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 .
Response to Arguments
The Amendment filed 05JAN2025 has been entered. No new matter has been entered. Applicant’s amendments have overcome each and every 112(a) rejections and claim objections previously set forth in the Non-Final Office Action mailed 03JUL2025.
Applicant's arguments filed 05JAN2025 have been fully considered.
Regarding the 112(a) rejection, the examiner rejected claims for containing subject matter which was not described in the originally filed specification to show that the inventor, at the time the application was filed, had possession of the claimed invention. Note that any discussion of a 112(a) written description new matter rejection should be kept to the filed disclosure, not the prior art.
The specification at par. [13] lacks supporting details as to the meaning of “a titanium dioxide coating grown on its pore surface”. "Adequate written description means that the applicant, in the specification, must 'convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention." Agilent Techs., Inc. V. Affymetrix,Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted), reh 'g en banc denied Sept. 18, 2009. The Specification must provide some guides or "blaze marks" that disclose the claimed invention "specifically, as something appellants actually invented." Ariad Pharm., Inc. V. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010) (en banc).
It is further noted that in the filed specification, par. [98] incorporates by reference at least US Application 62/194,677, which in par. [39,49-50] of that document appears to describe a method of making a thermal titanium dioxide coating. Furthermore, in par. 6 of the Declaration of Heeman Choe, Ph.D. under 37 C.F.R. 1.132, it is stated that in par. [13] of the written description, one of ordinary skill in the art would appreciate this description refers to a thermal oxide, which is in a "grown" oxide. Thus the 112(a) rejection is withdrawn.
It is noted that the REM do not appear to directly address the rejection under 35 U.S.C. 102(a)(1) as being anticipated (as opposed to a prima facie case of obviousness under 35 U.S.C. 103).
Regarding the 103 rejections, the Applicant argues a teaching away without any further explanation as to why the combination of references in a 103 rejection do not teach or suggest the claimed invention. The REM appear to address CHO, SUGAWARA, and CHIBA individually, not in combination.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The claimed invention of independent claim 1 is directed towards a device comprising an inlet, an outlet, and a metal-foam filter material having directional pores. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
CHO specifically cites the pores as being directional (par. [0058]).
The term “formed by freeze-casting” is interpreted as the method of manufacture of the filter material. Note that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. (See MPEP §2113). Note that CHO teaches freeze-casting (par. [0058]).
Regarding claims 12,32, see new rejections below.
Regarding Declaration filed under 37 C.F.R. 1.132, par. [6] is in support for withdrawal of the 112(a) rejection. The argument is persuasive (see also comments above).
Regarding a thermal oxide of claims 12,32, the Declaration filed under 37 C.F.R. 1.132, par. [7,14] is in support for withdrawal of the 103 rejection and providing objective evidence that a thermal oxide has different properties, characteristics, and structure from a deposited oxide and thus the previous prior art of record does not teach the claimed invention. The declaration in this regard is persuasive. See new rejections below.
Par. [8,10] of the Declaration filed under 37 C.F.R. 1.132 discuss LANDIN, Par. [11-13] discuss LIN, par. [15] discusses CHO, par. [16] discusses SUGAWARA, and par. [17-18] discuss CHIBA. Par. [9,14] discuss the invention.
Par. [19-20] provides an opinion of an inventor of the claimed invention in context with the prior art discussions. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962). MPEP 716.01(c).II,III.
The disussion of CHO does not address the underlying basis for rejection under 35 U.S.C. 102(a)(1) as being anticipated (see also intended use above).
SUGAWARA is cited as teaching a porosity of a filter in combination with CHO. Porosity is a basic concept in the art of filtration and porous materials and thus the combination is obvious.
The previous rejections on record includes the combination of LANDIN as the primary reference with additional references (CHO is cited for teaching directional pores and CHIBA is cited for teaching an activated carbon filter). The combination is obvious for the stated reasons in the rejections.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The claims are open-ended (“comprising”) and do not exclude other materials. Only claims 12,32 require a thermal titanium oxide grown on a metal foam filter. To be of probative value, any secondary evidence must be related to the claimed invention (nexus required; MPEP 716.01(b)).
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) 1-3,6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHO (US 20140004441).
