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 .
Applicant’s response filed on July 8, 2026, has been received and fully considered. The amendment to the specification has been accepted.
All previous prior art rejections as indicated in the Office action dated May 6, 2026, have been withdrawn and modified to address amended claims.
Terminal Disclaimer
The terminal disclaimers filed on July 8, 2026, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Application No. 18/743240, 18/743204 and 18/743189 have been reviewed and are accepted. The terminal disclaimers have been recorded.
Accordingly, the previous obviousness-type double patenting rejections made over the claims of the above applications, which were included in the Office action dated May 6, 2026, have been withdrawn.
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 1, 4-18, 21, 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Brust et al. (US 9676950 B2, published on June 13, 2017) (“Brust” hereunder) in view of Ishikawa et al. (JP 2023048914 A, April 7, 2023) (“Ishikawa” hereunder).
Brust discloses an article comprising an ink jetted and UV-curable image comprising metal nanoparticles or reducible metal ions. See abstract. The reference teaches that when the metal is silver or copper, the articles can be used for antimicrobial purposes in aquatic or marine environments, in clothing or medical devices. See col. 47, lines 20-24. The reference teaches that the sheet or roll typically has two opposing planar surfaces, namely first supporting surface and an opposing second supporting surface. The ink/UV-curable composition can be ink jetted onto one or both supporting surfaces of the substrate. See col. 9, lines 43 – 63.
Brust particularly discloses electrolessly plating copper in desired deposition rate and plating metal thickness. See col. 46, lines 12 – 28. More specifically, Brust illustrates a polyethylene terephthalate (PET) film article, a non-electrically conductive substrate comprising first and second opposing surfaces, comprising ink jet images of short-circuit patterns, the ink composition comprising silver nanoparticle-polymer complexes, which catalyzes electroless copper plating, and fine copper plated in registration with the catalytic ink pattern. See col. 56, line 20-col. 57, line 13. The reference teaches Sharklet patterns may be used, which are disconnected patterns and would obviously have high sheet resistivity. Brust teaches that, in aquatic or marine application, specifically designed patterns are used for optimal non-toxic bioadhesion control so that marine organisms are less likely to foul or adhere to the resulting article. See col. 42, lines 7- 16.
Although Brust generally teaches that the jet ink can be printed in any designs of patterns, which include disconnected patterns having an inherently high sheet resistivity, the reference fails to specifically mention a halftone dot pattern.
Ishikawa teaches an antibacterial and antifungal sheet comprising an antibacterial and antifungal layer laminated by a flexographic printing method in a convex halftone dot pattern. See translation, p. 5. The reference teaches that such pattern enables uniform formation of the antimicrobial layer and an increase of the thickness and specific surface area, which in turn provides excellent wear resistance and durability. See Id.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Brust and apply the jet ink in patterns of halftone dots as motivated by Ishikawa because 1) both references are directed to antimicrobial sheets comprising a germicidal components deposited thereon and 2) Ishikawa teaches that by using halftone dot patterns an antimicrobial layer can be uniformly formed. Since Brust suggests that the catalytic ink composition can be printed in any patterns, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing the copper metal and the catalytic ink in uniform halftone dots pattern.
Regarding claim 4, the catalytic ink of the example contains organic polymers (terpolymer) and silver nanoparticle complex. See col. 55, lines 48 – 61; Table 1, Inventive 10 & 11.
Regarding claims 8-18, it is well settled in patent law that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01. In the present case, as copper and silver have inherent antimicrobial activity, see Brust, col. 6, lines 29-36, the antimicrobial profile as described in the present claims 8-18 must be also inherent in the disclosed article comprising silver nanoparticles and plated copper.
Regarding claims 7 and 22, Brust teaches that the intended substrates particularly include a wide variety of flexible materials including cellulosic papers, polymeric films made of poly(ethylene terephthalate), laminates, sheets, continuous flexible webs or films that can be unrolled from a stock roll, which is rolled up for shipment or later use. See col. 39, lines 48 – col. 41, line 3.
