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 .
Examiner’s Note
Independent claims 1 and 14 each recite the limitation of “an air permeability value of the composite filter medium is at least 5,200 l/m2s at a pressure of 200 Pa.” This limitation is interpreted as the permeability of some component of the composite filter medium, and not merely the permeability of the composite itself. For instance, the base woven fabric could have a permeability of 5,200 l/m2s with the composite filter medium (the base woven fabric and the nanofibers) having a lower permeability.
If the claims were written such that the air permeability of the entire composite filter medium was at least 5,200 l/m2s at a pressure of 200 Pa, this would likely raise concerns of enablement. Specifically, the breadth of the claims would allow for the composite filter medium, comprising a base woven fabric and nanofibers deposited on the base woven fabric, to have an air permeability of at least 5,200 l/m2s at a pressure of 200 Pa. The permeability of 5,200 l/m2s converts to around 11,018 cubic feet per minute (CFM). The nature of the invention of a filter medium with a base woven fabric and nanofibers deposited on the base woven fabric does not allow for such a high permeability at this pressure because the small diameter of nanofibers is restrictive to airflow. The state of the art does not provide guidance on making and using a composite filter medium with nanofibers with a permeability of at least 5,200 l/m2s at a pressure of 200 Pa. Specifically, Park, US 2016/0175748 A1 teaches that when using nanofibers as a filter, there are problems such as limits in permeability. See Park [0016]. This problem is evidenced by Canonico et al., US 2012/0012523 A1, which demonstrates that nanofibers substantially decrease the permeability of a composite material, because it describes a fabric material composite having a knitted layer with a permeability of 5,600 l/m2s, with the composite itself having a greatly reduced permeability of between 50 and 496 l/m2s when nanofibers are applied to the knitted layer. See Canonico Fig. 3, [0080–[0083]. Also, Hossain et al., US 2018/0237967 A1 teaches a protective vent having a carrier layer with nanofibers deposited on it, with the protective vent having a permeability of between 1 to 50 l/m2s. See Hossain [0025]. Further, the Examiner has been unable to locate a prior art reference of a filter material comprising nanofibers where the permeability was on the order of magnitude of at least 5,200 l/m2s at a pressure of 200 Pa. See e.g., Higginson et al., US 2020/0179848 A1 (nanofiber layer has permeability of 0.75 to 75 CFM). The Applicant has failed to provide much direction or working examples for how to make and use a composite filter medium with a nanofiber layer with a permeability of at least 5,200 l/m2s at a pressure of 200 Pa. Instead, the disclosure only says that the permeability value of 5,200 l/m2s at a pressure of 200 Pa is achieved after plasma treatment of the filter medium 8, without providing examples for achieving this value. See Spec. p. 6, l. 29–p. 7, l. 1. Therefore, even if claims 6 and 14 were amended such that the permeability of the entire composite filter medium was at least 5,200 l/m2s at a pressure of 200 Pa, this amendment would not likely result in a notice of allowance due to lack of enablement.
Specification
The disclosure is objected to because it cites to claims 1 and 6 by their number, which potentially creates confusion because the scope of issued claims 1 and 6 may differ from originally filed claims 1 and 6. See Spec. p. 2, ll. 21–23. To correct this problem, the Applicant should delete the reference to specific claim numbers from the specification. Appropriate correction is required.
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 6–10 and 12–20 are rejected under 35 U.S.C. 103 as being unpatentable over Canonico et al., US 2012/0012523 A1 in view of Ono et al., US 2012/0174789 A1 in view of Kim et al., US 2019/0281947 A1 in view of Hossain et al., US 2018/0237967 A1 in view of Wünn et al., US 2015/0007721 A1 and in further view of Li et al., US 2006/0081394 A1.
Regarding claims 6 and 19, Canonico teaches a fabric material composite construction that can be used for filtration, which reads on the claimed “composite filter medium.” See Canonico [0001].
The fabric material comprises a knitted fabric, which reads on the “base woven fabric.” See Canonico [0007].
The fabric material also comprises a nanofiber layer deposited on the knitted fabric by an electrospinning process. See Canonico [0007]–[0008]. The nanofibers of the nanofiber layer read on the “nanofibers deposited on the base woven fabric by means of an electrospinning process.”
The knitted fabric has a permeability, which reads on “an air permeability value of the composite filter medium.” See Canonico [0081]–[0083]. The permeability of the knitted fabric is 5,600 l/m2 (id.), which either reads on the claimed range of at least 5,200 l/m2 or is close enough to the claimed range to establish a prima facie case of obviousness. See MPEP 2144.05, subsection I.
