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 without traverse of Claims 1-13 and 16 in the reply filed on 7/7/26 is acknowledged.
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 1-3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bielan (PL 233343 B1).
Regarding claim 1, Bielan (PL 233343 B1) teaches –
A photocatalyst composition (title, abstract) comprising
a photocatalyst particle (p. 6 1st paragraph lines 4-16, photocatalyst particles including Tungsten oxide are added, see also p. 21 last par. – p. 22),
a co-catalyst (p. 6 2nd paragraph, the photocatalyst particle is surface modified with a noble metal such as platinum), and
iodine or a water-soluble iodine compound (p. 6 2nd paragraph, the photocatalyst particles are doped with iodine, p. 21 last par. – p. 22 also teaches iodic acid on a titanium dioxide catalyst). Regarding the limitation that the iodine is formed from an iodide ion by photocatalyst activity generated by the photocatalyst particle receiving light: the claimed invention is directed towards an apparatus or product, and the manner in which a claimed product is made does not distinguish the claim from the prior art as long as all of the structure of the apparatus or product is taught. See MPEP 2113, I – “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. The burden herein shifted to Applicant to show a nonobvious difference. See MPEP 2113, II.
Regarding claim 2, Bielan further teaches the water-soluble iodine compound is metal iodide, ammonium iodide, iodic acid or metal iodate (p. 22 1st par., iodic acid is used as in the photocatalyst composition).
Regarding claim 3, Bielan further teaches the co-catalyst is supported on a surface of the photocatalyst particle (p. 6 2nd paragraph, the photocatalyst particle is surface modified with a noble metal such as platinum).
Regarding claim 5, Bielan further teaches the photocatalyst particle comprises tungsten oxide (p. 6 1st paragraph lines 4-16, photocatalyst particles including Tungsten oxide).
Regarding claim 6, Bielan further teaches the co- catalyst is a metal or metal oxide containing at least platinum (p. 6 2nd paragraph, the photocatalyst particle is surface modified with a noble metal such as platinum).
Claims 1-6, 9-10, 12-13, and 16 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takami (JP 2011078930).
Regarding claim 1, Takami (JP 2011078930) teaches –
A photocatalyst composition comprising a photocatalyst particle, a co- catalyst, and iodine or a water-soluble iodine compound. (p. 1 last paragraph to p. 2 first paragraph, the photocatalyst composition includes a tungsten oxide particle carrying a noble metal cocatalyst and a the dispersion liquid includes iodine). Regarding the limitation that the iodine is formed from an iodide ion by photocatalyst activity generated by the photocatalyst particle receiving light: the claimed invention is directed towards an apparatus or product, and the manner in which a claimed product is made does not distinguish the claim from the prior art as long as all of the structure of the apparatus or product is taught. See MPEP 2113, I – “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. The burden herein shifted to Applicant to show a nonobvious difference. See MPEP 2113, II. Furthermore, Takami teaches illuminating the composition using light (p. 5 last par. and p. 8 par. 3) and therefore this function and the formation of the iodine is expected.
Regarding claim 2, Takami teaches the water- soluble iodine compound is metal iodide, ammonium iodide, iodic acid or metal iodate (p. 4 par. 3 teaches iodic acid as the dispersion liquid).
Regarding claim 3, Takami teaches the co- catalyst is supported on a surface of the photocatalyst particle (p. 1 last paragraph to p. 2 first paragraph, the photocatalyst composition includes a tungsten oxide particle carrying a noble metal cocatalyst).
Regarding claim 4, Takami teaches the iodine or water-soluble iodine compound is supported on a surface of the photocatalyst particle (p. 1 last par. – p. 2 1st par., the photocatalyst particles are dispersed in the iodine solution forming a layer on the surface including the dispersion liquid).
Regarding claim 5, Takami further teaches the photocatalyst particle includes tungsten oxide (p. 1 last paragraph to p. 2 first paragraph, the photocatalyst composition includes a tungsten oxide particle).
