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 .
Claim Objections
Claim 2 is objected to because of the following informalities: the parentheses around the limitations of the last two lines of the claim should be removed, as it creates confusion whether the limitations within the parentheses are part of the claimed invention. Appropriate correction is required.
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 1-13 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.
The term “mainly” in claim 1 is a relative term which renders the claim indefinite. The term “mainly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this instant case, it is not clear what amounts of the rare earth ferrite “mainly,” such that one of ordinary skill in the art would know when an amount of a rare earth ferrite would infringe on the claimed invention.
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.
Claims 1-9 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (“Study on the denitrification performance of FexLayOz/activated coke for NH3-SCR and the effect of CO escaped from activated coke at mid-high temperature on catalytic activity, 05/16/2019) (hereinafter Wang).
Wang discloses perovskite-type oxides, such as Fe-La bimetal oxides including LaFeO3, La1.6Fe0.4O3, and particularly La1.4Fe0.6O3, impregnated onto activated coke (abstract, Fig. 2) tested inside a quartz tube in a temperature-programmed tubular furnace (fig. 1) showed excellent denitrification performance, providing desirable choices for industrial applications (p.20261, col. 2, lines 4-5). Accordingly, Wang discloses an agent represented by formula (1) of Ln2xFe2(1-x)O3 wherein Ln is lanthanum and x is 0.5, 0.7, or 0.8, as claimed instantly.
Regarding the claims reciting “antiviral” in the preamble, this is merely a recitation of the intended use of the agent, product/layer, and/or treatment liquid. Since the Fe-La bimetal oxides of Wang comprise substantially the same active ingredient as the claimed invention (e.g., La1.4Fe0.6O3), the Fe-La bimetal oxides of the prior art would be usable as an antiviral agent, product/layer, and/or treatment liquid, whether the prior art recognizes such use or not.
Regarding claims 6-7 reciting the limitations of “used for an enveloped virus” or “used for a non-enveloped virus,” respectively, since the claims are directed to a product, the “for” statements are interpreted as intended use. Where substantially the same active agent is present in the prior art as instantly claimed, the intended use is met. See MPEP 2111.02.
Regarding claim 9, as discussed above, Wang discloses wherein the Fe-La bimetal oxides are impregnated onto activated coke. Accordingly, the activated coke of Wang meets the limitation of a substrate as instantly claimed.
Regarding claim 11, Wang further discloses activated coke is used in removal of pollutants from industrial flue gas (abs), and that industries include building materials industry (i.e. construction materials) (p. 20248, col. 2, ¶ 1).
Regarding claim 12, Wang further discloses wherein the lanthanum nitrate and iron nitrate was dissolved in deionized water to obtain a mixed solution (i.e. treatment liquid) (p. 20249, col. 2, ¶ 4).
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.
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 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (“Study on the denitrification performance of FexLayOz/activated coke for NH3-SCR and the effect of CO escaped from activated coke at mid-high temperature on catalytic activity, 05/16/2019) (hereinafter Wang) in view of Yamada et al. (JP 2005272320A, 10/06/2005, IDS reference) (hereinafter Yamada).
Regarding claims 10 and 13, the disclosure of Wang is discussed in detail above and differs from the instant claims insofar as not disclosing a resin.
However, Yamada discloses orthoferrite (LaFeO3) based additives may be used as an anti-algae coating composition ([0029]), suitable as paint and plastic plate additive applicable for building materials for interior and exterior of buildings as an anti-algae and anti-mold agent ([0001]). Said coating composition is made by mixing and dispersing a predetermined amount of an aqueous or oily colloidal liquid, in which the orthoferrite based additives are dispersed, in a coating composition such as acrylic, urethane, polyester, polyvinyl chloride, or phenol ([0029]). In particular, orthoferrites having a perovskite-type structure have a large algae-proofing force ([0025]).
As noted by para. [0060] of the instant Specification, a urethane is a resin. Thus the urethane of Yamada meets the limitation of a resin as instantly claimed.
As noted by para. [0061] of the instant Specification, water is a solvent. Thus the aqueous colloidal liquid of Yamada meets the limitation of a solvent as instantly claimed.
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated the Fe-La bimetal oxides of Wang in a coating composition including acrylic, since it is a known and effective orthoferrite based additive having perovskite-type structure as taught by Yamada.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-22 of copending Application No. 18/277,276 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application discloses the same instantly claimed compound for another intended use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612