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
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.
Claims 1-5, 8, 9 and 22 are rejected under 35 U.S.C. 103 as being obvious over McDaniel (USPGPub 2004/0109853).
Regarding claims 1-5 and 22, McDaniel teaches contacting a surface such as glass [0344] with a coating material so as to detoxify a contaminated surface (abstract) which may be contaminated with microorganisms including bacteria [0713-0714], wherein the coating may be a liquid polymeric composition comprising an organic solvent [0072], polystyrene [00535] and pigments [0494-501] wherein the coating may be cured in a time frame meeting the claim limitations [0464] and wherein the coating may thereafter be peeled away [0305], thereby removing contaminants from the surface. McDaniel fails to explicitly state that the coating material is removed from the surface “in a single piece”. However, McDaniel explicitly states that the coating may have “poor adhesion for a surface, allowing ease of removal by stripping and/or peeling” wherein it is reasonably implied that the coating material is more easily removed (i.e., less likely to tear or rip apart) by reducing the adhesion of the coating material adhesion to the surface. Further one of ordinary skill in the art would infer that the easiest way of peeling a coating away would be in a single piece rather than having to clean up and gather a plurality of loose pieces. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to 1) optimize the adhesive quality of the coating material of McDaniel in order to make the coating removable in a singular piece as desired by McDaniel, 2) optimize the surface adhesion of substrates upon which the coating of McDaniel is applied (i.e., selectively use the coating of McDaniel on given substrates in order to make the coating removable in a singular piece as desired by McDaniel or 3) to perform both 1) and 2) as described above.
Regarding claims 8-9, McDaniel further teaches wherein the coating may be a film laminated onto the surface to be treated. McDaniel fails to explicitly teach that the film to be laminated as stated above is present on a “sheet” prior to lamination. However, the examiner is taking Official Notice to inform the applicant that it is common industry practice to store films that are to be transferred and laminated onto other surfaces on “sheets” or backings prior to use, especially wherein said film has some adhesive quality or is prone to adhesion. Examples of this include stickers for aesthetic decoration, Band-Aids, fly and rat traps and etc and this concept is widely applied is a large number of varying fields as a general engineering principle. The backing allows for easy separation of substrates that tend to adhere and allows for adhesive properties to be maintained so as to promote future adhesion. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to apply the laminate sheets of McDaniel using a backing as is known in a variety of manufacturing fields in order to allow for ease of separation of lamination layers prior to use and to promote adhesion of lamination layers as is known in many fields of study to the invention of McDaniel.
Claim 11 is rejected under 35 U.S.C. 103 as being obvious over McDaniel (USPGPub 2004/0109853) as applied to claims 1-5, 8-9 and 22 above and further in view of Oudejas et al. (“Evaluation of Curing Times of Strippable Coatings and Gels as used for Radiological Decontamination” EPA, 09/2014, pp. 1-67).
Regarding claims 11, the teachings of McDaniel are as shown above. McDaniel is generally non-descriptive as relates to the manner in which the film that is removed is handled. However, Oudejas teaches that is known to remove contamination from a surfaces (See section 2.4.1) by applying a coating composition to a contaminated surface wherein thereafter the composition is cured and the composition encapsulates the contaminant and the film formed is peeled away from the surface wherein the film removed may be subject to both rolling and folding of the film on itself effectively sealing at least some contaminants inside in several of the figures provided (See all figures from section 3). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of McDaniel and Oudejas according to known methods of adding steps to existing processes wherein the added steps of Oudejas merely perform the same function in the combination of McDaniel and Oudejas that the steps performed in the process of Oudejas alone (i.e., to dispose of the coating film in an effective and safe manner) and wherein the results would be predictable based upon the teachings of Oudejas.
Claim 11 is rejected under 35 U.S.C. 103 as being obvious over McDaniel (USPGPub 2004/0109853) as applied to claims 1-5, 8-9 and 22 above and further in view of Rouppert et al. (“Cheap Strippable Polymer Film to Decontaminate or Prevent Contamination”, WM’04 Conference, 2004, pp. 1-11)
Regarding claims 12-13, the teachings of McDaniel are as shown above. McDaniel fails to teach dissolving the decontamination film after removal. However, Rouppert teaches that it is known to dissolve removed decontamination films wherein the products of the dissolution may be recovered and filtered (See Experimental: Formulation of a Strippable Film section and following Results section). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to dissolve, filter and recover components of the composition of McDaniel as guided by Rouppert in order to reuse the components of the invention of McDaniel in a cost-effective manner.
