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 .
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.
Claims 1-2 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. WO 2018/038976 published 1 Mar. 2018 filed 26 Aug. 2016 (hereafter Sebastian) and further in view of Gaetano ITUB20159777 published 30 Jun. 2017 as translated by US20190224607 (hereafter Gaetano) and Wolfe US 5,492,551 (hereafter Wolfe).
Regarding claim 1, Sebastian teaches a vehicle (page 14 line 32 – page 15 line 2) provided with an engine (page 14 line 32 – page 15 line 2), at least one air intake (where one of ordinary skill would understand that an internal combustion engine would require an air intake for the air filter) through which the engine takes in the external air needed to operate, and an air filter (Fig 1), which is arranged downstream of the at least one air intake; the air filter (Figs 1-7 including feature 9) comprises:
one wave-shaped filtering material panel (10) comprising a fabric layer (woven or knitted materials, page 3 lines 3-14);
wherein the filtering material panel comprises only a single layer (page 17 lines 21-33, only a single layer where pleated media 10 may be a non-multilayer material) of meshed fabric in which there are no more overlapped layers of fabric but there is a single layer of fabric (page 17 lines 21-33, only a single layer);
wherein the filtering material panel consists of a single web (page 17 lines 21-33, only a single layer)
wherein the fabric of the filtering material panel are made of polymeric material (page 3 lines 3-14).
Sebastian does not teach
the filtering material panel is made up of a plurality of weft wires and a plurality of warp wires interlaced with one another to form a plurality of meshes;
an outer reinforcement net, which rests against an outer surface of the filtering material panel, through which the air taken in enters so as to flow through said filtering material panel; and
an inner reinforcement net, which is rests against an inner surface of the filtering material panel opposite the outer surface;
the meshed fabric is micrometrically meshed fabric;
with the warp wires and the weft wires constituting the single layer not superposing other warp wires and weft wires;
filtering material panel consists of a single web of warp threads and weft threads with micrometric meshes;
wherein the warp wires and the weft wires which make up the fabric of the filtering material panel are made of polymeric material; and
wherein the fabric meshes of the filtering material panel have a micrometric size comprised between 15 and 75 microns.
Gaetano a vehicle (Fig 1) provided with an engine (2), at least one air intake (4) through which the engine takes in the external air needed to operate (¶16-17), and an air filter (6), which is arranged downstream of the air intake (as shown in Fig 1); the air filter (6) comprises:
one wave-shaped filtering material panel (Fig 3) comprising a fabric layer (¶18);
an outer reinforcement net (9), which rests against an outer surface of the filtering material panel (8), through which the air taken in enters so as to flow through said filtering material panel (¶18-19); and
an inner reinforcement net (10), which is rests against an inner surface of the filtering material panel opposite the outer surface (¶18-19).
Gaetano teaches where the inner and outer reinforcement nets reinforce the filter and allow the filtering material element to have a stable shape and resistance (¶18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by incorporating the inner (10) and outer (9) reinforcement nets of Gaetano in order to reinforce the filter and allow the filtering material element to have a stable shape and resistance (¶18).
Wolfe teaches an air filter fabric (abstract) of only a single layer (col 1 lines 14-19) wherein
the filtering material panel (3) is made up of a plurality of weft wires (9) and a plurality of warp wires (8) interlaced with one another to form a plurality of meshes (as shown in Figs 1-3);
the meshed fabric is micrometrically meshed fabric (col 2 line 57 – col 3 line 5);
with the warp wires and the weft wires constituting the single layer not superposing other warp wires and weft wires (col 1 lines 14-19, as shown in Figs 1-3);
filtering material panel consists of a single web of warp threads and weft threads with micrometric meshes (col 1 lines 14-19, col 2 line 57 – col 3 line 5);
wherein the warp wires and the weft wires which make up the fabric of the filtering material panel are made of polymeric material (col 4 lines 33-45); and
wherein the fabric meshes of the filtering material panel have a micrometric size comprised between 15 and 75 microns (col 2 line 57 – col 3 line 5).
Wolfe teaches where the fabric restricts small particles and prevents particle entrainment (col 2 line 57 – col 3 line 5) without requiring forced air (col 1 lines 14-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the single layer (Fig 7) fabric filter (¶18) of Gaetano by incorporating the single layer (col 2 line 64) micrometric polymeric fabric filter (col 4 lines 33-45) of Wolfe in order to restrict small particles and prevent particle entrainment (col 2 line 57 – col 3 line 5) without requiring forced air (col 1 lines 14-19).
MPEP §2144.05 I states that where the prior art and claimed ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the overlapping range of wherein the fabric meshes of the filtering material panel have a micrometric size comprised between 15 and 30 microns as a prima facie case of obviousness.
Further, Applicant’s specification states “Finally, the realization of the air filter 9 is relatively simple and of low cost since the polymeric fabric with micrometric meshes is commercially available.” (Specification page 14 lines 1-3). The air filter 9 is described in Applicant’s specification pages 6-13.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the single layer (Fig 7) fabric filter (¶18) of Gaetano by incorporating the commercially available air filter (Specification pages 6-13) as an obvious matter of the selection of a known material based on its suitability for its intended use.
