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 .
Election/Restrictions
Applicant’s election of Group I, encompassing claims 1-9, in the reply filed on 2/11/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-11 are withdrawn.
Claim Objections
Claims 1 and 8 are objected to under 37 CFR 1.75 as being substantial duplicate claims. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m)
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 1-9 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.
Claims 1 and 8 recite the limitation "the opening". Claims 5 and 7 also recite the limitation of “the opening”. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required. For the purpose of examination, “the opening” in the above claims will be interpreted as “the at least one opening”.
Due to the dependency to the parent claim, claims 2-7, and 9 are rejected.
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 1-4, and 6-9 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Mueller et al (PG-PUB US 2012/0111359).
Regarding claims 1 and 8, Mueller et al disclose a plasma generating apparatus (ABSTRACT). The apparatus comprises
(1) a plasma generator having an electrode system, wherein
(i) the plasma generator is provided in a body 6 having nozzles 7;
(ii) the electrode system is in the form of dielectric barrier discharge which includes a dielectric between electrodes for generating ozone; and
(iii) the generated ozone flows through the nozzles 7 (i.e., a plasma generator…in a housing having at least one opening, … a first electrode and a second electrode with a dielectric … ozone, … flows out of the at least one opening …, Figures 5-6, paragraphs [0012], & [0082] –[0083]); and
(2) a UV light source within the body configured to radiate the generated ozone to activate atomic oxygen (i.e., an ultraviolet light … active oxygen…, Figures 5-6, paragraphs [0082] –[0083]).
Regarding claim 2, Mueller teaches that the UV light source may have a wavelength of 254 nm (paragraph [0087]).
Regarding claim 3, the illuminance of the UV light is not a structural limitation, rather a process-limiting parameter, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claims 4, the amount of generated ozone is not a structural limitation, rather a process-limiting parameter, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claim 6, Muelle teaches that the UV light source 2 and the electrode system 1 for generating plasma are coupled to each other or to the orifice grid 3 (Figures 6-7).
Regarding claims 7 and 9, Mueller teaches that the object to be treated may be provided around the body 6 having the nozzles 7 and/or the object 4 is exposed to the UV light source 2 in a housing having orifice grid 4 (Figure 5-7, paragraphs [0082] – [0086]).
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.
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.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al (PG-PUB US 2012/0111359) as applied to claim 1 above, and further in view of Engemann et al (PG-PUB US 2008/0260578).
Regarding claim 5, Mueller teaches that the plasma generator includes an electrode system having a dielectric between electrodes (paragraphs [0012] & [0082]), but does not teach a portion of the dielectric not being covered by the first electrode or the claimed angle. However, Engemann et al disclose a plasma generating apparatus (ABSTRACT & paragraph [0033]). Engemann teaches that the apparatus comprises a dielectric 2 sandwiched between electrodes 1a – 1c, wherein a portion of the dielectric is not covered by the electrode and the extension line between an edge of the electrode to the uncovered dielectric forms an angle in a range of 0 to 90 degree relative to the horizontal line (Figure 2, paragraphs [0110] –[0111]). Engemann further indicates that such configuration can generate ozone and UV radiation for effective disinfection (paragraphs [0022], [0029], & [0123]).
Therefore, it would be obvious for one having ordinary skill in the art to utilize an electrode system having a portion of the dielectric not covered by the electrodes as suggested by Engemann in order to generate ozone and UV radiation from surface discharge for improving disinfection within the device of Mueller.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of co-pending Application No. 18/751455 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of co-pending Application No. 18/751465 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-9, 13-15, and 17-18 of co-pending Application No. 18/751449 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of co-pending Application No. 18/751480 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, and 8-9 of co-pending Application No. 18/751487 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-8 of co-pending Application No. 18/751500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 9, 12, and 15 of co-pending Application No. 18/751473(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1of co-pending Application No. 18/186336 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of co-pending Application No. 18/090623 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant claims an apparatus comprises substantially the same elements as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-9 are rejected. Claims 10-11 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIUYU TAI whose telephone number is (571)270-1855. The examiner can normally be reached Mon.-Fri. 9:00-5:00.
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, Luan Van can be reached at 571-272-8521. 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.
/XIUYU TAI/Primary Examiner, Art Unit 1795