DETAILED ACTION
This action is in response to the amendments and remarks filed 03/02/2026, in which claim 1, 2 and 38 have been amended, and claims 1-2, 6-10, 12-13, 21, 23, 25, 38, 72-74, 84 and 108 are pending and ready for examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 02 MARCH 2026 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.
The Non Patent Literature Document “JIANG et al., Industrial Dedusting Apparatus – Design, Production, and Management. Metallurgical Industry Press. 2007, page 265”, was provided by Applicants but no translation or explanation of the relevance was provided, thus it was reviewed and the information was considered insofar as it was understood on its face, in the same manner that non-English language information in Office search files is considered by examiners in conducting searches; see MPEP 609.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 6-10, 12-13, 21, 23, 25, 38, 72-74, 84 and 108 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0107588 A1 (hereinafter “Sealy”) in view of US 2016/0030868 A1 (hereinafter “Gupta”) further in view of US 2016/0017375 A1 (hereinafter “Rachi”) or, alternatively, CN 110052058 A (hereinafter “Li”).
Regarding Claims 1-2 and 108 Sealy discloses a filter media, comprising:
a non-woven fiber web [0015], [0106]; and
“one or more water repellents” which “can have any suitable form and may include a fluorinated or a non-fluorinated species”, wherein “[n]on-limiting examples of suitable water repelling agents include silanes, siloxanes, silicones, alkylketene dimers (AKDS), and fluorinated species” [0041], [0044];
and thus discloses a fist water repellent additive that may be a silane/siloxane, and
a second water-repellent additive comprising a fluorinated species/polymer (i.e. including resins) [0014], [0017], [0031].
Sealy does not disclose a first water repellent additive which is a polymer or oligomer having the structure as claimed.
However Gupta discloses a nonwoven filter material [0002], [0014], which comprises a hydrophobic agent (i.e. a water repellent additive) applied to the fibers, which may be silane siloxane, or silazane compounds including hexamethyldisilazane, and which react with itself and/or a fiber surface including forming oligomeric or polymeric structure on the fibers [0037]-[0038], [0040]. And thus disclose that silazanes are a known alternative hydrophobic agents/water repellents to silanes and siloxanes.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Sealy by using for the water repellent a silazane, including hexamethyldisilazane, and reacting it with itself and/or a fiber surface including forming oligomeric or polymeric structure on the fibers as disclosed by Gupta because Sealy discloses the filter media may comprise silane or siloxane water repellent additives and this involves the simple substitution of a known alternative to silane/siloxane water repellents for nonwoven filter media to obtain the predictable result of forming a water repellent filter media.
Gupta suggests water repellents with alkyl side chains having between 1 and 18, 1 and 8, and 2 and 50 carbon atoms [0037]-[0038], [0040], but not specifically for silazane compounds.
However Rachi discloses a hydrophobic agent for treating an adsorbent, which is a disilazane, including 4, 5 or 6 hydrophobic alkyl groups, including hexaalkyldisilazane, wherein the alkyl groups have from 1-20 carbon atoms, specifically including hexamethyldisilazane, [0052]-[0055]. Thus disclosing hexaalkyldisilazanes with alkyl chains having 1-20 carbons are a known alternative hydrophobic agents/water repellents to hexamethyldisilazane.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Sealy in view of Gupta by using for the water repellent a hexaalkyldisilazane, wherein the alkyl groups have from 1-20 carbon atoms, as disclosed by Rachi because this involves the simple substitution of a hexaalkyldisilazane hydrophobic agent/water repellent (i.e. hexamethyldisilazane), with another having longer alkyl groups to obtain the predictable result of forming a water repellent filter media.
Sealy in view of Gupta and Rachi thus discloses a water repellent additive having repeat units of polymerized silazane forming an oligomer or polymer and water repellent functional groups which are each independently an alkyl group comprising 1-20 carbon atoms and a side chain of a repeat unit. Since the range of carbon chain length disclosed overlaps the range claimed, the range recited in the claim is 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 the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I). With regard specifically to “fluorine atoms make up less than or equal to 10 at% of the water-repellent additive”, it is not disclosed that the siloxane water repellents must include fluorine and thus fluorine atoms may make up zero percent of the water-repellent additive.
Alternatively, Li discloses using an organopolysilazane surface modification of copper based water treatment media to render it hydrophobic, wherein the organopolysilazane includes a main chain of Si-N bonds and side groups, wherein the side groups may be straight or branched alky groups containing 1-5 carbon atoms, and that “[o]rganopolysilazane has good solubility, broad adaptability and anchoring effect to the substrate, mild curing conditions, simple curing process, and the constructed coating has excellent thermal stability, chemical resistance, weather resistance, scratch resistance and transparency make it an attractive prospect in the construction of high-performance coatings; (pg. 2, para starting “Organopolysilazane is an…” and para. starting “Described organopolysilazane is…”, pg. 3 para starting “(3) The durable modified…”,).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Sealy in view of Gupta by using for the water repellent an organopolysilazane with side groups which are straight or branched alky groups containing 1-5 carbon atoms, as disclosed by Li because this involves the simple substitution of a silazane hydrophobic agent/water repellent with another known silazane hydrophobic agent/water repellent to obtain the predictable result of forming a water repellent filter media.
Sealy in view of Gupta and Li thus discloses a water repellent additive having repeat units of polymerized silazane forming an oligomer or polymer and water repellent functional groups which are each independently an alkyl group comprising 1-5 carbon atoms and a side chain of a repeat unit. Since the range of carbon chain length disclosed overlaps the range claimed, the range recited in the claim is 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 the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I). With regard specifically to “fluorine atoms make up less than or equal to 10 at% of the water-repellent additive”, it is not disclosed that the siloxane water repellents must include fluorine
Claims 1, 2 and 108 are thus rejected under Sealy in view of Gupta and Rachi, and alternatively Sealy in view of Gupta and Li.
