DETAILED ACTION
This action is in response to the amendments and remarks filed on 10/23/2025, in which claims 1, 15, 19, 30 and 33 have been amended and claims 1-2, 5, 15-19, 30 and 33-37 are pending and ready for examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 23 OCTOBER 2025 is/are in compliance with the provisions of 37 CFR 1.97 and has/have been considered. An initialed copy of Form 1449 is enclosed herewith.
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.
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Claims 1-2, 5, 15-19, 30 and 34-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 16 and 18-21 of U.S. Patent No. 10,315,140 in view of US 2015/0328565 (hereinafter “Swaminathan”) and WO 1999016964 A1 (hereinafter “Strom”).
With regard to Claims 1, 19 and 30 of the instant application, the US’140 claims discloses a method of treating a filter media (i.e. substrate) and said treated filter media/substrate, comprising exposing a surface of a substrate to UV radiation to treat the surface, the ultraviolet (UV) radiation having a wavelength in a range of 180 nm to 210 nm, wherein the UV-treated surface of the substrate comprises at least one of an aromatic component and an unsaturated component, and wherein the UV-treated surface has a roll off angle in a range of 50 degrees to 90 degrees and a contact angle in a range of 90 degrees to 180 degrees for a 50 µL water droplet when the surface is immersed in toluene.
US’140 does not disclose (1) wherein the substrate comprises cellulose, glass, or a combination thereof, (2) filtering the UV radiation through a mask defining an opening pattern, to UV treat only a portion of the surface, wherein treating the portion of the surface results in an untreated (non-UV radiation-treated) portion of the surface, or (3) the untreated portion of the surface has a roll off angle between 0 degrees and 50 degrees for a 50 µL water droplet when the surface is immersed in toluene, or with specific regard to claim 19 wherein the substrate is formed from a UV-treated fiber.
However, with regard to the substrate comprises cellulose, glass, or a combination thereof, Swaminathan discloses a substrate layer, wherein the surface of one or more layer may be modified to be wetting toward the fluid to be separated ([0029]). In these embodiments, the wetting surface may be used to cause at least a portion of droplets of the fluid to be separated to coalesce, such that the droplets have the requisite size for removal at a subsequent layer and/or such that the coalesced droplets are able to be separated (e.g., via gravity) at the wetting surface ([0029]), and that one or more layers in the filter media/substrate may be non-woven and include synthetic fibers, including regenerated cellulose (e.g., synthetic cellulose such as lyocell, rayon, acrylic) ([0093], [0132]).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the substrate and method of US’104 by using for the substrate one which is nonwoven and comprises cellulose fibers as disclosed by Swaminathan since such fiber materials are conventional in the art for similar filter substrates which address droplet coalescing on the media.
With regard to (2) filtering the UV radiation through a mask defining an opening pattern, to UV treat only a portion of the surface, wherein treating the portion of the surface results in an untreated (non-UV radiation-treated) portion of the surface, Strom discloses a method of treating a substrate comprising:
filtering ultraviolet (UV) radiation having a wavelength in a range 200-250 nm (which thus the specific end range value of 200) through a mask defining an opening pattern; and
exposing a surface of the substrate to the filtered UV radiation to treat only a portion of the surface to form a pattern of UV treated and non-UV treated surfaces to adjust the wetting of the material by creating patterns of hydrophobic or hydrophilic treated areas, Abstract, P2/L21-P4/L6, P5/L21-P6/L6; and
where in the substrate may fabric or “yarns, fibres, strips and membranes” (P3/L13-17).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the substrate and method of US’104 by filtering the UV radiation through a mask defining an opening pattern; and exposing a surface of the substrate to the filtered UV radiation to treat only a portion of the surface to form a pattern of UV treated and non-UV treated surfaces as disclosed by Strom in order to adjust the wetting pattern of the filter material.
With regard to (3) the untreated portion of the surface has a roll off angle between 0 degrees and 50 degrees for a 50 µL water droplet when the surface is immersed in toluene; asd discussed above, Strom discloses forming a pattern of UV treated and non-UV treated surfaces to adjust the wetting of the material by creating patterns of hydrophobic or hydrophilic treated areas, supra; and while this is not discussed with regard specifically to roll off angle between 0 degrees and 50 degrees for a 50 µL water droplet when the surface is immersed in toluene, it does imply that the untreated surface should have properties different from the UV-treated surface with regard to hydrophobicity/hydrophilicity.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of US’104 in view of Strom by having the untreated/non-UV-treated surface portions comprise a roll off angle range for a 50 µL water droplet when the surface is immersed in toluene outside that of the UV-treated portions, i.e. less than 50 or more than 90, in order to create a pattern of differing hydrophobicity/hydrophilicity.
