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 .
Election/Restrictions
Applicant’s election without traverse of Invention/Group II (claims 14-26) in the reply filed on April 4, 2026 is acknowledged. Claims 1-13 are withdrawn from further consideration, as being drawn to a non-elected invention.
Drawings
The drawings are objected to because:
The figures include text matter that is not indispensable (see Figs. 2, 3, 4A, 4B; See PCT, Rule 11.11, regarding “Words in Drawings”)
Applicant should replace the text matter in the drawings with reference numerals that have been defined in the Specification
Photographs (see Figs. 6A, 6B and 7), including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), auto-radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. See MPEP 608.02(VII)(B).
With respect to Fig. 7, the text within the photographs is illegible due to lack of clarity
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Throughout the Specification, Applicant randomly capitalizes generic terms (“Metal Oxide” in ¶ 0003; “Sulphur”, “Zinc Oxide”, “Natural Rubber Latex”, “Synthetic Latex”, “Nitrile Butadiene Rubber”, “Polyisoprene Rubber”, “Polychloroprene Rubber”, “Polyvinyl Chloride” among ¶ 0015, 0017, 0024, 0028, 0029, 0032, 0035). These terms should be all lowercase, since they are all generic terms of materials.
Throughout the Specification, Applicant uses acronyms which are never defined with their initial instance (“ZDEC” and “ZDBC” in ¶ 0015, 0017, 0028, 0032). Based on an Internet search, it appears that “ZDEC” is representative of “zinc diethyl dithiocarbamate” and “ZDBC” is representative of “zinc dibenzyldithiocarbamate”, both used in the same context of Applicant’s subject matter of rubber ingredients and/or processing materials. Examiner suggests defining these acronyms in their first instance in ¶ 0015, which would establish their meanings for all subsequent instances that appear throughout the remainder of the Specification thereafter.
Appropriate correction is required.
Claim Objections
Claims 14, 15, 18-26 are objected to because of the following informalities:
Claim 14, line 1: Applicant uses the term “nano size particles”, wherein it would appear to be clearer if this was recited as “nano-sized particles”; Examiner notes that this suggestion may be obviated in light of the objections identified below marked with “***”, if other suggestions for correction are implemented.
See also:
claim 18, line 2
claim 20, line 2
claim 23, line 2
claim 24, line 2
claim 25, line 2
Claim 15, line 1: the number “20” should be deleted after “said rubber article is”
Claim 19, line 2: “the step” should recite “a step”
Claim 20, line 2: “the step” should recite “a step”
Claim 20, lines 2-3: “said an active substance” should just recite “said active substance”
Claim 21, line 2: “the step” should recite “a step”
***Claim 21, line 2: “nanoparticles” would appear to mean the same thing as “nano-sized particles” (or “nano size particles”, as Applicant has recited, as noted above). Should all instances currently recited as “nano size particles” be instead recited as “nanoparticles”, since these have the same meaning to one of ordinary skill in the art?
Claim 22, line 3: “Sulphur” and “Zinc Oxide” should be lowercase and recited as “sulphur” and “zinc oxide”, since these are generic material terms
Claim 22, line 3: “ZDEC” and “ZDBC” are acronyms that have not been defined. See the Specification objection section above, regarding the interpretation of these terms, as best as can be understood. Examiner suggests reciting “zinc diethyl dithiocarbamate (ZDEC)” and “zinc dibenzyldithiocarbamate (ZDBC)”, respectively.
Claims 23, 24 and 25, line 3 of each: “provide” should be changed to “is configured to provide” or “are configured to provide”
Claim 25, line 1: the number “10” should be deleted after “said rubber article is”
Claim 26, lines 3-5: “Natural Rubber Latex and / or Synthetic Latex, such as Nitrile Butadiene Rubber (NBR), but not limited to Polyisoprene Rubber, Polychloroprene Rubber, Polyvinyl Chloride” recites generic material terms that should be lowercase, and not capitalized. Further, the term “and / or” should have the spaces removed. Examiner suggests “natural rubber latex and/or synthetic latex, such as nitrile butadiene rubber (NBR), but not limited to polyisoprene rubber, polychloroprene rubber, polyvinyl chloride”. Examiner notes that this suggestion is solely to remove the capitalization and spaces in and/or, and that the language still is indefinite for reasons that will be explained in the 35 U.S.C. 112(b) section below.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 14 (and claims 15-26 at least due to dependency from independent claim 14) is 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.
