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 .
Status of the Claims
Claims 1-5 are pending and currently under examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statement (IDS) filed on 11/27/2024 and 11/04/2025 are attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Furudate et al. (US20190099741A1, Published 04/04/2019) in view of Yamada et al. (JP2007138204A, Published 06/07/2007).
Applicant’s invention
The Applicants claims are drawn to an antiviral composition comprising two types of particles of: i) photocatalyst particles; and ii) silver nanoparticles having a protection agent adsorbed on the surface thereof and having a dispersed particle diameter of 1000 nm or less and a primary particle diameter of 500 nm or less, wherein the composition exhibits an antiviral activity value greater than 0.3 based on JIS R1756:2020 in a dark place, while the composition exhibits an antiviral activity value brought by light irradiation of 0.3 or more based on JIS R1756:2020.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1, 3, and 5 Furudate teaches a photocatalyst/alloy fine-particle dispersion comprising the following two kinds of fine particles dispersed in an aqueous dispersion medium: photocatalyst fine particles, and (ii) alloy fine particles containing an antibacterial/antifungal metal (claim 1). Furudate also teaches wherein the photocatalyst fine particles (i) are titanium oxide fine particles (claim 2); wherein the antibacterial/antifungal metal contained in the alloy fine particles (ii) is at least one metal selected from the group consisting of silver (claim 3). Furudate further teaches the dispersed particle size of the alloy fine particles (ii) in the alloy fine-particle dispersion, expressed as the volume-based 50% cumulative distribution size (D50) measured by dynamic laser light scattering (also referred to below as “average particle size”), is preferably 200 nm or less (paragraph [0050]). Furudate also teaches a protective agent may be added to the solution obtained by dissolving the reducing agent in an aqueous dispersion medium (paragraph [0080]), wherein washing is carried out until the weight ratio between alloy fine particles (i.e., silver nanoparticles) and nonvolatile impurities (i.e., protection agent) (alloy fine particles/nonvolatile impurities) in the alloy fine-particle dispersion becomes preferably from 0.01 to 10 (i.e., protection agent adsorbed on the surface of silver nanoparticles) (paragraph [0090]). Furudate continues to teach that the alloy fine-particle dispersions obtained are collectively shown in Table 3 (paragraph [0144]), wherein alloy fine particles with nonvolatile impurities are formed (page 13). Furudate teaches a photocatalyst/alloy fine-particle dispersion comprising the following two kinds of fine particles dispersed in an aqueous dispersion medium: photocatalyst fine particles, and (ii) alloy fine particles containing an antibacterial/antifungal metal (claim 1). Furudate also teaches wherein the photocatalyst fine particles (i) are titanium oxide fine particles (claim 2); wherein the antibacterial/antifungal metal contained in the alloy fine particles (ii) is at least one metal selected from the group consisting of silver (claim 3) and that the alloy fine-particle dispersions obtained are collectively shown in Table 3 (paragraph [0144]), wherein alloy fine particles with nonvolatile impurities are formed (page 13). , but does not explicitly disclose wherein the composition exhibits an antiviral activity value greater than 0.3 based on JIS R1756:2020 in a dark place, while the composition exhibits an antiviral activity value brought by light irradiation of 0.3 or more based on JIS R1756:2020. However, such properties must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Regarding claim 2, Furudate teaches the photocatalyst/alloys fine-particle dispersion may further include a binder, which binder is preferably a silicon compound-based binder (paragraph [0024]).
Regarding claim 4, Furudate teaches the photocatalyst/alloy fine-particle dispersion of the invention can be used to form a photocatalyst/alloy thin film on the surface of various types of members (paragraph [0109]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Furudate does not teach the silver nanoparticle having a primary particle diameter of 500 nm or less. However this deficiency is cured by Yamada et al.
Yamada teaches the colloidal dispersion of the present invention contains silver fine particles and diamond fine particles, and exhibits excellent antibacterial / antifungal action against various bacteria and fungi (paragraph 9). Yamada also teaches silver fine particles may be present in a colloidal state in the dispersion, or may be supported on zeolite or titanium oxide particles. The average primary particle diameter of the silver fine particles is preferably 1 to 300 nm, and more preferably 1 to 100 nm. Silver fine particles having a primary average particle diameter of 1 to 300 nm have a very large surface area and a large contact area with bacteria and/or molds, and thus exhibit an excellent antibacterial / antifungal action (paragraph 10).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have the silver nanoparticles with a primary diameter of 500 nm or less in Furudate’s photocatalyst/alloy fine-particle dispersion. Furudate teaches a photocatalyst/alloy fine-particle dispersion comprising the following two kinds of fine particles dispersed in an aqueous dispersion medium: photocatalyst fine particles, and (ii) alloy fine particles containing an antibacterial/antifungal metal (claim 1). Furudate also teaches wherein the photocatalyst fine particles (i) are titanium oxide fine particles (claim 2); wherein the antibacterial/antifungal metal contained in the alloy fine particles (ii) is at least one metal selected from the group consisting of silver (claim 3). The artisan of ordinary skill would have been motivated to have silver nanoparticles with a primary particle size of 500 nm or less because Yamada teaches silver fine particles can be used in a colloidal state in the dispersion wherein the silver fine particles have an average primary particle diameter of preferably 1 to 300 nm. With this primary particle diameter, the silver fine particles have a very large surface area and a large contact area with bacteria and/ or mold thus exhibiting an excellent antibacterial/antifungal action (paragraph 10). The skill artisan would have had a reasonable expectation of success because Furudate teaches a photocatalyst/alloy fine-particle dispersion containing two kinds of fine particles dispersed in an aqueous dispersion medium, (i) photocatalyst fine particles such as titanium oxide and (ii) alloy fine particles containing an antibacterial/antifungal metal such as silver and Yamada teaches the use of silver fine particles that can be supported onto titanium oxide particles wherein when the primary particle diameter is from 1 to 300 nm, there is an excellent antibacterial/antifungal action.
Conclusion
No claims are allowed.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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