DETAILED ACTION
This action is in response to the Request for Continued Examination (RCE) filed 2/6/2025. Currently, claims 1, 2, 5-15 and 17-22 are pending in the application. Claims 3, 4 and 16 are cancelled by Applicant. Claims 10-15 and 17-22 are withdrawn and not examined at this point.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/6/2024 has been entered.
Response to Arguments
Applicant’s arguments with respect to Flaherty have been considered but are moot in view of the new interpretation of Flaherty.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “wherein each of the anti-counterfeit layer and the outer layer is configured to be ton away from rest of the filtering mask to exposed the at least one logo,” which is a claim limitation lacking proper antecedent basis in the specification. This is not an issue of new matter. Applicant should amend the specification to include the cited language to avoid this error. Appropriate correction is required.
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(s) 1, 2, 6-9 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Flaherty (US 2010/0218774).
In regards to claim 1, Flaherty teaches in Figures 1-3, [0012-0014] and [0016-0018] at least one filter media layer (exterior surface 22 of filter panel 14, interior surface of filter panel 14 and decorative cover 10, which collectively form a respiratory filter) configured to filter particulate matter to produce breathable air ([0012] teaches “respirator mask 12 includes a filter panel 14 formed from a filter fabric or material that is designed to filter airborne particles as air is drawn through the mask”) and comprising an outer layer (interior surface of filter panel 14; can be considered a “layer” inasmuch as it lies over other parts of the device; see previously attached definition of “layer;” can be considered to be an “outer” layer inasmuch as it is positioned on a surface facing outward, away from the external environment in use) and an inner layer (decorative cover 10; can be considered an “inner” layer inasmuch as the decorative cover 10 faces inward, toward the external environment in use), the inner layer (decorative cover 10) forming an inner surface (situated inward, toward the external environment in use) of the filtering mask (respirator mask 12, decorative cover 10); and an anti-counterfeit layer (exterior surface 22 of filter panel 14; can be considered a “layer” inasmuch as it lies over other parts of the device; see previously attached definition of “layer”) attached to (inasmuch as it is included in and therefore, attached to) the at least one filter media layer (exterior surface 22 of filter panel 14, interior surface of filter panel 14 and decorative cover 10, which collectively form a respiratory filter) and configured to identify the filtering mask (respirator mask 12, decorative cover 10) as a legitimate filter and distinguish the filtering mask (respirator mask 12, decorative cover 10) from counterfeit masks ([0013] teaches that the exterior surface 22 of filter panel 14 includes “technical information 24 about the filter panel 14 may be printed on the exterior surface 22;” the technical information 24 is capable of being used to identify the device as a legitimate filter and distinguish the filtering mask from counterfeit masks), wherein the anti-counterfeit layer (exterior surface 22 of filter panel 14) comprises at least one logo (technical information 24 about the filter panel 14; a “logo” is defined to be “an identifying statement;” see previously attached definition of “logo”) incorporated into at least one surface of ([0013] teaches “technical information 24 about the filter panel 14 may be printed on the exterior surface 22”) the anti-counterfeit layer (exterior surface 22 of filter panel 14), wherein the anti-counterfeit layer (exterior surface 22 of filter panel 14) is located between (as shown in Figures 1 and 3) the inner layer (decorative cover 10) and the outer layer (interior surface of filter panel 14), and wherein each of the anti-counterfeit layer (exterior surface 22 of filter panel 14) and the outer layer (interior surface of filter panel 14) is configured to be torn away from ([0016] teaches “second fastener material 46 is adapted to releasably attach to the first fastener 28 on the respirator mask 12;” [0017] teaches “decorative cover 10 is therefore releasably locked into position on the respirator mask 12;” thus, the exterior surface 22 of filter panel 14 and the interior surface of filter panel 14 are capable of being torn away from the second fastener material 46 of decorative cover 10, in the direction indicated by arrow 48; [0018] teaches that the respirator mask 12 (which includes the exterior surface 22 of filter panel 14 and the interior surface of filter panel 14) is capable of being “removed,” or torn away, from decorative cover 10 via releasable Velcro® fasteners 28, 46; Figure 1 teaches that technical information 24 is exposed to view when decorative cover 10 is removed from respirator mask 12) rest (decorative cover 10) of the filtering mask (respirator mask 12, decorative cover 10) to expose the at least one logo (technical information 24 about the filter panel 14; a “logo” is defined to be “an identifying statement;” see previously attached definition of “logo”).