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Canonico differs from claim 6 because it is silent as to the fabric material being coupled with at least one layer of a pressure sensitive adhesive, with an adhesion level between the fabric material and the layer of pressure sensitive adhesive being at least 100 gf/200 mm, as claimed.
But Canonico teaches that the fabric can be used as a protective element of a cellular phone. See Canonico [0006].
With this in mind, Ono discloses a vent plug with a membrane that can be used to cover an opening of an electronic device such as a mobile phone. See Ono [0001]–[0002]. The membrane can be coupled to the electronic device using double-sided pressure sensitive adhesive tape. Id. at [0077]. Also, while Ono is silent as to the adhesion level between the membrane and the double-sided tape, Kim teaches that the adhesion level between an adhesive layer 113 (which can be double sided tape) and a main body M of an artificial nail (comprising layers of material) is result effective because if the tackiness is less than 300 gf/in, the adhesive layer 113 is more likely to separate from the main body M, but if the tackiness is greater than 25,000 gf/in, the main body M can be damaged when the user separates the adhesive layer 113 for replacement purposes. See Kim [0047], [0074].
As such, it would have been obvious to use double-sided pressure sensitive adhesive tape to attach the fabric material of Canonico to the cellular phone because the fabric material would require some mechanism to attach it to the phone, and double-sided pressure sensitive adhesive tape is suitable for this purpose. It also would have been obvious to use routine experimentation to determine the optimal adhesion level between the double-sided tape and the fabric material to ensure that it does not separate from the fabric material while preventing damage. See MPEP 2144.05, subsection II (where 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). A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of greater than 100 gf/20 mm (claim 6) or greater than 200 gf/20 mm (claim 19) because Kim teaches that the tackiness of double-sided tape should be between 300 to 25,000 gf/in, which converts to 237 to 19,750 gf/20 mm. Note that the limitations indicating that the plasma treatment without any polymer-containing gas “increases the adhesion level” (claim 6) and that the adhesion level is “as a result of the plasma treatment without any polymer-containing gas” (claim 19) fail to further limit the scope of the claim because they describe the process of making the product instead of the structure of the product itself. See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production unless the process implies structure).
Canonico also differs from claim 6 because it is silent as to the knitted fabric and nanofibers of the nanofiber layer covered with a nanometric coating to cover the exposed surfaces of the knitted fabric and nanofiber layer, with the nanometric coating having nanogrooves.
But Hossain teaches a protective vent that can be used with a mobile phone, where the protective vent comprises a carrier layer and an electrospun membrane of nanofibers. See Hossain [0002], [0023], [0054]. The protective vent is plasma coated (in the presence of a polymer-containing gas) with a functional film of polymers having fluorine-containing or fluorine-free functional groups, with the film having a thickness of 5 to 80 nm. Id. at [0064], [0079]. The functional film is beneficial because it complements the properties of the protective vent by providing a roll-off effect (also called the “lotus effect”) to improve the oil and water-repellent properties of the protective vent. Id. at [0034]. The oil contact angle of the protective vent with the functional film can range from 130.5 to 133.4°. Id. at p. 10, Table 4. Also, while Hossain is silent as to the functional film comprising nanogrooves, Wünn teaches a method for improving the liquid drip off effect for polymeric membranes used for gas filtration or to block liquids in a vented system. Wünn [0018], [0040]. The membrane can comprise fibers or films, and can be manufactured from a fluorinated polymer. Id. at [0007], [0015]. During the method, the surface of the membrane is roughened to produce bumps, which can have a height and lateral distance on the nanoscale. Id. at [0027]. The surface roughness is beneficial because it provides an advantageous additional liquid drip-off effect (the “lotus effect”) that increases the liquid repellent properties of the membrane. Id. at [0041]. Further, while Wünn is silent as to the surface roughness being obtained through a plasma treatment in the presence of a carrier gas only without any polymer-containing gas, Li teaches a method of creating producing the lotus effect on the surface of a PTFE material, by plasma etching, where the etching gas (i.e., the carrier gas) is oxygen, and where the process is performed without any polymer-containing gas. See Li [0078].
