DETAILED ACTION
This action is in response to the amendments and remarks filed 01/15/2026 in which claims 1, 19 and 23 have been amended and claims 1-4, 6-17 and 19-25 are pending and ready for examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 26 SEPTEMBER 2025, 23 DECEMBER 2025, 15 JANUARY 2023 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.
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.
Claims 1-4, 6-17 and 19-22 are rejected under 35 U.S.C. 112(b) 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 the limitations “a similar polymeric material” and “the similar polymeric material”, where each of the bicomponent sheath and core as well as the other synthetic staple fibers comprise this “similar polymeric material”. It is thus not clear if the “similar polymeric material” is the same polymer used in each, or if each of them may contain different polymers which are “similar.
Further, it is not clear what would constitute polymeric materials that are similar, as this could mean many things. Are all thermoplastic polymers sufficiently similar, or all polyesters sufficiently similar, or must they be more similar such as different molecular weights of the same polymer such as polyethylene terephthalate. Thus the term “similar” is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Correction is required. For purposes of compact prosecution it will be interpreted that the other synthetic staple fibers and the core and sheath of the bicomponent fiber are the same polymer.
Claim 19 “a polymeric material that is similar to a polymeric material used in a bicomponent fiber”. The use of two “a polymer material” is confusing, it is not clear if they are different or the same material, especially because they are disclosed to be similar and not identical. Correction is required.
Further, it is not clear what would constitute polymeric materials that are similar, as this could mean many things. Are all thermoplastic polymers sufficiently similar, or all polyesters sufficiently similar, or must they be more similar such as different molecular weights of the same polymer such as polyethylene terephthalate. Thus the term “similar” is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Correction is required. For purposes of compact prosecution it will be interpreted that the other synthetic staple fibers and the core and sheath of the bicomponent fiber are the same polymer.
Claims 2-4, 6-17 and 20-22 are rejected for depending from an indefinite claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4, 6-13, 15-17, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0232371 A1 (hereinafter “Anantharamaiah”) in view of US 7,507,272 B2 (hereinafter “Emig”), US 2019/0224609 A1 (hereinafter “Niki), and US 2016/0236132 A1 (hereinafter “Hara).
Regarding claim 1, 3-4 and 12 Anantharamaiah discloses
a fibrous filtration media comprising a wet-laid [0007], fibrous web (Abstract, [0004]-[0005], [0014] comprising:
bicomponent fibers dispersed throughout the fibrous web which may be “greater than or equal to about 20 wt%” and “less than or equal to 80 wt%”, based on total weight of the fibrous web, [0045]-[0049]; that may be staple length [0053], [0069]; and
where the remainder (up to 100%) may be other synthetic fibers, where the synthetic fibers may be staple length [0040]-[0042], [0053], [0069];
the binder/bicomponent staple fibers may have an average diameter of greater than or equal to 1 micron [0052];
wherein the other synthetic staple fibers may have an average diameter of 0.5-15 or greater than 20 micron (i.e. as it is a mix of the fine and coarse fibers); [0034]-[0038];
wherein the fibrous web has a dry Mullen burst strength of as much as “greater than or equal to about 240 psi” [0059] (where the dry burst strength is not limited to any particular measuring method and thus it is seen as obvious to use a dry burst strength of greater than or equal to about 500 kPa as measured by any test for dry burst strength), which overlaps the range claimed;
with regard to the density, it is not directly disclosed however the basis weight may be “less than or equal to 110 g/m2” [0062] and the thickness may be “less than or equal to about 2 mm” [0063]; and thus calculating the density from within those ranges with a basis weight of 110 g/m2, all thickness less than 0.55 mm will have a density of 0.20 g/cm3 or higher; and thus the range of densities which are disclosed/calculated inherently by the combination of basis weight and thickness ranges disclosed overlaps the range claimed.
Since the ranges disclosed overlaps the range claimed, the ranges recited in the claims are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s ranges that corresponds to the claimed range. See MPEP 2144.05(I).
Anantharamaiah does not disclose (1) the wet-laid nonwoven fibrous web being hot area-calendared in the absence of any other layer of the fibrous filtration media or (2) embossed only one side in the absence of any other layer of the fibrous filtration media, or (3) where the bicomponent staple fiber comprises a sheath and a core, each of which comprise a similar polymeric material as the staple fibers, but where the sheath and core have different melting temperatures.
