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 Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsutomu (Document Identification No. JP 2004188297 A).
Tsutomu discloses a light source with a catalyst comprising (Figures 1-4):
A catalyst film (4) that includes an activation surface (outer layer surface of numeral 4; paragraphs 33 & 34); and
a light source (2) that is disposed closer to a principal surface (inner layer surface of numeral 4; paragraphs 33 & 34) of the catalyst film (4) than to the activation surface (outer layer surface of numeral 4) in a thickness direction of the catalyst film (4), and emits ultraviolet light toward the catalyst film (paragraph 28), the principal surface (inner layer surface of numeral 4) being on an opposite side of the catalyst film with respect to the activation surface (outer layer surface of numeral 4); wherein
The catalyst film includes a surface layer including the activation surface (outer layer surface of numeral 4) and an absorption layer including the principal surface (inner layer surface of numeral 4); and
The absorption layer contains an ultraviolet-light absorbing particle that absorbs a portion of the ultraviolet light (paragraphs 16, 33, 34 & 37). Note that Tsutomu specifically discloses in paragraphs 33 and 34 that the catalyst film (4) is “configured by sequentially stacking a mixed layer of titanium oxide and silicon oxide, and a silicon oxide layer on titanium oxide”, and that “it is important to stack a mixed layer on the titanium oxide layer, and the mixed layer contains a titanium oxide and silicon oxide in a coexisting state”; thus providing a disclosure of two layers stacked upon one another in which each have the titanium oxide absorbing particle, wherein the outer layer is an activation layer by both light L1 & L2. Thus, Tsutomu meets the limitations of the claims.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tsutomu (Document Identification No. JP 2004188297 A) in view of Shatalov et al. (U.S. Publication No. 2017/0368215).
Tsutomu discloses an apparatus that includes a light source with a catalyst comprising (Figures 1-4):
A catalyst film (4) that includes an activation surface in contact with a space (outer layer surface of numeral 4; paragraphs 33 & 34); and
a light source (2) that is disposed closer to a principal surface (inner layer surface of numeral 4; paragraphs 33 & 34) of the catalyst film (4) than to the activation surface (outer layer surface of numeral 4) in a thickness direction of the catalyst film (4), and emits ultraviolet light toward the catalyst film (paragraph 28), the principal surface (inner layer surface of numeral 4) being on an opposite side of the catalyst film with respect to the activation surface (outer layer surface of numeral 4); wherein
The catalyst film includes a surface layer including the activation surface (outer layer surface of numeral 4) and an absorption layer including the principal surface (inner layer surface of numeral 4); and
The absorption layer contains an ultraviolet-light absorbing particle that absorbs a portion of the ultraviolet light (paragraphs 16, 33, 34 & 37).
Tsutomu does not appear to disclose that the apparatus is part of a food processing apparatus that includes a container with a space for accommodating a food item however. However, providing an apparatus with an ultraviolet light source and a catalyst film as a part of a food processing apparatus that includes a container with a space for accommodating a food item is generally well known in the art. One such example is provided by Shatalov that discloses an apparatus with an ultraviolet light source (5012A & 5012B) and a catalyst film (paragraph 150) that is provided as a part of a food processing apparatus, which includes a container with a space for accommodating a food item (paragraphs 7, 8, 12, 72 & 74; Figures 16, 17 and 30-32). Because both Shatalov and Tsutomu discloses the use of ultraviolet light sources with catalyst films that are provided in order to deodorize and decompose offensive smells within an environment (See paragraphs 75, 80 & 150 of Shatalov; and paragraphs 9 & 37 of Tsutomu); then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the apparatus of Tsutomu in a food processing apparatus that includes a container with a space for accommodating a food item in order to effectively and predictably deodorize and decompose offensive smells within an environment of said food processing apparatus as exemplified by Shatalov; especially because Tsutomu discloses that the apparatus takes advantage of utilizing both the ultraviolet light source provided therein, and natural visible light from the environment to further in the aid in eliminating said offensive smells (paragraphs 13-15).
As such, claim 1 is not patentable over Tsutomu in view of Shatalov.
Concerning claims 3 & 4, Tsutomu continues to disclose that the absorption layer includes titanium dioxide (paragraphs 3, 33 & 34).
With respect to claims 5 & 6, Tsutomu also discloses that the surface layer includes titanium dioxide (paragraphs 3, 33 & 34).
Regarding claims 7 & 8, Tsutomu further discloses that the apparatus includes a support member (3 and/or 6) that is in contact with the catalyst film (4) at the principal surface (inner layer surface of numeral 4), and supports the catalyst film (4); wherein
Said support member (3 and/or 6) includes a hollow inside, and is in contact with the catalyst film (4) at an outside of the support member (3 and/or 6), and the light source (2) is disposed in the hollow (paragraphs 32 and 35-37; Figures 1-4).
Concerning claim 9, Tsutomu discloses that the support member includes glass (paragraphs 23 & 29).
Regarding claims 2 & 10, it is first noted that the absorptance of the UV light by the catalyst film is in direct correlation to the thickness of said catalyst film because a thicker catalyst film layer will absorb more UV light, while a thinner catalyst film layer will absorb less UV light. As such, while Tsutomu does not appear to disclose the thickness of the catalyst film is between 2.5-18.2 µm, the reference of Tsutomu does recognize that said thickness is a result effective variable (paragraphs 9, 30 & 37). In as much, the Courts have held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been well within the purview of one of ordinary skill in the art to provide the thickness of the catalyst film to be between 2.5-18.2 µm with an absorptance percentage of the UV light to be at least 50% in order to create the optimal amount of hydroxyl radicals (paragraph 37 of Tsutomu) to effectively rid the associated environment from the unpleasing smells for a given application; as such is considered a result effective variable that would be optimized during routine experimentation by one of ordinary skill. Only the expected results would be attained.
Therefore, claims 2 & 10 are not patentable over Tsutomu, and rejected over Tsutomu in view of Shatalov as well.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-9, 11, 12 and 14-19 of copending Application No. 18/311,033 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instant claims are met by the claims of the reference application. More specifically, each disclose a food processing apparatus that comprises a container that includes a space for accommodating a food item, a catalyst film that includes an activation surface in contact with the space, and a light source that is disposed closer to a principal surface of the catalyst film than to the activation surface in a thickness direction of the catalyst film. Each further claim that the light source emits ultraviolet light toward the catalyst film, and that the principal surface is on an opposite side of the catalyst film with respect to the activation surface. Still further, each claim that the catalyst film includes a surface layer including the activation surface and an absorption layer including the principal surface, wherein the absorption layer contains an ultraviolet-light absorbing particle that absorbs a portion of the ultraviolet light (See claim 1 of the reference application). As such, the obviousness type double patenting rejection exists.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN C JOYNER whose telephone number is (571)272-2709. The examiner can normally be reached Monday-Friday 8:00AM-4:30PM.
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/KEVIN JOYNER/Primary Examiner, Art Unit 1799
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