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 .
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8,454,901 B1 (Snyder) in view of DE 10 2014 215 353 A1 (Streller).
With respect to claim 15: Snyder discloses a system for handling of a surgical instrument (“instruments and supplies” in Background of the Invention) in a healthcare facility (at least an operating room, autoclave, and storage room) during a reprocessing cycle (at least sterilization), the system comprising: a plurality of care cycle apparatuses (cabinet 2 and the surgical tray(s) 80) each configured to accommodate the surgical instrument during the reprocessing cycle (Abstract and Background of the Invention – the trays having instruments therein are placed inside the cabinet, and the whole apparatus is placed in an autoclave and sterilized), the plurality of care cycle apparatuses comprising at least one first care cycle apparatus (cabinet 2) and at least one second care cycle apparatus (the surgical tray(s) 80), wherein the at least one first care cycle apparatus comprises a storage cabinet (cabinet 2; see the Abstract, Background of the Invention, and Summary of the Invention regarding storage; col. 3: “cabinet 2 is rolled on wheels 104 into storage”) and the at least one second care cycle apparatus comprises a transport container (tray 80), the storage cabinet and the transport container each comprise at least one wall (Figs. 5-6 and 8-9) having an inner surface defining a storage space for accommodating the surgical instrument (in that the instruments and supplies are disclosed as inside the tray(s) 80).
Snyder does not disclose “and at least a portion of the inner surface of each of the storage cabinet and the transport container comprises an antimicrobial surface” as claimed.
Streller discloses a container 1 having the inner and/or outer surface(s) thereof completely coated in an antimicrobial coating 4. This prevents or reduces the risk of germ spread in the surgical environment in which container 1 is used. Streller’s container 1 holds surgical instruments, analogously and/or as a functional equivalent to Snyder’s tray(s) 80.
KSR International Co. v. Teleflex Inc. et al. states:
When a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.
KSR International Co. v. Teleflex Inc. et al. states:
If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.
KSR International Co. v. Teleflex Inc. et al. states:
Familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.
KSR International Co. v. Teleflex Inc. et al. states:
A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.
One of ordinary skill in the art would recognize that Streller’s coating 4 would improve the cabinet 2 in the same way as the tray(s) 80 and/or container 1, by providing antimicrobial properties thereto. This predictably reduces the risk of germ spread in the environment in which cabinet 2 is used, for the same reasons as coating 4 being on the container 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the inner surface of the tray(s) 80 and cabinet 2 to include Streller’s antimicrobial coating 4, in order to prevent or reduce the risk of germ spread on surfaces of the tray(s) 80 and cabinet 2 similarly to Streller’s invention.
The claim recites “wherein the transport container is utilized to transport: the surgical instrument from a surgical area to a reprocessing area for disinfecting the surgical instrument, the disinfected surgical instrument from the reprocessing area to a storage area; and from the storage area back to the surgical area; and the storage cabinet is used for storage and for drying of the disinfected surgical instrument”.
From MPEP § 707.07(f):
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Snyder teaches that the trays 80 are removed and used as needed in the operating room (col. 3, lines 13-20; col. 6, lines 5-11). The trays 80 are loaded in the cabinet (Fig. 5 and col. 4, line 62 to col. 5, line 3), and then sterilized (col. 5, lines 4-50). The cabinet 2 may be taken into storage or directly back into an operating room (col. 3, lines 13-20). In the operating room, if it is determined that a tray is non-sterile, the autoclave process musty be repeated (col. 1, lines 39-53).
The modified tray(s) 80, without any further modification thereto, is/are capable of being “utilized to transport: the surgical instrument from a surgical area to a reprocessing area for disinfecting the surgical instrument (an instrument in tray 80 for repeated autoclaving, or after being used in an operation), the disinfected surgical instrument from the reprocessing area to a storage area (an instrument in tray 80 taken from the autoclave to the storage area, and not directly to the operating room); and from the storage area back to the surgical area (an instrument in tray 80 taken from the storage area to an operating room for use)” as claimed.
The modified cabinet 2, without any further modification thereto, is capable of being “used for storage (cabinet 2 in the storage area) and for drying of the disinfected surgical instrument (drying after autoclaving, using the vents 50)” as claimed.
By being capable of performing “wherein the transport container is utilized to transport: the surgical instrument from a surgical area to a reprocessing area for disinfecting the surgical instrument, the disinfected surgical instrument from the reprocessing area to a storage area; and from the storage area back to the surgical area; and the storage cabinet is used for storage and for drying of the disinfected surgical instrument” as claimed, Snyder’s modified apparatus meets the recitation.
Further, the claim recitation “wherein the transport container is utilized to transport: the surgical instrument from a surgical area to a reprocessing area for disinfecting the surgical instrument (after being taken out in the operating room as in Fig. 9, the tray 80 is loaded as in Figs. 5-6, and then sterilized as in Figs. 7 and 10), the disinfected surgical instrument from the reprocessing area to a storage area (col. 3, lines 13-20: when not taken directly into an operating room); and from the storage area back to the surgical area (for use in a procedure); and the storage cabinet is used for storage (when cabinet 2 is in the storage area) and for drying of the disinfected surgical instrument (drying after autoclaving and/or using the vents 50)” is encompassed by the normal operations of Snyder’s apparatus.
With respect to claim 20: Streller [0020]-[0037] and [0043]-[0055] disclose wherein the antimicrobial surface comprises an antimicrobial coating.
With respect to claim 21: Streller [0020]-[0037] and [0043]-[0055] disclose wherein the antimicrobial coating comprises one or more of copper and silver.
