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 Group I, claims 1-5 and 11-14, in the reply filed on 03/12/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/03/2024 has been considered by the examiner.
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.
Claim 11 is 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. Claim 11 depends from claim 1 and requires “which has a wetting time of 0 min to 1 minute in water.” However, the claim does not specify what has this property being the fiber-nanowire composite-based sheet, the fibers including a polymer or the metal nanowires/metal oxide nanowires. Therefore, the claim is rejected for failing to distinctly point out and describe the subject matter that is applicant’s invention. For the purposes of examination, the property is directed to the fiber-nanowire composite-based sheet which is consistent with that disclosed in the specification (See Instant Specification, PGPUB, Paragraph [0082]).
Claim 12 is 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. Claim 12 depends from claim 1 and requires “which has a thickness of 1,000 nm or more.” However, the claim does not specify what has this thickness being the fiber-nanowire composite-based sheet, the fibers including a polymer or the metal nanowires/metal oxide nanowires. Therefore, the claim is rejected for failing to distinctly point out and describe the subject matter that is applicant’s invention. For the purposes of examination, the thickness is directed to the fiber-nanowire composite-based sheet which is consistent with that disclosed in the specification (Instant Specification, PGPBUB, Paragraph [0083]).
Claim 13 is 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. Claim 13 depends from claim 1 and requires “which has an antibacterial effect against gram-positive bacteria and gram-negative bacteria.” However, the claim does not specify what has this property being the fiber-nanowire composite-based sheet, the fibers including a polymer or the metal nanowires/metal oxide nanowires. Therefore, the claim is rejected for failing to distinctly point out and describe the subject matter that is applicant’s invention. For the purposes of examination, the property is directed to the fiber-nanowire composite-based sheet which is consistent with that disclosed in the specification (Instant Specification, PGPUB, Paragraph [0083]).
Claim 14 is 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. Claim 14 depends from claim 1 and requires “which is applicable to an antibacterial filter, an antibacterial film, an antiviral filter, an antiviral film, an antifouling coating, a drug delivery vehicle, or a water treatment filter.” However, the claim does not specify what has this property being the fiber-nanowire composite-based sheet, the fibers including a polymer or the metal nanowires/metal oxide nanowires. Therefore, the claim is rejected for failing to distinctly point out and describe the subject matter that is applicant’s invention. For the purposes of examination, the property is directed to the fiber-nanowire composite-based sheet which is consistent with that disclosed in the specification (Instant Specification, PGPUB, Paragraph [0087]).
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.
Claims 1-5, 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2019-0027346) in view of Gedanken et al. (US 9,315,937).
Regarding claim 1, Kim teaches a device for delivering biomolecules using a zinc-oxide nanowire structure (Paragraph [0001]). The nanowires are formed on a support, which is in the shape of a film, such that zinc oxide nanoparticles are formed on the support by electrospinning a zinc oxide nanoparticle solution and a polymer wherein the polymer support is in the form of fibers (“a fiber-nanowire composite-based sheet comprising a fiber-nanowire composite including: fibers including a polymer; and metal nanowires or metal oxide nanowires grown from metal nanoparticles or metal oxide nanoparticles located inside and/or on the surface of the fibers”) (Paragraphs [0037]; [0056]). The wires are then grown from the nanoparticles through hydrothermal synthesis (Paragraph [0059]).
Kim is silent with respect to the nanowires in film form having a water contact angle of 3° or less.
However, this property appears to be dependent on the materials and the methods of forming the sheet of claim 1 such that one of ordinary skill in the art would recognize that a film or sheet formed from identical methods and materials as applicant’s invention would have identical properties. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the sheets of claim 1 require the nanowires grown from nanoparticles on polymeric fibers. Furthermore, the sheets are formed from the methods of electrospinning, sonication, and hydrothermal synthesis, in this order (Paragraphs [0049]-[0070]).
As discussed above, Kim teaches the films with the nanowires grown from nanoparticles on a fibrous, polymeric support film. Therefore, Kim teaches identical materials.
Additionally, as discussed above, Kim teaches the methods of forming the films being electrospinning and hydrothermal synthesis.
Kim is silent with respect to the methods further including a sonication process.
Gedanken teaches antimicrobial fabrics which are coated with metal oxide nanoparticles through a sonochemical method (Col. 1, Lines 8-10). The method includes coating a textile with a solution containing a metal oxide, which may be zinc (Col. 2, Lines 35-46; Col. 2, Lines 56-58). Zinc has been shown to have outstanding antimicrobial activity in the case of both gram-positive and gram-negative bacteria (Col. 4, Line 66-Col. 5, Line 2). The sonochemical methods provide a textile which is uniformly impregnated with metal oxide nanoparticles (Col. 3, Lines 25-30).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Kim such that after the nanoparticle solution and the polymeric, fibrous support are combined via electrospinning, the combination is subjected to a sonochemical method allowing the fibers to be uniformly impregnated with the nanoparticles as taught by Gedanken.
The combination now teaches identical methods and materials, as discussed above. Therefore, one of ordinary skill in the art would recognize that these identical materials and methods would teach identical properties to that of applicant’s invention, including having a water contact angle of 3° or less.
Regarding claim 2, Kim teaches the films as discussed above with respect to claim 1. As discussed above, the nanoparticles and nanowires may be formed from zinc oxide.
Regarding claim 3, Kim teaches the films as discussed above with respect to claim 1. The nanoparticles may have an average diameter of 1 nm to 1 micron, overlapping with the claimed range (Paragraph [0031]).
Regarding claim 4, Kim teaches the films as discussed above with respect to claim 1. The polymeric fibers may be PLA fibers (Paragraph [0037]).
Regarding claim 5, Kim teaches the films as discussed above with respect to claim 1. Kim further teaches the average diameter of the polymeric fibers may be 1.25 microns (1250 nm) (Paragraph [0188]).
Regarding claim 11, Kim teaches the films as discussed above with respect to claim 1. As discussed above, Kim and Gedanken teach identical materials and methods as applicant’s invention resulting in identical properties. This would include a wetting time of 0 minutes to 1 minute in water.
Regarding claim 13, Kim teaches the films as discussed above with respect to claim 1. As discussed above, Gedanken teaches zinc oxide having an antimicrobial effect against both gram-positive and gram-negative bacteria.
Regarding claim 14, Kim teaches the films as discussed above with respect to claim 1. As discussed above, Gedanken teaches zinc oxide having an antimicrobial effect against both gram-positive and gram-negative bacteria.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 2019-0027346) in view of Gedanken et al. (US 9,315,937) as applied to claim 1, and further in view of Zhang et al. (US 2019/0246635).
Regarding claim 12, Kim teaches the films as discussed above with respect to claim 1.
Kim is silent with respect to the films having a thickness of 1,000 nm or more.
Zhang teaches antimicrobial surfaces which are coated with a metal oxide (Paragraph [0001]). The metal oxides are formed on the surfaces through hydrothermal synthesis (Paragraph [0011]). The thickness of the metal oxide on the surfaces are from 1 to 10,000 nm (Paragraph [0044]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Kim to have thicknesses of 1 to 10,000 nm as taught by Zhang such that both references teach applying a metal oxide through hydrothermal synthesis to a surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783