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 .
Response to Arguments
With respect to the rejection of Claims 1-2 under 35 U.S.C. 103 as being unpatentable over Wu et al., as understood the traversal relies on arguments. Applicant argues “the criticality of the recited second immersion conditions is established by the unexpected results reported in the present specification. In particular, these results establish that unexpectedly high photocatalytic reactivity can be obtained when the second immersion in water is conducted for 24 hours or more, rather than the 12 hours of the prior art … Thus, the inventors of the present application have found that an unexpectedly larger production amount of carbon dioxide and unexpectedly great acetic acid decomposition action achieve more excellent photocatalytic reactivity can be obtained when the substrate was immersed in normal temperature water for 24 hours instead of 12 hours in the second immersion.” [Page 3, Paragraph 6 – Page 4, Paragraph 2]. This is unpersuasive. Although it is recognized that the room temperature water immersion time of 24-48 hours is critical for the use of the TiO2 as a photocatalyst this does not address the rejection presented which argues that selecting a time between 24 and 48 hours for the room temperature water immersion would have been obvious for the purpose of improving the TiO2 properties toward dental implants. Furthermore, as pointed to in the original rejection the prior art also recognized the criticality of the room temperature water immersion time. It is likely, but not necessarily the case, that the same feature which caused by a longer room temperature water immersion time causes both the benefits to photocatalytic activity and apatite deposition. Thus one cannot conclude that the prior art had not similarly observed the criticality of the range of room temperature water immersion time even if the prior art had not yet performed the routine optimization that would have led to the range claimed. Note MPEP 2145’s statement that “Evidence pertaining to secondary considerations must be taken into account whenever it has been properly presented; however, it does not necessarily control the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 [ ] (Fed. Cir. 2007) (“the record establish[ed] such a strong case of obviousness” that allegedly unexpected superior results were ultimately insufficient to overcome [the] obviousness conclusion).” The cited prior art’s recognition of the criticality of the room temperature water immersion time is considered to support a sufficiently “strong case of obviousness” per Pfizer v. Apotex as to not be overcome by applicant’s criticality showing. The rejections are MAINTAINED.
With respect to the rejection of Claims 3-4 under 35 U.S.C. 103 as being unpatentable over Wu et al., as evidenced by Chen et al., as understood the traversal relies on arguments. Applicant argues for the patentability of Claims 3-4 based on the patentability of Claim 1, which is addressed above. The rejections are MAINTAINED.
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.
Claims 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over “Crystallization of Anatase from Amorphous Titania in Hot Water and In Vitro Biomineralization” Wu et al. Claim 1 recites “A method for manufacturing a titanium dioxide semiconductor”, in the preamble. This is considered intended use. MPEP 2111.02.II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. In this case the limitations of the claimed invention are fully set forth in the body of the claim and the intended use of manufacturing a semiconductor does not suggest structural limitations or further method steps.
Claim 1 requires “comprising: a first immersion of immersing a substrate containing titanium in hydrogen peroxide water at 70 °C or higher and 90 °C or lower for 1 hour or more and 28 hours or less”. Wu et al. discloses “A commercially available sheet of pure titanium, … Then each
piece of samples was chemically treated at 80 °C for 8 h in 10ml of a H2O2 solution” [Page 78, Section 2.].
Claim 1 further requires “and a second immersion of immersing the substrate subjected to the first immersion in normal temperature water at 10 °C or higher and 30 °C or lower for 24 hours or more and 48 hours or less”. Wu et al. discloses “These samples were soaked in water at room temperature for 12h (RT water soaking)” [Page 78, Section 2.]. It is noted that the immersion time of Wu et al. (12 hrs) is different from the range claimed (24-48 hrs).
Claim 1 further requires “and immersing the substrate subjected to the normal temperature water in hot water at 70 °C or higher and 90 °C or lower for 24 hours or more and 96 hours or less.”. Wu et al. discloses “These samples were soaked in water at room temperature for 12h (RT water soaking), and subsequently aged in water at 80 °C for 3d (hot-water aging).” [Page 78, Section 2.].