However, with regard to (1) the wet-laid nonwoven fibrous web being hot area-calendared in the absence of any other layer of the fibrous filtration media, as detailed above Anantharamaiah discloses that the wet-laid nonwoven layer may comprise bicomponent binder fibers, and further discloses that no other layers are required, i.e. the wet-laid layer alone is disclosed. It is not disclosed however how those binder fibers are actually used to bind the nonwoven media, though it is well known in the art to heat the bicomponent binder fibers to achieve the binding, hot area calendaring is not specifically disclosed.
However Emig discloses that it is known use thermal (i.e. heated) calendaring to bond together the bicomponent binder fibers in a wet-laid nonwoven filter media, to consolidate the web of fibers and to improve the strength of the web; C6/L5-19.
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah by boding together the bicomponent fibers in the nonwoven via heated calendaring as disclosed by Emig because this involves using a known process to bind a wet-laid nonwoven filter web comprising bicomponent binder fibers to achieve the predictable result of forming a successful nonwoven filter material, and to improve the strength of the nonwoven formed.
With regard to (2) embossing, the fibrous web may be embossed Anantharamaiah [0103], but does not disclose wherein only one side of the fibrous web may comprise an embossing. However, Niki discloses it is known to emboss only one side of a nonwoven filter material so that the different sides “can be distinguished to prevent the front and back sides from being mistakenly switched” [0107]-0110].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah in view of Emig by embossing only one side of the fibrous filtration media as disclosed by Niki so that the different sides “can be distinguished to prevent the front and back sides from being mistakenly switched” [0107]-0110].
With regard to (3) the bicomponent fibers’ core and sheath material; Hara discloses a similar fibrous filter bonded by bicomponent fibers, where fibrous core/sheath bicomponent fibers are used in a nonwoven filter material, wherein the bicomponent fibers may be formed of polyethylene terephthalate (PET), wherein the PET forming the sheath has a melting temperature which is less than that of the PET forming the core [0077].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah in view of Emig and Niki by using bicomponent fibers which are formed of polyethylene terephthalate (PET), wherein the PET forming the sheath has a melting temperature which is less than that of the PET forming the core as disclosed by Hara because this involves the simple substitution of known bicomponent core/sheath fibers used in similar nonwoven filter materials, to obtain the predictable result of forming a non-woven filter.
With regard to the other synthetic staple fibers, Anantharamaiah discloses the synthetic fibers may be polyester including polyethylene terephthalate (PET) [0042], and thus the other synthetic staple fibers may be PET, and therefore in the combined invention of Anantharamaiah in view of Emig, Niki and Hara the bicomponent staple fiber comprises a sheath and a core, each of which comprise a similar polymeric material as the staple fibers, but where the sheath and core have different melting temperatures.
Regarding claim 2 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the fibrous web has an MD stiffness of greater than or equal to about 200 mg and less than or equal to about 3500 mg ([0056], Claim 19), which overlaps the range claimed.
Since the range disclosed overlaps the range claimed, the range recited in the claim in considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s range that corresponds to the claimed range. See MPEP 2144.05(I).
Further, with regard to the material properties after hot oil aging, since the composition is the same as the composition recited in claims 1 and 2, it is asserted, absent evidence to the contrary, that one would reasonably expect that the media disclosed by Anantharamaiah inherently has the same properties as the media recited in claim 2. See MPEP 2112.01.
Regarding claim 6 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1 wherein the web comprise less than 1 wt. % glass fibers [0089].
Regarding claim 7 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1 wherein the other synthetic staple fibers may comprise a mixture of at least two different types of synthetic fibers [0042].
Regarding claim 8 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the other synthetic staple fibers may be regenerated cellulose [0042], and may be included in a wide range of percentages [0032]-[0037], [0040], overlapping those claimed.
Since the range disclosed overlaps the range claimed, the range recited in the claim in considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding claim 9 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the filtration media further comprises fire retardants [0043].
Regarding claim 10 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the other synthetic staple fibers are forms of a polymer selected from the group consisting of polyethylene terephthalate (PET), polybutylene terephthalate (PBT), polyethylene (PE), polypropylenes (PP), various nylons, and combinations thereof [0042].
Regarding claim 11 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the other synthetic staple fibers may be present at wide range of percentages [0032]-[0037], [0040], overlapping those claimed.
Since the range disclosed overlaps the range claimed, the range recited in the claim in considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding claim 13 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the bicomponent staple fibers are sheath-core bicomponent stable fibers [0045].
Regarding claim 15 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the fibrous web is not specially disclosed to have a Pore Size Range of 30 μm or less, however it is disclosed that fiber pore size affects filtration performance of the media [0003], and is therefore a result effective variable. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate pore size, including those within the scope of the present claims, so as to produce desired filter performance.