Regarding claim 14, Applicant recites “a latex from a latex source”. It is unclear what this phrase means, structurally, as opposed to simply reciting “a latex” (i.e. it would seem that all latex would be “from a latex source”). Correction/clarification is required. For purposes of examination, any “latex” is being interpreted as being “latex from a latex source”, as best as can be understood.
Regarding claim 19, Applicant recites “wherein said rubber article is prepared via the step of post-processing said rubber article with or without surface retreatment to enhance surface morphologies for better handling of instruments”. It is unclear how claim 19 is further structurally defining the rubber article because the post-processing step of the product-by-process limitation appears to be optional (i.e. post-processing said rubber article “with or without” the language thereafter). Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 20, Applicant recites “the step of using said plurality of nano size particles with said an active substance onto said rubber article to yield a compact structure of a rubber matrix”. The preamble of claims 14-26 are to “a rubber article”, which would indicate that all of the structure recited is already part of the rubber article. Therefore, it is confusing what is meant by “using said plurality of nano size particles with said…active substance onto said rubber article” as recited in the claim, since the rubber article, as best as can be understood, is a finished product that is being claimed. Correction/clarification is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 21, Applicant recites the limitation “further prepared via the step of infusing nanoparticles active substances into a rubber matrix”. First, the phrase “nanoparticles active substances” is confusing with respect to the plurality terms “nanoparticles” and “substances” (should it recite “nanoparticle active substances” where “nanoparticle active” act as adjectives and “substances” would be a plural noun?). Second, it is unclear if “a rubber matrix” is part of the existing “a compact structure of a rubber matrix” recited in claim 20, from which claim 21 depends. Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Further regarding claim 21, Applicant recites “a rubber matrix which contains one or at least one or combination of a plurality of ingredients, such as alkanolamines, amino acids, surfactants, plant-based derivatives in a base of colloids, micelles to give anti-microbial properties, and the like”. The metes and bounds of this list of potential ingredients are indefinite. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Further, the phrase "and the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst. Examiner notes that the same issue (i.e. use of “such as” and “and the like” within a listing of potential claim elements; claim 26 also includes an instance of “but not limited to”, which is further unclear) is present in claim 26, which is likewise indefinite.
Regarding claim 22, Applicant recites “said rubber chemicals are selected from a group comprising at least one or combination of chemicals comprising Sulphur, Zinc Oxide, ZDEC, ZDBC, any other curative chemicals, crossliner, antioxidant, colorant, and the like”. The metes and bounds of this list of potential rubber chemicals are indefinite, since “any other curative chemicals” and “and the like” includes elements not actually disclosed (those encompassed by “any other curative chemicals” and "and the like"). See MPEP § 2173.05(d). Further, the term “crossliner” is unclear, as it has no widely used relevant definition in the context of the present disclosure, and it has not been defined by Applicant in their disclosure. Should this recite “crosslinker” instead? Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 23, Applicant recites “wherein said rubber article is produced in a manner such that said nano size particle of an active substance provide effective electrostatic resistance”. First, “said nano size particle” is indefinite because independent claim 14 recites “nano size particles” (i.e. which of the particles is the singular particle referenced in claim 23?). Second, it is unclear what structural parameter would yield “effective electrostatic resistance”, and the metes and bounds of the limitation are therefore indefinite. Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 24, Applicant recites “wherein said rubber article is produced in a manner such that said nano size particle of an active substance provide effective heat protection”. First, “said nano size particle” is indefinite because independent claim 14 recites “nano size particles” (i.e. which of the particles is the singular particle referenced in claim 24?). Second, it is unclear what structural parameter would yield “effective heat protection”, and the metes and bounds of the limitation are therefore indefinite. Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 25, Applicant recites “wherein said rubber article is 10 produced in a manner such that said nano size particle of an active substance substances provide effective chemo drug resistance”. First, “said nano size particle” is indefinite because independent claim 14 recites “nano size particles” (i.e. which of the particles is the singular particle referenced in claim 25?). Second, it is unclear what structural parameter would yield “effective chemo drug resistance”, and the metes and bounds of the limitation are therefore indefinite. Correction is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Examiner generally acknowledges that many of the claims (see claims 14, 19-21, 23-25, for example) include limitations that are recited in a product-by-process manner, which is generally accepted. However, since the elected claims are directed to a product (not a method of forming the product), the clarity would be improved to a great degree if the structure of the rubber article were described primarily in terms of what the end resulting structure of the rubber article actually is, as opposed to defining the structure by the process through which the product is manufactured.
