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 Status
Claims 1-19 are pending.
Priority
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The foreign priority document is not in English. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 1/13/25, 12/17/25, 1/6/26 and 3/5/26 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
Claim 1-19 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. Parenthetical expressions are not permissible which do not contribute to clearness or exactness in stating Applicant’s invention (Ex parte Cahill, 1893 C. D., 78; 63 O. G., 2125). Claim 1 contain parentheses which raises the question as to which term is required by the claim because the subject matter in the parentheses is not identical in scope. Namely claim 1 is directed to:
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The limitations of “metal hydroxide” “hydroxyapatite” and “metal-doped thermosensitive titanium dioxide photocatalyst” represent a genus of materials and the subject matter in the parenthesis represent a species within the genus. Essentially, the claims use both narrow and broad limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Dependent claims 2-19 are rejected as indefinite because they are dependent upon an indefinite base claim. Correction is required. The claims will be given their broadest interpretation for examination.
Claim 14 contains the trademark/trade name “cellosolve”1. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the solvent and, accordingly, the identification/description is indefinite.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-8 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR20170002069 English translation provided) and Numazawa et al. (JP2019172783; English translation provided) and Hongo et al. (WO2021261261; of record) and Prakash et al. (MNE 2022 (available online 12/20/2021);14:17 pages) and Reddy et al. (Water Research 2007;41:379-386; of record) and Palmer (US20070286959).
Applicant claims, for example:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988).
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 4, 5 and 15 Lee et al. teach a coating composition for pre-coated metal (PCM) steel sheets and antibacterial agent coated mat steel sheets wherein the PCM coating composition comprises a resin, a curing agent, a pigment, a solvent, filler, and an additive, wherein the resin comprises an urethane-modified polyester resin and a melamine resin in an amount of 5-7 wt%, which is within the claimed range of 3-15 wt%, as main components, and the urethane-modified polyester resin contains 40-45 wt% of a polymer resin, which is within the claimed range of 30 to 60 wt%, having an acid value of 3-8, which appears to overlap the claimed range of 5-30 mgKOH/g, and wherein the coating composition further comprises an antibacterial agent, wherein the antibacterial agent is a ceramic-based antibacterial agent containing metal ions such as Ag+, Zn2+, and Cu2+ and the content thereof is 3-4 wt% with respect to the total composition (Abstract; claims), which is within the claimed range of 0.1 to 10 wt%. The curing agent is present from 5-7% (Claims).
Regarding claims 1 and 7, Lee et al. teach that the pigment is present in an amount of 10-20% by weight, which overlaps the claimed range of 0.1 to 10 wt%, and is an inorganic pigment such as titanium oxide (Claims), which reads on TiO2.
Regarding claims 1 and 14, Lee et al. teaches a solvent such as an aliphatic glycol ester-based solvent, which appears to read on cellosolve acetate (2-ethoxyethyl acetate), and preferably in an amount of 20-25% by weight (Claims; Specification Solvent).
Regarding claims 15-16, Lee et al. teach a galvanized steel sheet and can be pre-treated with zinc or chromate or an organic coating (Specification page 2). Disclosure of a galvanized steel sheet renders obvious hot-dip galvanized steel sheet (GI), a hot-dip galvannealed steel sheet (GA) and an electrogalvanized steel sheet (EG) to the ordinary artisan in this art.
Regarding claim 17, the coating thickness appears to be reported as 25 microns (Page 4), which is within the claimed range of 3-40 microns.
Regarding claim 1, Prakash et al. teach that TiO2 is photocatalytic and has excellent antibacterial and antiviral properties (Abstract; Figures 1-2) where “the antimicrobial killing activity is more effective when TiO2 is coupled with other effective antimicrobial agents such as Cu, Ag and Au” (Page 4, right column last paragraph; Figure 3).
Regarding claim 1, Reddy et al. teach that hydroxyapatite supported Ag-TiO2 has efficient disinfection of 100% E. coli within 2 minutes because of synergistic action (Abstract; 4. Conclusion).
Regarding claim 1, Numazawa et al. teach coating compositions containing calcium hydroxide and/or magnesium hydroxide (Title, Abstract) that have widely recognized antiviral/antimicrobial properties (page 2).
