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 without traverse of Group III (claims 13-20) and species B (claim 16) in the reply filed on 12/14/2025 is acknowledged.
Groups I-II (claims 1-12) and species A (claim 15) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/14/2025.
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 19 is 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.
Claim 19 recites the limitation “said structures”. There is insufficient antecedent basis for this limitation in the claim.
As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06(II). Since the meanings and scopes of claim 19 are not clear, it is not proper to reject claim 19 on the basis of prior art.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 13-14, 16-17 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al (US 20090155592 A1).
Regarding claim 13, Lee teaches contacting calcium carbonate mesoparticles (2-10 micron) with silver nanoparticles (40-200 nm), before contacting with polymeric macroparticles (200-400 micron) [0022, 0034].
The examiner submits that the particle size of 40-200 nm (0.04-0.2 micron) of the silver nanoparticles falls within the range from 0.005 to 1 micron of the claimed metallic nanoparticles.
The particle size of 2-10 micron of the calcium carbonate mesoparticles falls within the claimed 0.01 to 40 microns of the claimed non-metallic particles.
The polymeric macroparticles read on the claimed polymer.
Regarding claim 14, Lee teaches that a polymer used as polymeric macroparticle can be selected from, but not limited to the group consisting of: LDPE (Low density PE), LLDPE (Ultra low density PE), HDPE (High density PE), PS(Polystyrene)-based resins, PP(Polypropylene)-based resins, for example, Homo PP, Random PP, and their copolymers; acrylonitrile-Butadiene-Styrene terpolymer; PVC; PC, Urethane [0014]. These polymers read on the claimed polymers.
Regarding claim 16, the recited “the nanocomposite composition is a liquid” is a property of the product. “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. “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)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 17, the recited antimicrobial efficacy is a property of the product. “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. “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)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 20, the recited “said nanocomposite compositions are used in manufacturing…” represents a statement of intended use that imparts no additional structure beyond the claimed nanocomposite compositions and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US 20090155592 A1) as applied to claim 13 above, further in view of Pradeep et al (WO 2019130356 A1).
Regarding claim 18, Lee teaches the method in claim 13 as stated above. Lee teaches composite materials made through the method [abstract], but does not teach its use as applied to a filter or treatment medium suitable for purification treatment, filtration, and/or decontamination (disinfection and sterilization) of potable, non-potable, or industrial process water from at least one of the following: acid producing bacteria, sulfate reducing bacteria, gram-positive bacteria, gram-negative bacteria, fungi, or viruses.
Pradeep teaches a potable water filtration system comprising a composite material [abstract, P1L14] where water is passed through the composite materials [P5L6-7], capable of removing bacteria and viruses [P4L31-P5L1].
It would have been obvious to one of ordinary skill in the art at the time of filing to apply Lee’s composite material to Pradeep’s potable water filtration system because Pradeep expressively teaches the use of a composite material in its system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. 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.
/JIANGTIAN XU/Primary Examiner, Art Unit 1762