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 .
DETAILED ACTION
Claims 6, 9, 12-15 and 18-19 are canceled. Claims 25-26 are new. Claims 1-5, 7-8, 10-11, 16-17, and 20-26 are pending and under consideration in this office action.
The §103 rejection of claims 1-8, 10-11, 16-17 and 20-22 over EN 14683 in view of HIMEDIA, Xie and Finlay is withdrawn in light of the amendment on 10/2/2025.
The §103 rejection of claims 23-24 over EN 14683 in view of Xie is withdrawn in light of the amendment on 10/2/2025.
Priority
The instant claims are entitled to an effective filing date of 12/15/2020.
Claim Objections
Claims 24-25 are objected to because of the following informalities:
Claim 24 recites the word “and” on line 2, which should be underlined in accordance with 37 CFR 1.121 because the word was added in the amendment 10/02/2025. 37 CFR 1.121 indicates that text of any added subject matter must be shown by underlining the added text.
Claim 25 recites “said bacterial solution” in the third and fourth line from the bottom of the claim, which should be replaced with “said testing bacterial solution” for consistency.
Claim 25 recites “said control run”, which should be replaced with “said positive control run” for consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
(New rejection necessitated by amendment) Claims 5 and 25-26 or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amendment filed on 10/02/2025 has introduced NEW MATTER into the claims.
Claim 5, as amended on 10/02/2025, recites the method of claim 1, wherein said ultrasonic nebulizer generates said aerosol, said aerosol being an aerosol of a saline solution, free from bacteria, having a mean particle size in the range of 2.7 to 3.3 pm
New claim 25 recites a method for testing bacterial filtration efficiency of a fabric and for bringing into a required size range the mean particle size of particles generated by a nebulizer in a device for said testing, the device comprising a nebulizer for generating an aerosol of a bacterial solution and a cascade impactor including a plurality of stages, said method comprising the steps of: generating an aerosol of a bacterial solution including bacteria, peptone water and NaCl, the concentration of NaCl in said bacterial solution in the range between 99 g/L to 150 g/L; flowing said aerosol through the cascade impactor at a temperature in the range of -15C to 15C to provide a plurality of bacteria colonies in a plurality of plates present in the plurality of stages of said cascade impactor, performing a positive control run by feeding said aerosol of said bacterial solution including bacteria, peptone water and NaCl to said cascade impactor; determining the mean particle size of the aerosol particles based on the resulting number of bacterial colonies; comparing the obtained mean particle size to a required range of mean particle size; modifying the positive control run conditions by increasing or decreasing the concentration of NaCl in said bacterial solution in the range between 99 g/L to 150 g/L and/or the temperature of said cascade impactor; performing at least another positive control run under said modified conditions and repeating said steps until the resulting mean particle size is within the required range; testing the bacterial filtering efficiency of a fabric by performing the steps of: preparing a testing bacterial solution including bacteria, peptone water and NaCl wherein the concentration of NaCl in the peptone water used to prepare said testing bacterial solution is a concentration value in the range of between 99 g/L to 150 g/L; feeding said testing bacterial solution to a nebulizer, generating an aerosol of said testing bacterial solution; and further flowing said aerosol of said testing bacterial solution through a cascade impactor to provide a plurality of bacteria colonies in a plurality of plates present in a plurality of stages of said cascade impactor, the temperature of said cascade impactor lying within the range of -15C to 15°C, and wherein said preparing said testing bacterial solution and said further flowing said aerosol of said bacterial solution through a cascade impactor are carried out using conditions of said concentration of NaCl and said temperature of said cascade impactor used in said control run when the resulting mean particle size was within the required range.
Applicant’s amendment, filed 10/02/2025, directs to support to the specification paragraphs and originally filed claims 1-19, and Applicant asserts that no new matter has been added. See the third paragraph on page 8 of the remarks. However, the specification and the original claims do not provide sufficient written description of the above underlined limitations.
Claim 5 contains new matter because the instant disclosure does not provide support for a method that comprises an ultrasonic nebulizer generating an aerosol of a saline solution free from bacteria. Claim 25 and dependent claim 26 contain new matter because of the limitation that requires the test bacterial solution to be prepared using the same concentration of NaCl used in the positive control run when the resulting mean particle size was within the required range, and because of the limitation requiring the test bacterial solution to be further flowed through a cascade impactor that is at the same temperature used in the positive control run when the resulting mean particle size was within the required range.
The specification as filed and the original claims do not provide support for the above underlined limitation of claim 5. The specification teaches an embodiment in which the nebulizer is capable to generate an aerosol of a saline solution, free from bacteria, having mean particle size in the range of 2.7 to 3.3 µm. See paragraphs [0015], [0046] and claim 5 as originally filed 12/14/2021. Thus, the instant disclosure provides support for both an ultrasonic nebulizer that is functionally capable of generating an aerosol of saline solution free from bacteria, and an ultrasonic nebulizer that actively generates aerosol of a bacterial solution. However, the instant disclosure is silent regarding a method that comprises a step of generating an aerosol of a saline solution free from bacteria.
