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
This is a first action on the merits for this regular application filed on 12/12/2023
Election/Restrictions
Claims 1-3 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected peri-implantities treatment device, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/15/25.
Applicant’s election without traverse of claims 4-8 and 10-17 in the reply filed on 12/15/25 is acknowledged.
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 4-8 and 10-17 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 4, lines 2-4, Applicant recites “an electric potential window of higher than a lower limit value of an electric potential window and lower than -0.4 V with respect to a silver/silver chloride electrode reference”. The examiner is unable to determine the metes and bounds of claim 4 because it is not clearly recited if Applicant is referring to the electric potential window for the silver/silver chloride electrode reference? Or to the electric potential window for the conductor having biofilms? It is respectfully requested that claim 4 be rewritten to clearly point to what element the electric potential window represents. For the purpose of this action, the examiner interprets that the electric potential window (electrochemical window) is for a silver/silver electrode reference.
Claim Rejections - 35 USC § 102
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 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.
Claims 4, 7-8 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ehrensberger et al. (US 2015/0073491 A1).
Regarding claim 4, Ehrensberger et al. discloses a biofilm activity adjusting method [0003, 0008, 0035 and 0031], comprising applying, to a conductor having biofilms, an electric potential of higher than a lower limit value of an electric potential window (electrochemical window – EW) and lower than -0.4 V [0008] with respect to a silver/silver chloride electrode reference [0031 and 0052-0053] to inactivate the biofilms.
Regarding claim 7, Ehrensberger et al. discloses that the conductor has a current density of lower than 1 µA/cm² ([0068]; -1 mA/cm2 equals -1000 µA/cm²).
Regarding claims 8 and 15, Ehrensberger et al. discloses that the biofilms are formed by oral bacteria [0042-0043 and 0043].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6, 12, 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrensberger et al. (US 2015/0073491 A1) as applied to claim 4, and further in view of Cui et al. (US 2015/0075992 A1).
Regarding claim 6, Ehrensberger et al. discloses that the inactivation is performed in a liquid medium ([0043-004] and Examples 1-8). And Ehrensberger et al. discloses measuring the reductions in the amounts of biofilms, but without expressly stating the method for calculating the biofilms numbers of reductions.
Ehrensberger et al. appears silent to disclose the use optical density.
Cui et al. discloses a biofouling water sterilization device (Fig.3:300; [0044 and 0046]) by applying a voltage difference between the first porous electrode and the second porous electrode [0007] in order to obtain 99% pathogens inactivation efficiency. Cui et al. goes on to teach using optical density method in order to generate the pathogens growth curves for determining the bactericidal effectiveness [0097-0102]. 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 to add Cui et al. optical density method to Ehrensberger et al. method in order to generate the pathogens growth curves for determining the bactericidal effectiveness.
Regarding claim 12, Ehrensberger et al. discloses that the conductor has a current density of lower than 1 µA/cm² ([0068]; -1 mA/cm2 equals -1000 µA/cm²).
Regarding claims 14 and 17, Ehrensberger et al. discloses that the biofilms are formed by oral bacteria [0042-0043 and 0043].
Allowable Subject Matter
Claims 5, 10-11, 13 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 5, the primary reason for indicating allowable subject matter is the step of applying a positive electric potential to the conductor to form biofilms. The closest prior art of record (Ehrensberger et al. and Cui et al.), and upon further searches do not teach or fairly suggest adding the step of “applying a positive electric potential to the conductor to form biofilms” to the combined steps of the method claims.
Claims 10-11, 13 and 16 are objected merely due to their dependence from claim 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONZER R CHORBAJI whose telephone number is (571)272-1271. The examiner can normally be reached M-F 5:30-12:00 and 6:00-9:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill J Warden can be reached at (571)272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONZER R CHORBAJI/Primary Examiner, Art Unit 1799