Regarding claim 24, making changes in size or shape is a matter of choice and prima facie obvious. See MPEP 2112, IV, A and B. Particularly given the specific teachings of Brust that the jet ink can be printed in any designs, any shape, size or proportion of the ink print would have been prima facie obvious.
Claims 5 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Brust and Ishikawa as applied to claims 1, 4-18, 21, 22 and 24 as above, and further in view of Ono (JP H09164757 A, published on June 24, 1997).
Brust teaches that the substrates composed of flexible glass or can have an integrated transmittance of at least 80% or 90% or even higher to provide articles having transparency; the reference fails to mention the specific coverage area of the catalytic ink/electrolessly plated copper metal patterns of halftone dot in the entire surface area of the substrate.
Ono teaches an antibacterial processed paper having the antibacterial printing layer. The reference teaches that the halftone dot area ratio printed on the entire surface is 10-30%. See translation, p. 3, 4th-5th full paragraph. The reference teaches that if the dot area ratio of more than 30%, the surface of the paper for writing will be reduced as the print will repel water-based ink from a pen, whereas the dot coverage below 10% ratio will not produce enough antibacterial effect.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Brust and balance the surface ratio of the jet ink printed area to the entire surface of the substrate as motivated Ono. The skilled artisan would have been motivated to do so, as the latter teaches balancing the halftone ratio to preserve the treated substrate’s intended utility (e.g., writing suitability) without sacrificing antibacterial efficacy. If the substrate in Brust (e.g., glass or film) requires high transparency, the skilled artisan would have had a reasonable expectation of success in combining the teachings of the references and finding an optimal halftone dot area of the catalytic ink/plated copper ratio that preserves both substrate transparency and antibacterial strength.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Brust as applied to claims 1, 2, 4-18, 21 and 22 as above, and further in view of Olson (US 20220025218 A1, published on January 27, 2022, cited in IDS) (“Olson” hereunder).
Brust teaches that PET film can also comprise, on at least one supporting side, a polymeric prime layer, also known as an adhesive or binder layer that can be added prior to or after film stretch. Brust fails to specifically disclose a pressure sensitive adhesive layer and a peelable liner.
Olson teaches an antimicrobial metalized thin film provided in a roll or sheet form See [0017]. The reference teaches that a pressure sensitive adhesive or low temperature thermoplastic adhesive is applied to the opposite side of the film with a peel off release liner which is removed before application on a surface. See [0017-0020]. The rolls of the metal film can include the attachment layer and the release liner as part of the attachment layer. See [0039].
Given the teachings and suggestions of Brust to add an adhesive layer to the supporting side of the copper plated substrate, one of ordinary skill in the art in the art before the effective filing date of the present application would have been obviously motivated to look to prior art such as Olson for specific adhesives for application on a film. Since the latter teaches that pressure sensitive adhesive is applied on the opposite side of an antimicrobial film for application on a communal surface, the skilled artisan would have been obviously motivated to combine the teachings and use the same type of adhesive for application. Since Olson also teaches that a peel off liner is provided as a part of the attachment layer, the skilled artisan would have been also motivated to combine the teachings of the references and protect the adhesive layer with a releasable liner.
Response to Arguments
Applicant's arguments filed on July 8, 2026, have been fully considered but they are unpersuasive.
Applicant refers to Comparative Example 2 in the present application and asserts that halftone dots of a catalytic ink comprising silver nanoparticles lack the antimicrobial efficacy of registered copper. However, Brust plainly teaches that any patterns of the jet ink can be printed. It is well settled in patent law that making changes in shape is a matter of choice. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Applicant argues that Ishikawa employs a paraffin wax and coating liquid containing an antibacterial or antifungal agent and does not apply in this case. However, the Ishikawa teaches that halftone dot patterns provide uniform application of the antimicrobial layer on the surface, and one of ordinary skill in the art would have found motivation to combine the teachings of the references to produce a uniform layer of the catalytic ink/plated copper on a substrate.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/GINA C JUSTICE/ Primary Examiner, Art Unit 1617