The specification as filed and the original claims do not provide support for the above underlined limitation of claim 25. The specification teaches performing at least another positive control run under said modified conditions and repeating said steps until the resulting mean particle size (MPS) is within the required range. See [0017] and claim 7 as filed 12/14/2021. The specification teaches that by using a NaCl concentration between 30 g/L and 150 g/L in the peptone water and at the same time using a cascade impactor at a temperature in the range from -15˚C to 15 ˚C, it is possible to obtain particles having a MPS in the range from 2.7 µm to 3.3 µm in a reproducible and reliable way. See paragraph [0028]. Thus, the instant specification suggests that a positive control can result in a mean particle size within a required range when the NaCl concentrations are between 30 g/L and 150 g/L and cascade impactor temperatures between -15˚C to 15 ˚C. However, the instant disclosed is silent regarding any particular steps that are “carried out using conditions of said concentration of NaCl and said temperature of said cascade impactor used in said control run when the resulting mean particle size was within the required range”, as required in instant claim 25. As such, the disclosure provides support for repeating steps until the resulting mean particle size is within a required range, but the disclosure does not provide support for repeating steps under the specific conditions [i.e. the NaCl concentration and cascade impactor temperature] that resulted in a mean particle size within the required range.
Such limitations recited in the instant claims 5 and 25-26 were not supported in the original disclosure as filed, introduce new concepts and violate the description requirement of the first paragraph of 35 U.S.C 112. Applicant can remove the new matter limitations from the claims to obviate this rejection.
Claim Rejections - 35 USC § 112(b)
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.
(New rejection necessitated by amendment) New claim 25-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 25 recites “said steps” in lines 19-20, which is indefinite because it is unclear which steps are being referenced and, consequently, there are multiple reasonable interpretations for the limitation. Specifically, claim 25 requires “performing at least another positive control run under said modified conditions and repeating said steps until the resulting mean particle size is within the required range”. In the first reasonable interpretation, the claim requires repeating all of the previously recited steps until the resulting mean particle size is within the required range. For example, in this interpretation the method would require repeating the step of flowing said aerosol through the cascade impactor at a temperature in the range of -15˚C to 15˚C, prior to the positive control run modification step, in which the temperature increase or decrease is not limited. In the second interpretation, “said steps” refers only to the steps associated with the positive control run, i.e. the step of modifying the positive control run conditions by increasing or decreasing the concentration of NaCl in said bacterial solution in the range between 99 g/L to 150 g/L and/or the temperature of the cascade impactor and the step of comparing the obtained mean particle size to a required range.
In claim 25 when the testing bacterial solution is further flowed through the cascade impactor (line 27), it is unclear whether the cascade impactor is required to be at a temperature within the -15˚C to 15˚C range, because the wherein clause at the end of claim 25 requires the cascade impactor to be at the temperature used for the control run when the resulting mean particle size was within the required range. In other words, it is unclear whether the testing bacterial solution is required to be further flowed through a cascade impactor at any temperature within the -15˚C to 15˚C range, or whether the temperature is limited to the same specific temperature used in the positive control run. Claim 25 does not limit the temperature of the cascade impactor in the modified positive control run, because claim 25 recites “modifying the positive control run conditions by increasing or decreasing…the temperature of said cascade impactor”. As such, the increase or decrease of the temperature is not limited. Consequently, one of ordinary skill in the art cannot ascertain the metes and bounds of the required temperature.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 25 recites the broad recitation “concentration of NaCl in the peptone water used to prepare said testing bacterial solution is a concentration value in the range between 99 g/L to 150 g/L” (lines 22-23), and the claim also recites “preparing said testing bacterial solution…carried out using conditions of said concentration of NaCl… used in said control run when the resulting mean particle size was within the required range” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. In other words, it is unclear whether the claim intends to limit the NaCl concentration of the testing bacterial solution to 99 g/L to 150 g/L or to a specific NaCl concentration that was used in the positive control run that resulted in a mean particle size within the required range.
Claim 26 depends from claim 25 and is rejected for the reasons set forth above.