With regard specifically to claim 19, as discussed above, the substrate may comprise fibers, and thus exposing a surface of the substrate to the filtered UV radiation to treat a portion of the surface inherently exposes and treats a surface of the fibers, and thus inherently discloses forming a substrate from the treated fiber.
With regard to Claim 2 of the instant application, the US’140 claims are silent to the substrate surface being planer or non-planer. However, Swaminathan discloses the substrate may be plated ([129]), and thus non-planer. Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of US’104 in view of Swaminathan and Strom by using a pleated substrate, because such pleated filter substrate materials are conventional in the art for similar filter substrates which address droplet coalescing on the media.
With regard to Claim 5 of the instant application, the US’140 claims are silent to the substrate surface being planer or non-planer. However, Strom discloses the substrate may be flat/planer (Figs. 1-3). Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of US’104 in view of Swaminathan and Strom by using a flat/planer substrate, because such pleated filter substrate materials are conventional in the art for similar filter substrates which surface wetting behavior.
With regard to Claims 15-17 of the instant application, the US’140 claims 18-19 disclose the UV exposure can be done in the presence of oxygen, ozone or H2O2. While the H2O2 is not sepficially disclosed to be in a solution, the H2O2 must either be in air or liquid solution, where doing either is seen as obvious to try because it involves the selection of one of a finite number of possible options.
With regard to Claim 18 of the instant application, while expose time is not disclosed, it is clear the exposure time effects the degree of treatment because the UV radiation causes “dissociating carboxylic bonds, leaving unsaturated carboxylic and/or ketone bonds exposed at the surface” and “may also or instead etch the surface in a submicron scale due to molecular breakdown” Strom P6/L12-21. Thus UV exposure time is a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
With regard to Claim 34 of the instant application, the US’140 claim 1 discloses the substrate comprises a filter media.
With regard to Claim 35 of the instant application, as discussed supra the substrate may be non-woven and fibrous, and thus is considered a fiber web.
With regard to Claim 36 of the instant application, the US’140 claim 1 discloses the substrate comprises a filter element, i.e. filter media, and further Strom discloses the substrate may fabric or “yarns, fibres, strips and membranes” (P3/L13-17), and therefore it would have been obvious to use a membrane for the filter media because it is known to treat similar filter membranes in a similar way.
With regard to Claim 37 of the instant application, as discussed supra the substrate may be fibrous, and specifically can be nonwoven.
Claims 1, 5, 17-19, 30 and 34-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 14 of copending Application No. 16/970,109 in view of US 2015/0328565 (hereinafter “Swaminathan”) and WO 1999016964 A1 (hereinafter “Strom”). This is a provisional nonstatutory double patenting rejection.
With regard to Claims 1, 19 and 30 of the instant application, Ap’109 discloses a filter element having a substrate layer having a surface with a roll off angle in a range of 50 degrees to 90 degrees and a contact angle in a range of 90 degrees to 180 degrees for a 50 µL water droplet when the surface is immersed in toluene, wherein the surface is a UV treated surface, and the substrate layer comprises at least one of an aromatic component and an unsaturated component. And thus while a method is not disclosed, the claims disclose it is obvious to perform a method of treating the substrate comprising exposing a surface of the substrate to UV radiation to treat the surface.
Ap’109 does not disclose (1) wherein the substrate comprises cellulose, glass, or a combination thereof, (2) filtering UV radiation having a wavelength in a range of 180 nm to 210 nm, through a mask defining an opening pattern, to UV treat only a portion of the surface, wherein treating the portion of the surface results in an untreated (non-UV radiation-treated) portion of the surface, or (3) the untreated portion of the surface has a roll off angle between 0 degrees and 50 degrees for a 50 µL water droplet when the surface is immersed in toluene, or with specific regard to claim 19 wherein the substrate is formed from a UV-treated fiber.
However, with regard to the substrate comprises cellulose, glass, or a combination thereof, Swaminathan discloses a substrate layer, wherein the surface of one or more layer may be modified to be wetting toward the fluid to be separated ([0029]). In these embodiments, the wetting surface may be used to cause at least a portion of droplets of the fluid to be separated to coalesce, such that the droplets have the requisite size for removal at a subsequent layer and/or such that the coalesced droplets are able to be separated (e.g., via gravity) at the wetting surface ([0029]), and that one or more layers in the filter media/substrate may be non-woven and include synthetic fibers, including regenerated cellulose (e.g., synthetic cellulose such as lyocell, rayon, acrylic) ([0093], [0132]).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the substrate and method of AP’109 by using for the substrate one which is nonwoven and comprises cellulose fibers as disclosed by Swaminathan, since such fiber materials are conventional in the art for similar filter substrates which address droplet coalescing on the media.
