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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 20, 2026 has been entered.
Election/Restrictions
To summarize the current election, the applicant elected group II and the species where the method is a method of preventing biofouling at a biofouling susceptible locus or inactivating a pathogen, where the material is a CaMnO2.6±0.4 having a perovskite lattice.
Amendments to the claims have changed the wording of the method and converted it to a method of treating a surface. Since the active step of contacting the surface with a material of claim 1 is still recited, it is deemed to still embrace, at least a portion, of the elected method.
Since a material as instantly claimed mixed with a carbon or polymer binder and coated on a surface was encountered during the search for the elected coating species, these specie have been rejoined. Claims 2-7 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim.
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 8-11 and 24-31 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.
Claim 11 recites “depositing on the surface a coating comprising particles…wherein the particles are distributed on and across the coating surface”. This recitation is internally inconsistent. A coating composed of particles cannot simultaneously be required to have its particles on its own surface, as the claim language states. For the sake of application prior art, the “coating surface” will be interpreted as “the surface” referenced in the preamble statement, “[a} method of treating a surface”. Clarification is still required.
Claims that are rejected but not explicitly expounded upon are also indefinite because they depend from an indefinite claim an do not add clarity.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The method requires a surface that is to be treated and only objects have surfaces. Thus the surface of claim 11 already comprises an object. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 8, 11, and 26-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Du et al. (previously cited).
Du et al. disclose applying a perovskite CaMnO3-d particle coating via a suspension that comprises a binder to the surface of an electrode probe that is subsequently dried into a film, where 0 < d ≤ 0.5 (see page 9107 first column first full paragraph-second full paragraph and second column last partial paragraph, page 9111 first column last partial paragraph-second column, and figure 5). According to the instant nomenclature, x = 1, y = 1, 3 < z ≤ 2.5, and Ca: Mn = 1:1 which corresponds to a sub-stoichiometric combination of oxides with a mixture of valences in the crystal framework (see figure 1; instant claims 26-30). The elected compound coated probe is not described by Du et al. to have the collection of instantly recited conditional functionalities. However, according to MPEP 2112.01, “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” This treatment results from In re Spada, which states that, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus the compound provides the instantly claimed properties it contains when applied to the surface of Du et al. Therefore claims 8, 11, and 26-30 are anticipated by Du et al.
Claims 8 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kalendova et al. (previously cited).
Kalendova et al. disclose applying a perovskite CaMnO3 particle containing paint (binder) to steel panels (see abstract , page 198 second column second full paragraph, page 199 second column last partial paragraph-page 200 first column third full paragraph). The CaMnO3 is present in the paint at 10 wt% which is applied at a thickness of 95±10 mm (see page 199 second column last partial paragraph-page 200 first column third full paragraph and table VI). They teach submerging the painted steel panel in an aqueous treatment bath which is a biofouling susceptible locus (page 200 second column first full paragraph). The instant specification details antibacterial (antibiofouling) properties in a coating of 10 wt% sub-stoichiometric CaMnO3-d provided at a thickness of ~40 mm (see example 6). While not described as an anti-biofouling compound by Kalendova et al., an instantly claimed and elected compound is disclosed by Kalendova et al. According to MPEP 2112.01, “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” This treatment results from In re Spada, which states that, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus the compound provides the functional properties it contains when applied to the surface of Kalendova et al. Further, the claimed and elected compound is present at a greater quantity than that shown to be antibacterial (antibiofouling) for its sub-stoichiometric counterparts. Therefore claims 8 and 11 are anticipated by Kalendova et al.
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.
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 8-9, 11, and 24-31 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al.
Du et al. disclose applying perovskite CaMnO3-d with 0 < d ≤ 0.5 as a catalytic particle coating via a suspension that comprises a binder to the surface of an electrode probe that is subsequently dried into a film, where (see abstract and page 9107 first column first full paragraph-second full paragraph and second column last partial paragraph, page 9111 first column last partial paragraph-second column, and figure 5). According to the instant nomenclature, x = 1, y = 1, 3 < z ≤ 2.5, and Ca: Mn = 1:1 which corresponds to a sub-stoichiometric combination of oxides with a mixture of valences in the crystal framework (see figure 1; instant claims 26-30). The range for z overlaps with that instantly claimed, thereby rendering the claimed range obvious. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990)” (see MPEP 2144.05). The elected compound coated probe is not described by Du et al. to have the collection of instantly recited conditional functionalities. However, according to MPEP 2112.01, “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” This treatment results from In re Spada, which states that, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus the compound provides the instantly claimed properties it contains when applied to the surface of Du et al. In addition, Du et al. teach several sub-stoichiometric perovskite CaMnO3-d embodiments for catalysis (see page 9113 second column first full paragraph and table 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a coating with one or a mixture of the perovskite particle embodiments of Du et al. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (see MPEP 2144.06). Therefore claims 8, 10-11, and 26-31 are obvious by Du et al.
