DETAILED ACTION
Claims 1-10 are pending, and claims 1-4 are currently under review.
Claims 5-10 are withdrawn.
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 group I in the reply filed on 8/26/2026 is acknowledged. The traversal is on the ground(s) that the shared technical feature is not disclosed in the prior art. This is not found persuasive because the shared technical feature is met by the prior art as explained below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/26/2026.
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 1-4 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. Claims 1-4 recite the terms “antibacterial” and “antiviral”, which is indefinite because the common definition of these terms is “tending to prevent growth or spread of bacteria and viruses”, respectively. However, it is unclear as to what particular quantitative measure of prevention, if any, is required by the claimed terms. It is unclear, for example, as to what degree of bacteria or virus growth can be allowed on the steel while still being considered as “antibacterial/antiviral”, or alternatively it is unclear whether the steel needs to completely prevent growth and spread of bacteria or virus. The examiner interprets the claim to be met by any degree of antibacterial or antiviral function.
Claims 1-4 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. Claim 1 recites a “copper-rich phase”, which is indefinite because it is unclear as to what particular amount of coper, if any, is required in the copper-rich phase. Alternatively, it is unclear whether “copper-rich” merely requires phases having higher copper concentrations than the surrounding phases or merely higher copper concentrations than the general copper amount of the overall steel. The examiner interprets “copper-rich” to be met by any of the aforementioned interpretations.
Claim 4 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 4 recites the phrase "more preferably…", which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The examiner interprets the claim to not require the limitations following the phrase “more preferably” according to broadest reasonable interpretation.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN102260832, machine translation referred to herein).
Regarding claim 1, Zhang et al. discloses an antibacterial stainless steel coating material [0010]; wherein said coating including copper-rich phases that are uniformly distributed throughout the stainless steel coating [0035]. One of ordinary skill would readily understand that said phases are formed within a matrix of the general antibacterial stainless steel of Zhang et al. Zhang et al. further teaches that the stainless steel includes up to 10 weight percent Cu, which overlaps with the claimed range [0011]. See MPEP 2144.05(I). Since Zhang et al. discloses an overlapping steel composition and similar antibacterial property, one of ordinary skill would understand that the steel of Zhang et al. would also have an antiviral property of at least some degree.
Regarding claim 2, Zhang et al. discloses the stainless steel of claim 1 (see previous). Zhang et al. further teaches compositional inclusions as shown in table 2 below [0011]. The examiner notes that the overlap between the composition of Zhang et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 2 (wt.%)
Zhang et al. (wt.%)
Cu
6 – 30
0 – 10
Ag
0 – 1
0 – 1
Zn
0 – 1.5
0 – 1
Cr
11 – 30
13 – 28
Mn
0 – 20
0 – 18
Ni
0 – 18
0 – 15
Co
0 – 8
0
Al
0 – 5
0 – 6
Ti
0 – 5
0 – 1
Mo
0 – 4
0 – 3
V
0 – 3
0 – 2
C
0 – 1
0 – 0.08
Fe & Impurities
Balance
Balance
Regarding claim 3, Zhang et al. discloses the stainless steel of claim 1 (see previous). Zhang et al. further discloses including Si in an amount of up to 0.15 weight percent, which overlaps with the claimed range [0011]. See MPEP 2144.05(I).
Regarding claim 4, Zhang et al. discloses the stainless steel of claim 1 (see previous). The examiner notes that the aforementioned Cu amount of Zhang et al. further overlaps with the claimed range. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. 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.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
Prosecution Insights