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 I, claims 1-15, in the reply filed on 4/29/2026 is acknowledged.
Claims 16-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 4/29/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Specifically, the germicidal irradiation means for disinfecting an exterior surface of the cladding, the photocatalytic disinfection means for disinfecting an exterior surface of the cladding, and the chemical disinfection means for disinfecting an exterior surface of the cladding, as recited in claim 1 are being interpreted under 112(f).
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Specifically, the germicidal irradiation means and the photocatalytic disinfection means will be understood to be one or more light emitters selected from light-emitting diodes ("LEDs"), superluminescent LEDs ("SLEDs"), laser diodes, light bulbs, and tube lights as disclosed in the specification ([0006], [0012]) and all equivalents thereof, and the chemical disinfection means will be understood to be one or more antimicrobial metals incorporated into the one-or-more polymeric layers of the body as disclosed in the specification [0062] and all equivalents thereof.
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.
Claim(s) 1-2, 8-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones et al. (US 20190167825 A1).
Regarding claim 1, Jones teaches a self-disinfecting system (Fig. 3B-4, device 100), comprising:
a cladding including a flexible body formed of one or more polymeric layers (Fig. 3B, device 100 can include a flexible body with a plurality of polymeric layers such as 110 and 114 [0057-0058]),
the cladding configured to conform to a substrate (Fig. 4, device 100 configured to cover a high touch surface of a structure 138, understood to be a substrate [0058]); and
a disinfection means for disinfecting an exterior surface of the cladding, the disinfection means selected from: a germicidal irradiation means for disinfecting the exterior surface of the cladding by irradiation with germicidal radiation from one or more locations within the body of the cladding (Fig. 3B-4, device 100 includes flexible light emitting layer 110 = disinfection and germicidal irradiation means which emits germicidal radiation to disinfect the exterior of the cladding [0052-0055]).
Regarding claim 2, Jones teaches the self-disinfecting system of claim 1, wherein the body of the cladding is formed into a strip or sheet configured to conform to one or more contiguous surfaces of the substrate selected from flat and rounded surfaces of the substrate (Fig. 4, [0058-0059]).
Regarding claims 8-12, the claims do not require the selected means to be the photocatalytic disinfection means. Claim 1, from which the claims depend, recites “the disinfection means selected from: a germicidal irradiation means…, a photocatalytic disinfection means…, and a chemical disinfection means…” Claims 8-12 further limit the photocatalytic disinfection means, but the claims do not positively recite that the disinfection means is a photocatalytic disinfection means. Therefore, since the prior art teaches the germicidal irradiation means, the claims further refining the limitations with respect to the unselected photocatalytic disinfection means are read on by Jones et al. See rejection of claim 1 above.
Regarding claim 13, Jones teaches the self-disinfecting system of claim 1, wherein the germicidal irradiation means for disinfecting the exterior surface of the cladding includes electronic circuitry configured to power and control operation of the germicidal irradiation means (device 100 includes control system 160 configured to control germicidal irradiation means and circuitry for powering germicidal irradiation means [0062-0063]).
Regarding claim 15, Jones teaches the self-disinfecting system of claim 1, wherein the substrate is selected from a rail or frame of a hospital bed; a grab bar; an intravenous ("IV") pole or stand; a surface or edge of an overbed table, a bedside table, a countertop, or a trash can; a sink, a faucet, or a toilet; a handle or knob of a door, a drawer, or a cabinet; a light switch, and a call button (device 100 may be coupled to any high touch surface [substrate] such as a door handle [0058]).
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) 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 20190167825 A1).
Regarding claim 3, Jones teaches the self-disinfecting system of claim 1 (Fig. 3B, device 100) but does not explicitly teach wherein the body of the cladding is formed into a sheath configured to conform to a cylindrical surface of the substrate. However, Jones teaches wherein the system may be incorporated in a plurality of different geometric surfaces, such as a handle, ([0051], [0058) including an embodiment of the self-disinfecting system (Fig. 22, device 100) wherein the body of the cladding is formed into a sheath configured to conform to a cylindrical surface of the substrate (Fig. 22, device 100 may be coupled to a cylindrical surface [0073]). One having ordinary skill in the art would be motivated to seek different geometries to incorporate the self-disinfecting surface to ensure sterilization of a touch surface.