It would have been obvious to cover the knitted fabric and nanofibers of the nanofiber layer of Canonico with the functional film of Hossain to provide the lotus effect to improve the oleophobic and hydrophobic properties of the fabric material for when it is used to protect a cellular phone. It also would have been obvious to roughen the functional film so that it has bumps, in view of Wünn, using the technique of Li, to provide an additional drip-off effect to increase the liquid repellent properties of the functional film. With these modifications, the functional film reads on the “nanometric coating” and the spaces between the bumps of the surface roughness on the functional film reads on the “nanogrooves.” The oil contact angle of the functional film would be at least between 130.5 to 133.4° (see Hossain p. 10, Table 4), which reads on the claimed range of at least 110°.
With respect to the limitations that the nanometric coating layer is—“applied by means of a plasma process in the presence of a carrier gas and a polymer-containing gas,” and the nanogrooves are “obtained through plasma treatment of said nanometric coating layer in the presence of the carrier gas only and without any polymer-containing gas”—these are product-by-process limitations because they describe the method of making the composite filter medium. The patentability of a product does not depend on its method of production, unless the process steps imply structure. See MPEP 2113, subsection I. Here, the plasma process to apply the functional film of Hossain, and the plasma process of Li are substantially the same as the claimed product-by-process limitations, and there is no evidence that any difference between the processes of Hossain and Li result in different structure than would result with the product-by-process limitations in claim 6.
Regarding claim 7, Hossain teaches that the functional film (the “coating layer”) is formed by a film having a thickness ranging from 5 to 80 nm. See Hossain [0064]. This reads on “a thickness of up to 500 nm.”
Regarding claim 8, Hossain teaches that the functional film comprises fluorocarbon acrylates with water and oil repelling properties. See Hossain [0044]–[0045].
Regarding claim 9, Canonico teaches that single threads (“monofilaments”) of the knitted fabric (the “base woven fabric”) are made from starting from a single thread of polyester, polyamide, polypropylene, polyamide, polyphenylene sulfide, poly ether ketone (PEEK), polyvinylidene fluoride (PVDF), polytetrafluoroethylene (PTFE) or aramid, which reads on the claimed list. See Canonico [0027].
Regarding claim 10, Canonico teaches that the knitted fabric (the “base woven fabric”) has a mesh opening of 5 to 2,000 µm, which is within the claimed range of 2500-5 microns. See Canonico [0027].
Regarding claim 12, Canonico as modified teaches the limitations of claim 6, as explained above.
Canonico differs from claim 12 because it is silent as to the material used to manufacture the nanofibers of the nanofiber layer.
But Hossain teaches that the nanofibers of the membrane of its protective vent are electrospun (similar to Canonico) and can be made from polyester, polyamide, polypropylene, polyimide, polypropylene, polysulfone, polyphenylene sulfide, polyether ketone, polyvinylidene fluoride, polytetrafluoroethylene, polycarbonate, polyacrylonitrile, polymethyl methacrylate, polyethylene oxide, or polyethylene. See Hossain [0002], [0047].
It would have been obvious for the nanofibers of the nanofiber layer of Canonico to be manufactured from polyester, polyamide, polypropylene, polyimide, polypropylene, polysulfone, polyphenylene sulfide, polyether ketone, polyvinylidene fluoride, polytetrafluoroethylene, polycarbonate, polyacrylonitrile, polymethyl methacrylate, polyethylene oxide, or polyethylene because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Regarding claim 13, Canonico teaches that the nanofibers of the nanofiber layer have diameters ranging from 80 to 850 nm, which overlaps with the claimed range of 50 to 700 nm, establishing a prima facie case of obviousness. See Canonico [0102]. It is noted that Canonico reports the diameters of the nanofibers as 80 to 850 µm. But this is a typo, with the units intended to be reported in nm, because the fibers are described as “nanofibers” with the figures (e.g., Fig. 9) showing the nanofibers as well below 80 to 850 µm.
Regarding claims 14 and 20, Canonico teaches a cellular phone, which reads on the claimed “mobile phone.” See Canonico [0006]. Canonico also teaches that the cellular phone comprises a fabric material used to protect the inner parts of the phone from particles. Id. The fabric material reads on the “filter medium.” While Canonico is silent as to the cellular phone comprising a body including an opening, with the fabric material coupled to the body to protect the opening, Hossain teaches a mobile phone comprising a body with an opening that allows the phone to be vented, with a protective vent that is coupled to the body to cover the opening. See Hossain [0005], [0052]. It would have been obvious for the cellular phone of Canonico to comprise an opening so as to allow the phone to be vented. It also would have been obvious for the fabric material of Canonico to cover the opening to protect the inner parts of the phone from particles.