Regarding Claim 6 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim l, wherein the fluorinated polymer is a perfluoropoly(ether) Sealy [0035]-[0036].
Regarding Claim 7 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim l, wherein the fluorinated polymer may be a fluorinated poly(urethane), Sealy [0033].
Regarding Claim 8 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim l, wherein the fluorinated polymer comprises a plurality of fluorinated side chains Sealy [0035]-[0038].
Regarding Claim 9 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 8, wherein the fluorinated side chains comprise the structure -CnFmRy; Sealy [0035]-[0038].
Regarding Claim 10 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 9, wherein n is 3-4, mis 2:1, R is an atom or a group of atoms, and y2:0. Sealy [0035]-[0038]. Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/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(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Regarding Claim 12-13 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 8, wherein the fluorinated side chains comprise the structure -(CF2)nCF3; Sealy [0035]-[0038]. Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/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(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Regarding Claim 21 and 23 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 1, wherein the first water-repellent additive may be may be 0.01-10 wt% relative to the total dry weight of the filter media Sealy [0039], or 1.5% or less of the total dry weight of the filter media Sealy [0046], the second water repellent additive (fluorinated polymer) may be 0.01-10 wt% relative to the total dry weight of the filter media Sealy [0039], [0043]. Thus the disclosed range overlaps the range claimed, since the range disclosed overlaps the range claimed, the range recited in the claim is 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 Sealy’s ranges that corresponds to the claimed ranges. See MPEP 2144.05(I).
Regarding Claim 25 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 1, wherein the first water-repellent additive (silazane) may be considered, inherently, the reaction product of a silane.
Regarding Claim 38 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 1, wherein the water-repellent additive comprises a silazane, and as disclosed by Li, silazanes are known to be hydrolyzed so that the a large number of the Si-N and Si-H bonds inherent to silazane form silanols and -Si-O- to solidify and increase hydrophobicity (pg. 2, para starting “Organopolysilazane is an…” and pg. 3 para starting “(3) The durable modified…”,); and thus the silazane coatings will inherently comprise silanol groups, and/or it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Sealy in view of Gupta and Rachi/Li by hydrolyzing the silazanes to form silanols and -Si-O- to solidify and increase hydrophobicity of the hydrophobic coating. Thus the water repellent additive comprises a silanol.
Regarding Claim 72-73 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 1, wherein the non-woven fiber web comprises glass fibers, including chopped strand and/or microglass fibers Sealy [0060]-[0079], [0106].
Regarding Claim 74 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 73, wherein the non-woven web comprises two or more types of microglass fibers having different average diameters (chopped strand and microglass can be mixed Sealy [0106], and “any suitable distribution” of fiber diameter is acceptable Sealy [0062], including used coarse and/or fine Sealy [0074], and thus obviously the mixture of different average diameters is suggested to one of skill in the art).
Regarding Claim 84 Sealy in view of Gupta and Rachi/Li discloses the filter media as in claim 1, wherein the non-woven fiber web comprises cellulose fibers; Sealy [0081].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 25, 38, 72-74, 84 and 108 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, 30-31, 37-38, 41-42, 44, 46, 50-52, 58, 60, 62 and 74-75 of copending Application No. 17/101707.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 17/101707 anticipate the instant claims 1-2, 25, 38, 72-74, 84 and 108.
Claims 6-10, 12-13, 21 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, 30-31, 37-38, 41-42, 44, 46, 50-52, 58, 60, 62 and 74-75 of copending Application No. 17/101707 in view of Sealy.
While the claims of 17/101707 anticipate the instant claims 1-2, 25, 29, 38, 72-74, 84 and 108, with regard to dependent claims 6-10, 12-13, 21 and 23, these limitations are not disclosed by ‘707, however Sealy discloses a similar filtration material to that of ‘707 and discloses a fluorinated polymer/second water repellent, wherein the fluorinated polymer may be a perfluoropoly(ether) [0035]-[0036], a fluorinated poly(urethane), [0033], comprises a plurality of fluorinated side chains [0035]-[0038], wherein the fluorinated side chains comprise the structure -CnFmRy; [0035]-[0038], wherein n is 3-4, mis 2:1, R is an atom or a group of atoms, and y2:0. [0035]-[0038]; wherein the fluorinated side chains comprise the structure -(CF2)nCF3; [0035]-[0038]; wherein the first water-repellent additive (polysiloxane) may be may be 0.01-10 wt% relative to the total dry weight of the filter media [0039], or 1.5% or less of the total dry weight of the filter media [0046], the second water repellent additive (fluorinated polymer) may be 0.01-10 wt% relative to the total dry weight of the filter media [0039], [0043].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of ‘707 by using for the fluorinated polymer/second water repellent that as disclosed by Sealy because this involves the simple substitution of known fluorinated polymer/second water repellent for nonwoven filter media to obtain the predictable result of forming a water repellent filter media.
Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/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(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Thus Application No. 17/101707 in view of Sealy discloses the limitations of 6-10, 12-13, 21 and 23 directed to the second water repellent additive/fluorinated polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered and they are persuasive with regard to the previous combination of references as they would apply to the amended claims, but they are now moot because they are directed in their entirety to grounds of rejection which are no longer cited in the current action and the new limitations of the amended claims which had not been previously addressed. See the updated rejection above citing a new combination of references to address the amended claims.
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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