CTNF 18/535,615 CTNF 102071 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1, 5-7, 9 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Hayakawa et al. (US 20130267410 A1) . Regarding claim 1, Hayakawa et al. teaches photocatalyst particles including tungsten oxide (paragraph [0051]) in the range of 1% to 20% by mass (paragraph [0046]), an additional metal compound including copper and gluconate (paragraph [0059]) in the amount of 0.01 to 10% by mass, a photocatalytic aqueous coating liquid (paragraph [0091]), and coating liquid that is obtained from dissolving or dispersing the compounds in a solvent, with the solvent containing additional elements of leveling agents, surfactants, and viscosity modifiers (paragraph [0073]), and a silicone emulsion (paragraph [0036]). The weight ratio (Y/X) of the copper gluconate (Y) relative to photocatalyst particles (X) ranges from 0.05/100 to 20/100 which would meet the instantly claimed range of 2/100 to 20/100. Regarding claim 5, Hayakawa et al. teaches photocatalyst particles including tungsten oxide (paragraph [0051]) in the range of 1% to 20% by mass (paragraph [0046]), an additional metal compound including copper and gluconate (paragraph [0059]) in the amount of 0.01 to 10% by mass, and silicone emulsion in the range of 10-50% by mass (paragraph [0033]) to maintain the particulate shape (paragraph [0036]), and to stop the diffusion water into the photocatalyst layer and cause the organic component to diffuse from the surface of photocatalyst layer (paragraph [0037]). Hayakawa et al. teaches wide ranges for the photocatalyst particles (X, 1-20%), copper gluconate (Y, 0.01-10%), and dispersant (Z, 10-50%). For example, if X = 20%, Y=1%, Z=20%, the equation (0.8X + 2Y) ≤ Z ˂ 1.5X, is satisfied with 17 ≤ 20 < 30. Regarding claim 6, Hayakawa et al. teaches a photocatalyst particle containing tungsten oxide, in the range of 1-20 wt% (paragraph [0063]). Regarding claim 7, Hayakawa et al. teaches the weight percent of the copper gluconate in the photocatalyst coating liquid as 0.01 to 10% by mass (paragraph [0059]). Regarding claim 9, Hayakawa et al. teaches a photocatalyst coating liquid for photocatalyst layer formation (paragraph [0026]), with the photocatalyst coating liquid having the same composition, i.e. same ratios of tungsten oxide and copper gluconate in the same amounts required by the instant claims, it is the position of the examiner that the weight ratios of the copper gluconate and tungsten oxide would inherently be the same once dried into the photocatalyst layer. When the examiner has reason to believe that the functional language asserted to be critical for establishing novelty in claimed subject matter may in fact be an inherent characteristic of the prior art, the burden of proof is shifted to Applicants to prove that the subject matter shown in the prior art does not possess the characteristics relied upon. In re Fitzgerald et al. 205 USPQ 594 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over by Hayakawa et al. (US 20130267410 A1) as applied as above for claims 1, 5-7, and 9, and further in view of Fukushi et al. (WO 2014141694 A1) (references are made to the English language translation) . Regarding claim 2, Hayakawa teaches a photocatalyst coating liquid containing photocatalyst particles including tungsten oxide (paragraph [0051]), an additional metal compound, (i.e. copper gluconate, sulfate, or nitrate) (paragraph [0059]), a photocatalytic aqueous coating liquid (paragraph [0091]), and coating liquid that is obtained from dissolving or dispersing the compounds in a solvent, with the solvent containing additional elements of leveling agents, surfactants, and viscosity modifiers (paragraph [0073]). Hayakawa does not teach the pH of the photocatalyst coating liquid. However, Fukushi et al. does teach a photocatalyst comprising of tungsten oxide particles (paragraph [0011]), metal elements including copper sulfate and copper nitrate (paragraph [0057]), and an aqueous dispersion medium (paragraph [0030] and [0053]). Fukushi teaches the pH photocatalyst liquid in the range of 1 to 9 (paragraph [0054]). Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hayakawa et al. with Fukushi et al. to utilize the range of copper salts taught by Hayakawa et al. in the photocatalyst solution in order to achieve the desired pH that is taught by Fukushi et al. Additionally, Fukushi et al. describes the rational for the pH range of the photocatalyst solution, which is to ensure the zeta potential of the solution is negative which improves the dispersion of the photocatalyst. Regarding claim 3, Hayakawa et al. teaches an aqueous coating liquid (paragraph [0030]) and copper gluconate (paragraph [0059]). Hayakawa et al. does not teach the pH of the copper gluconate in aqueous medium before the addition of the photocatalyst particles or dispersant. However, Fukushi et al. does teach a photocatalyst comprising of tungsten oxide particles (paragraph [0011]), metal elements including copper sulfate and copper nitrate (paragraph [0057]), and an aqueous dispersion medium (paragraph [0030] and [0053]). Fukushi teaches the pH photocatalyst liquid in the range of 1 to 9, and describes adjusting the pH in ensure the zeta potential becomes negative, in order to improve the dispersion of the photocatalyst (paragraph [0054)]. Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hayakawa et al. with Fukushi et al. to optimize the overall pH and the pH of its constituents in order to obtain a photocatalyst coating liquid with a good dispersion state. It would have been obvious to one having ordinary skill in the art at the time the invention was made to choose the instantly claimed ranges through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 . 07-21-aia AIA Claim s 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over by Hayakawa et al. (US 20130267410 A1) as applied as above for claims 1, 5-7, and 9, and further in view of Yoji et al. (JP 2011063949 A) (references are made to the English language translation) . Regarding claim 4 and 8, Hayakawa et al. teaches dissolving or dispersing the ingredients in a solvent, with the solvent preferably water in addition to alcohols and surfactants (paragraph [0073]). Hayakawa et al. does not teach an average molecular weight of 10,000 or less and the weight proportion of the dispersant. However, Yoji et al. does teach a film forming aid that is dispersible in water, and is preferably an organic solvent in order to contribute to a uniform film coating (paragraph [0049]). The organic solvents added were specifically alcohols and alkylene glycol derivatives, which meet the instant claim of a molecular weight of 10,000 or less. The film forming aid is added in the 0-18 wt% range, which meets the instant claim of 0.01-5 wt%. Any addition of the dispersant past 18% results in insufficient coating properties (paragraph [0050]). Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hayakawa et al. with Yoji et al. to utilize the dispersant taught by Hayakawa with the molecular weight and weight percentages taught by Yoji. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH KETCHAM whose telephone number is (571)270-0742. The examiner can normally be reached Monday-Friday 8am-5pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /H.E.K./Examiner, Art Unit 1742 /CHRISTINA A JOHNSON/Supervisory Patent Examiner, Art Unit 1742 Application/Control Number: 18/535,615 Page 2 Art Unit: 1742 Application/Control Number: 18/535,615 Page 3 Art Unit: 1742 Application/Control Number: 18/535,615 Page 4 Art Unit: 1742 Application/Control Number: 18/535,615 Page 5 Art Unit: 1742 Application/Control Number: 18/535,615 Page 6 Art Unit: 1742
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