Claim 26 recites “the nebulizer”, which is indefinite because it is unclear which nebulizer is being referenced and, consequently, there are multiple reasonable interpretations of the claim. Claim 26 depends from claim 25. Claim 25 requires a device comprising a nebulizer for generating an aerosol of a bacterial solution and a cascade impactor including a plurality of stages (lines 3-4), and later claim 25 requires “feeding said testing bacterial solution to a nebulizer” (line 25). Therefore, the nebulizer to which the testing bacterial solution is fed to (line 25) is not required to be the same nebulizer in the device (lines 3-4). As such, it is unclear whether claim 26 intends to limit the nebulizer in the device or the nebulizer to which the testing bacterial solution is fed.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(New rejection necessitated by amendment) Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 does not include all the limitations of claim 1 upon which it depends. Claim 1 requires feeding a bacterial solution to an ultrasonic nebulizer, and generating an aerosol of said bacterial solution. Claim 5 recites “said ultrasonic nebulizer generates said aerosol, said aerosol being an aerosol of a saline solution, free from bacteria, having a mean particle size in the range of 2.7 to 3.3 µm”. The saline aerosol of claim 5 contradicts the aerosol requirements of claim 1, because claim 1 requires a bacterial solution aerosol and claim 5 requires a saline solution aerosol free from bacteria. Therefore, claim 5 does not further limit the same embodiment as claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
The underlined text below is relevant to the amendment filed 10/02/2025.
Claim 1 is interpreted as requiring three active method steps. First, a bacterial solution including or comprising bacteria, peptone water, and sodium chloride (NaCl) is prepared; wherein the concentration of the NaCl in the peptone water is between 99 g/L to 150 g/L. Second, the bacterial solution is fed to an ultrasonic nebulizer, such that an aerosol is generated. Third, the nebulized solution of the bacterial solution is flowed through a cascade impactor, such that a plurality of bacterial colonies form on the plates present within the stages of the cascade impactor. The cascade impactor is at a temperature between -15 to 15ºC.
For compact prosecution, claim 5 is interpreted as requiring the ultrasonic nebulizer of claim 1 to generate a bacterial solution or saline solution aerosol with a mean particle size in the range of 2.7 to 3.3 µm.
Claim 7 is an independent method claim that requires six active steps. First, an aerosol of a solution including bacteria, peptone water and NaCl is generated by an ultrasonic nebulizer within a device. The NaCl is at a concentration between 99 g/L to 150 g/L. Second, the aerosol is flowed through a cascade impactor within the device, wherein the cascade impactor is at a temperature between -15˚C to 15 ˚C. Bacterial colonies can form on the plurality of plates present in the stages of the cascade impactor. Third, a positive control run (e.g. a run without a fabric/facemask test specimen; see instant spec. paragraph [0034]) is performed by feeding an aerosol comprising bacteria, peptone water, and NaCl into the cascade impactor within the device, and determining the mean particle size of the aerosol particles based on the number of bacterial colonies. Fourth, the mean particle size determined is compared to any range of mean particle sizes (MPS), because the “required range” is not defined in the claim. Fifth, the NaCl concentration or the temperature of the cascade impactor is modified. If the NaCl concentration is modified in the bacterial solution, the concentration is required to be in the range between 99 to 150 g/L. Sixth, at least one more positive control run under the modified conditions is performed until the mean particle size is within any range because the required range is not defined in claim 7.
Claim 8 limits the required mean particle size range of claim 7 to between 2.7 µm and 3.3 µm.
Claim 22 depends from claim 1 and requires determining the MPS of the aerosol particles based on the resulting number of bacterial colonies, performing a positive control run by feeding the bacterial solution aerosol to the cascade impactor, increasing or decreasing the temperature of the cascade impactor and performing at least another positive control run under modified conditions and repeating steps until the resulting mean particle size is within the required range. The non-limiting intended use of these additional active method steps is to bring a mean particle size of particles generated by the ultrasonic nebulizer into a required size range.
Claim 23 is interpreted as requiring the same six active method steps as instant claim 7, discussed above. However, claim 23 requires modifying the positive control run conditions by increasing or decreasing the concentration of NaCl in said bacterial solution in a range between 99 g/L to 150 g/L. Said bacterial solution refers to the starting solution comprised of bacteria, peptone water and NaCl. For example, claim 23 encompasses embodiments where the first positive control run includes a bacterial solution with one NaCl concentration and the second positive control run includes a separate modified bacterial solution with another NaCl concentration between 99 g/L to 150 g/L. Claim 23 requires repeating positive control runs under said modified conditions until the resulting mean particle size is within the required range, wherein said required rage of said mean particle side is from 2.7 µm to 3.3 µm.
New claim 25 requires the same six active method steps as instant claim 7, discussed above. However, claim 25 requires four additional steps, which will be referred to as steps 7-9 in accordance with the numeration used for the interpretation of claim 7 above. Seventh, a testing bacterial solution including bacteria, peptone water and 99-150 g/L NaCl is prepared. Eighth, the testing bacterial solution is fed to a nebulizer such that an aerosol is generated. Ninth, the testing bacterial solution aerosol is flowed through a cascade impactor that is at -15˚C to 15˚C such that a plurality of bacteria colonies form in the plurality of stages of the cascade impactor. Claim 25 indicates that the NaCl concentration of the testing bacterial solution and the temperature of the cascade impactor to which the aerosol of the testing bacterial solution is further flowed to should be the same as the concentration and temperature used in a positive control run that resulted in a mean particle size within the required range. However, claim 25 does not limit the mean particle size range in anyway. Therefore, the claim is interpreted as requiring the NaCl concentration in the peptone water to be between 99-150 g/L and requiring the cascade impactor temperature to between -15˚C to 15˚C.
