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, and Species A, corresponding to claims 1-14 and 23-30 in the reply filed on July 27th, 2026, is acknowledged. Claims 15-22 and 31-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. The traversal is on the ground(s) that:
Applicant asserts that the classification of Groups I, and II and the classification of Species A and B in different classes is not necessarily sufficient grounds to require restriction. Even though some additional searching would be necessary, the scope of analysis of novelty of all the Groups and Species would have to be as rigorous as when only Group I and Species A were being considered by itself. Clearly, this duplication of effort would not be warranted where these claims of different groups are so interrelated. Further, Applicant submits that for restriction to be effected between the claims and species, it would place an undue burden by requiring payment of a separate filing fee for examination of the nonelected species, as well as the added costs associated with prosecuting two applications and maintaining two patents. Withdrawal of the restriction is respectfully requested.
This is not found persuasive because, as noted in the restriction requirement filed on May 26th, 2026, inventions of Groups I & II are separately classified in different CPC sections, and thus are related to mutually exclusive inventions. Furthermore, as the Applicant is aware, different rules and guidelines are provided during examination of an apparatus claim versus a method claim. For example, an apparatus that is merely provided for dehumidifying a room with a carbon absorbent would meet the apparatus claims. However, the same exact apparatus would NOT meet the method claims. As such, an undue search burden would exist if the restriction were not required. Furthermore, with respect to Species A & C, placing cannabis in an enclosure and sterilizing said cannabis is clearly distinctly different from flowing a sterilant in an entire room (via either utilization of the HVAC system or otherwise) to sterilize the contents of the room, and would thus create a serious search burden on the Examiner.
As such, the requirement is still deemed proper and is therefore made FINAL.
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.
Claim 9 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.
Claim 9 recites the limitation "the inlet" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Scheuber et al. (U.S. Publication No. 2018/0110891) in view of Peers (Document Identification No. GB 749431 A).
Concerning claims 1, 2, 5 and 6, Scheuber discloses a method of processing a gas to remove hydrogen peroxide from the gas (Abstract; Figures 1-8), the method comprising:
Providing gas that contains hydrogen peroxide (paragraph 55); and
Contacting the gas with carbon adsorbent that includes caustic agent and reducing agent, to reduce a concentration of the hydrogen peroxide in the gas by at least 50% below 1 part per million (paragraphs 29, 30, 58, 59, 82 and 90).
Scheuber does not appear to disclose that the carbon adsorbent includes a caustic agent and a reducing agent. Peers discloses a method of processing a gas to remove hydrogen peroxide by providing a gas that contains hydrogen peroxide and contacting the gas with a carrier material to reduce the concentration of said hydrogen peroxide gas (page 2, lines 8-59). The reference continues to disclose that the carrier includes potassium hydroxide (page 3, lines 43-123) and potassium iodide (page 2, lines 82-87) because potassium hydroxide and potassium iodide are reactive to hydrogen peroxide to thus aid in the further degradation of said hydrogen peroxide (page 2, lines 82-87; page 3, lines 43-123). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include potassium hydroxide and potassium iodide in the carbon adsorbent of Scheuber because potassium hydroxide and potassium iodide are reactive to hydrogen peroxide to thus aid in the further degradation of said hydrogen peroxide as exemplified by Peers.
Thus, claims 1, 2, 5 and 6 are not patentable over Scheuber in view of Peers.
With respect to claims 3 & 4, Scheuber in view of Peers does not appear to disclose the weight percent of the caustic agent or reducing agent based on the weight of the carbon adsorbent. However, a mere change in proportion, even if it leads to better results, holds no patentable significance:
MPEP 2144.05.II.A: Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."
especially if it can be shown that the change in proportions can be done by one of ordinary skill in the art through routine optimization of a known result-effective variable (MPEP 2144.05.II.B: the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.). Because the weight percent of the caustic agent or reducing agent based on the weight of the carbon adsorbent is a known result effective variable to one of ordinary skill based off the teachings of Scheuber in view of Peers, then it would have been well within the purview to one of ordinary skill in the art to provide the adsorbent of Scheuber with up to 5 weight percent of the caustic agent or reducing agent based on the weight of the carbon adsorbent in order to optimize the removal of hydrogen peroxide based on various factors of the process (such as concentration of hydrogen peroxide, flowrate, etc.) while simultaneously providing an economically feasible operation for a given operation; as such are considered result effective variables that would be optimized by one of ordinary skill during routine experimentation.