Regarding claims 1-2, CHO teaches a fuel cell (title, Figs.) including:
an inlet (e.g. fuel H2 inlet; Fig. 1A #100);
a metal-foam filter material with pore surfaces (abstract, Fig. 1 #103,109; Fig. 2; see updated drawings in US 10978715; par. [0047]) capable of the intended use of killing bacteria and viruses (see also the operating temperature of 70ºC; par. [0013,0081]);
wherein the metal-foam filter material comprises:
an input (e.g. face where fuel H2 diffuses therethrough of Fig. 1A);
an output (e.g. face where H2O or water diffuses out of Fig. 1A);
pores between the input and output are directional (par. [0058]);
the input is coupled to the inlet (Fig. 1A); and,
an outlet (e.g. H2O outlet; Fig. 1 #111), coupled to the output of the metal-foam filter material, capable of the intended use of passing liquid water (note that the filter is highly porous (par. [0012;0047-0048]).
Note that an intended use does not provide structure to a device claim. Note that claim 2 further sets forth an intended use (replacement of a traditional filter) and does not provide structure.
The limitation “water filtration” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
Regarding claim 3, CHO teaches the metal-foam filter material is e.g. copper foam (par. [0018]).
Regarding claim 6, while a manufacturing process generally does not provide structure to a device claim, in this case, it is possible to infer structure (for example pore size or shape) based on the manufacturing method. CHO teaches a manufacturing process to form the porous metal-foam filter material comprises e.g. freeze casting (par. [0012]).
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 22,25 are rejected under 35 U.S.C. 103 as being obvious over CHO (US 20140004441).
Regarding claim 22, while a manufacturing process generally does not provide structure to a device claim, in this case, it is possible to infer structure (for example pore size or shape) based on the manufacturing method. CHO teaches a manufacturing process to form the porous metal-foam filter material comprises a freeze casting method (par. [0012]) including a powder slurry freezing process, where a water-based powder slurry is frozen (par. [0022,0078]) and dried (par. [0024]) at a first temperature less than -5 ºC (par. [0074]), which overlaps the claimed range of between about -10 degrees Celsius and about -80 degrees Celsius to form a green body (par. [0055]) and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
Regarding claim 25, CHO teaches the green body is sintered at a second temperature to form a three dimensionally connected solid porous structure, and the second temperature is above the first temperature (par. [0047;0075]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over CHO (US 20140004441) in view of SUGAWARA (US 6194094).
Regarding claim 5, CHO teaches the pore diameter is on the order of a few tens of microns (par. [0048]), which anticipates the claimed range of about 0.1 microns to about 100 microns. CHO is silent as to the porosity of the metal-foam filter. However, SUGAWARA teaches a polymer electrolyte fuel cell (title, Figs.) including a gas diffusion layer having a porosity of 50-70% (C3/L65), which anticipates the claimed range of between about 50 – 75% and a pore size of 17-90 microns (C3/L66-67), which anticipates the claimed range of 0.1-100 microns.
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify/specify the porosity of the metal-foam filter of CHO to be within the claimed range as taught by SUGAWARA in order to provide an optimized filter suitable for its purpose. The references are combinable, because they are in the same technological environment of fuel cells. See MPEP 2141 III (A) and (G).
Claims 7,9-11 and 23-24,26-28,31 are rejected under 35 U.S.C. 103 as being unpatentable over CHO (US 20140004441) in view of PARK et. al. 2018 “Effects of powder carrier on the morphology and compressive strength of iron foams: water vs camphene”.
Regarding claims 7 and 23-24,27-28, while a manufacturing process generally does not provide structure to a device claim, in this case, it is possible to infer structure (for example pore size or shape) based on the manufacturing method. CHO teaches a manufacturing process to form the porous metal-foam filter material comprises a freeze casting method (par. [0012]) including a water-based powder slurry freezing process (par. [0022,0078]), where a powder slurry is frozen and dried (par. [0024]) at a first temperature less than -5 ºC (par. [0074]), which overlaps the claimed range of between about -10 degrees Celsius and about -80 degrees Celsius to form a green body (par. [0055]) and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range. A green body is formed and then sintered at a second temperature range to form a three dimensionally connected solid porous structure, and the second temperature range is above the first temperature range (par. [0047;0074-0075]).