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the self-disinfecting system as taught by Jones (Fig. 3B, device 100) with the self-disinfecting system configured to conform to a cylindrical surface of a substrate as taught by the alternative embodiment of Jones (Fig. 22, cylindrical device 100) because Jones teaches the cladding to be flexible and configured to couple to a variety of high-touch surfaces to provide surface disinfection [0058] and this involves the substitution of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(B).
Regarding claim 4, Jones teaches the self-disinfecting system of claim 1, wherein the germicidal irradiation means for disinfecting the exterior surface of the cladding includes one or more light emitters selected from light sources including light-emitting diodes ("LEDs"), superluminescent LEDs ("SLEDs"), laser diodes, light bulbs, and tube lights (Fig. 3B, light emitting layer includes lighting elements 118 which can include LEDs, [0050]) but does not explicitly teach optical-fiber termini operably connected to one or more of the light sources. However, Jones teaches an alternative embodiment of the self-disinfecting system (Fig. 24) comprising a light emitter (Fig. 24, 2420 is an LED light emitter) coupled to a waveguide (2432) that may include a fiber optical diffuser configured to provide illumination through the exterior surface of the self-disinfection system [0080].
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the LED light sources as taught by Jones with the fiber optic diffusing waveguide also taught by Jones because Jones teaches the waveguide to direct light to the exterior surface of the self-disinfecting system [0080] and this involves the combination of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(A).
Regarding claim 5, Modified Jones teaches the self-disinfecting system of claim 4, wherein the one-or-more light emitters are configured to emit light selected from broad spectrum ultraviolet ("UV") light, UVA light, UVB light, UVC light, blue light, and modulated light thereof (Jones, light emitters configured to emit within the 380-420 nm spectrum which is known in the art to include both UVA and blue light spectrums [0048, [0054], and [0065]), the modulated light being modulated with respect to frequency, power, duration, or a combination thereof (Jones, device 100 may include control system configured to control duration of illumination and intensity [0062]).
Regarding claim 6, Modified Jones teaches the self-disinfecting system of claim 5 (Jones, Fig. 3B), wherein the one-or-more light emitters are within the body of the cladding between an outer polymeric layer and an inner polymeric layer corresponding to at least two polymeric layers of the one-or-more polymeric layers (Jones, Fig. 3B, emitters 118 are positioned within the cladding between outer polymeric layer 114 and inner polymeric layer 116), the outer polymeric layer of the body transparent to the light emitted by the one-or-more light emitters (Jones, Fig. 3B, layer 114 is transparent [0058]).
Regarding claim 7, Modified Jones teaches the self-disinfecting system of claim 5 (Jones, Fig. 3B, device 100) but does not teach wherein the one-or-more light emitters are within the substrate, and wherein both the substrate and the one-or-more polymeric layers of the body of the cladding transparent to the light emitted by the one-or-more light emitters. However, Jones teaches wherein the system may be incorporated in a plurality of different geometric surfaces, such as a handle, ([0051], [0058) including an alternative embodiment of the self-disinfecting light system (Fig. 8 device 100) wherein one or more light emitters (118) are positioned within the substrate (154) and wherein both the substrate (154) and the one or more polymeric layers of the body of the cladding (150) are transparent to the light emitted by the emitters (surface 154 and 150 are transparent and allow passage of light emitted by 118, [0061]). One having ordinary skill in the art would be motivated to seek different geometries to incorporate the self-disinfecting surface to ensure sterilization of a touch surface.
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the self-disinfecting system of Modified Jones (Jones, Fig. 3B, device 100) to take the form of the alternative embodiment of the self-disinfecting system as taught by Jones (Fig. 8, device 100) because Jones teaches the cladding to be flexible and configured to couple to a variety of high-touch surfaces to provide surface disinfection [0058] and this involves the substitution of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(B).
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 20190167825 A1) in view of Baarman (US 20220088250 A1).
Regarding claim 14, Jones teaches the self-disinfecting system of claim 13, wherein the electronic circuitry includes one or more sensors configured to sense a person (device 100 includes control system 160 with sensors 162 configured to sense a user interacting with the device, [0062]).