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.
(New rejection necessitated by amendment) Claims 1-5, 7-8, 11, 17, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over EN 14683 (31 December 2019 (2019-12-31), UNE EN NORM, EUROPEAN STANDARD, SPAIN, PAGE(S) 1 - 26), in view of Woo (Journal of aerosol science, 2010, 41(10), 944-952), HIMEDIA (2019, January), Xie (2006, Applied microbiology and biotechnology, 73, 703-712), and Finlay (Journal of aerosol science, 1999 30(1), 105-109), with evidence from Barkham (ANNALS-ACADEMY OF MEDICINE SINGAPORE, 2004 33(2), 252-256).
Regarding claims 1, 3, and 21, EN 14683 teaches a method for determining bacterial filtration efficiency. To prepare a bacterial challenge, Staphylococcus aureus is diluted in peptone water, which includes 5g sodium chloride. See page 12 Annex B and page 13, B.3.4, and B.6, lines 1-3. The procedure includes delivering the bacterial challenge (e.g. bacterial suspension) to a nebulizer. See page 14, B.7.1 and B.7.2. EN 14683 implies that the aerosol is generated from a bacterial solution because nebulizers generate aerosols. The bacterial aerosol is then flowed through a cascade impactor. Afterwards, plates are removed from the cascade impactor, numbered by their position (i.e. stage) and incubated to allow colony growth. The total number of CFU per plate is determined. See page 14, B.7.3, lines 4-5 and page 15, B.7.8 and B.7.9, lines 1-2. Thus, EN 14683 teaches preparing a bacterial solution with S. aureus bacteria, peptone water and NaCl, feeding that solution to a nebulizer to generate an aerosol, and flowing that aerosol through a cascade impactor to provide a plurality of bacteria colonies to a plurality of plates present in a plurality of stages of a cascade impactor. Evidentiary reference Barkham discloses that Staphylococcus aureus is handled at biosafety level 2 (BSL2). See the last passage on page 252.
EN 14683 does not teach an ultrasonic nebulizer, peptone water with NaCl present in a range of 99 g/L to 150 g/L, and a temperature of a cascade impactor that is in the range of -15ºC to 15ºC (relevant to instant claim 1). EN 14683 does not teach peptone water with NaCl present in a range of 99 g/L to 120 g/L (relevant to instant claim 3). EN 14683 does not teach peptone water with NaCl present at a concentration of 100 g/L (relevant to instant claim 21).
Woo teaches designing a system to be used with biosafety level (BSL)-II microorganisms, but focusing on filtering facepiece respirators and a biosafety level (BSL)-I virus. See the last paragraph of section 1. Woo teaches using an ultrasonic nebulizer to produce droplets containing MS2 virus without adverse effects on viability. See the first passage on page 948 and figure 1. Woo discloses that the frequency [of the ultrasonic nebulizer] can be adjusted to generate droplets of other sizes. See the sentence spanning pages 948 and 949 and the first paragraph on page 949.
EN 14683 and Woo do not teach peptone water with NaCl present in a range of 99 g/L to 150 g/L, and a temperature of a cascade impactor that is in the range of -15ºC to 15ºC (relevant to instant claim 1). EN 14683 and Woo do not teach peptone water with NaCl present in a range of 99 g/L to 120 g/L (relevant to instant claim 3). EN 14683 and Woo do not teach peptone water with NaCl present at a concentration of 100 g/L (relevant to instant claim 21).
HIMEDIA teaches a saline peptone water with 100 g/L sodium chloride. See the composition section.
Xie teaches suspending Escherichia coli K12 JM109, Acinetobacter sp 5A5, Pseudomonas oleovorans X5 or Staphylococcus aureus X8 in 10 ml of the following test solutions: distilled water, a physiological saline solution with 0.9% w/v, and a saturated saline solution with 36% w/v. The saturated saline solution is used to isolate the effect of increasing solute concentration on bacterial survival during saline droplet evaporation. See the bacterial suspension preparation section spanning pages 704-705. Xie discloses that it takes 40, 45 and 50 min to fully evaporate distilled water, 0.9% saline and 36% saline droplets respectively. See the left column on page 709. Thus, Xie suggests that increased saline may prolong the time it takes for a bacterial suspension to fully evaporate. Moreover, Xie suggests that rapid death is believed to be associated with an abrupt evaporation of droplets. See the first full paragraph on page 704.
EN 14683, Woo, HIMEDIA and Xie do not teach a temperature of a cascade impactor that is in the range of -15ºC to 15ºC (relevant to instant claim 1).