Canonico further teaches that the fabric material comprises a knitted fabric, which reads on the “base woven fabric.” See Canonico [0007].
The fabric material also comprises a nanofiber layer deposited on the knitted fabric by an electrospinning process. See Canonico [0007]–[0008]. The nanofibers of the nanofiber layer read on the “nanofibers deposited on the base woven fabric by means of an electrospinning process.”
The knitted fabric has a permeability, which reads on “an air permeability value of the composite filter medium.” See Canonico [0081]–[0083]. The permeability of the knitted fabric is 5,600 l/m2 (id.), which either reads on the claimed range of at least 5,200 l/m2 or is close enough to the claimed range to establish a prima facie case of obviousness. See MPEP 2144.05, subsection I.
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Canonico differs from claim 14 because it is silent as to the fabric material being coupled with at least one layer of a pressure sensitive adhesive, with an adhesion level between the fabric material and the layer of pressure sensitive adhesive being at least 100 gf/200 mm, as claimed.
But Canonico teaches that the fabric can be used as a protective element of a cellular phone. See Canonico p. 2, ll. 1–8.
With this in mind, Ono discloses a vent plug with a membrane that can be used to cover an opening of an electronic device such as a mobile phone. See Ono [0001]–[0002]. The membrane can be coupled to the electronic device using double-sided pressure sensitive adhesive tape. Id. at [0077]. Also, while Ono is silent as to the adhesion level between the membrane and the double-sided tape, Kim teaches that the adhesion level between an adhesive layer 113 (which can be double sided tape) and a main body M of an artificial nail (comprising layers of material) is result effective because if the tackiness is less than 300 gf/in, the adhesive layer 113 is more likely to separate from the main body M, but if the tackiness is greater than 25,000 gf/in, the main body M can be damaged when the user separates the adhesive layer 113 for replacement purposes. See Kim [0047], [0074].
As such, it would have been obvious to use double-sided pressure sensitive adhesive tape to attach the fabric material of Canonico to the cellular phone because the fabric material would require some mechanism to attach it to the phone, and double-sided pressure sensitive adhesive tape is suitable for this purpose. It also would have been obvious to use routine experimentation to determine the optimal adhesion level between the double-sided tape and the fabric material to ensure that it does not separate from the fabric material while preventing damage. See MPEP 2144.05, subsection II (where 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). A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of greater than 100 gf/20 mm (claim 14) or greater than 200 gf/20 mm (claim 20) because Kim teaches that the tackiness of double-sided tape should be between 300 to 25,000 gf/in, which converts to 237 to 19,750 gf/20 mm. Note that the limitations indicating that the plasma treatment without any polymer-containing gas “increases the adhesion level” (claim 14) and that the adhesion level is “as a result of the plasma treatment without any polymer-containing gas” (claim 20) fail to further limit the scope of the claim because they describe the process of making the product instead of the structure of the product itself. See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production unless the process implies structure).
Canonico also differs from claim 14 because it is silent as to the knitted fabric and nanofibers of the nanofiber layer covered with a nanometric coating to cover the exposed surfaces of the knitted fabric and nanofiber layer, with the nanometric coating having nanogrooves.
But Hossain teaches a protective vent that can be used with a mobile phone, where the protective vent comprises a carrier layer and an electrospun membrane of nanofibers. See Hossain [0002], [0023], [0054]. The protective vent is plasma coated (in the presence of a polymer-containing gas) with a functional film of polymers having fluorine-containing or fluorine-free functional groups, with the film having a thickness of 5 to 80 nm. Id. at [0064], [0079]. The functional film is beneficial because it complements the properties of the protective vent by providing a roll-off effect (also called the “lotus effect”) to improve the oil and water-repellent properties of the protective vent. Id. at [0034]. The oil contact angle of the protective vent with the functional film can range from 130.5 to 133.4°. Id. at p. 10, Table 4. Also, while Hossain is silent as to the functional film comprising nanogrooves, Wünn teaches a method for improving the liquid drip off effect for polymeric membranes used for gas filtration or to block liquids in a vented system. Wünn [0018], [0040]. The membrane can comprise fibers or films, and can be manufactured from a fluorinated polymer. Id. at [0007], [0015]. During the method, the surface of the membrane is roughened to produce bumps, which can have a height and lateral distance on the nanoscale. Id. at [0027]. The surface roughness is beneficial because it provides an advantageous additional liquid drip-off effect (the “lotus effect”) that increases the liquid repellent properties of the membrane. Id. at [0041]. Further, while Wünn is silent as to the surface roughness being obtained through a plasma treatment in the presence of a carrier gas only without any polymer-containing gas, Li teaches a method of creating producing the lotus effect on the surface of a PTFE material, by plasma etching, where the etching gas (i.e., the carrier gas) is oxygen, and where the process is performed without any polymer-containing gas. See Li [0078].
