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 of Group II, corresponding to claims 11-19 in the reply filed on July 31st, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 1-10 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claims 11-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Divisi (U.S. Publication No. 2018/0353632).
At the outset, it is first noted that the claims do not positively recite the hydrogen peroxide or silver particles, but merely an apparatus configured to store a composition comprising hydrogen peroxide and silver particles. Furthermore, the target type surface is not positively recited as well. As such, the claims will be examined accordingly.
Concerning claims 11-15 and 17, Divisi discloses an apparatus (Figures 1-4) comprising:
An applicator device configured to store a composition comprising 3% hydrogen peroxide (H2O2) and 10 ppm of ionic silver (Ag) particles (paragraph 23);
A processor (100); and
A memory configured to store code executable by the processor to automatedly apply, via the applicator device, the composition to a hard surface (paragraphs 66-105, 111-115 and 154-160).
Concerning claim 16, Divisi continues to disclose that the applicator device includes an automated mister (paragraphs 30-36); and
Automatedly applying the composition comprises automatedly applying the composition via the automated mister (paragraphs 36-62, 67 and paragraphs 111-115).
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.
Claims 18 & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Divisi (U.S. Publication No. 2018/0353632).
Concerning claims 18 & 19, Divisi is relied upon as set forth above. While Divisi discloses automatedly applying the composition to the hard surface at a first time (paragraphs 66-105, 111-115 and 154-160), the reference does not appear to disclose automatedly applying the composition at one or more second times that are not less than 21 days after previous application of the composition to the hard surface. Nonetheless, the repetition of automatedly applying the composition to the hard surface at a second time would have been well within the purview of one of ordinary skill, and repeating the application step not less than 21 days after previous application is considered a result effective variable that would be optimized by one of ordinary skill. As such, the courts have held that a mere change in proportion and/or repetition of a process, even if it leads to better results, holds no patentable significance:
MPEP 2144.05.II.A: Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."
especially if it can be shown that the change in proportions can be done by one of ordinary skill in the art through routine optimization of a known result-effective variable (MPEP 2144.05.II.B: the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.). As such, it would have been well within the purview of one of ordinary skill in the art to apply the composition a second time to the hard surface after 21 days in order to again decontaminate said hard surface with said composition from contaminants that may have contaminated the surface during that 21 day period; as such would have been well within the ambit of one of ordinary skill.
As such, automatically applying the composition to the surface a second time after 21 days does not create a patentable significance over the prior art of Divisi. Therefore, claims 18 & 19 are not patentable over Divisi as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN C JOYNER whose telephone number is (571)272-2709. The examiner can normally be reached Monday-Friday 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL MARCHESCHI can be reached at (571) 272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN JOYNER/ Primary Examiner, Art Unit 1799
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