Finlay teaches immersing a cascade impactor in a cold-water bath set to the temperature of an aerosol exiting a nebulizer (10 ºC). See page 106, paragraph 2, line 6 and page 105, abstract line 4-5. Furthermore, Finlay suggests that cascade impactors operated at room temperature can cause droplet shrinkage. See Finlay page 105, abstract, lines 9-10. Thus, Finlay teaches a cascade impactor that is in instantly claimed range of -15ºC to 15ºC.
It would have been obvious to a person of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to substitute the ultrasonic nebulizer of Woo for the nebulizer in the method of EN 14683, to replace the peptone water of EN 14683 with peptone water of HIMEDIA containing 100 g/L NaCl in view of Xie, and to further optimize the temperature of the cascade impactor to 10 ºC in view of Finlay. One of ordinary skill in the art would have been motivated to use the ultrasonic nebulizer of Woo because Woo suggests that the droplet size can be controlled by adjusting the frequency of the ultrasonic generator. There would be a reasonable expectation of success because EN 14683 teaches generating an aerosol from a bacterial solution comprising S. aureus, e.g. a BSL-2 microorganism; and Woo teaches designing a system with an ultrasonic nebulizer for use with (BSL)-II microorganisms. One would be motivated to use the peptone water of HIMEDIA within the method of EN 14683 because Xie suggests that increasing the saline concentration may prolong droplets’ evaporation time, which is in turn may prolong bacterial survival. There would be a reasonable expectation of success because Xie demonstrates that S. aureus remains viable in droplets containing a saline concentration of 360g/L (i.e. 36% w/v; see the abstract). One would be motivated to further optimize the temperature of the cascade impactor of EN 14683 because Finlay suggests that cascade impactors operated at room temperature can cause droplet shrinkage. MPEP 2144.05(II) indicates that differences in temperature generally amount to “routine optimization” and will not support patentability unless there is evidence indicating the claimed feature is critical. “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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, as applied to claim 1 above, the method is a modified version of EN 14683:2019+AC:2019 E .
Regarding claim 4, Finlay teaches cooling cascade impactors to 10 ºC, which is within the instantly claimed range.
It would have been obvious prior to the effective filing date of the instantly claimed invention to have optimized the workable range for the temperature of the cascade impactor of EN 14683 based on the teachings of Finlay, through routine experimentation, and in the process to have achieved a workable range of -4 ºC to 15 ºC, as instantly claimed.
Regarding claims 5, EN 14683 teaches a “[n]ebulizer, capable of delivering particles with a mean size of (3,0 ± 0,3) µm when in contact with the cascade impactor”. See the title of section B.4.2 on page 2 and 13. Furthermore, EN 14683 teaches delivering the bacterial challenge/bacterial suspension to a nebulizer (see page 14, B.7.1 and B.7.2), and a mean particle size of 3.0 ± 0.3 µm (i.e. 2.7 to 3.3 µm). See page 14 lines 1-2.
Woo discloses that the droplet size can be controlled by adjusting the frequency of the ultrasonic generator. See the first paragraph on page 949.
EN 14683, Woo, HIMEDIA, Xie and Finlay do not teach an “ultrasonic nebulizer [that] generates said aerosol, said aerosol being an aerosol of a saline solution, free from bacteria, having a mean particle size in the range of 2.7 to 3.3 µm”, which is interpreted as requiring the ultrasonic nebulizer to generate the bacterial solution aerosol of instant claim 1 in a mean particle size range of 2.7 to 3.3 µm.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to substitute the ultrasonic nebulizer taught by Woo for the nebulizer in the method of EN 14683, as discussed above, and to further optimize the particle size by adjusting the frequency in view of Woo. One would be motivated to do so because EN 14683 teaches maintaining the mean particle size at 3.0 ± 0.3 µm. There would be a reasonable expectation of success because Woo explicitly suggests that the droplet size can be controlled by adjusting the frequency of the ultrasonic generator.
Regarding claims 7 and 8, EN 14683 teaches a device comprising a nebulizer and a cascade impactor that includes 6 stages. See figure B.3. EN 14683 teaches delivering a bacterial challenge (e.g. bacterial suspension) to a nebulizer, such that an aerosol of the bacterial challenge is generated. See page 14, B.7.1 and B.7.2. EN 14683 discloses that the bacterial challenge includes Staphylococcus aureus and peptone water, which includes sodium chloride. See page 12 Annex B and page 13, B.3.4, and B.6, lines 1-3. The bacterial aerosol is then flowed through a cascade impactor. See page 14, B.7.3. EN 14683 teaches counting the number of colonies on each plate (i.e. the stage of the cascade impactor) for each run. See section B.7.9. EN 14683 teaches performing a positive control run without a test specimen (e.g. a fabric facemask; section 5.1.1). The positive control run is initiated by flowing (e.g. feeding) the bacterial challenge through the cascade impactor. For the two positive control runs, EN 14683 teaches taking the mean of the two totals. From the positive control plates the mean particle size (MPS) of bacterial challenge aerosol is calculated. See the B.7 procedure section on pages 14-15. The mean particle size is determined based on the mean of the total number of CFUs and a comparison between a conversion table provided by the cascade impactor manual using formula B.1 on page 14. EN 14683 discloses that the mean particle size shall be maintained at 3.0 ± 0.3 µm (i.e. 2.7-3.3 µm, relevant to instant claim 8). See formula B.1 on page 14, and see B.7.9. EN 14683 discloses that the bacterial challenge shall be determined on the basis of experience and previous positive control plates. See the last passage on page 13.