Copper is disclosed as “the at least one antimicrobial active substance” at [0028]. Copper is disclosed as “the at least one antimicrobial active substance” at [0028]-[0029]. The “at least one antimicrobial active substance” is disclosed as contained in the coating at [0021]. Further see [0044]-0048] regarding applying coating 4 having silver as the antimicrobial active substance.
With respect to claim 22: Streller [0036]-[0038] and [0048] disclose wherein the antimicrobial coating is one or more of a chemical vapor deposition coating and a physical vapor deposition coating.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8,454,901 B1 (Snyder) in view of DE 10 2014 215 353 A1 (Streller) as applied to claim 15 above, and further in view of US 2023/0233722 A1 (Hussey).
With respect to claim 18: Streller does not disclose “wherein the antimicrobial surface is one of a hydrophilic surface or a hydrophobic surface” as claimed.
Streller discloses applying the antimicrobial coating by one or more of chemical vapor deposition, physical vapor deposition ([0036]-[0038] and [0048]).
See at least Hussey [0087]-[0101]. Hussey discloses applying a pathogen inhibiting (antimicrobial) treatment to a substrate 10. The treatment includes a first coating 30 having antimicrobial properties, and may be copper or silver applied through a deposition method – similarly to what is disclosed as Streller’s coating 4.
Hussey discloses a second coating 50 that protects the first coating 10, and may also include a pathogen inhibiting material similar to the first coating 30. The second coating 50 can also be a functional coating that provides one or more desired functional properties ([0095]) such as hydrophobic and/or hydrophilic properties ([0096]).
Hussey [0083] states that substrate 10 can be a film, a textile, a fabric, or any other desired generally planar surface. Further, while it is preferred that a planar surface be coated, the coating can be applied to irregular or textured surfaces, or 3-dimensional objects (Hussey [0083]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Streller’s coating 4 to have Hussey’s second coating 50 thereon, in order to protect Streller’s coating 4 and/or provide a desired functional property to the coating 4 similarly to Hussey’s first coating 10.
In the modification, Hussey [0095]-[0096] disclosing the second coating 50 having hydrophobic and/or hydrophilic properties makes obvious “wherein the antimicrobial surface is one of a hydrophilic surface or a hydrophobic surface” as claimed.
With respect to claim 19: Streller does not disclose “wherein the antimicrobial surface is a plasma activated surface” as claimed.
Streller discloses applying the antimicrobial coating by one or more of chemical vapor deposition, physical vapor deposition ([0036]-[0038] and [0048]).
Hussey [0080] discloses plasma enhanced physical and chemical vapor deposition, in which the article is pre-treated by a plasma field prior art deposition.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Streller’s deposition process to include the step of pre-treating the inner surface with plasma, because Hussey shows that is a known enhanced version of deposition processes like those disclosed in Streller.
This makes obvious “wherein the antimicrobial surface is a plasma activated surface” as claimed.
Claim(s) 19 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8,454,901 B1 (Snyder) in view of DE 10 2014 215 353 A1 (Streller) as applied to claims 15 and 20 above, and further in view of WO 2006/099906 A1 (Schultheis).
With respect to claim 19: Streller does not disclose “wherein the antimicrobial surface is a plasma activated surface” as claimed.
Streller discloses applying the antimicrobial coating by one or more of chemical vapor deposition, physical vapor deposition ([0036]-[0038] and [0048]).
Schultheis discloses an antimicrobial coating that is sol-gel based. The coating can contain silver and/or copper, similarly to the coating 4 of Streller. Prior to coating, the surface can be activated by varied and known processes such as plasma treatment (6th page of translation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Streller’s container 1 to have plasma activation before application of the coating 4, because Schultheis shows these is a known process in the art to prepare a surface for antimicrobial coating.
This makes obvious “wherein the antimicrobial surface is a plasma activated surface” as claimed.
With respect to claim 23: Streller does not disclose “wherein the antimicrobial coating is optically transparent” as claimed.
Schultheis discloses an optically transparent, antimicrobial coating that is sol-gel based. The coating can contain silver and/or copper, similarly to the coating 4 of Streller.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Streller’s coating 4 to be sol-gel based and transparent, like Schultheis’ coating, in order to preclude discoloration or tinting of the surface to which the coating is applied. This allows the structure to maintain the original appearance thereof, after the coating 4 is applied.
Response to Arguments
Applicant's arguments filed 06 April 2026 have been fully considered but they are not persuasive.
The Applicant argues that it is not obvious to modify Snyder’s cabinet 2 with an antimicrobial coating, because Streller’s container 1 correlates to Snyder’s trays 80 – not the cabinet 2. The examiner respectfully disagrees.
KSR International Co. v. Teleflex Inc. et al. states:
When a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.
KSR International Co. v. Teleflex Inc. et al. states:
If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.
KSR International Co. v. Teleflex Inc. et al. states:
Familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.
KSR International Co. v. Teleflex Inc. et al. states:
A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.
One of ordinary skill in the art would recognize that Streller’s coating 4 would improve the cabinet 2 in the same way as the tray(s) 80 and/or container 1, by providing antimicrobial properties thereto. This predictably reduces the risk of germ spread in the environment in which cabinet 2 is used, for the same reasons as coating 4 being on the container 1.
Contrary to the Applicant’s assertions, there is suggestion to provide the cabinet 2 with Streller’s coating 4 – to reduce the risk of germ spread in a surgical/operating environment.
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 ANDREW ROERSMA whose telephone number is (571)270-3185. The examiner can normally be reached M-F 8:00-4:00.
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, Daniel Troy can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW ROERSMA/ Primary Examiner, Art Unit 3637
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