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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 17/352296 and 17/027535, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The ‘535 application fails to provide adequate support or enablement for the presently claimed invention for at least the reason that the ‘535 application does not claim or disclose the presently claimed primer.
The ‘296 application fails to provide adequate support or enablement for the presently claimed invention for at least the reason that the ‘296 application does not claim or disclose the presently claimed particle size for the anatase titanium dioxide or the mass ratio of 2:1 to 100:1, the latter of which is disclosed in the parent application as limited to 10:1 to 100:1.
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 1-6 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.
Regarding claim 1, it is unclear if the carboxyl group (note also that “group” is singular) comprising the two oxygen atoms is the same carboxyl groups (note also that “groups” is plural) previously recited, or if the carboxyl group comprising the two oxygen atoms is in addition to the carboxyl groups previously recited.
Allowable Subject Matter
Claims 1-6 are allowed over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art reference(s) is:
US 2014/0004331 A1 to Hida et al. teaches a shatterproofing member (1000) (self-disinfecting photocatalyst sheet) comprising a pressure-sensitive adhesive (PSA) layer (100), flame-resistant material (200) comprising a polymer component (10) (substrate material) and functional layer (300) (para 0346 and figure 3). Figure 3 demonstrates that PSA layer (100) is on a side (second side, current claim 2) of the material (200) and functional layer (300) adjacent the opposing side (first side).
Hida also teaches that the flame-resistant material (200) comprises, inter alia, a backing formed of a non-reactive flame-resistant component such as, inter alia, glass cloth or fiber (current claim 5) and a burnable component such as, inter alia, polyethylene terephthalate (PET) (resin, current claim 6) (para 0392-0398).
Hida further teaches that the functional layer (300) is an environment-resistant layer (para 0056) such as, inter alia, a photocatalyst layer (para 0058, 0086, 0226) and a hygienically functional layer (para 0059-0061), which said photocatalyst layer comprises, inter alia, anatase titanium dioxide (primary photocatalyst) (para 0231) and metals (secondary metallic photocatalyst) such as, inter alia, silver (Ag) (secondary photocatalyst further comprising a third metallic photocatalyst, current claim 3) and Nickel (Ni) (secondary photocatalyst further comprising a fourth metallic photocatalyst, current claim 3) (0228-0231).
The Examiner notes that, while Hida does not disclose that the above-noted metal(s) only include the Ni and Ag, (i.e. no other metallic photocatalysts), one skilled in the art would recognize limiting the metals to only based on the factor(s) surrounding the intended application such as cost considerations and/or the property(ies) provided by the selected metals versus those metals not included in the disclosed compositions.
Hida further teaches that the TiO2 has an average particle diameter of 0.005 to 0.1 m (i.e., 5 to 100 nm) (para 0232), which overlaps that presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Nida is silent to a primer containing either carboxyl or carbonyl groups between the photocatalyst layer (300) and the flame-resistant material (200);
wherein the material (200) binds the photocatalyst layer by either connecting a metal ion of either or both of the primary photocatalyst and the secondary photocatalyst through two oxygen atoms of a carboxyl group (COO) of the primer, or forming hydrogen bonds between a carbonyl group of the primer and a surface hydroxyl group (OH-) of the primary catalyst;
the recited mass ratio of 2:1 and 100:1;
and that the secondary photocatalyst absorbs an energy of the visible light and transfers the energy to the primary photocatalyst, thereby activating the primary photocatalyst as a primary disinfecting agent.
Claims 1-6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 9/29/2025