Regarding claim 16 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the filtration media has a particle removal efficiency of greater than or equal to 95+% [0065], which overlaps the range claimed.
Since the range disclosed overlaps the range claimed, the range recited in the claim in considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding claim 17 Anantharamaiah in view of Emig, Niki and Hara discloses a filter element comprising the filtration media of claim 1, and with regard to it being “for use in hot oil filtration”, this is merely a functional limitation of the disclosed filter. This functional limitation does not further define over the prior art because the structure disclosed by Anantharamaiah would be capable of such use as claimed; Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah in view of Emig, Niki and Hara further in view of WO 2016/070039 A1 (hereinafter “Arrington”).
Regarding claim 2 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 1, wherein the fibrous web has an MD stiffness of greater than or equal to about 200 mg and less than or equal to about 3500 mg ([0056], Claim 19), which overlaps the range claimed.
Since the range disclosed overlaps the range claimed, the range recited in the claim in considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s range that corresponds to the claimed range. See MPEP 2144.05(I).
Anantharamaiah does not specifically the stiffness after hot oil aging of the fibrous filtration media in engine oil at a temperature of 150 °C for a time of 168 hours.
However Arrington discloses a similar fibrous filtration media wherein it is disclosed that it should have sufficient stiffness to not collapse or bow excessively when subjected to oil pressure typically encountered in combustion engines, and discloses stiffnesses in the range claimed, and also tests hot oil aged burst strength and thus discloses the importance of mechanically stability of the media after hot oil ageing; Abstract, [0011], [0030], [0069], [0071], Table 1. Thus the stiffness of the filter media total and each layer, including after hot oil aging by any procedure that replicates engine oil use including that claimed, 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).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah in view of Emig, Niki and Hara further in view of US 2016/0236132 A1 (hereinafter “Hara).
Regarding claim 14 Anantharamaiah in view of Emig, Niki and Hara discloses the fibrous filtration media according to claim 13, wherein the bicomponent fibers may be formed of polyethylene terephthalate (PET), wherein the PET forming the sheath has a melting temperature which is less than that of the PET forming the core; supra, Hara [0077].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah in view of Emig and Hara.
Regarding claim 19 Anantharamaiah discloses a method of making a fibrous web comprising:
a fibrous filtration media comprising a wet-laid [0007], hot area calendared [0022], [0073], [0101] nonwoven fibrous web (Abstract, [0004]-[0005], [0014] comprising:
bicomponent fibers dispersed throughout the fibrous web which may be “greater than or equal to about 20 wt%” and “less than or equal to 80 wt%”, based on total weight of the fibrous web, [0045]-[0049]; that may be staple length [0053], [0069]; and
where the remainder (up to 100%) may be other synthetic fibers, where the synthetic fibers may be staple length [0040]-[0042], [0053], [0069];
the binder/bicomponent staple fibers may have an average diameter of greater than or equal to 1 micron [0052];
wherein the other synthetic staple fibers may have an average diameter of 0.5-15 or greater than 20 micron (i.e. as it is a mix of the fine and coarse fibers); [0034]-[0038];
wherein the fibrous web has a dry Mullen burst strength of as much as “greater than or equal to about 240 psi” [0059], which overlaps the range claimed;
with regard to the density, it is not directly disclosed however the basis weight may be “less than or equal to 110 g/m2” [0062] and the thickness may be “less than or equal to about 2 mm” [0063]; and thus calculating the density from within those ranges with a basis weight of 110 g/m2, all thickness less than 0.55 mm will have a density of 0.20 g/cm3 or higher; and thus the range of densities which are disclosed/calculated inherently by the combination of basis weight and thickness ranges disclosed overlaps the range claimed.
Since the ranges disclosed overlaps the range claimed, the ranges recited in the claims are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s ranges that corresponds to the claimed range. See MPEP 2144.05(I).
The web is formed via a process of:
a. forming a wet-laid fibrous web from an aqueous fibrous slurry [0090] comprising the synthetic staple fibers and bicomponent staple fibers in the amounts as cited above;
b. subjecting the wet-laid fibrous web from step a to hot area calendaring [0022], [0073], [0101] to melt the sheath of the bicomponent staple fibers so as to bond the synthetic staple fibers one to another [0045] and
achieve a fibrous web having the properties as describe above.
With regard to subjecting the wet-laid fibrous web from step a to hot area calendering in the absence of any other layers to melt the sheath of the bicomponent staple fibers so as to bond the synthetic staple fibers one to another, as detailed above Anantharamaiah discloses that the wet-laid nonwoven layer may comprise bicomponent binder fibers, and further discloses that no other layers are required, i.e. the wet-laid layer alone is disclosed. It is not disclosed however how those binder fibers are actually used to bind the nonwoven media, though it is well known in the art to heat the bicomponent binder fibers to achieve the binding.