An effort has been made to identify all indefinite language with the pending claims. However, since the claims are replete with indefinite language, Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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 14-22 and 26, as best as can be understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nip et al. (hereinafter “Nip”) (US 2021/0400983).
Examiner notes that the claims will be addressed in order of dependency, rather than direct numerical order.
Regarding independent claim 14, Nip discloses a rubber article (Nip discloses various rubber articles (see Title) that can be formed with their disclosed subject matter, including gloves (¶ 0012, 0029)) prepared by using nano size particles (nanocomposite zinc oxide can be used (see ¶ 0008, 0012-0014, 0016-0017, 0024 among other paragraphs throughout the Nip disclosure)), said rubber article comprising: latex from a latex source (latex can be natural or synthetic latex (¶ 0007, 0029, 0051, 0060), which would be from a latex source); and a compounded latex produced by mixing said latex with rubber chemicals (¶ 0013 discloses that latex is combined with a vulcanization activator and one or more accelerators and/or additional activators including the nanocomposite zinc oxide (i.e. a rubber chemical; see present application’s claim 22 which lists zinc oxide as a suitable example of a rubber chemical)); characterized in that said rubber article is prepared via an article dipping or a molding process by using said compounded latex (¶ 0021 discloses that the rubber article is made by a method that can include dipping or at least partially immersing the mold or former in the latex or rubber formulation to form a latex or rubber coating on the mold or former and then curing the latex or rubber coating to vulcanize the latex or rubber coating; this limitation is deemed a product-by-process limitation in the claim and while the structure of the rubber article may be formed by a different process, the end product is the same as that of Applicant’s claimed invention; the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process; i.e. the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process; a product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.).
Regarding claim 15, Nip discloses that said rubber article is a rubber glove (¶ 0018).
Regarding claim 16, Nip discloses that said latex source is natural rubber latex (latex can be natural or synthetic latex (¶ 0007, 0029, 0051, 0060)).
Regarding claim 17, Nip discloses that said latex source is synthetic latex (latex can be natural or synthetic latex (¶ 0007, 0029, 0051, 0060)).
Regarding claim 18, Nip discloses that said rubber chemicals comprise a plurality of nano size particles of an active substance (¶ 0013 discloses that the activators can include nanocomposite zinc oxide (i.e. nano size particles of an active substance)).
Regarding claim 20, Nip discloses that said rubber article is prepared via the step of using said plurality of nano size particles with said an active substance onto said rubber article to yield a compact structure of a rubber matrix (¶ 0021 discloses “a method of preparing a vulcanized latex or rubber, comprising mixing a source of the latex or rubber with a vulcanization activator or vulcanizing agent, one or more nanocomposite zinc oxides, and optionally one or more additional accelerators and/or activators, pigments, stabilizers, release agents, and/or antioxidants in a tank or vessel to form a latex or rubber formulation”).
Regarding claim 21, Nip discloses that said rubber article is further prepared via the step of infusing nanoparticles active substances into a rubber matrix which contains one or at least one or combination of a plurality of ingredients, such as alkanolamines, amino acids, surfactants, plant-based derivatives in a base of colloids, micelles to give anti-microbial properties, and the like (¶ 0064 discloses that amino acids can be included as antioxidants in the latex composition/formulation (i.e. rubber matrix); ¶ 0017 discloses that the rubber product can have an antimicrobial activity greater than that of an otherwise identical latex or rubber product).