Regarding the feature not taught by Wu et al., namely a second immersion (RT water soaking) step of at least 24 hours, it would have been obvious to one of ordinary skill in the art to have increased the soaking time as part of routine optimization. This is because Wu et al. teaches that the RT water soaking is a critical step, “Curve a) in Fig. 1 is the TF-XRD pattern of the titanium sample after the H2O2 treatment (soaking for 8h in the H2O2 solution). The two peaks corresponding to anatase were very broad and low in intensity. Thus, the chemical oxidation due to H2O2 yielded amorphous titania or anatase with low crystallinity or small crystallite size. Curve b) is for the sample subject to the H2O2 treatment and immediate hot-water aging for 3d without RT-water soaking. The narrower peaks in curve b) indicate that soaking the H2O2 treated samples immediately in hot water for 3d improved only a little crystallinity of the phase. However, the sample subject to the H2O2 treatment, RT-water soaking and hot water aging for 3d gave anatase crystals mature enough to yield curve c) with very sharp XRD peaks. This concludes that the intermediate RT-water soaking is essential to obtain the anatase layer of good crystallinity.” [Page 78-79, Section 3.1]. With the understanding that a RT water soaking step is critical to forming anatase crystals it would have been obvious to optimize the soaking time for the best crystallinity of the anatase phase by experimenting with longer soaking times. The motivation for a better anatase crystal is given by Wu et al. “Figure 2 shows the TF-XRD patterns of the Ti substrates that were subject to the chemical treatments to yield well-crystallized anatase in the surface layers, to autoclaving, and subsequently to soaking in SBF for up to 5d at 36.5 °C. … However, those samples giving curves a) and b) in Fig. 1, or having only poorly crystalline titania, deposited no apatite even after soaking in SBF for 7d after the autoclave treatment.” [Page 79, Section 3.3]. Therefore one of ordinary skill in the art would have expected that a longer RT water soaking could have led to a purer anatase crystal which would have predictably led to the beneficial effect of more apatite being deposited (the titanium substrate of Wu et al. is intended to be used as a dental implant).
Claim 2 requires “a concentration of hydrogen peroxide in the hydrogen peroxide water is 20% by mass or more and 45% by mass or less.”. Wu et al. discloses “Then each piece of samples was chemically treated at 80 °C for 8 h in 10ml of a H2O2 solution with a concentration of 30 mass%
(Santoku Chemical Industries Co., Ltd., Tokyo)” [Page 78, Section 2.].
Claim 5 requires “the substrate subjected to the normal temperature water is immersed in hot water at 70°C or higher and 90°C or lower for 48 hours or more and 72 hours or less.”. Wu et al. discloses “These samples were soaked in water at room temperature for 12h (RT water soaking), and subsequently aged in water at 80 °C for 3d (hot-water aging).” [Page 78, Section 2.], which is equivalent to 72 hours.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over “Crystallization of Anatase from Amorphous Titania in Hot Water and In Vitro Biomineralization” Wu et al., as evidenced by “Titanium Dioxide Photocatalysis in Atmospheric Chemistry” Chen et al. Claims 3 and 4 similarly restrict/limit Claim 1 or 2 (respectively) the same way, and are being treating together. Claims 3 and 4 require “the titanium dioxide semiconductor has a photocatalytic reactivity.”. Wu et al. does not disclose photocatalytic reactivity, however they do disclose that the titanium substrate forms the anatase crystal after treatment. Chen et al. discloses “TiO2 is a semiconductor material with a band gap of ∼3.2eV, corresponding to a wavelength of ∼390 nm. TiO2 has three major stable polymorphs, namely anatase, rutile, and brookite. Among those, anatase has generally shown the highest photocatalytic activity” [Page 5919, Paragraph 2]. Therefore one of ordinary skill in the art would have recognized that the anatase material of Wu et al. had photocatalytic reactivity regardless of whether Wu et al. had recognized that fact or not.
Conclusion
Applicant's amendment necessitated the/any 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 JOSHUA MAXWELL SPEER whose telephone number is (703)756-5471. The examiner can normally be reached M-F 9am-5pm EST. 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, Anthony Zimmer can be reached at 571-270-3591. 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.
/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736
Prosecution Insights