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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because the photographs submitted for the instant application (i.e. directed to a food product contact member) are identical to the photographs in US Pat. Nos. 11,745,393 and 11,858,177 (both of which are directed to a method of using a surface material of a molding surface of a mold). Because the photos are identical, it is unclear whether the photos are of a test strip of the instantly claimed food product contact member or of the previously disclosed molding surface of a mold.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 2-3 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation of titanium oxide is diffused and penetrated to a depth of approximately 5 µm from a surface, and the claim also recites a thickness of a surface layer containing titanium oxides of approximately 0.5 µm which is the narrower statement of the range/limitation. The claim is not clear whether or not the surface layer (i.e. containing titanium oxide) includes the diffusion and penetration depth (i.e. also containing titanium oxide) and therefore the point of reference for determining the instantly claimed thickness and depth is not clear which leads to confusion from the different thickness/depth measurements recited in the claim. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 3 is rejected as it depends on a rejected 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.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP 2008222260A, machine translation attached) in view of Miyasaka (US 2016/0221036).
Claim 1: Nakamura teaches a container for food or drink (i.e. a food product contact member that makes contact with a food product) having a titanium oxide film formed on a surface of metal or ceramic (i.e. configured from a metal or a substance containing a metal) (paragraph 0011). The coating of titanium oxide is formed on the surface of the base material forming the accommodation space which accommodates (i.e. is in contact with) drink and/or food (paragraph 0013). Nakamura teaches that titanium powder is sprayed at a high speed by a blasting process, the titanium component diffuses and permeates into the surface and reacts with oxygen in the air to oxidize forming a titanium oxide film (i.e. titanium oxide is diffused and penetrated at a proximity to a surface of the contact surface contacting the food product) (paragraph 0026). Nakamura teaches that antibacterial function and antifouling/deodorizing function can be exhibited by forming the titanium oxide film which can be used repeatedly in high/low temperature environments and also allows dirt to be easily removed (paragraph 0035). Nakamura teaches that the surfaces can be improved in rigidity by forming concave shapes at a plurality of locations (paragraph 0022). However, Nakamura does not teach further details of the structure of the contact surface being coated (i.e. no additional details are provided about the concave shapes).
In a field of endeavor related to forming a ceramic coating of titanium oxide on a metal product, Miyasaka teaches enhanced adhesion between a metal product and a ceramic film by carrying out blasting before formation of the ceramic film (paragraph 0002). The ceramic film may be primarily TiO2 (i.e. titanium oxide), etc. (paragraph 0051). The blasting step nano-crystallizes the surface layer of the metal product to allow penetration and diffusion of a ceramic component and increases adhesion strength of a ceramic film (paragraphs 0034-0035). The blasting step results in numerous micro-concavities (i.e. having a micronized structure) having substantially circular bottom surfaces (i.e. plural smooth circular arc shaped depressions formed over an entirety of the contact surface) (paragraph 0037). A smoothing step of polishing the surface removes protrusions (i.e. the depressions are without pointed protrusions) and can prevent delamination of the ceramic film (paragraph 0034) while allowing concavities to remain (paragraph 0065). When forming the ceramic film, an activated ceramic component is activation-adsorbed on the surface being treated and is diffused and penetrated in the surface layer (paragraph 0087).
As Nakamura teaches a container for food or drink having a titanium oxide film formed on a surface of metal or ceramic (paragraph 0011) wherein the titanium oxide film provides antibacterial function and antifouling/deodorizing function (paragraph 0035) and Miyasaka teaches improved adhesion between a ceramic film such as TiO2 and a metal substrate, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the food/drink container of Nakamura to be coated with TiO2 by blasting and smoothing before forming the titanium oxide film as taught by Miyasaka, and one would have had a reasonable expectation of success. Specifically, the container of Miyasaka-modified Nakamura outlined herein is a metal container for food or drink where the surface to be in contact with food/drink is to be coated with a titanium oxide film prepared by first blasting and smoothing to increase adhesion as taught by Miyasaka and then a titanium oxide coating is applied as taught by Nakamura as this type of titanium oxide coating is taught to be suitable for food/drink contact surfaces.