It would have been obvious to cover the knitted fabric and nanofibers of the nanofiber layer of Canonico with the functional film of Hossain to provide the lotus effect to improve the oleophobic and hydrophobic properties of the fabric material for when it is used to protect a cellular phone. It also would have been obvious to roughen the functional film so that it has bumps, in view of Wünn, using the technique of Li, to provide an additional drip-off effect to increase the liquid repellent properties of the functional film. With these modifications, the functional film reads on the “nanometric coating” and the spaces between the bumps of the surface roughness on the functional film reads on the “nanogrooves.” The oil contact angle of the functional film would be at least between 130.5 to 133.4° (see Hossain p. 10, Table 4), which reads on the claimed range of at least 110°.
With respect to the limitations that the nanometric coating layer is—“applied by means of a plasma process in the presence of a carrier gas and a polymer-containing gas,” and the nanogrooves are “obtained through plasma treatment of said nanometric coating layer in the presence of the carrier gas only and without any polymer-containing gas”—these are product-by-process limitations because they describe the method of making the composite filter medium. The patentability of a product does not depend on its method of production, unless the process steps imply structure. See MPEP 2113, subsection I. Here, the plasma process to apply the functional film of Hossain, and the plasma process of Li are substantially the same as the claimed product-by-process limitations, and there is no evidence that any difference between the processes of Hossain and Li result in different structure than would result with the product-by-process limitations in claim 14.
Regarding claim 15, Hossain teaches that the functional film (the “coating layer”) is formed by a film having a thickness ranging from 5 to 80 nm. See Hossain [0064]. This reads on “a thickness of up to 500 nm.”
Regarding claim 16, Canonico teaches he nanofibers of the nanofiber layer have diameters ranging from 80 to 850 nm, which overlaps with the claimed range of 75 to 200 nm, establishing a prima facie case of obviousness. See Canonico [0102]. It is noted that Canonico reports the diameters of the nanofibers as 80 to 850 µm. But this is a typo, with the units intended to be reported in nm, because the fibers are described as “nanofibers” with the figures (e.g., Fig. 9) showing the nanofibers as well below 80 to 850 µm.
Canonico differs from claim 16 because it is silent as to the nanofibers being PVDF (polyvinylidene fluoride).
But Hossain teaches that the nanofibers of the membrane of its protective vent are electrospun (similar to Canonico) and can be made from polyvinylidene fluoride. See Hossain [0002], [0047].
It would have been obvious for the nanofibers of the nanofiber layer of Canonico to be manufactured from polyvinylidene fluoride because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Regarding claims 17 and 18, Canonico as modified in view of Ono teaches that the at least one layer of pressure sensitive adhesive comprises two layers of a pressure sensitive adhesive, because Ono teaches the use of double-sided pressure sensitive adhesive tap for attaching a membrane to a vent. See Ono [0077]. Double sided adhesive tape has a layer of adhesive on either side, which reads on “two layers of a pressure sensitive adhesive.”
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Canonico et al., WO 2010/124899 in view of Ono et al., US 2012/0174789 A1 in view of Kim et al., US 2019/0281947 A1 in view of Hossain et al., US 2018/0237967 A1 in view of Wünn et al., US 2015/0007721 A1 in view of Li et al., US 2006/0081394 A1 and in further view of Chhabra et al., US 2016/0175751 A1.
Regarding claim 11, Canonico, at Fig. 9 (to scale) teaches that the knitted fabric (the “base woven fabric”) has a textile construction of around 128 threads/cm (within the claimed range of 4-300 threads/cm) and a thread diameter of around 50 microns (within the claimed range of 10-500 microns).
Canonico differs from claim 11 because it is silent as to the weight and thickness of the knitted fabric. Therefore, the reference fails to provide enough information to teach that the knitted fabric has a weight of 15 to 300 g/m2 and a thickness of 18 to 1,000 microns, as claimed.