While Jones teaches the sensors to detect heat or motion of the user [0062] and the electronic circuitry to change the frequency of emitted light when a user contacts the self-disinfecting system [0062], Jones does not explicitly teach wherein the one-or-more sensors are selected from passive infrared sensors, ultrasonic sensors, microwave sensors, acoustic sensors, floor pressure mats, infrared beam sensors, capacitive proximity sensors, thermal cameras, laser sensors, radiofrequency ("RF") sensors, and vibration sensors, and wherein the electronic circuitry is configured to start or stop disinfection of the exterior surface of the cladding by the germicidal irradiation means upon sensing the person. One having ordinary skill in the art would be motivated to identify sensors capable of detecting the heat or motion of a user to prevent exposing them to harmful radiation, motivating one to turn towards Baarman.
Baarman teaches a disinfecting human interface device (abstract) comprising a human interface shaped as a handle (Fig. 1, 132) that is transmissive to an UV light source contained therein such that the exterior of the human interface device is exposed to UV light (Fig. 1, disinfection zone 132 contains disinfection source 126 which exposes the exterior to UV light, [0059-0061]). Baarman teaches wherein the human interface may comprise a control system (122) with a capacitive touch sensor configured to determine the proximity of a human operator to the disinfection zone (132) and discontinue a decontamination procedure in response to the proximity of the user to prevent harmful exposure to UV light ([0061-0063]).
Baarman and Jones are considered analogous to the claimed invention since both are drawn to self-disinfecting surfaces. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electronic circuitry and control system as taught by Jones with the capacitive touch sensor as taught by Baarman because Baarman teaches the sensor to determine the proximity of a user to a disinfection zone/contact surface being exposed to UV light and deactivate the UV light in response to prevent exposing a user [0061-0063] and this involves the combination of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(A) and 2143(I)(G).
Claim(s) 1 and 8-12 rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 20190167825 A1) in view of Guillard et al. (US 20230045428 A1).
Regarding claim 1, Jones teaches a self-disinfecting system (Fig. 3B-4, device 100), comprising:
a cladding including a flexible body formed of one or more polymeric layers (Fig. 3B, device 100 can include a flexible body with a plurality of polymeric layers such as 110 and 114 [0057-0058]),
the cladding configured to conform to a substrate (Fig. 4, device 100 configured to cover a high touch surface of a structure 138, understood to be a substrate [0058]); and
a disinfection means for disinfecting an exterior surface of the cladding, the disinfection means selected from: a photocatalytic disinfection means for disinfecting the exterior surface of the cladding by irradiation with excitation radiation from the one-or-more locations within the body of the cladding, the substrate under the cladding, or the body of the cladding and the substrate under the cladding (Fig. 3B-4, device 100 includes flexible light emitting layer 110 = disinfection and photocatalytic disinfection means which emits excitation radiation to disinfect the exterior of the cladding [0052-0055]). Jones does not teach wherein the excitation radiation is configured to produce reactive oxygen species ("ROS") by way of a photosensitizer incorporated into the one-or-more polymeric layers of the body or a coating thereover; or a chemical disinfection means for disinfecting the exterior surface of the cladding by chemical disinfection with a chemical disinfectant incorporated into the one-or-more polymeric layers of the body. One having ordinary skill in the art would be concerned with optimizing the sterilizing effect of the excitation radiation, motivating one to turn towards Guillard.
Guillard teaches a system for treating microorganisms comprising a textile web of fibers with optical fibers (Fig. 1, 2) woven within (abstract) wherein the optical fibers are coupled to an ultraviolet light source configured to generate UV-A light (understood to be excitation radiation [0069]). Guillard teaches the textile web to have photocatalytic particles (understood to be photosensitizers), such as titanium dioxide, woven within or coated on top [0074-0075] to generate reactive oxygen species when exposed to the UV radiation ([0011-0013], [0044], [0087]), increasing the effectiveness of bacterial inactivation.
Guillard further teaches the incorporation of antimicrobial metal ions such as copper and silver [0012] into the textile web (understood to be chemical disinfection means [0086]) to further provide improved disinfection ([0087-0088]).