Anantharamaiah thus does not disclose (1) hot area calendering as claimed, or (2) where the bicomponent staple fiber comprises a sheath and a core, each of which comprise a polymeric material similar to that of the staple fibers, but where the sheath and core have different melting temperatures.
However, with regard to (1) hot area calendaring, Emig discloses that it is known use thermal (i.e. heated) calendaring to bond together the bicomponent binder fibers in a wet-laid nonwoven filter media, to consolidate the web of fibers and to improve the strength of the web; C6/L5-19.
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah by boding together the bicomponent fibers in the nonwoven via heated calendaring as disclosed by Emig because this involves using a known process to bind a wet-laid nonwoven filter web comprising bicomponent binder fibers to achieve the predictable result of forming a successful nonwoven filter material, and to improve the strength of the nonwoven formed.
With regard to (2) the bicomponent fibers’ core and sheath material; Hara discloses a similar fibrous filter bonded by bicomponent fibers, where fibrous core/sheath bicomponent fibers are used in a nonwoven filter material, wherein the bicomponent fibers may be formed of polyethylene terephthalate (PET), wherein the PET forming the sheath has a melting temperature which is less than that of the PET forming the core [0077].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah in view of Emig by using bicomponent fibers which are formed of polyethylene terephthalate (PET), wherein the PET forming the sheath has a melting temperature which is less than that of the PET forming the core as disclosed by Hara because this involves the simple substitution of known bicomponent core/sheath fibers used in similar nonwoven filter materials, to obtain the predictable result of forming a non-woven filter.
With regard to the other synthetic staple fibers, Anantharamaiah discloses the synthetic fibers may be polyester including polyethylene terephthalate (PET) [0042], and thus the other synthetic staple fibers may be PET, and therefore in the combined invention of Anantharamaiah in view of Emig and Hara the bicomponent staple fiber comprises a sheath and a core, each of which comprise a similar polymeric material as the staple fibers, but where the sheath and core have different melting temperatures.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah in view of Emig and Hara further in view of US 2012/0097037 A1 (hereinafter “Matsuda”).
Regarding claim 20 Anantharamaiah in view of Emig and Hara discloses the method according to claim 19, but does not disclose wherein step b is practiced at a calendaring pressure condition of between about 1 kN/m to about 150 kN/m and a calendaring temperature condition of between about 110 °C to about 250 °C with a calendaring line speed of between about 1 m/min to about 50 m/min.
However Matsuda discloses a nonwoven filter material (Abstract, [0023]), wherein the calendaring and embossing conditions including temperature, pressure and speed are known in the art to be adjusted to each suitable polymer and for their effect on the final product [0064]-[0066]. And thus calendaring and embossing conditions including temperature, pressure and speed are known result effective variables. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate calendaring and embossing conditions including temperature, pressure and speed, including those within the scope of the present claims, so as to produce desired filter performance.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah in view of Emig and Hara and further in view of Niki.
Regarding claim 21 Anantharamaiah in view of Emig and Hara discloses the method according to claim 19, wherein the fibrous web may be embossed Anantharamaiah [0103], but does not disclose subjecting only one side of the fibrous web to embossing in the absence of any other layers.
However, Niki discloses it is known to emboss only one side of a nonwoven filter material so that the different sides “can be distinguished to prevent the front and back sides from being mistakenly switched” [0107]-0110].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah in view of Emig and Hara by embossing only one side of the fibrous filtration media as disclosed by Niki so that the different sides “can be distinguished to prevent the front and back sides from being mistakenly switched” [0107]-0110].
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah in view of Emig, Hara and Niki further in view of US 2012/0097037 A1 (hereinafter “Matsuda”).
Regarding claim 22 Anantharamaiah in view of Emig, Hara and Niki discloses the method according to claim 21, but does not disclose wherein step c is practiced at an embossing temperature condition of between about 150 and 200 °C, and at an embossing pressure condition of between about 1 and 20 kgf/cm, and at an embossing machine speed of about 1 to 20 m/min.
However Matsuda discloses a nonwoven filter material (Abstract, [0023]), wherein the calendaring and embossing conditions including temperature, pressure and speed are known in the art to be adjusted to each suitable polymer and for their effect on the final product [0064]-[0066]. And thus calendaring and embossing conditions including temperature, pressure and speed are known result effective variables. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate calendaring and embossing conditions including temperature, pressure and speed, including those within the scope of the present claims, so as to produce desired filter performance.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Anantharamaiah.