Regarding claim 2, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian does not teach wherein the fabric meshes of the filtering material panel have a micrometric size comprised between 20 and 50 microns.
Wolfe teaches wherein the fabric meshes of the filtering material panel have a micrometric size of 30 or less microns (col 2 line 57 – col 3 line 5).
MPEP §2144.05 I states that where the prior art and claimed ranges overlap, a prima facie case of obviousness exists to choose the overlapping portion of the ranges. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the overlapping range of wherein the fabric meshes of the filtering material panel have a micrometric size comprised between 20 and 30 microns as a prima facie case of obviousness and in order to prevent passage of small size particulate matter without collecting the particulate matter in or on the filtering medium (Wolfe col 2 lines 35-38).
Regarding claim 7, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian does not teach wherein the air filter comprises a peripheral frame which supports the filtering material panel and comprises in turn: a cup-shaped main body having a perforated bottom wall; and a flat cover which is permanently connected to the main body and is perforated.
Gaetano teaches wherein the air filter comprises a peripheral frame (7) which supports the filtering material panel and comprises in turn: a cup-shaped main body having a perforated bottom wall; and a flat cover which is permanently connected to the main body and is perforated (as shown in Figs 2-4).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by incorporating the peripheral frame (7) of Gaetano in order to support the r material element (¶18) while allowing air to pass through the filter.
Regarding claim 8, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian, Gaetano, and Wolfe further teach wherein the micrometric mesh fabric that makes up the filtering material panel is not soaked, i.e. wet, with any type of liquid (where neither Gaetano nor Wolfe teach soaking; further, the filtering material panel is fully capable of not being soaked in accordance with MPEP 2114, 2115, 2173.05(g)).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. WO 2018/038976 published 1 Mar. 2018 filed 26 Aug. 2016 (hereafter Sebastian) and further in view of Gaetano ITUB20159777 published 30 Jun. 2017 as translated by US20190224607 (hereafter Gaetano) and Wolfe US 5,492,551 (hereafter Wolfe) as applied to claim 1 above, and further in view of Hirakawa US 4,225,642 (hereafter Hirakawa).
Regarding claim 3, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian does not teach wherein the warp wires and the weft wires which make up the filtering material panel are made of PEEK, PET or PA.
Hirakawa teaches teaches a woven air filter fabric wherein the warp wires and the weft wires which make up the filtering material panel are made of PA as a thermoplastic polymer fiber (col 2 line 55 – col 3 line 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by making the warp and weft wires of PA (col 2 line 55 – col 3 line 24) of Hirkawa in order to make the filter of a thermoplastic polymer fiber (col 2 line 55 – col 3 line 24), where thermoplastic polymers soften when heated.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. WO 2018/038976 published 1 Mar. 2018 filed 26 Aug. 2016 (hereafter Sebastian) and further in view of Gaetano ITUB20159777 published 30 Jun. 2017 as translated by US20190224607 (hereafter Gaetano) and Wolfe US 5,492,551 (hereafter Wolfe) as applied to claim 1 above, and further in view of Fox et al. US 2017/0065923 (hereafter Fox).
Regarding claim 4, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian does not teach wherein the warp wires and the weft wires which make up the filtering material panel present:
• a specific weight comprised between 1.20 and 1 .40 g/mm3,
• a textile resistance comprised between 33 and 75 daN/mm2,
• a relative resistance in wet conditions comprised between 95% and 100%,
• a breaking elongation comprised between 20% and 40%, and
• a moisture absorption at 20°C and 65% relative humidity less than a 1 %.
The claim 1 combination teaches a specific weight comprised between 1.20 and 1 .40 g/mm3 (where polyester of Wolfe col 4 line 33-45 has a density of between 1.20 and 1 .40 g/mm3).
Fox teaches where the tensile strength of the strands affects the suitability of the filter (¶112).
MPEP §2144.05 I states that where a variable is known to affect a result, a prima facie case of obviousness exists to optimize the variable. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the textile resistance, such as to a textile resistance comprised between 33 and 75 daN/mm2, in order to affect the suitability of the filter (¶112) and to affect the breaking point of the wires.
Regarding the properties of:
a relative resistance in wet conditions comprised between 95% and 100%,
a breaking elongation comprised between 20% and 40%, and
a moisture absorption at 20°C and 65% relative humidity less than a 1 %,
the prior art combination would have the claimed properties because the prior art combination is the claimed material (polymer such as polyester) with the claimed density, the claimed tensile strength, and the claimed diameter.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. WO 2018/038976 published 1 Mar. 2018 filed 26 Aug. 2016 (hereafter Sebastian) and further in view of Gaetano ITUB20159777 published 30 Jun. 2017 as translated by US20190224607 (hereafter Gaetano) and Wolfe US 5,492,551 (hereafter Wolfe) as applied to claim 1 above, and further in view of “Steel” Wikipedia published 30 Aug. 2016 accessed at <https://en.wikipedia.org/w/index.php?title=Steel&oldid=736856602> (hereafter Steel).
