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 .
Status of Claims
Pending and under examination: claims 1-15
Rejected: claims 1-15
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 14-15 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 14 recites “A use of a particulate material Z according to claim 1, or prepared according to a method of[…]as an additive for the antimicrobial treatment of materials or objects to be rendered antimicrobial.” The limitation is indefinite because it is unclear if the underlined portion is limiting the material only if it is prepared according the method described in claim 14, or if it is also limiting the “use” in the preamble.
Claim 15 is rejected as being dependent from claim 14.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 14 recites “A use of a particulate material Z according to claim 1, or prepared according to a method of[…]as an additive for the antimicrobial treatment of materials or objects to be rendered antimicrobial.” Thus, claim 14 fails to further limit claim 1 because it does not explicitly include/require all of the limitations of claim 1, due to the use of the “or” language.
Claim 15 is rejected as being dependent from claim 14.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gock et al. (US 20230392263 A1; available as prior art under § 102(a)(2)) in view of Atarashi et al. (US 5985466 A).
In the interest of clarity of the record and compact prosecution, the examiner notes that Gock et al. (US 20230392263 A) may qualify as an exception under § 102(b)(2) due to the common inventor Michael Gock; however, per MPEP 2154.01(d)), a provisional rejection is being made due to the instant application having a different inventive entity (see MPEP 2154.01(d)-2154.02).
Regarding claim 1, Gock teaches a composition with a cellulose powder (meeting the claimed water-insoluble support material T) with 18.3 wt.% elemental silver 0.2 wt.% elemental ruthenium (see Exemplary embodiment 1 in [0062]-[0063].
However, Gock is silent regarding 50-85% of solid Y.
Atarashi teaches a powder having metal oxide films on its surface is obtained in which the films have a heightened refractive index and which hence shows a high reflectance and has a bright color (Abstract).
Atarashi further teaches making an elemental silver film (col. 19, lines 7-27), then forming a titanium dioxide film on top by using titanium ethoxide (a C2 alkoxide of titanium) (col. 19, lines 28-50).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Gock by using the technique of Atarashi of forming a titanium dioxide layer on top of the elemental silver, as doing so allows for having an even brighter and more reflective surface than elemental silver/elemental metal alone (Abstract).
Regarding claims 2 and 4-8, Gock and Atarashi teach the particulate material of claim 1 above, and as discussed above, the composition meets the limitations of claims 2 and 4-8. In claim 2, it is prima facie expected that the resulting combination meets the claimed L* value, because the materials are the same as that in the instant invention, and because the resultant color of Atarashi’s material is a yellow-ish white color with a peak reflectance of 88%, which is prima facie expected to result in a color having a brightness L* in the range of 50 to 85, or close to the range so as to render the range obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
In claim 4, the sum of Ag and Ru is 18.5 wt.%, and the ratio is 91.5 which, which are both within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Cellulose is swellable with water, and is a modified or unmodified polymer of natural origin, and therefore meets claims 5-7.
In claim 8, cellulose (support material T) is different from titanium ethoxide.
Regarding claim 3, Gock and Atarashi teach the particulate material of claim 1 above, and Atarashi teaches that when a titanium or aluminum alkoxide is used, metal oxide particles may be generated from the alkoxide (col. 8, lines 38-41).
Regarding claim 9, Gock teaches making a composition with a cellulose powder (meeting the claimed water-insoluble support material T) with 18.3 wt.% elemental silver 0.2 wt.% elemental ruthenium (see Exemplary embodiment 1 in [0062]-[0063].
However, Gock is silent regarding bringing the above material in contact with at least one C1-C4 alkoxide of the claimed list of elements in the presence of a quantity of water that is at least sufficient for complete hydrolysis of the at least one C1-C4 alkoxide.
Atarashi teaches a powder having metal oxide films on its surface is obtained in which the films have a heightened refractive index and which hence shows a high reflectance and has a bright color (Abstract).
Atarashi further teaches making an elemental silver film (col. 19, lines 7-27), then forming a titanium dioxide film on top by using titanium ethoxide (a C2 alkoxide of titanium) and water (col. 19, lines 28-50).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Gock by using the technique of Atarashi of forming a titanium dioxide layer on top of the elemental silver, as doing so allows for having an even brighter and more reflective surface than elemental silver/elemental metal alone (Abstract).
Regarding claim 10, Gock and Atarashi teach the method of claim 9 above, and although Atarashi does not explicitly teach using a titanium tetraalkoxide teaches using species such as titanium isopropoxide (col. 13, lines 48-50), which is a titanium tetraalkoxide.
Regarding claim 11, Gock and Atarashi teach the method of claim 9 above, and as discussed above and in (col. 19, lines 28-50) of Atarashi, Atarashi teaches using water in liquid form.
Regarding claim 12, Gock and Atarashi teach the method of claim 9 above, and Atarashi further teaches performing washing and drying (col. 19, lines 28-50).
Regarding claim 13, Gock and Atarashi teach the method of claim 9 above, and teaches mixing titanium ethoxide with a mixture of water and ethanol (water-dilutable organic solvent) (col. 19, lines 28-50).
Regarding claim 14, Gock teaches making a composition with a cellulose powder (meeting the claimed water-insoluble support material T) with 18.3 wt.% elemental silver 0.2 wt.% elemental ruthenium (see Exemplary embodiment 1 in [0062]-[0063].
However, Gock is silent regarding bringing the above material in contact with at least one C1-C4 alkoxide of the claimed list of elements in the presence of a quantity of water that is at least sufficient for complete hydrolysis of the at least one C1-C4 alkoxide.
Atarashi teaches a powder having metal oxide films on its surface is obtained in which the films have a heightened refractive index and which hence shows a high reflectance and has a bright color (Abstract).
Atarashi further teaches making an elemental silver film (col. 19, lines 7-27), then forming a titanium dioxide film on top by using titanium ethoxide (a C2 alkoxide of titanium) and water (col. 19, lines 28-50).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Gock by using the technique of Atarashi of forming a titanium dioxide layer on top of the elemental silver, as doing so allows for having an even brighter and more reflective surface than elemental silver/elemental metal alone (Abstract).
With regard to the claimed “…as an additive for the antimicrobial treatment of materials or objects to be rendered antimicrobial”, Atarashi teaches that the material may be used as a magnetic coloring material in magnetic color toners, magnetic color inks, etc. (col. 1, lines 6-14). However, because the claim only requires that the use of the claimed material is as a treatment of materials, the limitation is understood under BRI as meeting the claimed “treatment” being the material of Atarashi is being “applied”. Furthermore, because being “antimicrobial” is a contingent limitation in that the material must only be capable of killing microbes (or preventing growth) after being treated (see MPEP 2111.04 II.), rather than the claim explicitly requiring that microbes are killed/prevented from growing, the material of Gock in view of Atarashi meets the claim.
Regarding claim 15, Gock in view of Atarashi teach the use of claim 14 above, and it is prima facie expected that the resulting combination meets the claimed L* value range, because the materials are the same as that in the instant invention, and because the resultant color of Atarashi’s material is a yellow-ish white color with a peak reflectance of 88%, which is prima facie expected to result in a color having a brightness L* in the range of 50 to 90, or close to the range so as to render the range obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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