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 .
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's election with traverse of Group I, and the species of polyethylene terephthalate in claim 20, reading on claims 1-20, in the response dated 6/11/2026, is acknowledged. The traversal is on following grounds, citing page 2 of applicant’s response:
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This is not found persuasive because, as set forth in the Requirement for Restriction dated 6/9/2026, the article recited in claim 1 requires a different search strategy from the method of making recited in claim 22. For example, the article search does not require a search of methods for drying and curing catalytic ink, or methods of electroless plating recited in claim 22.
The Examiner also disagrees with the applicant’s argument regarding the species election, namely that “It is believed that if patentable subject matter is found with this chosen substrate, it is requested that all remaining substrate materials called for in Claims 20 and 21 be rejoined to the elected substrate.” See page 3 of the Response. As determined by the Examiner’s search in PE2E (see attached document), each of the substrates recited in claims 20 and 21 require individual searches of the patent literature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 21 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (claim 22) or species (claim 21), there being no allowable generic or linking claim.
Claim Status
Claims 1-22 are pending.
Claims 21-22 are withdrawn.
Claims 1-20 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejections
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 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brust (US 9,676,950), in view of Suzuki (US 2022/0380636 A1).
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 silver or 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 sheet or roll typically has two opposing planar surfaces, namely 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 specifically 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, 7, and 20.
It is further noted that Brust teaches an adhesive layer on the substrate (col 40: 1-3).
For claim 3, Brust teaches that, in aquatic or marine applications, 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 (col 42: 7- 16). Brust teaches Sharklet™ patterns may be used; such patterns are characterized as patterns wherein the plated copper metal particles are isolated or spaced apart and would obviously have high sheet resistivity.
It is further noted that since Brust teaches a composition comprising polyethylene terephthalate as the substrate and a discontinuous pattern of applied copper as claimed herein, the properties of this product 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 5, the catalytic ink of the example contains organic polymers and silver nanoparticle complex (col 55: 48 - 61; Table 1; col 40: 41-49; col 58: 22-37).
For claim 6, Brust teaches that the transparent substrates can have an integrated transmittance of at least 80% or 90% or even higher (col 9: 21-29).
For claims 9-19, 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 (col 6: 29-36), the antimicrobial profile as described in instant claims 9-19 must also be present in the disclosed article comprising silver nanoparticles and plated copper.
Brust does not teach the limitation of claims 1 and 2 reciting a peelable polymeric film on at least a portion of the second opposing surface of the substrate.
Suzuki teaches the missing element of Brust.
Suzuki teaches a laminate sheet with release film laminated to an adhesive face that is highly thermoformable and suitable for use in an application where after pre-thermoformed, the release film is removed, and the adhesive face is applied to an adherend (Abstract). The sheet is especially useful for non-flat adherends (pg 1, [0005]). It is noted that Brust teaches the article as being useful for coating medical devices (Brust, col 47: 20-24), many of which are not flat. Suzuki teaches the release or peelable film can be a polyester-based resin (pg 3, [0031]).
The skilled artisan would have expected success in disposing a peelable sheet or releasable liner on at least a portion of the second opposing face of the substrate of Brust since Brust teaches that one face of the article can comprise a pressure sensitive adhesive layer and Suzuki teaches an article that protects or covers the adhesive layer prior to adhering the antimicrobial article to a surface in need of antimicrobial properties such as a medical device.
2) Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Brust (cited above), in view of Suzuki (cited above) and Ishikawa (JP 2023-048914 A; citations herein are from the English translation provided by EPO).
The teachings of Brust and Suzuki are discussed above.
The combination of Brust and Suzuki 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 the combination of Brust and Suzuki.
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.
Nonstatutory Double Patenting Rejections
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
1) Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/743,178 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an antimicrobial article having antimicrobial properties that comprises: a non-electrically conductive substrate comprising first and second opposing surfaces; a catalytic ink disposed as a pattern on the first opposing surface and a pattern of electrolessly plated copper metal disposed in registration with the catalytic ink pattern. See present claim 1; reference claim 1.
Regarding the peelable polymeric film of claims 1 and 2, the limitations are also disclosed in the reference claims 19 and 20.
Regarding claim 3, the limitations of the sheet resistivity are disclosed in the reference claim 2.
Regarding claims 4-5, the limitations of the catalytic ink pattern are also disclosed in the reference claims 5-6.
Regarding claim 6, the reference claim 5 discloses that the disclosed article has a light transmittance of at least 60 %, which is the presently claimed range of at least 60 %.
For claim 7, the reference claim 6 recites the substrate is flexible and made from organic polymers.
For claim 8, the reference claim 7 recites the substrate is flexible polymer in the form of a roll and has one or more patterns of catalytic ink patterns.
Regarding claims 9-19, the claimed antimicrobial properties of the article are disclosed in the reference claims 8-18.
Regarding claim 20, the limitations are disclosed in the reference claim 21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2) Claims 1-2 and 4-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/743,189 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an antimicrobial article having antimicrobial properties that comprises: a non-electrically conductive substrate comprising first and second opposing surfaces; a catalytic ink disposed as a pattern on the first opposing surface and a pattern of electrolessly plated copper metal disposed in registration with the catalytic ink pattern. See present claim 1; reference claim 1.
Regarding the peelable polymeric film of claims 1 and 2, the limitations are also disclosed in the reference claims 5-7.
Regarding claims 4-5, the limitations of the catalytic ink pattern are also disclosed in the reference claims 1 and 3.
Regarding claim 6, the reference claim 10 recites that the disclosed article has a light transmittance of at least 60 %, which is the presently claimed range of at least 60 %.
For claim 7, the reference claims 11 and 12 disclose the substrate is flexible and made from organic polymers.
For claim 8, the reference claim 12 recites the substrate is flexible polymer in the form of a roll and has one or more patterns of catalytic ink patterns.
Regarding claims 9-19, the claimed antimicrobial properties of the article are disclosed in the reference claims 13-20.
Regarding claim 20, the limitations are disclosed in the reference claim 21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