Regarding claim 19, Nip discloses that said rubber article is prepared via the step of post-processing said rubber article with or without surface retreatment to enhance surface morphologies for better handling of instruments (¶ 0054 discloses a post-processing to provide either a rolled cuff, or a dip or spray of cornstarch as a release/anti-adhesion agent; Examiner notes that claim 19 does not further structurally define the claimed product in any patentably-distinguishing sense).
Regarding claim 22, Nip discloses that said rubber chemicals are selected from a group comprising at least one or combination of chemicals comprising Sulphur, Zinc Oxide, ZDEC, ZDBC, any other curative chemicals, [crosslinker], antioxidant, colorant, and the like (as noted above, nanocomposite zinc oxide is used; as noted above, antioxidants can be used; ¶ 0016 discloses pigments can be added (i.e. colorants); ¶ 0051 discloses that sulfur can be used as a vulcanizing agent).
Regarding claim 26, Nip discloses that said rubber article is produced with nanoparticles active substances by using polymer including Natural Rubber Latex and/or Synthetic Latex, such as Nitrile Butadiene Rubber (NBR), but not limited to Polyisoprene Rubber, Polychloroprene Rubber, Polyvinyl Chloride, and the like (as noted above, natural or synthetic latex is used in the formulation/composition of the rubber article material).
Claim Rejections - 35 USC § 102 / 103
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.
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.
Claims 23-25, as best as can be understood, are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nip, as applied to claim 14 above.
Regarding claim 23, Nip teaches all the limitations of claim 14, as set forth above. Nip does not discuss the electrostatic resistance characteristics of the rubber article, however, and it cannot be determined whether said rubber article is produced in a manner such that said nano size particle of an active substance provide effective electrostatic resistance. When the reference discloses all the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, the basis shifts the burden of proof to Applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Since the same structural limitations are present in Nip that are recited in the claim language up to this point (i.e. among independent claim 14 and dependent claim 23), it would at least have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the structure to be at least capable of providing some degree of effective electrostatic resistance, absent further distinguishing structural limitations in the claims.
Regarding claim 24, Nip teaches all the limitations of claim 14, as set forth above. Nip does not discuss the heat protection characteristics of the rubber article, however, and it cannot be determined whether said rubber article is produced in a manner such that said nano size particle of an active substance provide effective heat protection. When the reference discloses all the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, the basis shifts the burden of proof to Applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Since the same structural limitations are present in Nip that are recited in the claim language up to this point (i.e. among independent claim 14 and dependent claim 24), it would at least have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the structure to be at least capable of providing some degree of effective heat protection, absent further distinguishing structural limitations in the claims.
Regarding claim 25, Nip teaches all the limitations of claim 14, as set forth above. Nip does not discuss the chemo drug resistance characteristics of the rubber article, however, and it cannot be determined whether said rubber article is produced in a manner such that said nano size particle of an active substance provide effective chemo drug resistance. When the reference discloses all the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, the basis shifts the burden of proof to Applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Since the same structural limitations are present in Nip that are recited in the claim language up to this point (i.e. among independent claim 14 and dependent claim 25), it would at least have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the structure to be at least capable of providing some degree of effective chemo drug resistance (also, Applicant describes this property in relation to the presence of “smaller pore size” in ¶ 0004; Nip teaches that its rubber article has non-permeability in ¶ 0012 and that the gloves are examined for “pin holes or other defects” indicating that holes (i.e. pores) are considered defective and would not be present in their intended final product), absent further distinguishing structural limitations in the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of rubber articles/gloves with latex compositions. Examiner further notes that the struck-through reference on the considered IDS form has been included on the PTO-892 in its proper format as a US Patent (it was erroneously listed as a Pre-Grant Publication on Applicant’s filed IDS).
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732
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