EN 14683 does not teach a nebulizer that is an ultrasonic nebulizer.
EN 14683 does not teach generating an aerosol that includes NaCl in a bacterial solution in a range between 99 g/L to 150 g/L.
EN 14683 does not teach flowing said aerosol through the cascade impactor at a temperature in the range of -15˚C to 15 ˚C.
EN 14683 does not teach modifying the positive control run conditions by increasing or decreasing the concentration of NaCl in a bacterial solution in the range between 99 g/L to 150 g/L, or modifying the temperature of the cascade impactor.
EN 14683 does not teach performing another positive control run under said modified conditions and repeating steps until the resulting mean particle size is within the required range.
Woo teaches using an ultrasonic nebulizer to produce droplets containing MS2 virus without adverse effects on viability. See the first passage on page 948 and figure 1. Woo discloses that the frequency [of the ultrasonic nebulizer] can be adjusted to generate droplets of other sizes. See the sentence spanning pages 948 and 949 and the first paragraph on page 949.
EN 14683 and Woo do not teach generating an aerosol that includes NaCl in a bacterial solution in a range between 99 g/L to 150 g/L.
EN 14683 and Woo do not teach flowing said aerosol through the cascade impactor at a temperature in the range of -15˚C to 15 ˚C.
EN 14683 and Woo do not teach modifying the positive control run conditions by increasing or decreasing the concentration of NaCl in a bacterial solution in the range between 99 g/L to 150 g/L, or modifying the temperature of the cascade impactor.
EN 14683 and Woo do not teach performing another positive control run under said modified conditions and repeating steps until the resulting mean particle size is within the required range.
HIMEDIA teaches a saline peptone water with 100 g/L sodium chloride. See the composition section.
Xie teaches suspending Staphylococcus aureus X8 in 10 ml of the following test solutions: distilled water, a physiological saline solution with 0.9% w/v, and a saturated saline solution with 36% w/v. The saturated saline solution is used to isolate the effect of increasing solute concentration on bacterial survival during saline droplet evaporation. See the bacterial suspension preparation section spanning pages 704-705. Xie discloses that it takes 40, 45 and 50 min to fully evaporate distilled water, 0.9% saline and 36% saline droplets respectively. See the left column on page 709. Thus, Xie suggests that increased saline may prolong the time it takes for a bacterial suspension to fully evaporate.
EN 14683, Woo, HIMEDIA and Xie do not teach flowing said aerosol through the cascade impactor at a temperature in the range of -15˚C to 15 ˚C.
EN 14683, Woo, HIMEDIA and Xie do not teach modifying the positive control run conditions by increasing or decreasing the concentration of NaCl in a bacterial solution in the range between 99 g/L to 150 g/L, or modifying the temperature of the cascade impactor.
EN 14683, Woo, HIMEDIA and Xie do not teach performing another positive control run under said modified conditions and repeating steps until the resulting mean particle size is within the required range.
Finlay teaches that by adjusting the temperature of the cascade impactor via a water bath, the size of the particles can be adjusted and under-sizing of nebulized aerosols can be avoided. See page 108, paragraph 2, lines 1-3. Finlay suggests that most aerosols produced by nebulizers will heat as it travels through the impactor unless precautions are taken. See lines 4-9 on page 106. Thus, Finlay suggests modifying the temperature of the cascade impactor.