Applicant should note that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ( "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ).
In regards to claim 2, Flaherty teaches the apparatus of claim 1. Flaherty teaches in [0012] and [0014] that each of the outer layer (interior surface of filter panel 14) and the inner layer (decorative cover 10) is configured to filter particulate matter from air flow through the filtering mask ([0012] teaches “filter panel 14 formed from a filter fabric or material that is designed to filter airborne particles as air is drawn through the mask;” [0014] teaches that the decorative cover 10 is formed from a fabric panel 30 that is “made from a substantially non-filtering fabric material” that “permits air and relatively small particles and the like to pass through the cover;” thus, it is clear that fabric panel 30 is not completely non-filtering and is capable of filtering larger particles, for instance).
In regards to claim 6, Flaherty teaches the apparatus of claim 1. Flaherty teaches in Figure 1 and [0013] that the at least one logo (technical information 24 about the filter panel 14; a “logo” is defined to be “an identifying statement;” see previously attached definition of “logo”) is incorporated into the at least one surface of (as shown in Figure 1; [0013] teaches “technical information 24 about the filter panel 14 may be printed on the exterior surface 22”) the anti-counterfeit layer (exterior surface 22 of filter panel 14).
Claim 6 limitation “by forming the anti-counterfeit layer onto a lathe comprising the at least one logo protruding from the at least one surface of the lathe” is a product-by-process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
In regards to claim 7, Flaherty teaches the apparatus of claim 1. Flaherty teaches in Figure 1 and [0013] that the at least one logo (technical information 24 about the filter panel 14; a “logo” is defined to be “an identifying statement;” see previously attached definition of “logo”) is incorporated into (as shown in Figure 1; [0013] teaches “technical information 24 about the filter panel 14 may be printed on the exterior surface 22”) the anti-counterfeit layer (exterior surface 22 of filter panel 14).
Claim 7 limitation “without applying any pressure to material of the anti-counterfeit layer” is a product-by-process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
In regards to claim 8, Flaherty teaches the apparatus of claim 1. Flaherty teaches in Figure 1 and [0012] that the anti-counterfeit layer (exterior surface 22 of filter panel 14) comprises a filtering material ([0012] teaches “a filter panel 14 formed from a filter fabric or material that is designed to filter airborne particles as air is drawn through the mask”).
In regards to claim 9, Flaherty teaches the apparatus of claim 1. Flaherty teaches in Figure 1 and [0013] that the at least one logo (technical information 24 about the filter panel 14; a “logo” is defined to be “an identifying statement;” see attached definition of “logo”) comprises text (Figure 1 teaches the technical information 24 about the filter panel 14 comprising text) and/or an image identifying a manufacturer of the filtering mask.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flaherty (US 2010/0218774).
In regards to claim 5, Flaherty teaches the apparatus of claim 1. Flaherty teaches in Figure 1 and [0013] that the anti-counterfeit layer (exterior surface 22 of filter panel 14) comprises the at least one logo (technical information 24 about the filter panel 14; a “logo” is defined to be “an identifying statement;” see attached definition of “logo”) that is formed into material of ([0013] teaches “technical information 24 about the filter panel 14 may be printed on the exterior surface 22”) the anti-counterfeit layer (exterior surface 22 of filter panel 14).
Flaherty does not teach that the at least one logo is formed as a pattern of a plurality of the at least one logo.
However, Applicant should note that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ( "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA H FISHER whose telephone number is (571)270-7033. The examiner can normally be reached M-TH 6:00AM-4:00PM EST.
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/VICTORIA HICKS FISHER/Primary Examiner, Art Unit 3786 3/17/2025
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