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
Applicant's election of Invention I (claims 1-10) in the reply filed on 5/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Non-elected claims 11-20 are withdrawn.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 365(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a), except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, International Application No. PCT/EP 2017/062693, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application. Claim 1 (and all of its dependent claims) recite: “rinsing the plastic's surface with…anodic water, …or ozone, so as to remove positive charges left on the plastic's surface by the anodic water.” This limitation constitutes new matter not sufficiently supported by the prior-filed application.
The disclosure of the prior-filed application, US Application No. 16/304,836, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application. Claim 1 (and all of its dependent claims) recite: “rinsing the plastic's surface with…anodic water, …or ozone, so as to remove positive charges left on the plastic's surface by the anodic water.” This limitation constitutes new matter not sufficiently supported by the prior-filed application.
The disclosure of the prior-filed application, US Application No. 18/413,863, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application. Claim 1 (and all of its dependent claims) recite: “rinsing the plastic's surface with…anodic water, …or ozone, so as to remove positive charges left on the plastic's surface by the anodic water.” This limitation constitutes new matter not sufficiently supported by the prior-filed application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention at the time of filing.
Claim 1 recites: “rinsing the plastic's surface with…anodic water…or ozone, so as to remove positive charges left on the plastic's surface by the anodic water” at lines 3-4. The specification does not sufficiently disclose rinsing the plastic’s surface with anodic water to remove positive charges. Also, the specification does not sufficiently disclose rinsing the plastic’s surface with ozone to remove positive charges. Paragraph 0016 of the specification makes clear that the positive charges are removed by cathodic water:
[0016] The rinsing of the plastics surface with anodic water may cause slight positive charges to be left on the surface. As a result, later renewed adhesion of particles is facilitated and the adhesion is improved, and so these remaining slightly positive charges ought to be avoided. By means of a later alkaline aftertreatment of the surface through the rinsing with cathodic water, these slightly positive charges are removed, thereby hindering the adhesion of new particles.
Moreover, the use of anodic water or ozone to remove positive charges is not sufficiently described in prior-filed US Applications 18/413,863, 16/304,836, International Application No. PCT/EP2017/062693, and Foreign Application DE102016109771.3.
The remaining claims are rejected because they depend on claim 1.
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 1-10 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 1 recites a list of alternative chemicals at line 3: “electrolyzed water, anodic water, cathodic water, or ozone.” It’s unclear how electrolyzed water and anodic water are alternatives, given that anodic water is a type of electrolyzed water. Likewise, it’s unclear how electrolyzed water and cathodic water are alternatives, given that cathodic water is a type of electrolyzed water. Clarification is requested.
Claim 1 recites “so as to remove positive charges left on the plastic's surface by the anodic water” at line 4. It’s unclear if the claim requires a prior step of rinsing the plastic’s surface with anodic water to leave behind positive charges. Clarification is requested.
Claim 1 recites “rinsing the plastic's surface with…anodic water…, so as to remove positive charges left on the plastic's surface by the anodic water” at line 3-4. First, it’s unclear if the first instance of “anodic water” is the same as or different from the second instance of “anodic water.” Second, it’s unclear how anodic water can both leave behind positive charges and remove positive charges. By contrast, the specification discloses that the positive charges are removed by cathodic water. Clarification is requested.
Claim 1 recites “rinsing the plastic's surface with…ozone, so as to remove positive charges left on the plastic's surface by the anodic water” at line 3-4. It’s unclear how ozone can remove positive charges. By contrast, the specification discloses that the positive charges are removed by cathodic water. Clarification is requested.
Claim 2 recites “the anodic water” at line 1. First, because Claim 1 recites two instances of “anodic water,” it’s unclear which instance of “anodic water” is required by Claim 2. Second, if the “anodic water” in Claim 2 refers to the anodic water used for the first rinsing step, it’s also unclear whether or not Claim 2 requires the first rinsing step to be performed with “anodic water” (as opposed to cathodic water or ozone). Clarification is requested.
Claim 3 recites “the cathodic water” at line 1. It’s unclear whether or not Claim 3 requires the first rinsing step to be performed with “cathodic water” (as opposed to anodic water or ozone). Clarification is requested.