CHO does not teach a camphene-based powder slurry and is silent as to a “reducing step” (although states that the metal is heat-treated at 300 degrees Celsius; par. [0078]). However, PARK teaches the effects of powder carrier on the morphology and compressive strength of iron foams: water vs camphene (title, Figs.) and that using camphene as the solvent changes the metal foam structure by increasing the mean pore diameter, total pore area, and surface area, which is more beneficial to enhancing chemical reactions (P2186/left C/L4-21).
PARK further teaches a reducing step that occurs at a temperature about 300 ºC (P2184/left C/L28), which transform the iron oxide green body into metallic iron (P2184/right C/L26-30).
Note that CHO also teaches the use of larger pores at least at the cathode to improve water flow (par. [0049]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify the metal foam manufacturing process of CHO to use a camphene-based powder slurry as taught by PARK in order to provide for larger, pores and surface area that improves flow and chemical reactions. The references are combinable, because they are in the same technological environment of metal foam technologies. See MPEP 2141 III (A) and (G).
Regarding the reduction temperature, it has not been established to provide any criticality or to provide any unexpected result/benefit over the prior art of record. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980). MPEP 2144.05.II.A.
Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, PARK teaches the sintering occurs at a temperature of 1,000 ºC (P2184/left C/L5), which anticipates the claimed range of between about 700 degrees Celsius and about 1100 degrees Celsius.
Regarding claims 10,31, The combination of references teach a copper powder (CHO par. [0018,0078]) is mixed in camphene (PARK P2184/left C/L10) in a volume fraction of 14% (PARK P2184/left C/L8), which anticipates the claimed range of between about 8 volume percent and about 22 volume percent (or may be optimized to 13%, see below), following the additions of a binder (e.g. polystyrene; PARK P2184/left C/L12; see also CHO par. [0058]) and a dispersant (e.g. Hypermer KD-4; PARK P2184/left C/L14).
One having ordinary skill in the art would recognize that the oxidized forms of metals are ordinarily used as starting materials (due to reactivity with oxygen in air) that may be reduced to the metal during the manufacturing process of metallic foams (see also PARK abstract; P2184/right C/L19-37).
Regarding the amount of copper oxide (e.g. at 13%), it has not been established to provide any criticality or to provide any unexpected result/benefit over the prior art of record. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980). MPEP 2144.05.II.A.
Regarding claim 11, The combination of references teach a titanium powder (CHO par. [0018,0078]) is mixed in camphene (PARK P2184/left C/L10) in a volume fraction of 14% (PARK P2184/left C/L8), which anticipates the claimed range of between about 10 volume percent and 30 volume percent, following the additions of a binder (e.g. polystyrene; PARK P2184/left C/L12; see also CHO par. [0058]) and a dispersant (e.g. Hypermer KD-4; PARK P2184/left C/L14).
Regarding claim 26, CHO teaches the sintering occurs at a temperature about 2/3 the melting point (par. [0075]), which for e.g. iron would be about 1,000 ºC (evidenced by PARK title; P2184/left C/L5), which anticipates the claimed range of between about 700 degrees Celsius and about 1,100 degrees Celsius.
Claims 1-3,5-6 are rejected under 35 U.S.C. 103 as being unpatentable over LANDIN (US 6410160) evidenced by BLEICHERT et. al. 2014 “Inactivation of bacterial and viral biothreat agents on metallic copper surfaces” in view of CHO (US 20140004441)
Regarding claims 1-2, LANDIN teaches porous metal-containing materials, method of manufacture and products incorporating or made from the materials (title, Figs.) including:
an inlet (Fig. 2 #126);
a metal-foam filter material with pore surfaces (abstract; C1/L21-27) capable of the intended use of killing bacteria and viruses (evidenced by BLEICHERT abstract);
wherein the metal-foam filter material comprises:
an input (e.g. filter face facing the inlet of Fig. 2);
an output (e.g. filter face facing the outlet of Fig. 2);
pores between the input and output (see e.g. Figs. 7,9-11,13-15); and,
the input is coupled to the inlet; and,
an outlet (Fig. 1 #128), coupled to the output of the metal-foam filter material, capable of the intended use of passing liquid water (C13/L4).