Claims 8, 10-11, and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al. as applied to claims 8, 10-11, 19, and 26-31, and further in view of Cristiani et al. (Catalysis Today 2005 105:492-498).
Du et al. teach or render obvious the limitations of instant claims 8, 10-11, and 26-31, where a binder is included in the perovskite particle coating. They teach perovskite CaMnO3-d particles as catalysts that are inspired by the Mn-Ca-oxygen systems found in nature (see page 9106 second column). They produce particles a few microns in size as well as particles about 50 nm in size (see page 9109 first column last partial paragraph-second column first partial paragraph and figure 2). Du et al. further detail preparing coatings of particles of the catalyst that disperse the particles in isopropanol and also include a binder (see page 9107 first column first full paragraph-second full paragraph and second column last partial paragraph, page 9111 first column last partial paragraph-second column, and figure 5). A binder-free coating is not explicitly detailed.
Cristiani et al. teach catalytic aluminum oxide coatings on a support (see abstract). They detail that such coatings are widely applied as a dip coating of a slurry of the oxide particles (see page 492 first column). The go on to detail applying the catalytic oxide particles via dipping the support in a colloidal suspension in the absence of an added binder (see page 493 first column third full-second column seven full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a catalytic coating of the
CaMnO3-d particles of Du et al. via a suspension of the particles in the absence of a binder in light of Cristiani et al. because it was a well-known technique for preparing such coatings. Therefore claims 8, 10-11, and 26-31 are obvious over Du et al in view of Cristiani et al.
Claims 8-11, 24, and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al. as applied to claims 8, 10-11, and 26-31, and further in view of Yuasa et al. (Electrochemical and Solid-State Letters 2011 14 (5):A67-A69).
Du et al. teach or render obvious the limitations of instant claims 8, 10-11, and 26-31, where CaMnO3-d perovskite nanoparticles are prepared. They describe this material as oxygen reduction reaction catalysts (see page 9106 first column). While they are taught in a coating on a substrate, they are not explicitly detailed as being coated on particles.
Yuasa et al. teach LaMnO3 perovskite that is applied to a carbon particle support (see abstract). They detail that the oxygen reduction capabilities of the perovskite catalysts can be made comparable to a platinum standard due to distribution on the surface of the carbon (see abstract and page A67 fist column first paragraph). One technique mechanically mixed nanoparticles of the LaMnO3 perovskite with carbon support particles while another precipitated LaMnO3 perovskite particles from a reverse micelle mixture of precursor molecules on the carbon support particles (see page A67 first column last partial paragraph-second column first full paragraph; instant claims 9 and 24). The latter yielded less aggregation amongst the perovskite particles on the carbon particle surface and had similar catalytic capabilities to the platinum standard (see page A67 second column last partial paragraph and figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the CaMnO3-d perovskite particles to a carbon support as taught by Yuasa et al. in order to improve their ability to function as a catalyst. This modification could have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The elected compound coated carbon particles are not described to have the collection of instantly recited conditional functionalities. However, according to MPEP 2112.01, “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” This treatment results from In re Spada, which states that, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus the CaMnO3-d perovskite material provides the instantly claimed properties it contains when applied to the carbon particle surface. Therefore claims 8-11, 24, and 26-31 are obvious over Du et al. in view of Yuasa et al.
Claims 8-11 and 24-31 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al. in view of Yuasa et al. as applied to claims 8-11, 24, and 26-31 above, and further in view of Farahani et al. (Carbon 2019 145:716-724).
Du et al. in view of Yuasa et al. render obvious the limitations of instant claims 8-11, 24, and 26-31, where CaMnO3-d perovskite particles are coated on a carbon particle support as an oxygen reduction reaction catalyst. They do not detail a graphene oxide support.