Regarding claim 5, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian does not teach wherein: both reinforcement nets are made of aluminum; and the air filter comprises a flat stiffening grid which rests on the filtering material panel and is made of steel.
Gaetano further teaches wherein: both reinforcement nets are made of aluminum (¶24); and the air filter comprises a flat stiffening grid (21) which rests on the filtering material panel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by making both reinforcement nets are made of aluminum (Gaetano ¶24) where aluminum has a high strength to weight ratio and is flexible/not brittle. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by incorporating the flat stiffening grid (21) which rests on the filtering material panel of Gaetano in order to help the filter bear pressure stresses (Gaetano ¶36).
Steel teaches where steel have a high tensile strength and a low cost (first paragraph).
MPEP §2144.07 states that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the flat stiffening grid of steel as a matter of obvious selection of a known material based on its suitability for its intended use (MPEP §2144.07) and because of steel’s a high tensile strength and a low cost (Steel first paragraph).
Regarding claim 10, Sebastian in view of Gaetano and Wolfe teach all the limitations of claim 1.
Sebastian teaches where the air filter does not provide any flat stiffening grid which rests on the filtering material panel (where Sebastian does not teach such a feature).
Sebastian does not teach wherein one of the two reinforcing nets is made of aluminum while the other of the two reinforcing nets is made of steel.
Gaetano further teaches wherein: both reinforcement nets are made of aluminum (¶24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by making at least one reinforcement net of aluminum (Gaetano ¶24) where aluminum has a high strength to weight ratio and is flexible/not brittle. See MPEP 2144.07.
Steel teaches where steel have a high tensile strength and a low cost (first paragraph).
MPEP §2144.07 states that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make as least one reinforcement net of steel (Steel first paragraph) in order to have a high tensile strength and a low cost (first paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter (Fig 1) of Sebastian by making one reinforcement net of aluminum and one of steel in order to have the advantages of both materials in the reinforcement nets.
Response to Arguments
The following is a response to Applicant’s arguments filed 3 Mar. 2026:
Applicant argues that the 112b rejections are overcome by amendment.
Examiner agrees and the rejections are withdrawn.
Applicant argues that the Sebastian material is a multilayer material and thus does not teach the sing material as claimed.
Examiner disagrees. As cited by Applicant, Sebastian teaches “Thus in at least some embodiments, filter element 1 will include only a single layer of pleated media 10 (although pleated media 10 itself may be a multilayer material) rather than including a stack or wrap of multiple layers of media. In particular embodiments, filter element 1 is not a cylindrical cartridge filter.” One of ordinary skill would understand that the from the teaching that the single layer may be a multilayer material, that the alternative teaching is for the single layer to be itself not made of a multilayer material (i.e. a single layer material may of a single layer material).
Applicant argues that Sebastian teaches away from the modification by Gaetano.
Examiner disagrees.
As cited by applicant, Sebastian teaches “In at least some embodiments, pleated filter media 10 does not comprise any type of planar reinforcing structure or support layer (e.g., strips of chipboard, a layer of wire mesh, a nonwoven scrim, etc.) … in some embodiments the herein-disclosed hardened adhesive dams … can provide sufficient mechanical integrity of the pleated filter media that no such support layer or layers may be needed.”
Similar to the arguments regarding the single layer, that Sebastian teaches one embodiment with certain characteristics does not prevent Sebastian from teaches other embodiments with different characteristics. Sebastian does not teach that every embodiment does not comprise/require a support layer. Further, even in the embodiments cited by Applicant which do not have a support layer, Sebastian does not teach away from having a support layer but merely teaches that a support layer is not required.
Even assuming that every embodiment of Sabastian were taught not to have a support layer, one or ordinary skill would not be discouraged from having a support layer. One of ordinary skill would recognize that even if a support layer were not required, having a support layer would provide further support and thus have the resulting mechanical advantages of the further support.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that Gaetano does not teach a single layer, 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).
Applicant agrees that Wolfe teaches a single layer filter, however argues based on the disclosure of Figs 4 and 5 that the only embodiment which is a single layer filter is the embodiments of Figs 4 and 5 which is a non-woven filter.
The argument is not persuasive. Applicant has shown that one embodiment, which embodiment does not teach the warp and weft wires, is a single layer. Applicant has not show that the embodiment which does include the warp and weft wires is not a single layer. Rather, Wolfe teaches that the “Field of the Invention” is “to a single-layer” filter and where the single layer prevents particles from being entrained (col 2 line 57 – col 3 line 5).
Applicant argues that Wolfe is not in the same field of endeavor.
Examiner disagrees. Wolfe is in the field of air filters.
Applicant argues that Wolfe is not reasonable pertinent to the problem faced by the inventor.
Examiner disagrees. Wolfe is pertinent to the problem of air filtration. For instance, Wolfe prevents the passage of small size particular matter (col 2 lines 35-38), which is a problem identified by Applicant (page 2 lines 5-10).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN HOBSON whose telephone number is (571)272-9914. The examiner can normally be reached 9am-5pm.
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/STEPHEN HOBSON/Examiner, Art Unit 1776