Claim 4 recites “the electrolyzed water” at line 2. As explained above, cathodic water is a type of electrolyzed water, and anodic water is a type of electrolyzed water. So it’s unclear which water (i.e., electrolyzed water, anodic water, cathodic water) is required in Claim 4.
Claim 4 recites “the electrolyzed water” at line 2. It’s unclear whether or not Claim 4 requires the first rinsing step to be performed with “electrolyzed water” (as opposed to ozone). Clarification is requested.
Claim 5 recites “the electrolyzed water” at line 2, at line 3, and at line 5. It’s unclear whether or not Claim 5 requires the first rinsing step to be performed with “electrolyzed water” (as opposed to ozone). Clarification is requested.
Claim 6 recites “the rinsing” at line 1. Because Claim 1 recites two rinsing steps, it’s unclear which rinsing step (out of the two) is required by Claim 6. Clarification is requested.
Claim 7 recites “the rinsing” at line 1. Because Claim 1 recites two rinsing steps, it’s unclear which rinsing step (out of the two) is required by Claim 7. Clarification is requested.
Claim 9 recites “the rinsing” at line 1. Because Claim 1 recites two rinsing steps, it’s unclear which rinsing step (out of the two) is required by Claim 9. Clarification is requested.
Claim 9 recites “steps a), b), c)” at line 2. It’s unclear what’s meant by this, because no other claims recite a step a), a step b), or a step c). Clarification is requested.
Claim 10 recites “the electrolyzed water” at line 2 and at line 3. It’s unclear whether or not Claim 10 requires the first rinsing step to be performed with “electrolyzed water” (as opposed to ozone). Clarification is requested.
The remaining claims are rejected because they depend on a claim rejected herein.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11872603 (hereinafter “Conflicting Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other. For example, almost all elements of claim 1 are recited in claim 1 of the Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
Conflicting Patent 11872603
This Application
1. A method for cleaning a plastic's surface so as to effect removing metallic particulate contaminants from the plastic's surface, comprising:
a) rinsing the plastic's surface with deionized water, then
b) rinsing the plastic's surface with electrolyzed water, wherein the plastic's surface is rinsed with anodic water followed by cathodic water so as to remove positive charges left on the plastic's surface by the anodic water, and then
c) rinsing the plastic's surface with deionized water;
wherein the rinsing of the plastic's surface with the deionized water, then the electrolyzed water, and then the deionized water effects cleansing of the plastic's surface to a predetermined cleanliness value.
1. A method for cleaning a plastic's surface so as to effect removing metallic particulate contaminants from the plastic's surface, comprising:
rinsing the plastic's surface with electrolyzed water, anodic water, cathodic water, or ozone, so as to remove positive charges left on the plastic's surface by the anodic water, and then
rinsing the plastic's surface with deionized water;
wherein the rinsing of the plastic's surface with the electrolyzed water, anodic water, cathodic water, or ozone, and then the deionized water effects cleansing of the plastic's surface to a predetermined cleanliness value.
Other claims are not patentably distinct from the claims of the Conflicting Patent:
all or almost all elements of Claim 2 are recited in Claim 2 of the Conflicting Patent;
all or almost all elements of Claim 3 are recited in Claim 3 of the Conflicting Patent;
all or almost all elements of Claim 4 are recited in Claim 4 of the Conflicting Patent;
all or almost all elements of Claim 5 are recited in Claim 5 of the Conflicting Patent;
all or almost all elements of Claim 6 are recited in Claim 6 of the Conflicting Patent;
all or almost all elements of Claim 7 are recited in Claim 7 of the Conflicting Patent;
all or almost all elements of Claim 8 are recited in Claim 8 of the Conflicting Patent;
all or almost all elements of Claim 9 are recited in Claim 9 of the Conflicting Patent;
all or almost all elements of Claim 10 are recited in Claim 10 of the Conflicting Patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD ZHANG whose telephone number is (571)272-3422. The examiner can normally be reached M-F 09:00-17:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KAJ OLSEN can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.Z.Z./Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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