It would have been obvious to a person of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to use the ultrasonic nebulizer of Woo as the nebulizer in the method of EN 14683, to replace the peptone water of EN 14683 with peptone water of HIMEDIA in view of Xie, to optimize the temperature of the cascade impactor of EN 14683 in view of Finlay, and to further repeat the positive control runs as suggested by EN 14683. One would be motivated to use the ultrasonic nebulizer of Woo because Woo suggests that the droplet size can be controlled by adjusting the frequency of the ultrasonic generator. There would be a reasonable expectation of success because EN 14683 teaches generating an aerosol from a bacterial solution comprising S. aureus, e.g. a BSL-2 microorganism, as evidenced by Barkham (see the last passage on page 252); and Woo teaches designing a system with an ultrasonic nebulizer for use with (BSL)-II microorganisms (see the last paragraph of section 1). One would be motivated to use the peptone water of HIMEDIA within the method of EN 14683 because Xie suggests that increasing the saline concentration may prolong a droplets’ evaporation time, which is in turn may prolong bacterial survival. There would be a reasonable expectation of success because Xie demonstrates that S. aureus remains viable in droplets containing a saline concentration of 360g/L (see the abstract). One would be motivated to further optimize the temperature of the cascade impactor of EN 14683 because Finlay suggests that the temperature affects the aerosol particle size. There would be a reasonable expectation of success because Finlay demonstrates obtaining particles of 3.38 ± 0.2 µm from a cascade impactor immersed in a water bath (paragraph 2 page 107). One would be motivated to perform multiple positive control runs, because EN 14683 teaches basing the bacterial challenge on experience and previous positive control plates. There would be a reasonable expectation of success because EN 14683 suggests adjusting the bacterial challenge base on previous positive control plates and Finlay demonstrates performing multiple runs at different temperatures and determining the average particle size.
Regarding claims 11 and 17, EN 14683 teaches placing a test specimen (e.g. a facemask mask) between the first stage and the inlet cone of the cascade impactor. See page 13 B.5 for definition of a test specimen and page 14, B.7.4 for clamping the test specimen in place between the first stage of the cascade impactor and the inlet cone.
Regarding claim 20, EN 14683 teaches inoculating Staphylococcus aureus into tryptic soy broth. “The culture shall then be diluted in peptone water” (paragraph 1 of section B.6). The peptone water of EN 14683 contains NaCl, as evidenced by section B.3.4. Therefore, EN 14683 implies that the bacteria are diluted with peptone water.
Regarding claim 22, EN 14683 teaches determining the mean particle size based on the total number of CFUs [present in the cascade impactor stages after a run] compared to the conversion table provided by the cascade impactor manual using formula B.1 on page 14. See formula B.1 on page 14, and see B.7.9. EN 14683 teaches performing a positive control run by flowing (e.g. feeding) the bacterial challenge (i.e. the aerosol of S. aureus and peptone water that includes NaCl) through the cascade impactor. See page 14, B.7.3. Furthermore, EN 14683 teaches a bacterial challenge that “shall be maintained at 3,0±0,3) µm”. See the first two lines of page 14.
EN 14683, Woo, HIMEDIA, and Xie not teach modifying the positive control run conditions by increasing or decreasing the temperature of said cascade impactor; and performing at least another positive control run under said modified conditions and repeating said steps until the resulting mean particle size is within the required range.
Finlay teaches that operating a cascade impactor in an ambient air temperature and in cooler temperatures (e.g. 10 ºC) determined by previous nebulizer runs (e.g. multiple runs). See abstract, page 106 paragraph 2, page 105, and the abstract. By adjusting the temperature of the cascade impactor via a water bath, the size of the particles can be adjusted and under-sizing of nebulized aerosols can be avoided. See page 108, paragraph 2, lines 1-3. Finlay suggests modifying the temperature of the cascade impactor and performing multiple runs.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to use the ultrasonic nebulizer of Woo as the nebulizer in the method of EN 14683, as applied to instant claim 1 above, and to further modify the positive control run of EN 14683 by decreasing the temperature of the cascade impactor in view of Finlay and to further perform multiple to adjust the mean particle size into the 3.0 ± 0.3 µm range taught by EN14683. Doing so is merely using the teachings, suggestions and motivation in the prior art and further pursuing the known options. One would be motivated to decrease the temperature because Finlay suggests that temperature impacts the size of the aerosol particle. There would be a reasonable expectation of success because Finlay demonstrates obtaining particles of 3.38 ± 0.2 µm from a cascade impactor immersed in a water bath (paragraph 2 page 107). One would be further motivated to repeat the positive control run under the temperature conditions of Finlay because EN 14683 teaches “maintaining” the mean particle size at 3.0 ± 0.3 µm, which implies that the mean particle size should constantly be within that range. Moreover, a person of ordinary skill in the art has good reason to pursue the known options within their technical grasp. Thus, one could reasonably repeat any of the steps taught in the prior art, such as the positive control run step of EN 14683 as modified by Finlay.
(New rejection necessitated by amendment) Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over EN 14683 (31 December 2019 (2019-12-31), UNE EN NORM, EUROPEAN STANDARD, SPAIN, PAGE(S) 1 - 26), Woo (Journal of aerosol science, 2010, 41(10), 944-952), HIMEDIA (2019, January), Xie (2006, Applied microbiology and biotechnology, 73, 703-712), and Finlay (Journal of aerosol science, 1999 30(1), 105-109), as applied to claims 1-5, 7-8, 11, 17 and 20-22 above, and further in view of Galli (WO 2014/192037).
The teachings of EN 14683, Woo, HIMEDIA, Xie, and Finlay with respect to claims 1 and 7 are discussed above.