Thus, claims 3 & 4 are not patentable over Scheuber in view of Peers as well.
Concerning claims 7 & 8, although Scheuber in view of Peers does not specifically disclose the temperature and pressure of the gas passing into the carbon adsorbent, the claimed temperature of being below 40 degrees Celsius (which includes ambient temperature), and slightly above ambient pressure (12-15 lbs/in2, which Scheuber does disclose a slight overpressure in paragraphs 57 & 73) is not critical temperatures and pressures in this frame of art to sustain a patent. In this regard, 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 temperature of the gas passing into the carbon adsorbent to ambient temperature (i.e., below 40°C) and the pressure to slightly above ambient (i.e., for positive gas flow; 12-15 lbs/in2) in order to produce a hydrogen peroxide removal operation that works under ambient ordinary conditions (i.e., ambient temperature and slight overpressure for gas flow) for ease of use in a plain setting; as such are considered conditions that one of ordinary skill would optimize during routine experimentation for a given application. Only the expected results would be attained.
Therefore, claims 7 & 8 do not create a patentable distinction over Scheuber in view of Peers as well.
Regarding claim 9, Scheuber continues to disclose that the gas is exhaust air of a sterilization chamber (90) attached to the inlet (Figures 1 & 6; paragraphs 55, 57 and 58).
With respect to claim 10, Scheuber also discloses that the exhaust air is provided by two or more sterilization chambers (7/90) attached to the inlet as shown in Figures 3 & 4.
Concerning claim 11, Scheuber further discloses that the sterilization chamber performs a sterilization method that comprises:
Placing an item to be sterilized in the sterilization chamber, closing the sterilization chamber, and dispensing hydrogen peroxide into the sterilization chamber (paragraphs 20, 25 & 77).
Regarding claim 13, Scheuber discloses that the item is a medical device or a medical instrument (paragraphs 1 & 3).
Claims 1, 2 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Berentsveig (U.S. Publication No. 2023/0372569) in view of Peers (Document Identification No. GB 749431 A).
With respect to claims 1, 2 & 14, Berentsveig discloses a method of processing a gas to remove hydrogen peroxide from the gas (paragraphs 45-49 and 123), wherein the gas is static air at an interior of a hospital room (paragraphs 1-18 and 81), the method comprising:
Dispensing hydrogen peroxide vapor into an air atmosphere within the room (paragraphs 81-86, 122 and 123);
Allowing the hydrogen peroxide to contact surfaces in the room to sterilize the surfaces (paragraphs 122-124); and
Contacting the air atmosphere with a carbon adsorbent that includes potassium hydroxide to allow the air atmosphere to contact the carbon adsorbent and reduce a concentration of hydrogen peroxide in the air atmosphere (paragraph 146). The reference does not appear to disclose that the carbon adsorbent includes potassium iodide. Peers discloses a method of processing a gas to remove hydrogen peroxide by providing a gas that contains hydrogen peroxide and contacting the gas with a carrier material to reduce the concentration of said hydrogen peroxide gas (page 2, lines 8-59). The reference continues to disclose that the carrier includes potassium hydroxide (page 3, lines 43-123) and potassium iodide (page 2, lines 82-87) because potassium hydroxide and potassium iodide are reactive to hydrogen peroxide to thus aid in the further degradation of said hydrogen peroxide (page 2, lines 82-87; page 3, lines 43-123). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include potassium iodide in the carbon adsorbent of Berentsveig because potassium iodide is reactive to hydrogen peroxide to thus aid in the further degradation of said hydrogen peroxide as exemplified by Peers.
Thus, claims 1, 2 and 14 are not patentable over Berentsveig in view of Peers.
Claims 1, 12 and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Scheuber et al. (U.S. Publication No. 2018/0110891) in view of Peers (Document Identification No. GB 749431 A) and Hinkle (U.S. Publication No. 2021/0138449).
Concerning claims 1, 12, 23, 24, 27 and 28, Scheuber discloses a method of sterilizing an item and processing a gas to remove hydrogen peroxide from the gas, the method comprising:
Placing the item in a sterilization chamber (7/90) that contains an atmosphere that includes air (paragraphs 7-13 and 20);
Providing a gas that contains hydrogen peroxide, and dispensing hydrogen peroxide in the gas into the air atmosphere in the sterilization chamber (paragraphs 20-25);
For a period of time, allowing the hydrogen peroxide to inactivate biologically active materials contained in/on the item (paragraphs 20-25);
After the period of time, removing the air from the sterilization chamber (7/90) as exhaust air and contacting the exhaust air with carbon adsorbent to reduce a concentration of the hydrogen peroxide in the air by at least 50%, or less than 10,000 parts per million (paragraphs 29, 30, 58, 59, 82 and 90).
