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 .
DETAILED ACTION
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9 and 11, drawn to an article.
Group II, claim(s) 10, drawn to a method for producing an article.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of an article comprising at least one nonconductive substrate with at least one surface portion coated with particles of titanium and one or more further metals, the particles are arranged in clusters and are electrically conductively connected together within such clusters, and the clusters are arranged on the substrate at a distance from each other as islands and electrically insulated from each other, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 2016/0050916 (hereinafter referred as US’916). Refer claim rejections below.
During a telephone conversation with Randolph Huis on 06/16/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-9 and 11. Affirmation of this election must be made by applicant in replying to this Office action. Claim 10 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-9 and 11 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 the limitation “the substrate” in line 7. There is insufficient antecedent basis for this limitation in the claim. Preceding limitations recite “at least one electrically nonconductive substrate” which indicates that there can be more than one substrates.
Claim 5 recites the limitation “the substrate” in line 2. There is insufficient antecedent basis for this limitation in the claim. Preceding limitation in claim 1 recite “at least one electrically nonconductive substrate” which indicates that there can be more than one substrates.
Regarding claim 6, the limitation “the substrate is coated with titanium, and the further metals of copper and gold, and a ratio of a number of particles of copper:silver is in a range from 1:2 to 1:4” renders the claim indefinite because preceding limitation recite copper and gold as metals, not copper and silver.
Regarding claim 11, the limitation “a non-textile sheet structure” renders the claim indefinite because it is unclear what are metes and bounds of the term “non-textile sheet structure”.
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)(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.
Claim(s) 1, 3, 7 and 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2016/0050916 (hereinafter referred as US’916).
Regarding claim 1, US’916 teaches an article with an antibacterial finish, the article comprising:
at least one electrically nonconductive substrate (refer [0039]) with at least one surface portion coated with particles of titanium (Refer [0012]) and one or more further metals (refer [0014]),
the particles are arranged in various combinations in clusters and are electrically conductively connected together within such clusters (refer abstract, [0006], [0009], [0014], [0015]), and
the clusters are arranged on the substrate at a distance from each other as islands and electrically insulated from each other (refer fig. 1, fig. 2, abstract, [0006], [0009], [0014], [0015]).
Regarding claim 3, US’916 teaches limitations of claim 1 as set forth above. US’916 teaches that further metal or metals is/are selected from a group comprising silver, copper, gold, iron and nickel (Refer [0012]).
Regarding claim 7, US’916 teaches limitations of claim 1 as set forth above. US’916 teaches that the substrate is a textile sheet structure with porous fiber structure (refer [0039], [0050]).
Regarding claim 8, US’916 teaches limitations of claim 1 as set forth above. US’916 teaches that the article is a wound dressing (refer [0039]), and at least one ply of the substrate is arranged on a surface of the article (refer fig. 1, fig. 2).
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.
Claim(s) 2, 4, 5, 6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0050916 (hereinafter referred as US’916).
Regarding claim 2, US’916 teaches limitations of claim 1 as set forth above. US’916 teaches that the nanoclusters are between 0.5 nm and 10 micrometers in size (refer [0009]). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, US’916 teaches limitations of claim 3 as set forth above. US’916 teaches that the nanoclusters are between 0.5 nm and 10 micrometers in size (refer [0009]). US’916 also teaches that the nature, chemistry, kinetic energy, mass, flux density and angle of incidence of the energetic particle bombardment could be adjustable to produce different degrees of nanocluster modification (Refer [0031]). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 5 and 6, US’916 teaches limitations of claim 1 as set forth above. US’916 teaches that particles may be formed from any one or more of the alloys from the group comprising: Au—Cu; Au—Ag; Au—Zn; Au—Ti; Au—Si; Ag—Zn; Ag—Ti; Ag—Si; and Ag—Cu (Refer [0012]), first and second pluralities of discrete, spaced-apart particles are formed from species having different optical, light absorption, thermal, chemical and/or electrical properties. This can be accomplished by the particles being any one or more of the group comprising: formed from different materials; having different size distributions; having different shapes; being embedded by different amounts in the substrate (refer [0014]), and the nature, chemistry, kinetic energy, mass, flux density and angle of incidence of the energetic particle bombardment could be adjustable to produce different degrees of nanocluster modification (Refer [0031]). Selecting the metals and its amount/ratio of metal particles would have been obvious to one of ordinary skill in the art because US’916 discloses that the nature, chemistry, kinetic energy, mass, flux density and angle of incidence of the energetic particle bombardment could be adjustable to produce different degrees of nanocluster modification. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, US’916 teaches limitations of claim 1 as set forth above. US’916 teaches that the present invention relates to the manufacturing of the device in any number of steps or processes where the substrate is any shape form such as web, glass, metal, plastic, composite, textile, fabric, tape, wire, threads, fabrics, film or any combination (Refer [0050]). Selecting a type of substrate would have been an obvious matter of choice to one of ordinary skill in the art.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0050916 (hereinafter referred as US’916), US 2016/0326022 (hereinafter referred as “Dosoretz”).
Regarding claim 9, US’916 teaches limitations of claim 8 as set forth above. US’916 does not teach that the article is a filter cartridge having an inner filter element, outer filter element and housing.
Dosoretz teaches a filter element comprising membrane layer and a spacer layer having biocide attached thereto wherein biocide include silver or zinc nanoparticles (refer abstract, [0052]). Dosoretz discloses a spiral wound filtration module (refer [0041]) which are known to have a cylindrical shape and a housing surrounding the spiral wound membrane.
It would have been obvious to one of ordinary skill in the art to use the article of US’916 in a filter cartridge having an inner filter element, outer filter element and housing because Dosoretz establishes that it is known in the art to use articles having antibacterial properties in a cylindrical filter module.
Conclusion
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/PRANAV N PATEL/ Primary Examiner, Art Unit 1779
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