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 .
Claim Objections
Applicant is advised that should claims 3-5 be found allowable, claims 8-10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 reasonable 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
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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 can be 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
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Conclusion
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 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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