LANDIN does not teach directional pores. However, CHO teaches a fuel cell (title, Figs.) including:
an inlet (e.g. fuel H2 inlet; Fig. 1A #100);
a metal-foam filter material with pore surfaces (abstract, Fig. 1 #103,109; Fig. 2; see updated drawings in US 10978715; par. [0047]) capable of the intended use of killing bacteria and viruses (see also the operating temperature of 70ºC; par. [0013,0081]);
wherein the metal-foam filter material comprises:
an input (e.g. face where fuel H2 diffuses therethrough of Fig. 1A);
an output (e.g. face where H2O or water diffuses out of Fig. 1A);
pores between the input and output, which are made by freeze-casting providing directional pores (par. [0058]);
the input is coupled to the inlet (Fig. 1A); and,
an outlet (e.g. H2O outlet; Fig. 1 #111), coupled to the output of the metal-foam filter material, capable of the intended use of passing liquid water (note that the filter is highly porous (par. [0012;0047-0048]).
CHO teaches that the directional pores help provide a smooth flow of fluid (par. [0058]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify the filter of LANDIN with directional pores of CHO in order to provide a smooth flow of fluid. The references are combinable, because they are in the same technological environment of filtration. See MPEP 2141 III (A) and (G).
Note that an intended use does not provide structure to a device claim. Note that claim 2 further sets forth an intended use (replacement of a traditional filter) and does not provide structure.
The limitation “water filtration” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
Regarding claim 3, LANDIN teaches the metal-foam filter material is e.g. copper (C2/L41-47).
Regarding claim 5, LANDIN teaches the metal-foam filter has:
a porosity of e.g. 71% (C16/L31-32), which anticipates the claimed range of between about 50 percent and about 75 percent; and,
a pore size ranging from about 0.5 µm to about 3 µm (C17/L15-16), which anticipates the claimed range of about 0.1 microns to about 100 microns.
Regarding claim 6, LANDIN’s modified device teaches freeze-casting (CHO par. [0012]).
Claims 4,21,29-30 are rejected under 35 U.S.C. 103 as being unpatentable over LANDIN (US 6410160) evidenced by BLEICHERT et. al. 2014 “Inactivation of bacterial and viral biothreat agents on metallic copper surfaces” in view of CHO (US 20140004441) and CHIBA (US 20040112826)
Regarding claims 4,21,29-30, LANDIN does not teach the combination of a metal-foam filter and an activated carbon filter. However, CHIBA teaches a drinking element (title, Figs.) comprising:
an active carbon filter (Fig. 6 #4; par. [0036]) to filter out any organics; and
a metal foam filter (Fig. 6 #5; par. [0047-0048]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the device of LANDIN with an active carbon filter as taught by CHIBA in order to filter out any organics as is known in the art. The references are combinable, because they are in the same technological environment of filtration. See MPEP 2141 III (A) and (G).
Regarding the placement of the active carbon filter (either before or after the metal foam filter), one having ordinary skill in the art would recognize it as an obvious engineering design choice as not affecting the operation of the device and would be obvious absent persuasive evidence that the order of parts was significant (see MPEP 2144.04.VI.C).
Claims 7,9-11,22-28,31 are rejected under 35 U.S.C. 103 as being unpatentable LANDIN (US 6410160) evidenced by BLEICHERT et. al. 2014 “Inactivation of bacterial and viral biothreat agents on metallic copper surfaces” in view of CHO (US 20140004441) and PARK et. al. 2018 “Effects of powder carrier on the morphology and compressive strength of iron foams: water vs camphene”.
Regarding claims 7,9-11,22-28,31, while a manufacturing process generally does not provide structure to a device claim, in this case, it is possible to infer structure (for example pore size or shape) based on the manufacturing method. LANDIN teaches reduction and sintering of metal oxides (abstract; C2/L40-45;C6/L53-66), and CHO teaches freeze casting process (par. [0012]). LANDIN’s modified device does not teach a camphene-based powder slurry.
However, PARK teaches the effects of powder carrier on the morphology and compressive strength of iron foams: water vs camphene (title, Figs.) including a manufacturing process to form a porous metal-foam filter material comprises a freeze casting method (abstract) including a powder slurry freezing process (abstract; P2182/right C/L8-17), where a solvent (water-based or camphene-based; P2182/right C/L18) powder slurry is:
frozen and dried to form a green body at the appropriate temperature at e.g. -10 ºC, which anticipates the claimed range of about -10 ºC – about 80 ºC;
reduced at the appropriate temperature of e.g. 300 ºC, which anticipates the claimed range of about 200-350 ºC (or optimized as appropriate for claim 28); and,
sintered at the appropriate temperature of e.g. 1,000 ºC, which anticipates the claimed range of about 700-1100 ºC (or optimized as appropriate for claim 28).
