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 .
Claim Rejections - 35 USC § 112
Claims 10-25 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.
In claim 1, the phrase “a thermoplastic resin containing at least gluconic acid and zinc gluconate” is indefinite in that it is unclear whether the gluconic acid and zinc gluconate constitute structural components of the antecedently-recited “thermoplastic resin” rather than the resin composition.
Claim Rejections - 35 USC § 103
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.
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 10-12, 18-20, 22-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over JP 6405013 B1 (Cai) abstract and machine translation.
Cai discloses the manufacture of a membrane filter for suppressing growth of microorganisms (meets Applicant’s antimicrobial/antiviral feature) from a composition comprising a nano zinc precursor which can be zinc gluconate (meets Applicant’s zinc gluconate), a reducing agent which can be gluconic acid (meets Applicant’s gluconic acid) and a polymeric material such as polyamide, polypropylene, etc. (meets Applicant’s thermoplastic resin) (e.g., abstract, page 3, claims).
In essence, Cai differs from claim 10 in not expressly setting forth a working embodiment wherein the polymeric material is combined with zinc gluconate and gluconic acid. Given that it is within the purview of Cai’s inventive disclosure to use zinc gluconate as the nano zinc precursor and gluconic acid as the reducing agent, it would have been obvious to one having ordinary skill in the art to combine the polymeric material with zinc gluconate and gluconic acid for their expected additive effect and with the reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness, Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297.
As to claim 11, Cai is unlimited as regards the contents of the zinc gluconate and gluconic acid and, as such, implicitly suggests that any contents (inclusive of those presently claimed) can be satisfactorily used, absent evidence of unusual or unexpected results.
As to claim 12, typically zinc gluconate and gluconic acid (dextrose) are in solid form. It would have been within the purview of one having ordinary skill in the art to use Cai’s zinc gluconate and gluconic acid in particle form (inclusive of presently claimed particle size) with the reasonable expectation of success, absent evidence of unusual or unexpected results.
As to claims 18-20, Cai’s membrane filters are in film form (abstract).
As to claims 22-24, Cai discloses hollow fiber membrane filters (page 6).
As to claim 26, Cai’s composition is made by mixing all of the compositional materials.
Allowable Subject Matter
Claims 13-17, 21, 25 and 27 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Cai does not disclose or suggest the further inclusion of zinc oxide or the production of foamed products.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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