Guillard is considered analogous to the claimed invention since both are drawn to disinfection system. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the one or more polymeric layers as taught by Jones with the titanium dioxide fibers coated on top and within the polymeric layers as taught by Guillard because Guillard teaches the fibers to generate reactive oxygen species when exposed to UV light and increase the effectiveness of disinfection ([0011-0013], [0044], [0074]) and this involves the combination of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(A) and 2143(I)(G).
It would have also been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the one or more polymeric layers as taught by Jones with the antimicrobial metal ion fiber layers (silver and copper) as taught by Guillard because Guillard teaches the fibers to have antimicrobial properties and increase the effectiveness of disinfection ([0011-0013], [0087-0088]) and this involves the combination of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(A) and 2143(I)(G).
Regarding claim 8, for purposes of compact prosecution, Modified Jones teaches the self-disinfecting system of claim 1, wherein the photosensitizer is incorporated into the one-or-more polymeric layers of the body (Guillard, [0074-0075]).
Regarding claim 9, for purposes of compact prosecution, Modified Jones teaches the self-disinfecting system of claim 1, wherein the photosensitizer is incorporated into the coating over the one-or-more polymeric layers of the body (Guillard, [0074-0075]).
Regarding claim 10, for purposes of compact prosecution, Modified Jones teaches the self-disinfecting system of claim 1, wherein the photocatalytic disinfection means for disinfecting the exterior surface of the cladding includes one or more light emitters selected from light sources including light-emitting diodes ("LEDs"), superluminescent LEDs ("SLEDs"), laser diodes, light bulbs, and tube lights (Jones, Fig. 3B, light emitting layer includes lighting elements 118 which can include LEDs, [0050]) but does not explicitly teach optical-fiber termini operably connected to one or more of the light sources. However, Jones teaches an alternative embodiment of the self-disinfecting system (Fig. 24) comprising a light emitter (Fig. 24, 2420 is an LED light emitter) coupled to a waveguide (2432) that may include a fiber optical diffuser configured to provide illumination through the exterior surface of the self-disinfection system [0080].
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the LED light sources as taught by Jones with the fiber optic diffusing waveguide also taught by Jones because Jones teaches the waveguide to direct light to the exterior surface of the self-disinfecting system [0080] and this involves the combination of elements to yield a predictable result with a reasonable expectation of success. See MPEP 2143(I)(A).
Regarding claim 11, for purposes of compact prosecution, Modified Jones teaches the self-disinfecting system of claim 10 (Jones, Fig. 3B), wherein the one-or-more light emitters are within the body of the cladding between an outer polymeric layer and an inner polymeric layer corresponding to at least two polymeric layers of the one-or-more polymeric layers (Jones, Fig. 3B, emitters 118 are positioned within the cladding between outer polymeric layer 114 and inner polymeric layer 116), the outer polymeric layer of the body transparent to light emitted by the one-or-more light emitters (Jones, Fig. 3B, layer 114 is transparent [0058]).
Regarding claim 12, for purposes of compact prosecution, Modified Jones teaches the self-disinfecting system of claim 10 (Jones, Fig. 3B), but does not teach wherein the one-or-more light emitters are within the substrate, and wherein both the substrate and the one-or-more polymeric layers of the body of the cladding transparent to the light emitted by the one-or-more light emitters. However, Jones teaches an alternative embodiment of the self-disinfecting light system (Fig. 8 device 100) wherein one or more light emitters (118) are positioned within the substrate (154) and wherein both the substrate (154) and the one or more polymeric layers of the body of the cladding (150) are transparent to the light emitted by the emitters (surface 154 and 150 are transparent and allow passage of light emitted by 118, [0061]).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the self-disinfecting system of Modified Jones to take the form of the alternative embodiment of the self-disinfecting system (Fig. 8, device 100) as taught by Jones because this was a known alternative configuration of a self-disinfecting surface prior to the effective filing date of the claimed invention and this involves a change of shape which has already been found to be obvious. See MPEP 2144.04 (IV)(B).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20220175983 A1 teaches a self-disinfecting surface comprising an UV light source contained within a high-touch surface
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/N.S.S./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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