Regarding claims 14-15, the teachings of McDaniel in view of Rouppert are as shown above. McDaniel in view of Rouppert fails to teach using atomic absorption to examine the removed film. However, two points should be made. First Rouppert does use atomic adsorption analysis to examine the surface from which the film was removed in order to determine if the radiological material had been removed. Therefore, reasonably in this manner Rouppert is using atomic adsorption to indirectly test the film because it is the assumption of Rouppert that the cesium removed from the surface was removed in the film (see Consistency of Surface/Contaminant Interactions section). Further is the intent of Rouppert to determine the amount of cesium present on the surface after removal of the film. Because presumably all removed cesium would be present in the film, evaluating the film would’ve provided identical information. Therefore, it is the position of the examiner that Rouppert indirectly analyzed the film using atomic absorption by testing the surface itself. However, it would have been “obvious to try” for one of ordinary skill in the art before the effective filing date of the claimed invention to test either the film or the surface given a limited number of possibilities of how to examine the outcomes of McDaniel in view of Rouppert using atomic absorption analysis to determine residual cesium content wherein either process would provide a predictable solution and those of ordinary skill in the art would expect either process to provided success and useful/overlapping data.
Response to Arguments
The applicant seemingly argues that material of McDaniel does not meet the claim limitations because it is not “recoverable from the sampling device”. However, the term “recoverable” given a broadest reasonable scope is a much broader term that seemingly argued by the applicant. The current specification does not define the term. Otherwise a “recoverable” material would simply be considered one that could be recovered. In the case of McDaniel, McDaniel specifically coats the substrate in question with his coating for the purpose of removing the material in question. Because the material is removed from the substrate by the coating and the coating is peeled away and the user can possess the peeled coating material, McDaniel necessarily makes the coating material and everything contained within it recoverable. The applicant further argues that the material isn’t recoverable because the polymer of McDaniel is resistant to “solvents, water, acids, salt, electricity, heat as well as thermal resistance up to 370C for a period of minutes”. However, these are not factors in whether or not the polymer and the materials in question present within the polymer are “recoverable”. Because the polymer is specifically intended to be peelable then it and its contents can be recovered from the substrate that they were present on. Further, whether or not the coating of McDaniel is temporary or not is again not a factor is determining if it is “recoverable”.
Further the applicant argues that the examiner mischaracterizes McDaniel as relates to references to bacteria. The applicant argues that McDaniel teaches incorporating material from bacteria into the coating which is true. However, within the same cited section McDaniel also refers to additional bacteria as contaminants. This is the reference within the cited section that the examiner was referring to and what the applicant should reasonably acknowledge. Further the biocides and preservatives of McDaniel are optional components that may or may not perform their function depending on their presence. Therefore what they would do to bacteria is only pertinent if they are present. Further, the applicant essentially argues that because a bactericide, algaecide or fungicide could react with its intended target, then the intended target is therefore not “recoverable”. However, as stated above, the narrow scope that the applicant argues pertains to the term “recoverable” is at least literally not present in the current specification or applicable to the term under a broadest reasonable interpretation.
As relates to the concept of peeling the coating of McDaniel in one piece several points should be made. First, it should be noted that the material of interest may be a bacteria or a chemical agent wherein the material of interest does not have to be all of a type of bacteria present on a surface or every molecule of a specific chemical agent present on a surface. If the user is interested in a single bacteria from the surface, it would likely be difficult for McDaniel to peel away a portion of coating that was so small that it could not contain one bacteria or one molecule of a chemical component. The current claims do not state that that the sampling device formed comprises all of the liquid polymeric coating material deposited. Instead the current claims require that the sampling device merely be formed from the liquid polymeric coating and the sampling device, not the entirety of the polymeric coating deposited be removed in a single piece. As such, any single piece of the coating that peels off in a single piece and contains the material of interest reads upon the sampling device. Second the applicant argues that the examiner did not state which routine optimization would be needed but this is clearly inaccurate. As can be seen, the examiner enumerated possible optimizations in the rejection of the claims.
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Additionally, the examiner stated that it was likely easier to peel a product in one piece than in a plurality of pieces but the examiner also provided logical reasoning for this statement. The examiner is allowed to provide scientific and logical reasoning to support a claim rejection and herein the examiner did that without argument from applicant as to the logic behind the stated reasoning.
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 J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717