Scheuber does not appear to disclose that the carbon adsorbent includes a caustic agent and a reducing agent. Peers discloses a method of processing a gas to remove hydrogen peroxide by providing a gas that contains hydrogen peroxide and contacting the gas with a carrier material to reduce the concentration of said hydrogen peroxide gas (page 2, lines 8-59). The reference continues to disclose that the carrier includes potassium hydroxide (page 3, lines 43-123) and potassium iodide (page 2, lines 82-87) because potassium hydroxide and potassium iodide are reactive to hydrogen peroxide to thus aid in the further degradation of said hydrogen peroxide (page 2, lines 82-87; page 3, lines 43-123). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include potassium hydroxide and potassium iodide in the carbon adsorbent of Scheuber because potassium hydroxide and potassium iodide are reactive to hydrogen peroxide to thus aid in the further degradation of said hydrogen peroxide as exemplified by Peers.
Scheuber also does not disclose that the method dispenses a hydrogen peroxide vapor to sterilize cannabis. Hinkle discloses a method of sterilizing an item by placing the item within a sterilization chamber (30), and dispensing hydrogen peroxide into an air atmosphere in the chamber to sterilize said item (paragraphs 35-40; Figure 7). The reference continues to disclose that the method dispenses a hydrogen peroxide vapor to sterilize cannabis (paragraphs 11 & 18) in order to successfully sterilize a product like cannabis while leaving no residue (paragraph 9). Thus, it would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize vaporous hydrogen peroxide in the method of Scheuber to sterilize an item such as cannabis in order to successfully sterilize a product like cannabis while leaving no residue as exemplified by Hinkle.
Thus, claims 23, 24, 27 & 28 are not patentable over Scheuber in view of Peers and Hinkle.
With respect to claims 25 & 26, Scheuber in view of Peers does not appear to disclose the weight percent of the caustic agent or reducing agent based on the weight of the carbon adsorbent. However, a mere change in proportion, even if it leads to better results, holds no patentable significance:
MPEP 2144.05.II.A: Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."
especially if it can be shown that the change in proportions can be done by one of ordinary skill in the art through routine optimization of a known result-effective variable (MPEP 2144.05.II.B: the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.). Because the weight percent of the caustic agent or reducing agent based on the weight of the carbon adsorbent is a known result effective variable to one of ordinary skill based off the teachings of Scheuber in view of Peers, then it would have been well within the purview to one of ordinary skill in the art to provide the adsorbent of Scheuber with up to 5 weight percent of the caustic agent or reducing agent based on the weight of the carbon adsorbent in order to optimize the removal of hydrogen peroxide based on various factors of the process (such as concentration of hydrogen peroxide, flowrate, etc.) while simultaneously providing an economically feasible operation for a given operation; as such are considered result effective variables that would be optimized by one of ordinary skill during routine experimentation.
Thus, claims 25 & 26 are not patentable over Scheuber in view of Peers and Hinkle as well.
Concerning claims 29 & 30, although Scheuber in view of Peers and Hinkle does not specifically disclose the temperature and pressure of the exhaust air passing into the carbon adsorbent, or the temperature of the cannabis or temperature of the air atmosphere; the claimed temperature of being below 40 degrees Celsius (which includes ambient temperature), and slightly above ambient pressure (12-15 lbs/in2, which Scheuber does disclose a slight overpressure in paragraphs 57 & 73) is not critical temperatures and pressures in this frame of art to sustain a patent. In this regard, 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 temperature of the exhaust air passing into the carbon adsorbent, the temperature of the cannabis, and the temperature of the air atmosphere to ambient temperature (i.e., below 40°C); and the pressure to slightly above ambient (i.e., for positive gas flow; 12-15 lbs/in2) in order to produce a hydrogen peroxide removal operation that works under ambient ordinary conditions (i.e., ambient temperature and slight overpressure for gas flow) for ease of use in a plain setting; as such are considered conditions that one of ordinary skill would optimize during routine experimentation for a given application. Only the expected results would be attained.
Therefore, claims 29 and 30 do not create a patentable distinction over Scheuber in view of Peers and Hinkle as well.
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
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