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 with traverse of Group I, claims 1-4, in the reply filed on 27 March 2026, is acknowledged. The traversal is on the ground(s) that there are overlapping or related technical features among the two groups of claims and Applicant argues that there would be no undue burden to examine all the groups of claims. This is not found persuasive for the following reasons:
Regarding the overlapping technical feature, in the Office Action mailed 30 January 2026, the examiner has properly shown that Horikoshi teaches applicant’s technical feature common to groups I and II. As such said special technical feature is considered to be neither novel nor inventive a posteriori over the prior art and therefore the instant groups lack Unity of Invention. See MPEP 1893.03(d). Separately, the teachings of the prior art (based on the disclosure of Nakagawa) is outlined below as applied to claim 1 below, and further demonstrates that the overlapping technical feature is not a special technical feature a posteriori over the prior art.
Regarding the argument of no undue search/examination burden, Applicant is reminded that the instant application is a national stage entry under 35 USC 371 and the burden of restriction is Unity of Invention.
The requirement is still deemed proper and is therefore made FINAL.
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 27 March 2026.
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.
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.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakagawa et al. (JP H11279540, previously cited, machine translation attached).
Claim 1: Nakagawa teaches an antibacterial transparent water-repellent film (i.e. a functional film) (paragraph 0001). The coating was applied to a glass substrate having a thickness of 1 mm and a size of 5 cm square (i.e. a glass plate having a first surface and a second surface) (paragraph 0013). The glass substrate was dipped in the coating liquid, dried, and baked to form a coating film (paragraph 0013). The substrate and coating film are shown schematically in Fig. 2 as a single film on a first surface of the substrate. Nakagawa teaches that the film is characterized by comprising glass containing silicon oxide as a main component, molecules having a fluoroalkyl chain (i.e. contains a composition having a fluoroalkyl group), and antibacterial fine particles that desirably are made of titanium oxide with silver attached to the surface (i.e. contains an antibacterial metal ion because at least the titanium of the titanium oxide is an ion) (paragraph 0004). The SiO2 rich film-glass (i.e. the silicon oxide of the functional film) is produced as a product of hydrolysis and condensation reaction of methoxysilane compound or ethoxysilane compound and antibacterial fine particles and molecules having a fluoroalkyl chain are dispersed in the film (i.e. the silicon oxide is an inorganic oxide constituting a three dimensional network bond) (paragraph 0007). Nakagawa further teaches that the molecules with fluoroalkyl chains are primarily arranged on the surface of the membrane (i.e. mainly contained in a vicinity of a surface of the functional film) (paragraph 0007).
Claim 2: Nakagawa teaches that the molecules with fluoroalkyl chains are primarily arranged on the surface of the membrane (paragraph 0007), which is considered to teach the molecules with fluoroalkyl chains (i.e. the fluorine-containing composition) as having a highest concentration in the vicinity of the surface of the functional film and therefore also having a decreased concentration toward the glass plate.
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.
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.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa et al. (JP H11279540, previously cited, machine translation attached) as applied to claim 1 above.
Claim 3: The teachings of Nakagawa regarding claim 1 are outlined above. Nakagawa teaches an antibacterial transparent water-repellent film (i.e. a functional film) (paragraph 0001). The film is characterized by comprising glass containing silicon oxide as a main component, molecules having a fluoroalkyl chain (i.e. contains a composition having a fluoroalkyl group), and antibacterial fine particles that desirably are made of titanium oxide with silver attached to the surface (paragraph 0004).
Nakagawa teaches proportions of materials used as starting materials for forming the film but not the final proportions of materials in the film after drying and baking (paragraphs 0010-0013). However, it would be within the level of ordinary skill in the art to measure the content in the final film or to vary a content of the antibacterial metal ion in terms of a molar ratio of the film to determine the range of proportions that will obtain antibacterial properties as a matter of routine experimentation (see MPEP § 2144.05-II-A), and one would have had a reasonable expectation of success.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa et al. (JP H11279540, previously cited, machine translation attached) as applied to claim 1 above, and further in view of Suwa (JP 2016-033109, previously cited, machine translation attached).
Claim 4: The teachings of Nakagawa regarding claim 1 are outlined above. Nakagawa teaches an antibacterial transparent water-repellent film (i.e. a functional film) (paragraph 0001). The film is characterized by comprising glass containing silicon oxide as a main component, molecules having a fluoroalkyl chain (i.e. contains a composition having a fluoroalkyl group), and antibacterial fine particles that desirably are made of titanium oxide with silver attached to the surface (paragraph 0004). However, Nakagawa does not teach copper ion as an antibacterial ion.
In a related field of endeavor, Suwa teaches a composition for forming a coated glass having an antimicrobial and antiviral property (paragraph 0002). Silicon oxide is used as a matrix (paragraphs 0009 and 0017) and contains silver ions (paragraph 0009). The silver ion imparts antibacterial and antiviral properties to the silicon oxide matrix film, wherein the content of silver ion is preferably 0.01% by mass to 30% by mass based on the total mass of the silicon oxide matrix film (paragraph 0019). The silicon oxide based matrix film preferably contains a copper ion for the purpose of further improving the antibacterial and antiviral properties (i.e. contains copper ion as an antibacterial metal ion) (paragraph 0021), in a content of preferably 0.01% by mass to 30% by mass with respect to a total mass of the silicon oxide matrix film (paragraph 0022). The valence of the copper ion may be monovalent or divalent or a combination of both (paragraph 0025).
As Nakagawa and Suwa both teach a silicon oxide based coating film for glass and having antimicrobial properties, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the coating of Nakagawa to include copper ion in addition to the silver as taught by Suwa because this will further improve the antibacterial and antiviral properties, and one would have had a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM S. HORGER/Examiner, Art Unit 1784
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