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], isoprene [0359] 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. Further it is noted that peeling away the coating of McDaniel reasonably reads upon “recovering” the material of interest.
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 argues that the prior art does not teach wherein the material of interest is “recovered” and the applicant points to paragraph [0062] as support for what “recovery” is. Below is [0062] as presented in the current specification:
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The word “recovery” is present a single time in the cited paragraph and is in no way defined using a special definition. As such, it should be given its broadest reasonable interpretation consistent with the specification. However, the examiner is not allowed to read claim limitations into the current claims that are provided as embodiments of the current specification. In this particular case, recovery “may be employed to retain…the material(s) of interest as analytical samples”. However, it is not a requirement of the claim or implied by the specification that in any way the samples must be kept in an unmodified way for any reason and it is not required that they are required to go through any specific processing. Forming “analytical samples” implies nothing more than to say that the material is to be analyzed or viewed in some way, not even to imply anything more than for the purpose of visually looking at it. Further, at least claim 1 does not even require an analysis step whatsoever. It merely states that the material is collected and the preamble of the claim states that the collective method is for detection. However, it is not even stated what is detected or what detection method is used. The actual claim scope is vastly different than what the applicant seemingly argues as being implicitly present in the claim. It is the position of the examiner that if the applicant believes that so much of the content of the specification is implicitly present in the current claims then it would speed the prosecution of the claims to literally include the limitations argued as being understood to be present so that there is no debate. The applicant cites a large amount of case law relating to combining prior art embodiments to arrive at the claim limitations but no combinations of embodiments were provided so as to state that the applicant does not reasonably narrow “recovery” in the manner claimed. Further, while McDaniel may states that resole resins may be resistance to many things including high temperatures, there is no requirement that the resins be exposed to any of those conditions for recovery. Recovery does not require any solvent, water, acid salt electricity or heat exposure in particular. The possible resistance of the coatings of McDaniel to these things is irrelevant as relates to the act of recovery, especially without a specific treatment being cited as part of the recovery that would include one of those variables.
Further as relates to the cited resole resins, there is no content provided by McDaniel or the current arguments that indicates their temporary or permanent nature, especially as relates to the teachings of McDaniel. It is noted that the “Resole” section listed by the applicant as providing the limitations of PF resins is listed as item 1 as a subset of “g. Phenolic Resins” [0460] wherein [0462] in the paragraph before the resole resins paragraphs explicitly states that “a phenolic resin temporary coating (e.g., a non-film forming coating) may be produced. Clearly McDaniel does not limit resole resins to the difficult to remove resins argued by the applicant in all embodiments. And again this is not a combination of embodiments because resole resins are a subset of phenolic resins as provided by McDaniel.
Further the applicant argues repeatedly that specific treatments may modify the material of interest. While the examiner may agree, firstly there is not expectation that any treatment of McDaniel must be carried out on any particular material to be recovered or that the material to be recovered must remain unchanged. Lack of alteration of the recovered material of interest in not claimed and it is noted required at least in claim 1 that any material in particular be recovered. Therefore arguments related to the recovery of bacteria are moot because it is not require by the claim that anything in particular be recovered. The applicant states that “the purpose of this collection is to not materially change the components of the material of interest” speaking as to the collection of the current claims. However, this is absolutely not a requirement of the claims and not even reasonably implied.
Further the applicant argues that the current claims do not teach peeling the sampling device from the surface in a single piece. However, the examiner did not state that this was taught be McDaniel. The examiner stated that McDaniel specifically states that the coating may be provided in such a manner so as to provide “poor adhesion for a surface, allowing ease of removal by stripping and/or peeling” and the applicant does not herein reasonably address the logic provided for modification. It is explicitly the intent of McDaniel to provide “ease of removal” by providing “poor adhesion to a surface” to allow “peeling” of the coating. It is unclear how that could be interpreted as anything other than making the composition such that it does not adhere to the surface and also does adhere to itself reasonably implying removal in a single piece. It is not easier to remove a thousand pieces or a hundred or two than it would be to remove one. This is the optimal goal of McDaniel.
As relates to the applicants’ argument regarding the examiners assertion that any portion of the polymeric material present may be considered the sampling device, it is noted that the point of this was not to say that McDaniel cannot be optimized as provided by the examiner in the rejection. The rejection is proper in the manner provided. The point of that statement was to say that the sampling device is not defined by the claim to be the entirety of the polymer coating provided. The claim states that the polymeric coating is cured to form a sampling device and that the sampling device is peeled from the surface to remove the material of interest. However, it is not defined by the claim that the polymeric coating necessarily form one and only one sampling device. In fact, [0009] of the current specification states that “A devices optionally includes a sheet material; a liquid polymeric coating contacting at least a portion of the sheet material is curable as a film … so as to be peeled from the surface in a single piece or in several large pieces”. It is unclear if the large pieces can be considered separate sampling devices as provided. Further because each large piece is a “single piece”, each large piece reasonably reads upon the claims.
Conclusion
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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/ANDREW J BOWMAN/ Examiner, Art Unit 1717
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