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 of Group I, corresponding to claims 1-3, 6, 9, 12, 14, 19, 21, 23, 25 and 77 in the reply filed on January 20th, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 27-29, 32, 35, 38, 45 and 47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
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.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 25 and 77 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 25 recites the limitation "the microorganisms" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 77 discloses the limitation of, “repeating steps a. and b. for a total of at least 3 cycles.” However, claim 77 does not recite a “step a.” or a “step b.” As such, said limitation is unclear. Appropriate action is required.
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 1-3, 6, 9, 12, 14, 21, 23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Yeung et al. (U.S. Publication No. 2020/0230274).
Concerning claims 1 & 2, Yeung discloses a method of decontaminating a surface (paragraphs 43 & 51), comprising:
Exposing the surface to pulsed germicidal UV light emitted by at least one light emitting diode (paragraphs 44-47) at a duty rate of at most 25% (Figure 11; paragraph 67) for at least 3 cycles.
Yeung does not appear to specifically disclose that the surface is exposed for at least 3 cycles, however such is almost nearly, most certainly intrinsically present. Nonetheless, the Courts have held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been well within the purview of one of ordinary skill in the art to optimize the number of cycles to greater than 3 (or between 3-150 concerning claim 6), in order to produce the desired amount of disinfection for a particular bacteria or virus while minimizing excessive power consumption; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained.
Therefore, claims 1, 2 & 6 are not patentable over Yeung.
Similarly with respect to claim 3, Yeung does not appear to disclose that the duty rate is at most 10%, but does disclose such as a result effective variable (paragraphs 46-51). However, as noted above, the Courts have held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been well within the purview of one of ordinary skill in the art to optimize the duty rate to at most 10% in order to limit continuous overexposure to said UV light causing harmful side effects while achieving the desirable decontamination of a particular bacteria or virus for a specific environmental condition; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained.
Therefore, claim 3 is not patentable over Yeung as well.
Regarding claim 9, Yeung also discloses that the UV light is pulsed at a frequency of up to 20 Hz (paragraph 69).
With respect to claims 12 & 14, the reference further discloses that the UV light has a peak wavelength of 277 or 280 nm (paragraphs 53-55 and 67).
Concerning claim 21, Yeung continues to disclose that the UV light is emitted at a fluence of 0-100 mJ/cm2 (paragraphs 54-56 and 64).
Regarding claim 23, Yeung also discloses that, prior to exposing the surface to the pulsed germicidal UV light, the surface is contaminated with microorganisms, and exposing the surface to the pulsed germicidal UV light yields a log reduction of the microorganisms of at least 2 (Figure 11; paragraphs 67 & 70).
With respect to claim 25, the reference discloses that the microorganisms comprise E. coli (paragraph 67).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yeung eta l. (U.S. Publication No. 2020/0230274) in view of Owen et al. (U.S. Publication No. 2010/2009294).
Yeung is relied upon as set forth above. Yeung does not appear to disclose measuring an air temperature in a vicinity of the surface and controlling the pulses of germicidal UV light based on the measured air temperature. Owen discloses a method of decontaminating the air and a surface by exposing the air or surface to pulsed germicidal UV light emitted by a light source (paragraphs 37-45). The reference continues to disclose measuring an air temperature in a vicinity of the surface and controlling the pulses of germicidal UV light based on the measured air temperature in order to protect components therein from damaging temperatures that exceed a certain threshold (paragraph 70). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure an air temperature in a vicinity of the surface in Yeung, and control the pulses of germicidal UV light based on the measured air temperature in order to protect components therein from damaging temperatures that exceed a certain threshold as exemplified by Owen.
As such, claim 19 is not patentable over Allen in view of Owen.
Claim 77 is rejected under 35 U.S.C. 103 as being unpatentable over Allen et al. (U.S. Publication No. 2025/0345477).
Allen discloses a method of decontaminating a surface, comprising:
Exposing the surface to ultraviolet-C (UVC) light having a peak wavelength of between 200 and 280 nm emitted by at least one light emitting diode (LED) for a continuous exposure period (paragraphs 8, 11 and 12) of between 0.05 seconds and 2 seconds (paragraph 46); and
Discontinuing the exposure of the surface to the UVC light for a continuous rest period of at least 10 seconds (paragraph 46).
Allen does not appear to disclose specifically discontinuing the exposure of the surface to the UVC light for a continuous rest period of between 30-120 seconds. Nonetheless, the Courts have held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been well within the purview of one of ordinary skill in the art to optimize the discontinuation of the exposure of the surface to the UV light for between 30-120 seconds in order to provide a sufficient dosage of light for destroying harmful pathogens while limiting the exposure of the surface and rest period for said surface to said UV light to prevent damage thereto in order to create the optimal performance for a specific bacteria or virus in a specific environment; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained. Thus, these limitations do not create a patentable distinction over Allen.
Allen does not appear to specifically disclose repeating said steps for a total of at least 3 cycles. However, as noted above, such is almost nearly, most certainly, intrinsically present. Nonetheless, the Courts have held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been well within the purview of one of ordinary skill in the art to optimize the number of cycles to greater than 3 in order to produce the desired amount of disinfection for a particular bacteria or virus while minimizing excessive power consumption; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained. Therefore, these limitations do not create a patentable distinction over Allen as well.
As such, claim 77 is not patentable over Allen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN C JOYNER whose telephone number is (571)272-2709. The examiner can normally be reached Monday-Friday 8:00AM-4:30PM.
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/KEVIN JOYNER/Primary Examiner, Art Unit 1799