Farahani et al. teach graphene oxide as an alternative to a carbon carrier for manganese oxide perovskite as an oxygen reduction reaction catalyst (see abstract and page 716). Specifically, they detail a carbon powder or graphene oxide powder as supports for the perovskite material (see page 717 second column first-third full paragraphs). Nanoparticles of the perovskite are uniformly deposited on the surface of the powder materials (see abstract and page 718 first column fourth full paragraph and figure 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ graphene oxide as a carbon based support for the carbon supported CaMnO3-d perovskite rendered obvious by Du et al. in view of Yuasa et al. This modification could have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome. Therefore claims 8-11 and 24-31 are obvious over Du et al. in view of Yuasa et al. and Farahani et al.
Claims 8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kalendova et al. in view of Wang et al. (previously cited) and Patru (previously cited).
Kalendova et al. teach adding a perovskite CaMnO3 as an effective anticorrosive pigment to paint and applying the paint to steel panels (see abstract, page 198 second column second full paragraph, and page 199 second column last partial paragraph-page 200 first column third full paragraph). The CaMnO3 is present in the paint at 10 wt% which is applied at a thickness of 95±10 mm (see page 199 second column last partial paragraph-page 200 first column third full paragraph and table VI). They teach submerging the painted steel panel in an aqueous treatment bath which meets the limitation of being disposed underwater (page 200 second column first full paragraph). Kalendova et al. also expose the painted panels to additional relevant corrosive environments, including a salt mist to provide broadly applicable non-toxic anti-corrosive protection (see page 200 second column fourth full paragraph, page 209 first column last partial paragraph and page 210 first column). The instant specification details antibacterial (antibiofouling) properties in a coating of 10 wt% sub-stoichiometric CaMnO3-d provided at a thickness of ~40 mm (see example 6). While not described as an anti-biofouling compound by Kalendova et al., an instantly claimed and elected compound is disclosed by Kalendova et al. According to MPEP 2112.01, “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” This treatment results from In re Spada, which states that, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus the compound provides the functional properties it contains when applied to the surface of Kalendova et al. Further, the claimed and elected compound is present at a greater quantity than that shown to be antibacterial (antibiofouling) for its sub-stoichiometric counterparts. Kalendova et al. do not explicitly discuss pathogens in contact with the treated/painted surface.
Wang et al. teach that metal corrosion in marine industries is a recognized issue for the ships involved (see paragraphs 5 and 9). They detail that the atmospheric environments of the ocean is highly corrosive and includes salt spray in particular as a major contributor (see paragraph 5).
Patru teaches of the recognized contact of bacteria and fungus with ship hulls during marine use (see column 1 lines 13-30). Relevant varieties that they test in regard to the issue include E. Coli (see column 2 lines 16-42).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the CaMnO3 containing layer of Kalendova et al. to a ship that is or is to be in the ocean. This modification would have been obvious in light of Wang et al. who teach the importance of corrosion protection for ships against salt spray (mist) and the demonstrated effectiveness of the CaMnO3 against this corrosion threat. It additionally would have been obvious that this ship would then be contacted with bacteria, specifically E. coli, in this environment in light of Patru. Therefore claims 8 and 10-11 are obvious over Kalendova et al. in view of Wang et al and Patru.
Response to Arguments
Applicant's arguments filed January 20, 2026 have been fully considered, but they are not persuasive concerning the rejections under 35 USC 102 and under 35 USC 103 over Kalendova et al. in view of others. In light of the amendments rejection under 35 USC 112(a) and that under 35 USC 103 over Liu et al. are hereby withdrawn. New grounds of rejection are detailed to address new limitations.
The applicant argues that Du et al. do not detail depositing a material with the properties of instant claims 26-28. As noted previously and currently, Du et al. teach a sub-stoichiometric perovskite calcium manganese oxide of the form CaMnO3-d,where 0 < d ≤ 0.5. This collection of molecules form a lattice structure where most manganese atoms have a stoichiometric number of atoms and some do not, thus the subscript on the oxygen is a not a whole number (see Du et al. figure 1).
Similarly, the applicant’s argument that Kalendova et al. do not teach an elected material applied via the claimed method is unpersuasive because the CaxMnyOz of Kalendova et al. has x = 1, y = 1, z = 1 which meets the instant limitations of x ≥ 0.1, y ≥ 0.1, and z ≥ 1.
Conclusion
No claim is 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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/CARALYNNE E HELM/ Examiner, Art Unit 1615