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 invention group I, claims 1-3 and 7, in the reply filed on 12/30/2025 is acknowledged. The traversal is on the ground(s) that there is no burden to search all invention groups. This is not found persuasive because there is indeed burden to search all invention groups together.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-6 and 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/30/2025.
Claims 1-13 are pending, claims 1-3 and 7 are under examination.
Priority
Acknowledge is made that this application is national stage of international patent application PCT/JP2022/023052, filed on 06/08/2022; which claims priority from Japan Patent application JP2021-102257, filed on 06/21/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/14/2023, 01/11/2024 and 05/19/2025 is being considered by the examiner.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 7 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Hirofumi et al. (WO2019054476).
The limitation of claims 1-2 is met by Hirofumi et al. disclosing composite comprising tungsten oxide fine particles having a hexagonal crystal structure represented by the general formula MxWyOz with example Cs0.33WO3 (page 5, last paragraph to page 6, 1st paragraph). In this case, x/y is 0.33/1=0.33, and z/y is 3/1=3. Hirofumi et al. is silent about antibacterial properties, which is regarded as inherency of prior art composite. Since prior art discloses the same composite, this same composite must have the same properties. MPEP 2112.01. II, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
The limitation of claims 3 and 7 are met by Hirofumi et al. disclosing particle diameter of 10nm to 100nm (claims 1-3).
Claim(s) 1-3 and 7 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Takeda et al. (US8083847).
The limitation of claims 1-3 and 7 is met by disclosing composite K0.33WO3 with hexagonal crystal structure and particle diameter 80nm (column 24, line 45 to column 25 line 10, example 15). In this case, x/y is 0.33/1=0.33, and z/y is 3/1=3. Takeda et al. is silent about antibacterial properties, which is regarded as inherency of prior art composite. Since prior art discloses the same composite, this same composite must have the same properties. MPEP 2112.01. II, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tofuku (US8470212).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Tofuku teaches composite tungsten oxide expressed by a general formula MxWyOz, where: M is H, an alkali metal, an alkali earth metal, a rare earth element, or one or more elements selected from the group consisting of Mg, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Os, Bi, and I, W is tungsten, O is oxygen, and x, y, and z satisfy 0.001≦x/y≦1 and 2.2≦z/y≦3; wherein: an average primary particle size of individual nanoparticles is 1 nm or more and 800 nm or less, and each nanoparticle independently having a crystal structure selected from the group consisting of a hexagonal structure, a tetragonal structure, and a cubic structure (claims 1 and 7).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Tofuku is that Tofuku is not specific enough for anticipation.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1-3 and 7, Tofuku teaches composite tungsten oxide expressed by a general formula MxWyOz, where: M is H, an alkali metal, an alkali earth metal, a rare earth element, or one or more elements selected from the group consisting of Mg, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Os, Bi, and I, W is tungsten, O is oxygen, and x, y, and z satisfy 0.001≦x/y≦1 and 2.2≦z/y≦3; wherein: an average primary particle size of individual nanoparticles is 1 nm or more and 800 nm or less, and each nanoparticle independently having a crystal structure selected from the group consisting of a hexagonal structure, a tetragonal structure, and a cubic structure.
Tofuku is silent about antibacterial properties, which is regarded as inherency of prior art composite. Since prior art discloses the same composite, this same composite must have the same properties. MPEP 2112.01. II, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 8083147. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches the same composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range, antibacterial property is regarded as inherency of prior art composite.
Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 8018051 in view of spec of US 8018051. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches the same composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range (column 7, line 10-20; column 8, line 1-5), antibacterial property is regarded as inherency of prior art composite.
Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 8470212. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches the same composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range, antibacterial property is regarded as inherency of prior art composite.
Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 9612366 in view of spec of US 9612366. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches the same composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range (column 5, line 1-30), antibacterial property is regarded as inherency of prior art composite.
Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11105959 in view of spec of US 11105959. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches the same composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range (column 14, line 1-15; column 18, line 15-35)), antibacterial property is regarded as inherency of prior art composite.
Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11661350. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches the same composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range, antibacterial property is regarded as inherency of prior art composite.
Claims 1-3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18681709 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application teaches antimold (antibacterial) composite tungsten oxide expressed by a general formula MxWyOz with hexagonal crystal structure and particle diameter range (claims 1,3, 8 and 9)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613