With regard to (2) filtering the UV radiation through a mask defining an opening pattern, to UV treat only a portion of the surface, wherein treating the portion of the surface results in an untreated (non-UV radiation-treated) portion of the surface, Strom discloses a method of treating a substrate comprising:
filtering ultraviolet (UV) radiation having a wavelength in a range 200-250 nm (which thus the specific end range value of 200) through a mask defining an opening pattern; and
exposing a surface of the substrate to the filtered UV radiation to treat only a portion of the surface to form a pattern of UV treated and non-UV treated surfaces to adjust the wetting of the material by creating patterns of hydrophobic or hydrophilic treated areas, Abstract, P2/L21-P4/L6, P5/L21-P6/L6; and
where in the substrate may fabric or “yarns, fibres, strips and membranes” (P3/L13-17).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the substrate and method of Ap’109 by filtering the UV radiation, having a wavelength in a range 200-250 nm, through a mask defining an opening pattern; and exposing a surface of the substrate to the filtered UV radiation to treat only a portion of the surface to form a pattern of UV treated and non-UV treated surfaces as disclosed by Strom in order to adjust the wetting pattern of the filter material.
With regard to (3) the untreated portion of the surface has a roll off angle between 0 degrees and 50 degrees for a 50 µL water droplet when the surface is immersed in toluene; asd discussed above, Strom discloses forming a pattern of UV treated and non-UV treated surfaces to adjust the wetting of the material by creating patterns of hydrophobic or hydrophilic treated areas, supra; and while this is not discussed with regard specifically to roll off angle between 0 degrees and 50 degrees for a 50 µL water droplet when the surface is immersed in toluene, it does imply that the untreated surface should have properties different from the UV-treated surface with regard to hydrophobicity/hydrophilicity.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Ap’109 in view of Strom by having the untreated/non-UV-treated surface portions comprise a roll off angle range for a 50 µL water droplet when the surface is immersed in toluene outside that of the UV-treated portions, i.e. less than 50 or more than 90, in order to create a pattern of differing hydrophobicity/hydrophilicity.
With regard specifically to claim 19, as discussed above, the substrate may comprise fibers, and thus exposing a surface of the substrate to the filtered UV radiation to treat a portion of the surface inherently exposes and treats a surface of the fibers, and thus inherently discloses forming a substrate from the treated fiber.
With regard to Claim 5 of the instant application, the Ap’109 claim 1 discloses the filter element/substrate is pleated and thus non-planer.
With regard to Claim 17 of the instant application, the Ap’109 claim 13 discloses the surface may be UV-oxygen -treated, and therefore it would have been obvious to expose the surface to oxygen while exposing the surface to the filtered UV radiation.
With regard to Claim 18 of the instant application, while expose time is not disclosed, it is clear the exposure time effects the degree of treatment because the UV radiation causes “dissociating carboxylic bonds, leaving unsaturated carboxylic and/or ketone bonds exposed at the surface” and “may also or instead etch the surface in a submicron scale due to molecular breakdown” Strom P6/L12-21. Thus UV exposure time is a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
With regard to Claim 34 of the instant application, the Ap’109 claim 1 discloses the substrate comprises a filter element, i.e. filter media.
With regard to Claim 35 of the instant application, as discussed supra the substrate may be fibrous, and thus is considered a fiber web.
With regard to Claim 36 of the instant application, the Ap’109 claim 1 discloses the substrate comprises a filter element, i.e. filter media, and further Strom discloses the substrate may fabric or “yarns, fibres, strips and membranes” (P3/L13-17), and therefore it would have been obvious to use a membrane for the filter media because it is known to treat similar filter membranes in a similar way.
With regard to Claim 37 of the instant application, as discussed supra the substrate may be fibrous, and specifically can be nonwoven.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Applicant's arguments filed 10/23/2025 have been fully considered and they are persuasive. The Examiner agrees that the prior art cited does not disclose wherein the substrate comprises cellulose, glass or a combination thereof, and the Examiner could find no other art to motivate using a substrate comprises cellulose, glass or a combination thereof.
Claims 1-2, 5, 15-19, 30 and 33-37 would be allowable if the Double Patenting rejection(s), set forth in this Office action, are overcome.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773