008/0233204) discloses an anti-microbial paint (Abstract) (meeting the limitations of claim 1 for a paint and an antimicrobial) comprising a film forming polymer including acrylics, esters, polymers of methyl methacrylate butyl acrylate copolymers and polyurethanes [0017] the composition comprises metal of silver [0021] (meeting claim 1 for an antimicrobial promoting metal, claim 2 where said metal is silver and claim 3 for said metal to be silver) and inorganic material of cerium oxides [0023] the metal is deposited on the inorganic material to form an antimicrobial substance and is bound to the inorganic material [0024] (meeting the limitation for a mCNP)
The inorganic particle diameter is less than 1 micron for even distribution and provides a large surface area [0022] (overlapping and rendering obvious the instantly claimed particle size esp. where the size is claimed as “about” said claimed range and one of ordinary skill in the art at the time of filing the invention could readily chose a particle size range for even distribution which overlaps the instant about ranges with a reasonable expectation of success in forming a paint with anti-bacterial with large treatment surface area)
The paint is applied and allowed to dry (Abstract)(i.e. cured) The paint is applied to a substrate and allowed to and caused to dry [0014][0030](meeting claim 1 for a durable adhesive coating once cured – since the composition is the claimed composition it will be a durable adhesive coating once dried/cured).
The composition may comprise pigments [0054-0055] (meeting claim 9)
The antimicrobial is present at 5 to 150 ppm by weight of the paint (see claim 6 reference)
The bacteria is reduced by 100 % (Table 1) (meeting claim 7)
The composition comprises organic solvents [0015] and solvents for the copolymer and solvent mixtures. The composition may include plasticizers such as Texasnol [0018]
The composition comprises pigments including yellow [0054] and a variety of pigment types [0055] (where the instant specification indicates fluorescing additives include yellow pigments see instant application PGPub at [0074-0075]meeting instant claim 6) The composition also includes varnish and clearcoat [0003]
In an example the composition comprises Biosilver LP 10 a microbicide product of titanium dioxide silver chloride and a surfactant. [0037]
Regarding Charge:
The independent claims indicate that the surface charge is either predominantly C3+ or C4+ as such the cited prior art having taught the claimed metal modified / silver CeO will necessarily meet and/or overlap this surface charge ratio (i.e. by definition the charge / oxidation state of the Ce component will either be 3+ or 4+ and will overlap the range of claims 1 and 4-5 where either 3+ or 4+ is greater) (See instant application PGPub at [0046-0047] 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) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Alternatively as further evidenced by: Oxygen-Vacancy Engineering of Cerium-Oxide Nanoparticles for Antioxidant Activity Cindy Gunawan,*,†,‡ Megan S. Lord,*,§ Emma Lovell,‡ Roong Jien Wong,‡,∥ Moon Sun Jung,§ Diana Oscar,‡ Riti Mann,† and Rose Amal‡ ACS Omega 2019 r, 9473-9479 teaching reactive oxygen species used to compact disease etc. and the development of nano cerium oxide having intrinsic Ce3+ and Ce4+ switchable oxidation states for redox cycling which facilities reversible stoichiometric storing CeO2 and release of oxygen rendering nanoceria as self-generating scavengers in response to both oxidizing and reducing oxygen species in cells. (P9473 Column 1) and the doping of said nano ceria (P9473 col 2)
Regarding the various claimed ranges:
The above cited prior art teaches ranges which overlap the instantly claimed ranges as more fully above set forth. Further said ranges are readily ascertainable by one of ordinary skill in the art at the time of filing the invention to optimize surface area for an antimicrobial performance in paint.
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)" Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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)
Notably the instant application defines the term “about” as it is used for ranges and indicates all numerical values provided are modified by the term “about” Claims 4-5 esp. expressly recite about as to diameter. While claim 2 does not expressly recite “about” giving the claims the broadest reasonable interpretation in view of the specification, the range is interpreted as “about”
See instant application PG Pub at [0040] Unless specifically stated or obvious from context, as used herein, the term “about” is understood as within a range of normal tolerance in the art, for example, within 2 standard deviations of the mean. “About” can be understood as within 30%, 25%, 20%, 15%, 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Unless otherwise clear from context, all numerical values provided herein are modified by the term “about.” (emphasis added by examiner)
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horley et al (US 20008/0233204) alternatively as further evidenced by Oxygen-Vacancy Engineering of Cerium-Oxide Nanoparticles for Antioxidant Activity Cindy Gunawan,*,†,‡ Megan S. Lord,*,§ Emma Lovell,‡ Roong Jien Wong,‡,∥ Moon Sun Jung,§ Diana Oscar,‡ Riti Mann,† and Rose Amal‡ ACS Omega 2019 r, 9473-9479
as applied to claims 1-7 and 9 above further in view of Leong (US 2007/0000407)
Regarding Claim 8:
Horley et al (US 20008/0233204) discloses the limitations above set forth. Horley discloses the composition is used for work surfaces walls ceiling floors etc. (Abstract)
Horley does not expressly disclose the composition comprising a nano composite photocatalytic containing solvent for rapid evaporation.