See e.g. PARK “materials and procedures” P2183-2184 and Fig. 1.
PARK teaches also metal powders mixed in camphene (PARK P2184/left C/L10) in a volume fraction of 14% (PARK P2184/left C/L8), which anticipates the claimed range of between about 8 (or 10 instant claim 11) volume percent and about 22 (or 30 instant claim 11) volume percent (or may be optimized for claim 31), following the additions of a binder (e.g. polystyrene; PARK P2184/left C/L12) and a dispersant (e.g. Hypermer KD-4; PARK P2184/left C/L14).
PARK teaches both water-based and camphene-based metal foams produce acceptable products with various differences in morphology and properties (P2186), which may be selected based on desirable characteristics (P2189/right C/L7-16).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine/specify/modify the metal foam manufacturing process of LANDIN to be either water or camphene-based as taught by PARK in order to provide for an acceptable metal foam product with desirable properties. The references are combinable, because they are in the same technological environment of metal foam technologies. See MPEP 2141 III (A) and (G).
It is known that the various temperatures may be optimized as a results-effective variable that affects the pore structure and properties (such as yield strength). Therefore, at the time the invention was made, it would have been obvious to one of ordinary skill in the art to select the claimed temperature ranges because PARK teaches the temperatures is a results-effective variable. See MPEP 2144.05 II, A & B.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 12,32 are rejected under 35 U.S.C. 103 as being unpatentable over ISHIBASHI (JP 2001292902) in view of CHO (US 20140004441).
Regarding claims 12,32, ISHIBASHI teaches a water purifying vacuum bottle using titanium dioxide photocatalyst (title) including a water filtration device comprising:
an inlet (“suction part”; par. [0008]);
a foam filter material (“sponge”; par. [0007]) with pore surfaces (porous structure; par. [0007]) capable of making contact with contaminated water drops to kill bacteria and viruses in contaminated water during filtration (par, [0008]),
wherein the metal-foam filter material comprises an input and an output, and the input is coupled to the liquid inlet (flow through the sponge has an input); and
an outlet (“pot spout”; par. [0008]), coupled to the output of the foam filter material (flow through the sponge has an output);
a light source (“light irradiating means”; abstract) providing visible or ultraviolet light (par. [0017]); and,
wherein the foam filter material comprises a thermal titanium dioxide coating grown on a pore surface (anatase type titanium dioxide coating; par. [0007,0012]).
ISHIBASHI does not teach a metal foam having directional pores and/or made by freeze-casting. However, CHO teaches a fuel cell (title, Figs.) including:
an inlet (e.g. fuel H2 inlet; Fig. 1A #100);
a metal-foam filter material with pore surfaces (abstract, Fig. 1 #103,109; Fig. 2; see updated drawings in US 10978715; e.g. titanium; par. [0032,0047]) capable of the intended use of killing bacteria and viruses (see also the operating temperature of 70ºC; par. [0013,0081]);
wherein the metal-foam filter material comprises:
an input (e.g. face where fuel H2 diffuses therethrough of Fig. 1A);
an output (e.g. face where H2O or water diffuses out of Fig. 1A);
pores between the input and output, which are made by freeze-casting providing directional pores (“ice-templating”; par. [0058]);
the input is coupled to the inlet (Fig. 1A); and,
an outlet (e.g. H2O outlet; Fig. 1 #111), coupled to the output of the metal-foam filter material, capable of the intended use of passing liquid water (note that the filter is highly porous (par. [0012;0047-0048]).
CHO teaches that the freeze-casting and directional pores help provide a smooth flow of fluid (par. [0058]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify the filter of ISHIBASHI with a titanium foam having directional pores made by freeze-casting of CHO in order to provide a smooth flow of fluid. The references are combinable, because they are in the same technological environment of filtration/porous materials. See MPEP 2141 III (A) and (G).
Note that an intended use does not provide structure to a device claim.
The limitation “water filtration” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777
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