But Chhabra teaches a filter material comprising a substrate made from a woven fabric. See Chhabra [0001], [0049]. The substrate has a basis weight ranging from 30 to 200 gsm (g/m2), and a thickness ranging from 0.5 to 10 mm (500 to 10,000 µm). Id. at [0050], [0063].
It would have been obvious for the knitted fabric of Canonico to have a basis weight ranging from 30 to 200 g/m2, and a thickness ranging from 500 to 10,000 µm, because these values are conventional for substrates used as a support layer for a filter material. The prior art ranges are taught with enough specificity to teach the claimed ranges of 15 to 300 g/m2 and 18 to 1,000 microns.
Response to Arguments
Specification
The specification remains objected to for the reasons stated above. A notice of allowance is unlikely to be communicated until the issue is resolved.
Claim Objections
The Examiner withdraws the objection to claim 11 in light of the amendment.
35 U.S.C. 103 Rejections
The Applicant argues that claim 6 is differentiated from Canonico in that the base woven fabric and the nanofibers of claim 6 are covered with a nanometric coating layer in which the nanometric coating has nanogrooves. See Applicant Rem. filed March 02, 2026 (“Applicant Rem.”) 9. The Applicant also asserts that claim 6 is differentiated from Hossain concerning the presence of nanogrooves on the nanometric coating, in order to reach a pressure sensitive adhesive to at least 100 gf/20mm, while maintaining an oil contact angle of at least 110°, wherein an air permeability value of the composite filter medium is at least 5200 l/m2s, at pressure of 200 Pa. Id. at 10. The Applicant also argues that the composite filter medium of claim 6 is differentiate over Wünn, asserting that claim 1 requires a base woven fabric, and not a membrane. Id.
The Examiner respectfully disagrees with the Applicant’s analysis. Non-obviousness cannot be shown by attacking the references individually where the rejection is based on a combination of references. See MPEP 2145, subsection IV. Instead, the test for obviousness is what the combined teachings of the references would have suggested to a person of ordinary skill in the art. Id. Here, the Applicant’s analysis is incorrect in demonstrating non-obviousness because it attacks the references individually instead of arguing why claim 6 would have been non-obvious over the prior art combination. Therefore, the Applicant’s arguments are unpersuasive.
The Applicant further argues that the problem to be solved by claim 6 is that the filter medium is typically packaged in small pieces of material, coupled with one or two layers of pressure sensitive adhesive (PSA), in which the level of adhesion to the PSA layer is compromised. See Applicant Rem. 10–11. It is argued that Hossain concerns the problem of providing a high degree of protection against water, without any teaching concerning the level of adhesion of the filter medium to the layers of PSA. Id. at 11. It is also argued that Wünn and Lee address the problem of obtaining a drip-off effect or Lotus effect, while arguing that this is different than increasing the level of adhesion to the PSA layer while exhibiting the desire degree of repellence to water and oily liquids, as in the present invention. Id. Therefore, it is argued that a person of ordinary skill in the art would not have looked to Hossain, Wünn or Lee when looking to improve Canonico for solving the problem of increasing the adhesive strength of the filter medium to the PSA while reaching a satisfactory compromise between water/oil repellence and workability of the filter medium. Id.
The Examiner respectfully disagrees. The reason or motivation to modify a reference may suggest what the inventor has done, but for a different purpose or to solve a different problem. See MPEP 2144, subsection IV. Therefore, the Applicant’s arguments that the prior art focuses on different problems than the Applicant’s invention are unpersuasive.
It is also noted that the motivation to modify Canonico such that its fabric material comprises double-sided pressure sensitive adhesive tap to attach the fabric material to a cellular phone, with an adhesion level within the claimed range, is supplied by the combination of Canonico with Ono and Kim, which is not addressed by the Applicant’s arguments.
It is further noted that the Applicant cites to the Table on page 9 of the specification, and asserts that the Table provides “remarkable data,” comparing Hossain to the adhesive layer of the invention, exhibiting a “great increase” in the adhesion level to PSA from 20 to 220 g/20mm. See Applicant Rem. 11. The Examiner respectfully disagrees that this data is evidence of non-obviousness because there is no evidence of criticality of the claimed range of 100 gf/20 mm, as there is no evidence of unexpected results. See MPEP 2144.05, subsection III, A (the law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected result relative to the prior art range).
Conclusion
THIS ACTION IS MADE FINAL. 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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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776