Leong (US 2007/0000407) discloses a fast drying composite photocatalytic coating resistance to ultraviolet oxidation and high temperature environments and results in deodorizing, cleaning and sterilizing and disrupts microorganisms. It may be used in various systems as well as in building and construction industries for concrete tile, ceramic tile pain etc. to repel organisms and sterilize organic compounds [0022] the composition comprises at least one photocatalytic ingredient an inorganic binder an inorganic antibacterial powder and at least on organic solvent [0023]
The composition comprises a photocatalytic powder which is nano size of 75 nm or smaller and may include silver, titanium oxide etc. [0024] the inorganic binder includes polyalkylphenylsiloxane and the solvent is preferably xylene and may include fumed silica as a thickening and anti-sagging agent. [0024] the solvent is evaporable carrier liquid for proper mixing and application of coating to surfaces [0030] The composition comprises titanium oxide nano particles for superior oxidation and heat resistance due to large surface area good adhesion and dispersion etc. [0034]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add the solvent with photocatalytic powder of Leong to the composition of Horley in order to impart improved anti-microbial properties as well as improved resistance to ultraviolet oxidation and high temperature environments and imparting deodorizing, cleaning and sterilizing properties to the composition of Horley with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
Applicant traverses the rejection asserting the prior art does not teach the claimed metal modified cerium oxide nano particles. This is not persuasive.
The claims have been afforded the broadest reasonable interpretation in view of the specification:
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The applicant argues the reference teaches silver halides and silver chlorides and not silver. This is not persuasive at the reference teaches a metal OR a metal compound as cited in the office action. For convenience of applicant:
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This paragraph teaches a cerium metal oxide. This paragraph teaches silver. Paragraph 0021 as above cited of the reference teaches the silver is deposited on or “in” the particulate inorganic material meeting the claimed modified cerium oxide.
While the reference does teach a silver halide etc. it expressly recites silver. The reference is replete with the language silver OR silver halide and silver chloride (for example [0012] and claim 1 of reference use the same language).
The reference teaches the metal is deposited on or in the particulate inorganic material [0021] where the inorganic material is identified as a metal oxide including cerium metal oxides [0023] (the reference has specifically named he species of metal as silver and specifically named the species of inorganic metal oxides as cerium metal oxide thereby establishing a prima facie showing of obviousness – see generally MPEP 2131.02 and 2144.08) Since the reference teaches the metal is deposited on or “in” the particulate inorganic material this meets the claim limitation for “metal modified” having given the claims the broadest reasonable interpretation in view of the instant specification at [0044] for coated or otherwise bound.
Although there is a preference for a silver chloride the reference clearly also recites a metal of silver (i.e. not the salt) “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))
Notwithstanding same, the claims are drafted as comprising thereby permitting the addition of additional materials/components.