Regarding claim 6, Takami further teaches the co- catalyst is a metal or metal oxide containing at least platinum (p. 1 last par. the noble metal includes platinum).
Regarding claim 9, Takami teaches –
An iodine solution comprising iodine (p. 1 last paragraph, the dispersion liquid includes an iodine compound), which is an extract of the photocatalyst composition according to claim 1 (p. 1 last paragraph to p. 2 first paragraph, the photocatalyst composition includes a tungsten oxide particle carrying a noble metal cocatalyst and a the dispersion liquid includes iodine) after light irradiation (p. 5 last paragraph, the dispersion liquid is exposed to light irradiation).
Regarding claim 10, Takami further teaches –
A photocatalyst dispersion liquid comprising a photocatalyst particle, a co- catalyst, iodine or a water-soluble iodine compound, and a dispersion medium (p. 1 last par. to p. 2 1st par. teaches a tungsten photocatalyst particle, an iodine compound being dispersed in a dispersion liquid).
Regarding claim 12, Takami further teaches a pH adjuster (p. 4 last par. – p. 5 1st par. the pH of the dispersion liquid is adjusted by adding an acid).
Regarding claim 13, Takami further teaches pH of the photocatalyst dispersion liquid is 1 or more and 7 or less (p. 4 last par. the pH is controlled to be 2.5 to 6, preferably).
Regarding claim 16, Takami further teaches –
An antibacterial activation apparatus comprising a light source device configured to irradiate a photocatalyst composition containing a photocatalyst particle (p. 5 last par. discloses an irradiation of the dispersion liquid with light, necessitating a light source), a co-catalyst, and a water-soluble iodine compound with light (p. 1 last par. to p. 2. 1st par.), wherein iodine is formed from an iodide ion by photocatalyst activity generated by the photocatalyst particle receiving light irradiated from the light source device (p. 5 last par.).
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 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bielan (PL 233343 B1).
Regarding claim 7, Bielan is set forth with regards to claim 1 and further teaches a ratio of co-catalyst to photocatalyst particle of 0.01 to 10% by mol (p. 6 par. 2), and therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Bielan such that the ratio of cocatalyst to photocatalyst by weight is .005/100 or more and 5/100 or less to arrive at the claimed invention. One would have been motivated to do so to optimize this known ratio between known materials to achieve better photocatalytic performance. MPEP 2144.05(II).
Regarding claim 8, Bielan is set forth with regards to claim 1 and further teaches a ratio of iodine to photocatalyst is 0.01 to 30% (p. 6 2nd par.), and therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Bielan such that the ratio of iodine to photocatalyst by weight is .1/100 or more and 5/100 or less to arrive at the claimed invention. One would have been motivated to do so to optimize this known ratio between known materials to achieve better photocatalytic performance. MPEP 2144.05(II).
Claims 7-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Takami (JP 2011078930).
Regarding claims 7 and 8, Takami teaches all the limitations of claim 1 but appears to be silent with regards to the claimed ratios. However, it would have similarly been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Takami such that the ratio of cocatalyst to photocatalyst is .005 or more and 5/100 or less and the ratio of iodine to photocatalyst is .01/100 or more and 5/100 or less to arrive at the claimed invention, because for the same reasons above this modification is merely the result of routine optimization of known concentrations, MPEP 2144.05(II).
Regarding claim 11, Takami is set forth above with regards to claim 10 but appears to be silent with regards to the claimed percentage of photocatalyst particles in the liquid dispersion. However, it would have similarly been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Takami such that the percentage of the photocatalyst particle in the dispersion liquid is 0.1% by weight or more and 30% by weight or less. One would have been motivated to do so to optimize this known ratio between known materials to achieve better photocatalytic performance. MPEP 2144.05(II).
Conclusion
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/BRENDAN A HENSEL/ Examiner, Art Unit 1758
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