Claim 2: Nakamura does not specifically teach the thickness of the titanium oxide coating or the depth of penetration. However, the materials and method of coating of Miyasaka-modified Nakamura is substantially identical to the instant disclosure as outlined in the table below, and therefore the depth of penetration is considered to be present because substantially identical materials treated in substantially identical manner have substantially identical properties and function. See MPEP § 2112.01.
Instant Specification
Prior Art (Miyasaka = “M”; Nakamura = “N”)
Preliminary Treatment Step: (Not an essential step, para. 0036) removing electrical discharge hardened or softened layer or removing directional processing marks
A pretreating step may be carried out before the blasting step (M, para. 0052) or two-stage blasting may be carried out (M, para. 0054).
Instantaneous Heat Treatment Step: dry-eject spherical powders to form fine indentations, using powder diameter of 220 grit to 800 grit (i.e. about 18-22 µm to 44-105 µm) at an ejection pressure of not less than 0.2 MPa (para. 0048-0054) causing instantaneous local heating and cooling resulting in fine crystallization at the surface and circular arc shape depressions (para. 0057).
Blasting Step: ejection using compressed air (i.e. dry-ejecting) of particles having diameter from #280 to #1000 (i.e. about 14.5-18 µm to 62-73.5 µm) (M, para. 0056) at an ejection pressure of 0.2 MPa to 0.6 MPa (M, para. 0060) to cause instantaneous rapid heating and cooling on the surface to nano-crystallize a surface layer and create micro-concavities having substantially circular bottom surface (M, para. 0062)
Titanium powder ejection: powder of titanium or titanium alloy is ejected having a diameter of 100 grit to 800 grit (i.e. about 18-22 µm to 74-210 µm) at an ejection pressure of not less than 0.2 MPa so that titanium oxide is caused to diffuse and penetrate into the surface (para. 0058-0059, 0064)
Titanium powder spray: a blasting process of spraying powder of titanium or titanium alloy (N, para. 0017) that is activated (N, para. 0026) having a particle size of 20-800 µm, preferably 30-300 µm (N, para. 0028) at an injection pressure (i.e. ejection pressure) of 0.25 MPa or more (N, para. 0030) so that the titanium component is diffused and permeated and a titanium oxide film is formed on the surface by oxidizing and diffusing (N, para. 0029)
The thickness of the surface layer is not specifically taught by Nakamura. However, it would be within the level of ordinary skill in the art to determine a layer thickness necessary to provide sufficient surface coverage to have the desired antibacterial function and antifouling/deodorizing function taught by Nakamura (paragraph 0035).
Claim 3: Nakamura and Miyasaka are silent regarding the tilting structure and degree of bonding relative to the surface. However, this feature is considered to be present because the materials and method of coating of Miyasaka-modified Nakamura is substantially identical to the instant disclosure as outlined above (also compared to paragraph 0068 of the instant specification), and substantially identical materials treated in substantially identical manner have substantially identical properties and function. See MPEP § 2112.01.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-3 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 of copending Application No. 17/258,294 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. It is noted that claims 1-3 of the ‘294 application have been withdrawn; however, they are not yet cancelled and would be eligible for consideration of rejoinder if the ‘294 application becomes allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miyasaka (US 2002/0055005) discloses a metal oxide layer having oxide deficit tilting structure such as TiO2 obtained by melting and adhering metal powder of titanium on a surface of a product to be treated comprising metal and/or ceramics by injecting the metal powder using compressed air at a pressure of more than 0.3 MPa. A preliminary treatment of blasting ceramic balls is applied before injection of titanium powder.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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, Humera Sheikh can be reached at 571-272-0604. 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.
/KIM S. HORGER/Examiner, Art Unit 1784