Applicant asserts the range of claim 4 for average diameter is not taught by the cited reference. This is not persuasive. As set forth in the office action the inorganic particle diameter is less than 1 micron for even distribution and provides a large surface area [0022] (overlapping and rendering obvious the instantly claimed particle size esp. where the size is claimed as “about” said claimed range and one of ordinary skill in the art at the time of filing the invention could readily chose a particle size range for even distribution which overlaps the instant about ranges with a reasonable expectation of success in forming a paint with anti-bacterial with large treatment surface area) See instant application PG Pub at [0040] Unless specifically stated or obvious from context, as used herein, the term “about” is understood as within a range of normal tolerance in the art, for example, within 2 standard deviations of the mean. “About” can be understood as within 30%, 25%, 20%, 15%, 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value. Unless otherwise clear from context, all numerical values provided herein are modified by the term “about.” (emphasis added by examiner)
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies as to the type of bond between the cerium oxide and the silver metal are not recited in the rejected claim(s) nor does the type of bonding appear in the instant specification. See paragraph [0044] of the instant specification. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The examiner maintains that a prima facie showing of obviousness has been established by a preponderance of the evidence.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
Zhao et al CN 108641449A discloses an environmental friendly paint with antibacterial functions the composition comprises: An environment-friendly dope with antibacterial and deodorization function, comprising the following components according to parts by weight: 40-60 parts of emulsion, 4-12 parts of pigment, 20-35 parts of filler, 10-20 parts of bamboo carbon powder, silver-carrying antibacterial silicon dioxide, 2-6 parts of silicon dioxide coated titanium oxide powder 4-8 shares, zinc oxide 1-3 shares, cerium oxide 0.2-0.6 parts, auxiliary agent 4-10 parts, deionized water 100-150 parts. The composition includes an acrylic emulsion
Jin, Feng, Bai, Wang et al CN103498140A discloses a method of preparing a nanometer silver doped cerium oxide coating. The coating is uniform and avoids cracks and holes, reduces roughness on the surface of the film, has a sharp biaxial texture, smooth surface, no crack good epitaxial growth superconducting layer (Abstract) [0001]
Fig 9 is the AgCeO The particles are 5-20 nm [0009]
Zhang (CN 108587342A) discloses a nanometer titanium dioxide phototactic sterilization purifying paint (Abstract) comprising 38-55% nanometer titanium dioxide 10-30 % fluorocarbon emulsion 2-5 inorganic porous substances rare earth antimicrobial, 1.5-3.5 negative ion releasing agent 1-3 % functional auxiliary agent, 1.4 to 5 % titanic acid ester coupling agent 2-4 % wetting dispersing agent and 0.4 to 0.8 and deionized water. The coating kills bacteria is environmentally friendly has excellent aging resistance adhesive properties and is a paint component (Abstract)
Preferably, the nano-titanium dioxide is anatase titanium dioxide, the particle diameter is 15-50 nm, specific surface area is 80-200m2/g
Preferably, the rare earth antibacterial agent by weight ratio of 1:1: 1 of zinc oxide, cerium oxide and silver oxide.
Preferably, the wetting dispersant is fatty acyl diethanol amine.
Preferably, the functional auxiliary agent comprises thickening agent, antifoaming agent, coalescing agent, mildew preventive, flatting agent and flatting agent.
Preferably, the thickening agent is hydroxyethyl cellulose, the defoaming agent is organic siloxane, (meeting claim 8 for solvent) said coalescing agent is dipropylene glycol butyl ether; the antiseptic is a thio-amino-acid ester; the flatting agent is BYK-333; the flatting auxiliary agent is RM2020.
The composition includes silica gel and at least one kind of phosphate (See also claim 3 reference) (i.e. instant claims 8-9 where the silica gel meets solvent and phosphate meets pH buffer) wherein the wetting dispersant is fatty acyl diethanol amine (see claim 6 reference also meeting limitation for a pH buffer of claim 9)
(2) the invention through modification treatment, the nano-titanium dioxide to make it not only has effect under the ultraviolet light, but also can even under sunlight of the visible light photo-catalysis performance, expands the application range to reach better purifying air, antibacterial and mildew-proof effect.
by incorporating rare earth antibacterial agent, has synergetic effect, better exert coating for purifying air, sterilizing and disinfecting properties.
(4) the invention fluorocarbon emulsion forming workability is good, and has excellent water resistance, impermeability, weather resistance, flexibility and adhesion strength of the base layer, and the grain size is small, and it has good coating effect, the nano-titanium dioxide, rare earth antibacterial agent, negative ion releasing agent firmly bonded together, so that the service life of the coating is greatly prolonged.
(7) coating in the invention has stable performance and has excellent aging resistance, washability, adhesive property, corrosion resistance property, and can directly replace putty powder and paint, directly combined with the cement mortar wall, firm, no peeling, will not fall off, does not crack.
Ag/CeO2 nanostructured materials for enhanced photocatalytic and antibacterial applications Kuldeep Negia , Ahmad Umarb,* , M.S. Chauhana,**, M. Shaheer Akhtar Ceramics International 45 (2019) 20509-20517 discloses Ag/CeO2 nanostructured material having photo catalytic and antibacterial activities for rhodamine dye under UV irradiation (i.e. claim 6 for fluorescing additive) (Abstract)
The particles are added to dye in an aqueous solution (P20511 C1 last 10 lines)
In antibacterial studies the Ag/CeO2 nano material is added to a suspension of bacteria at concentrations of 2, 4, 6, 8 and 10 % (i.e. 100ul/1000ug/1ml)(P20511 col 2 last par 2.4) The Ag/CeO2 catalyst is used at 0.1 to 0.2 g in 100 ml aqueous solutions (P20511 first col last par) See Fig 2 particles 2 to 50 nm
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 PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732