Regarding claims 1, 5 and 6, Palmer teaches coating resin compositions with curing agents aziridine, isocyanate and melamines (Claims 1, 4-6; [0073]; Figure 4).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Lee et al. is that Lee et al. do not expressly teach the claimed antiviral components. This deficiency in Lee et al. is cured by the teachings of Reddy et al., Numazawa et al. and Prakash et al. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the antimicrobial components hydroxyapatite and metal-doped thermosensitive TiO2 photocatalyst, as suggested by Reddy et al., Prakash et al. and Numazawa et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because for the following sound articulated reasoning with rational underpinning based upon the evidence. Lee et al. teach and suggest adding antibacterial agents to the coating composition. Reddy et al., Prakash et al. and Numazawa et al. teach the antibacterial/antiviral components which would be functional equivalents. It is then obvious to substitute and/or combine all the components for at least an additive effect in antiviral property. The ordinary artisan would reasonably start with a 1:1:1 ratio of the combined components, which would fall within a ratio of 3:1 to 1:3. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, “Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious." In re Fout 675 F.2d 297, 301 (CCPA 1982). See MPEP 2144.06(I) COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE “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 which is to be used for the very same purpose.” In re Susi, 58 CCPA 1074, 1079--80, 440 F.2d 442,445 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77 (1960). As explained in Crockett, the 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)).
Thus, the combination is obvious in view of the combined references. The test for obviousness is "what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 4I3, 425 (CCPA I98I) (MPEP 2145(III)).
The difference between the instant application and Lee et al. as modified by the secondary references, is that Lee et al. as modified by the secondary references do not expressly teach aziridine or isocyante curing agents claimed. This deficiency in Lee et al. as modified by the secondary references, is cured by the teaching of Palmer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use aziridine or isocyanates claimed, as suggested by Palmer, in the coating of Lee et al. as modified by the secondary references, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Palmer teaches the functional equivalence of the species and it is merely judicious selection of an isocyanate for use in the coating by the ordinary artisan with a reasonable expectation of success. See In re Fout above.
The difference between the instant application and Lee et al. as modified by the secondary references, is that Lee et al. as modified by the secondary references do not expressly teach the urethan-modified polyester hydroxy value of 10-300 or the pigment average particle size or all the solvents claimed. However, this appears to be merely measuring the hydroxy value of the urethan-modified polyester of Lee et al., measurement of the average pigment size of the pigments of Lee et al. and selection of known solvents for their intended purpose. The ordinary artisan would have a reasonable expectation of success in so doing. Where patentability rests upon a property of the claimed material not disclosed within the art, the USPTO has no reasonable method of determining whether there is, in fact, a patentable difference between the prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Therefore, where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the USPTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of his claimed product. Id.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR20170002069 English translation provided) and Numazawa et al. (JP2019172783; English translation provided) and Hongo et al. (WO2021261261; of record) and Prakash et al. (MNE 2022 (available online 12/20/2021);14:17 pages), Reddy et al. (Water Research 2007;41:379-386; of record) and Palmer (US20070286959), as applied to claims 1-8 and 10-17 above, in further view of McDaniel (WO2005007758).
Applicant claims:
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The references of Lee, Numazawa et al., Hongo et al., Prakash et al., Reddy et al. and Palmer are discussed in detail above and those discussions are incorporated by reference.
Regarding claims 1 and 9, in the art of antimicrobial coating materials McDaniel teaches antibacterial coatings for a metal surface (Abstract; claim 159) comprising a corrosion resistance pigment such as an alkali metal silicate (calcium borosilicate for example) (Claims 157-158) as well as an extender pigments such as a silicate or a silica (Claim 167).
The difference between the instant application and Lee et al. as modified by the secondary references, is that Lee et al. as modified by the secondary references do not expressly teach the claimed antiviral components. This deficiency in Lee et al. as modified by the secondary references is cured by the teachings of McDaniel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the antimicrobial components hydroxyapatite and metal-doped thermosensitive TiO2 photocatalyst, as suggested by Reddy et al., Prakash et al. and Numazawa et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because the pigment of Lee et al. is not limited and McDaniel teach the beneficial function of providing corrosion (rust) resistance to the metal surface. Consequently, the ordinary artisan is motivated to add any of the claimed silica materials for those desirable properties with a reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
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 1-8, 10, 11, 14-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18682580. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending is also directed to an anti-microbial coated steel sheet with an anti-microbial coating layer that as claimed:
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The co-pending teaches the same pigments as claimed (Claim 6) which would appear to have the same average particles size as claimed.
The co-pending teaches the same solvents (Claim 9) and also the coated steel sheet in claim 10:
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The co-pending also suggests a primer layer (Claim 15) and a coating thickness of 3-40 microns (Claim 14).
The co-pending does not expressly teach urethane-modified polyester binder resin has weight average molecular weight (MW) of 2000 to 30000 or a hydroxy value of 10 to 300 or an acid value of 5 to 30 mgKOH/g or the formulas of instant claim 6. However, that is merely judicious selection of urethane-modified polyester binder resins of those formulas and measurement of those values by the ordinary artisan.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Y Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
1 Cellosolve™ is the registered trademark of Carbide & Carbon Chemicals Corporation. See Wikipedia [online] retrieved on 8/13/26 from: https:// en.wikipedia.org/wiki/Glycol_ethers; 3 pages.
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