DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Election/Restrictions
Applicant has elected, with traverse, the following species in the response dated 7/14/2026:
Gram positive microorganisms;
Staphylococcus aureus as the specific gram-positive microorganism;
Polyethylene terephthalate as the substrate.
As determined by the Examiner, applicant’s elections read on claims 1-9 and 12-20.
The traversal is on the ground(s) that it is known that “copper metal is toxic to numerous microorganisms, including many gram-negative bacteria, gram-positive bacteria, and viruses, a fact that is well known, and the literature teaches that such toxicity is very similar for those many microorganisms, irrespective of the specific mechanism for killing a specific microorganism.” The applicant has provided prior art showing copper species are toxic to, for example, Staphylococcus aureus and Pseudomonas aeruginosa, “representative gram-positive and gram-negative bacterium, respectively, for purposes of practicing the presently claimed invention, and these two species are representative of gram-negative and gram-positive species that are "killed" by copper metal.”
This is not found persuasive because the claims are drawn to all gram-positive bacteria, gram-negative bacteria, enveloped viruses, and non-enveloped viruses, the total number of which is unknown and most of which are uncharacterized. It is further noted that viruses and bacteria are unrelated biological species; viruses are non-living infectious agents that lack cellular machinery and require a host cell to replicate and bacteria are single-celled living organisms that reproduce on their own.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-10 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Status
Claims 1-20 are pending.
Claims 9-10 and 19-20 are withdrawn.
Claims 1-8 and 11-18 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Indefiniteness Rejection
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.
Claims 8, 12, 14, and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 8 recites the “antimicrobial article has an efficacy of killing at least 90% of microorganisms comprising gram-negative bacteria and gram-positive bacteria within 120 minutes of exposure….” The number of gram-positive and gram-negative bacteria species are each considered to likely be in the millions, with the vast majority of each unknown and unnamed. As such, the metes and bounds of the claim cannot be determined.
Claims 12, 14, and 16 recite the trademark/trade name “MRSA (ATCC® 33592). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe ATCC® 33592 and, accordingly, the identification/description is indefinite.
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1. Claims 1, 3-6, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Brust (US 9,676,950).
Brust teaches an article comprising an ink jetted and UV-curable image comprising metal nanoparticles or reducible metal ions (Abstract). Brust teaches that when the metal is copper, the articles can be used for antimicrobial purposes in aquatic or marine environments, in clothing or medical devices, or touch screen or other display devices in numerous industrial, consumer and commercial products that can be manufactured in high-volume (col 47: 20-24). The reference teaches that the article has two opposing planar surfaces, a first supporting surface and an opposing second supporting surface; this teaching also reads on claim 8. The ink/UV-curable composition can be ink jetted onto one or both supporting surfaces of the substrate (col 9: 43-63; col 6: 37-41 ). Brust teaches electrolessly plated copper in desired deposition rate and plating metal thickness (col 46: 12-28). Brust teaches a polyethylene terephthalate (PET or PETE) film article, a non-electrically conductive substrate comprising first and second opposing surfaces comprising an 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 (col 56: 20 to col 57: 13), reading on claims 1 and 18.
For claim 3, Brust teaches Sharklet™ patterns may be used (col 42: 7-16); such patterns are characterized as patterns wherein the plated copper metal particles are isolated or spaced apart and would obviously have high sheet resistivity, given that the substrate is the non-conductive polymer polyethylene terephthalate. Since the method of Brust comprising an antimicrobial article comprising copper and a catalytic ink in a discontinuous pattern such as a Sharklet®, on a non-conducting substrate sch as polyethylene terephthalate, the properties of the product of the method must necessarily be the same as those claimed. As set forth in MPEP 2112.01 (I), "Products of identical chemical composition can not have mutually exclusive properties."
For claim 4, Brust teaches that the transparent substrates can have a transmittance of at least 80% or 90% or even higher (col 40: 13-16).
For claims 5 and 6, Brust teaches the substrate may be a flexible polymeric film in the form of a roll (col 40: 17-28).
The examiner acknowledges that some picking and choosing was used to arrive at the instantly claimed methods in view of Brust. However, the claimed combination of components, including the non-conductive substrate, catalytic ink, electrolessly plated copper metal in a discontinuous pattern and the claimed resistivity is taught as known and used for a method for mitigating microbial activity. It would have therefore been prima facie obvious to a person having ordinary skill in the art to assemble the components of the claimed method for the claimed purpose with a reasonable expectation of success that the method would have the claimed effectiveness in killing microbes, as taught by Brust.
2. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Brust (cited above), in view of Ishikawa (JP 2023-048914 A; citations herein are from the English translation provided by EPO).
The teachings of Brust are discussed above.
Brust does not teach the feature of halftone dots comprising the unconnected feature of the catalytic ink pattern and the copper metal features in registration therewith.
Ishikawa teaches the missing element of Brust.
Ishikawa teaches an antibacterial and anti-fungal sheet that comprises a base material and an antibacterial anti-fungal layer laminated on a surface of the base material (Abstract). Ishikawa teaches the sheet substrate may be polyester film (pg 7: 7-10). Ishikawa teaches the antibacterial/antifungal layer can be formed in a convex halftone dot pattern. As a result, the antibacterial and antifungal layer can be uniformly formed, and the thickness and specific surface area can be increased, so that the antibacterial and antifungal layer having excellent wear resistance and durability can be formed (pg 5: 29 to pg 6: 2).
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 having excellent wear resistance and durability can be uniformly formed and the thickness and specific surface area can be increased. Since Brust suggests that the catalytic ink composition can be printed in any pattern (col 42: 2-16), the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing wear-resistant and durable copper metal and the catalytic ink in uniform halftone dots pattern with increased thickness and specific surface area, as taught by Ishikawa.
3. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Brust (cited above), in view of Robrect (“Antimicrobial Solutions for Touchscreens in Times of Pandemic,” informationdisplay.org, 2021 March/April, 28-31; downloaded 8/26/2026 from https://pmc.ncbi.nlm.nih.gov/articles/PMC8251300/pdf/MSID-37-28.pdf).
The teachings of Brust are discussed above.
Brust does not teach the feature of the object of the method of claim 1 comprising a touch screen.
Robrect teaches the missing element of Brust.
Robrect teaches coatings containing copper metal reduce the risk of infection by surface contact with a touchscreen. Robrect teaches publicly accessible touch screens cannot be effectively cleaned since the surfaces are used by many people only minutes apart. Therefore, the surface must be inherently antimicrobial/virucidal so that the antimicrobial elements on the surface continuously attack any viral loading applied to the surface (pg 29, Antimicrobial coatings reduce risk).
Robrecht teaches that antimicrobial surfaces can be prepared using coatings containing copper in the coatings. Copper is well-known as being germicidal and has been used for that purpose since antiquity. Robrect further teaches the copper is not consumed in the deactivation of the microbes, which allows the coatings to function indefinitely (pg 29, Antimicrobial coatings reduce risk).
The skilled artisan would have expected success in utilizing the method of Robrect comprising utilizing a copper coating on the surface of a touch screen to modify the method of Brust since Robrecht teaches copper provides an antimicrobial quality to the surface of a touchscreen and the copper is not consumed in the deactivation of the microbes, allowing the coatings to function as a sterilant indefinitely, reducing or eliminating the possibility of transfer of hazardous microbes .
4. Claims 8 and 11-17 rejected under 35 U.S.C. 103 as being unpatentable over Brust (cited above), in view of Vincent (“Contact killing and antimicrobial properties of copper,” Journal of Applied Microbiology 124, 1032-1046).
The teachings of Brust are discussed above.
Brust does not teach the copper coating as having an efficacy of killing at least 90% of Staphylococcus aureus.
Vincent teaches the missing element of Brust.
Vincent teaches the EPA in 2008 officially recognized copper and its alloys as the first effective metallic antimicrobial agent. Vincent teaches the EPA recognized copper’s ability to kill 99.9% of pathogenic bacteria within 2 hours; this antibacterial property includes 'contact killing', allowing the metal to rapidly eliminate pathogenic bacteria on a surface. Vincent teaches this killing activity takes place at a rate of at least 7-8 logs per hour and no micro-organism survives after prolonged incubation on copper surfaces (pg 1032, Medical use of copper). Vincent teaches the contact killing phenomenon of copper also applies to methicillin-resistant Staphylococcus aureus (MRSA) and methicillin-sensitive S. aureus strains (pg 1036, Oxidative stress and DNA degradation).
The person of ordinary skill would have had a reasonable expectation of success in selecting copper in an antimicrobial coating capable of killing at least 90% of microorganisms such Staphylococcus aureus within 120 minutes of exposure in the method of Brust since Vincent teaches the EPA has determined that copper has the ability to kill 99.9% of pathogenic bacteria such as Staphylococcus aureus within 2 hours through the property of “contact killing,” wherein the metal rapidly eliminates pathogenic bacteria on a surface at a rate of at least 7-8 logs per hour.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
