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 § 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.
Claim 6 is 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.
With regards to claim 6, it is unclear what “shaped like a container” entails. Claim 1 already implies that the net is a container (the copper material is stored inside it). It is unclear what makes something like a container (particularly when it is a container).
It is also unclear what is required for something to be “formed as a decorative object” as what is decorative is subjective. The form required is thus unknown.
It is also unclear whether the claim positively recites an artificial flower at the top of the container or whether this is part of the intended use of “to be placed” (showing a future intended position of the container as a decorative object set alongside a separate flower). For the purpose of examination it is taken that the flow is not positively recited and is intended use that the container is to be placed in the future with an artificial flower as a decorative arrangement.
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.
Claim(s) 1, 3, 5, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (JP 3039290) (English machine translation) (cited by applicant).
With regards to claim 1, Nakamura teaches an air cleaner capable of the intended use of being indoor (para [0001]; fig 5).
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A copper material (entwined large number of copper fibers 5 of sterilizing member 4) is stored inside a breathable net (mesh 7 of mesh layer 6) (para [0022], [0027]-[0028]).
As to “shavings generated when a copper material is cut”, MPEP 2113 I. states:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
That the copper is “shavings generated when a copper material is cut” is a product-by process limitation. “shavings” does not impart a particular shape limitation other than implying being thin. There is no structural difference between the thin copper fibers of Nakamura and shavings generated by cutting copper material (a thin piece of copper could be cut and achieve the exact same thin fiber shape).
With regards to claim 3, that “the shavings are shavings generated when a copper material is milled” is again a product-by-process limitation. Similar as above, the structure of the copper material in Nakamura is identical to structure implied by milled shavings (a thin piece of copper could be milled to obtain thin copper fiber material).
With regards to claim 5, the net is spherical (see spherical shape in fig 5; para [0031]) and capable of the intended use of hanging indoors from a string (a string is not positively recited).
With regards to claim 6, the net is shaped like a container (contains the copper material) and is formed as a decorative object (being a decorative object is subjective and one could decorate with it) and is capable of the intended use of being placed indoors with an artificial flower at the top of the container (one could stick the stem or wire of an artificial flower through a hole at the top and thus use the air cleaner in such an arrangement without any structural modifications).
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.
Claim(s) 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (JP 3039290) (English machine translation) (cited by applicant).
With regards to claim 2, Nakamura teaches that the copper fibers are entangled and matted to provide increased surface area (para [0022]). The fibers are packed into the housing as if they are loose than fluid might pass around instead of through the mat of sterilizing copper (para [0025]-[0026]).
That the copper is “shavings are spiral shavings generated when a copper material is lathed” is a product-by process limitation. “shavings” does not impart a particular shape limitation other than implying being thin. The fibers of Nakamura are thin. The structure implied by being lathed is the spiral shape.
Nakamura does not specify a spiral shape; however, the exact shape is not critical in Nakamura. A person having ordinary skill in the art would have found it obvious to include spiral shaped copper motivated by an expectation of successfully providing antimicrobial copper with a compact and high surface area (goals taught by Nakamura). Further, a person having ordinary skill in the art would have found it obvious to have the copper fibers compressed inside the net in order to pack the fibers in and prevent problematic gaps.
With regards to claim 4, Nakamura teaches that the net can be of different materials including metal (para [0029]), but does not specify stainless steel. A person having ordinary skill in the art would have found it obvious to have picked between common metals including stainless steel motivated by an expectation of successfully forming the metal mesh of Nakamura.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONALD R SPAMER whose telephone number is (571)272-3197. The examiner can normally be reached Monday to Friday from 9-5.
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/DONALD R SPAMER/Primary Examiner, Art Unit 1799