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 .
Response to Amendment
In light of the amendment filed 31 August 2026, the objections to the claims have been withdrawn and the prior art rejection and rejection under §112(b) have been maintained.
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 1-12 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.
The term “enhanced pathogen inactivation” in claims 1 and 8 is a relative term which renders the claim indefinite. The term “enhanced pathogen inactivation” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what “alternating-current driving frequency” is selected to produce the “enhanced pathogen inactivation.” Therefore, if the limitation were allowed to issue, one of ordinary skill would not be reasonably apprised of the metes and bounds of the claim so as to understand how to avoid infringement.
Claims 2-7 and 9-12 are rejected as being dependent upon the above rejected claims.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 7-8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clack et al. (US 2020/0016286; hereinafter “Clack”).
In regard to claims 1-3, 7-8 and 12, Clack discloses a frequency-dependent non-thermal plasma system for inactivation of airborne pathogens (see Figure 19 below and [0081]), the system comprising: a tubular structure (see Figure 19 below; recited in claims 2 and 8) including a borosilicate bead packed bed (see [0081]; recited in claims 3 and 8) surrounded by a high voltage electrode (Dielectric Barrier Discharge (DBD) reactor 2 of Figure 19; recited in claims 3 and 8) that is connected to a high voltage power supply (high voltage amplifier 5 of Figure 19; recited in claims 3 and 8) capable of being driven by an alternating-current driving frequency (using digital function generator 6 of Figure 19), the alternating-current driving frequency energizing a non-thermal plasma within the borosilicate bead packed bed, the alternating-current driving frequency capable of being selected such that enhanced pathogen inactivation can be achieved (“are comparable to those measured in previous studies of airborne pathogen inactivation;” [0081]); a fan (in-line duct fan 1 of Figure 19; recited in claims 2 and 8) for drawing air through the tubular structure; and an ozone filter (in-line ozone filter 7 of Figure 19; recited in claims 7 and 12) disposed in the tubular structure.. See Figure 19 and [0081].
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It should be further noted that the limitation of “the alternating-current driving frequency capable of being selected such that enhanced pathogen inactivation is achieved” merely regards a manner of operating the apparatus and the intended use of the apparatus. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Clack as applied above.
In regard to claims 4 and 9, Clack clearly depicts a pair of perforated plates on opposite sides of the borosilicate packed bed in Figure 19.
Clack is silent in regard to wherein the pair of perforated plates are comprised of brass. It is noted that the instant specification does not disclose that the use of brass creates any new or unexpected results, and explicitly states that “although brass is disclosed as the material for the electrode ring 34 and the perforated grounding plates, other electrically conducting materials can be used.” See [0030] of the instant specification.
Therefore, it would have been within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to have selected brass, which is well-known as an electrically conductive material, for use as the pair of perforated plates in the apparatus of Clank for the purpose of maintaining the packed bed within the tubular structure and without creating any new or unexpected results. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
In regard to claims 5 and 10, Clack clearly depicts in Figure 19 wherein the pair of perforated plates are electrically grounded.
In regard to claims 6 and 11, Clack clearly depicts in Figure 19 a pair of flow plugs each disposed at a center of a respective one of the pair of perforated plates.
Response to Arguments
Applicant's arguments filed 31 August 2026 have been fully considered but they are not persuasive.
Applicant argues that the term “enhanced pathogen inactivation” is a term that “in light of the present discovery, one having skill in the art would understand that enhanced pathogen inactivation is achieved through testing at different frequencies to determine which frequency provides enhanced pathogen inactivation.” The Examiner has fully considered the argument but has not found it to be persuasive. The Examiner notes that the specification does not define the term and Applicant used, in the above explanation, the term “enhanced pathogen inactivation” to define itself. This definition does not clarify what “enhanced pathogen inactivation” means. Therefore, if the limitation were allowed to issue, one of ordinary skill would not be reasonably apprised of the metes and bounds of the claim so as to understand how to avoid infringement.
Applicant argues that that the “[p]revious teachings as disclosed in Clack ‘286 presented the degree of airborne pathogen inactivation as a function of non-thermal plasma power (watts) delivered to the air flow, normalized by the air volumetric flow rate” while “the present teachings disclose and demonstrate the discovery that the degree of airborne virus inactivation, along with non-thermal plasma power, are dependent on the AC driving frequency used to energize the non-thermal plasma.” The Examiner has fully considered the argument but has not found it to be persuasive. As stated in the previous office action, the limitation of “the alternating-current driving frequency capable of being selected such that enhanced pathogen inactivation is achieved” merely regards a manner of operating the apparatus and the intended use of the apparatus. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). Therefore, the limitation does not patentably distinguish the recited system from the prior art. It is additionally noted that the instant disclosure does not include any data or results showing how the alternating-current driving frequency is selected such that enhanced pathogen inactivation is achieved. Thus, Applicant has not “demonstrated” that “the discovery that the degree of airborne virus inactivation, along with non-thermal plasma power, are dependent on the AC driving frequency used to energize the non-thermal plasma” as argued.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 7:30 AM - 3:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
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