Regarding claims 10 and 16, EN 14683 teaches a method for the in vitro determination of bacterial filtration efficiency. See, e.g., the title on page 12. EN 14683 teaches a bacterial challenge prepared with Staphylococcus aureus and peptone water, which includes sodium chloride (i.e. NaCl). See page 12 Annex B and page 13, B.3.4, and B.6, lines 1-3. EN 14683 teaches Staphylococcus aureus ATCC 6538. See section B.3.5 on page 13.
EN 14683, Woo, HIMEDIA, Xie and Finlay do not teach bacteria selected from the group consisting of Mycobacterium tuberculosis, Streptococcus pneumoniae, Legionella pneumophila, and Bacillus subtilis.
Galli teaches a filtration efficiency assay with Staphylococcus aureus. Galli discloses that the procedure subjects filtering media to more severe treatment than the normal use condition of filters. Galli discloses that the test is performed according to the “UNI EN14683:2006” method. See page 9 lines 10-21. Galli teaches preparing a bacterial suspension of S. aureus in peptone water. The bacterial suspension, 5 ml, is placed in a nebulizer connected to a pump for the production of an aerosol. The aerosol is conveyed to the filtering element. See line 23 on page 9 to line 2 on page 10. Galli teaches preparing microbial suspensions of the strains in table 1. See lines 28-30 on page 5. Table 1 lists 10 bacteria strains including bacteria strains Bacillus subtilis ATCC 6833, and Staphylococcus aureus ATCC 6538P [sic. ATCC 6538]. Galli discloses that the microbial strains of table 1 are used in the assay. See table 1 on page 6.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to replace the Staphylococcus aureus ATCC 6538 in the bacterial challenge of EN 14683 as modified by HIMEDIA in view of Xie with any of the bacteria strains listed in table 1 of Galli, and to further select Bacillus subtilis ATCC 6833 from the list of 10 strains. One would be motivated to use a bacteria strain taught in table 1 of Galli, because Galli suggests that the strains can be used for testing the efficiency of bacterial filtration in accordance with an EN 14683:2006 method, which is understood to be an earlier version of the EN 14683 (published 12/31/2029) method discussed at length above. There would be a reasonable expectation of success because EN 14683 teaches using S. aureus ATCC 6538 in the bacterial challenge and Galli lists S. aureus ATCC 6538 in table 1. One would be further motivated to selected B. subtilis ATCC 6833 from table 1 of Galli because a person of ordinary skill in the art has good reason to pursue the known options within their technical grasp. There would be a reasonable expectation of success because Galli lists Bacillus subtilis ATCC 6833 amongst a finite list of 10 bacteria strains, and indicates that the strain is interchangeable with S. aureus ATCC 6538.
(New rejection necessitated by amendment) Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over ANONYMOUS: "UNE EN 14683:2019+AC:2019 Medical face masks - Requirements and test methods", 31 December 2019 (2019-12-31), UNE EN NORM, EUROPEAN STANDARD, SPAIN, PAGE(S) 1 - 26, (“EN 14683”), in view of Woo (Journal of aerosol science, 2010, 41(10), 944-952) and Xie (2006, Applied microbiology and biotechnology, 73, 703-712).
Regarding claim 23, in figure B.3 on page 17, EN 14683 depicts a device for testing bacterial filtration efficiency comprised of a nebulizer [3] and a cascade impactor [8]. The cascade impactor includes six stages (e.g. a plurality), as evidenced by Fig. B.3 and page 13, B.4.1. In section B.7.3, EN 14683 teaches performing a positive control run without a test specimen (e.g. a fabric facemask; section 5.1.1). The bacterial challenge is delivered to the nebulizer, and the airflow through the cascade impactor is maintained. The plates from the cascade impactor are removed and numbered. Then, in section B.7.4, EN 14683 teaches placing fresh plates in the cascade impactor, clamping the test specimen in place between the first stage of the cascade impactor and the inlet cone and repeating the procedure described in section B.7.3. For each specimen and control run, EN 14683 teaches counting the number of colonies on each plate and adding up the counts to give the total number of CFU collected by the cascade impactor. For the two positive control runs (e.g. repeated positive control run), EN 14683 teaches taking the mean of the two totals. From the positive control plates the mean particle size (MPS) of bacterial challenge aerosol is calculated. See the B.7 procedure section on pages 14-15. EN 14683 discloses that the bacterial challenge includes Staphylococcus aureus and peptone water, which includes sodium chloride. See sections B.3.4, and B.6 on page 13. EN 14683 discloses that the bacterial challenge shall be determined on the basis of experience and previous positive control plates and the dilution of the challenge suspension adjusted accordingly. The mean particle size shall be maintained at 3.0 ± 0.3 µm (e.g. a required range). See section B.6 pages 13-14.
EN 14683 does not teach a nebulizer that is an ultrasonic nebuli