Regarding claim 23 Anantharamaiah discloses a filter consisting of a single layer filter element, the single layer filter element consisting of
a filter media consisting of single layer wet-laid nonwoven fibrous web (Abstract, [0004]-[0005], [0007], [0014], wherein the filter media may consist of only the single layer 15 of wet-laid non-woven [0023], and the media may be incorporated into a filter element including a housing, or simply by folding a single sheet into a bag [0107]-[0112]; thus the filter media itself (or with housing) may be considered “a filter comprising a single layer filter element having only one layer consisting of a fibrous filtration media having a single layer of a wet-laid nonwoven fibrous web” as claimed,); comprising:
bicomponent fibers dispersed throughout the fibrous web which may be “greater than or equal to about 20 wt%” and “less than or equal to 80 wt%”, based on total weight of the fibrous web, [0045]-[0049]; that may be staple length [0053], [0069]; and
where the remainder (up to 100%) may be other synthetic fibers, where the synthetic fibers may be staple length [0040]-[0042], [0053], [0069];
the binder/bicomponent staple fibers may have an average diameter of greater than or equal to 1 micron [0052];
wherein the other synthetic staple fibers may have an average diameter of 0.5-15 or greater than 20 micron (i.e. as it is a mix of the fine and coarse fibers); [0034]-[0038];
wherein the fibrous web has a dry Mullen burst strength of as much as “greater than or equal to about 240 psi” [0059] (where the dry burst strength is not limited to any particular measuring method and thus it is seen as obvious to use a dry burst strength of greater than or equal to about 500 kPa as measured by any test for dry burst strength), which overlaps the range claimed;
wherein the density is not directly disclosed however the basis weight may be “less than or equal to 110 g/m2” [0062] and the thickness may be “less than or equal to about 2 mm” [0063]; and thus calculating the density from within those ranges with a basis weight of 110 g/m2, all thickness less than 0.55 mm will have a density of 0.20 g/cm3 or higher; and thus the range of densities which are disclosed/calculated inherently by the combination of basis weight and thickness ranges disclosed overlaps the range claimed; aince the ranges disclosed overlaps the range claimed, the ranges recited in the claims are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Anantharamaiah’s ranges that corresponds to the claimed range. See MPEP 2144.05(I),
wherein the filter media may consist of only the single layer 15 of wet-laid non-woven [0023], and the media may be incorporated into a filter element including a housing, or simply by folding a single sheet into a bag [0107]-[0112]; thus the filter media itself (or with housing) may be considered to be a filter consisting of a single layer filter element, the single layer filter element consisting of the nonwoven fibrous web as claimed.
Claims 24-25 are rejected under Anantharamaiah in view of Niki.
Regarding claim 24 Anantharamaiah discloses the filter of claim 23, wherein the single layer filtration media has a first side and a second side opposite the first side (inherently, and see Fig. 1A) and the fibrous web may be embossed Anantharamaiah [0103], but does not disclose only the second surface of the single layer fibrous filtration media comprising an embossing.
However, Niki discloses it is known to emboss only one side of a nonwoven filter material so that the different sides “can be distinguished to prevent the front and back sides from being mistakenly switched” [0107]-0110].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the media of Anantharamaiah by embossing only one side of the fibrous filtration media as disclosed by Niki so that the different sides “can be distinguished to prevent the front and back sides from being mistakenly switched” [0107]-0110].
Regarding claim 24 Anantharamaiah in view of Niki discloses the filter of claim 24, but is silent to any specific flow direction through the media, and thus does not disclose wherein the single layer fibrous filtration media is positioned in the filter with the first surface facing the upstream and the second surface facing the downstream.
However, since no specific flow direction is required, it would have been prima facie obvious to one of ordinary skill in the art to try using either side as the upstream side, because this involves the simple choice between two finite options.
Response to Amendment
The previous 35 U.S.C. 112(b) rejections of claims 23-25 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 01/15/2026 have been fully considered, but they are not persuasive.
Applicants’ arguments with regard to the bicomponent fibers of Anantharamaiah are moot as Hara is now cited with regard to the bicomponent fibers.
In response to Applicants’ argument that Anantharamaiah does not teach a single layer filter element and thus does not render obvious the invention of claim 23; the Examiner disagrees. Applicants argue that because the figures 1A-D disclose multiple layers that they filter media must have multiple layers, however Anantharamaiah is clear that the filter media may consist of only the single layer 15 of wet-laid non-woven and “that not all layers shown in the figures need be present in some embodiments [0023].
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
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