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 .
Finality
Upon reconsideration of the reply filed on 10/30/2025, the following action is set forth. In light of the new grounds of rejection set forth below, the following action is non-final.
Election/Restrictions
Upon reconsideration of the restriction requirement in the instant case, it has been found that the restriction between Groups I and IV is improper. This requirement is therefore withdrawn, and Claims 11-15 are rejoined for examination in this action.
Claim Interpretation
It is noted that the term “styrene-type” as recited in Claim 2 is not indefinite, and is being interpreted according to the definition of the term provided at Page 6, lines 24-25 of the instant specification.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by -US3874907A, hereinafter ‘Gardon’.
Regarding Claim 1, Gardon discloses a polymeric sorbent (Col 2, lines 9-15) comprising:
a) a sulfonic acid-containing polymeric material having covalently attached sulfonic acid groups (Col 2, line 65 – Col 4, line 8), the sulfonic acid-containing polymeric material comprising a reaction product of a mixture comprising
1) a precursor polymeric material comprising a polymerized product of a polymerizable composition comprising aromatic monomers (Col 14, lines 50-53: the sulphonic acid resin is a sulphonated styrene/divinylbenzene copolymer); and
2) a sulfonic acid agent (Col 14, lines 50-53: the sulphonic acid resin is a sulphonated styrene/divinylbenzene copolymer); and
b) urea-based compounds impregnated into the sulfonic acid-containing polymeric material (Col 15, line 25 – Col 16, line 10: the sulfonic acid resin-containing microcapsules are immersed in a solution of urea, in which urea is adsorbed, or impregnated upon, the microcapsules containing the sulfonated polymer at a rate of 21 g per kg; Column 1, lines 53-59, Column 2, lines 9-18, Column 14, lines 12-19: the polymer skin is permeable to urea – therefore, when the sorbent is utilized, the sorbent would adsorb urea through the polymer skin).
Regarding Claim 2, Gardon discloses the polymerizable composition used to form the precursor polymeric material comprises i) 10 to 80 weight percent divinyl benzene based on a total weight of monomers in the polymerizable composition; and ii) 20 to 90 weight percent styrene-type monomers based on the total weight of monomers in the polymerizable composition (Col 14, lines 50-53: the sulphonic acid resin is a sulphonated styrene/divinylbenzene copolymer in a 85/15 weight ratio of styrene to divinylbenzene – this reads on the claimed range).
Regarding Claim 3, Gardon discloses the sulfonic acid-containing polymeric material comprises 0.1 to 5.5 mmoles sulfonic acid groups per gram (Col 14, lines 50-53: the sulphonic acid resin has a theoretical exchange capacity of 4 mmeq/g of resin – therefore, the sulfonic acid-containing polymeric material would contain about 4 mol/g, which reads on the claimed range.
Regarding Claim 4, Gardon discloses the polymeric sorbent comprises 1 to 80 weight percent of urea-based compound based on a total weight of the porous polymeric material (Col 15, line 25 – Col 16, line 10: the sulfonic acid resin-containing microcapsules adsorb urea at a rate of 21 g per kg – this corresponds to about 2.1 wt% urea, which reads on the claimed range).
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 5-6, 10 are rejected under 35 U.S.C. 103 as being unpatentable over US3874907A, hereinafter ‘Gardon’, in view of CN105482017A, hereinafter ‘Zhong’.
All references to the above foreign language document are made according to the attached machine translation.
Regarding Claims 5 and 6, while Gardon discloses a sulfonated polymeric resin for use as a sorbent, as discussed above, Gardon does not disclose the polymeric material to have a BET surface area or to have the presence of mesopores and/or macropores.
Zhong discloses the use of sulfonated resins as a sorbent for formaldehyde ([0002], [0011]). A person of ordinary skill in the art would have recognized Zhong as analogous to Gardon, as both references are drawn to the same field of endeavor as the claimed invention, sulfonated resin sorbents - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Zhong discloses that the sorbent is a high-surface area sorbent, having a BET specific surface area preferably between 60 and 80 m2/g, and preferably has a pore size between 17 and 25 nm ([0036]). One of ordinary skill in the art would recognize that, as a sorbent, the BET specific surface area and pore size of a sorbent are critical variables of a sorbent – the specific surface area of a material represents the surface area of such a material that is capable of contact with a sorbent molecule, and the size of pores within a material limit the size of molecules which may penetrate the material and become adsorbed therein.
Therefore, given that Zhong discloses sorbents having pore size of 17 to 25 nm and BET surface area between 60 and 80 m2/g that are suitable for use in a sorbent such as that disclosed in Gardon, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize a high specific surface area and mesoporous pore size, as claimed, as such features are shown in the art to be suitable for use in a sorbent, and manipulation of such variables to fall within conventional characteristics of sulfonated polymer sorbents would have been obvious to one of ordinary skill in the art to ensure the produced sorbent is effective in adsorbing target molecules.
Regarding Claim 10, while Gardon as modified above discloses a sorbent as discussed above, it does not disclose that an aldehyde according to formula 1 is adsorbed on the adsorbent.
However, Zhong discloses the use of the sulfonated resin sorbent in the adsorption of formaldehyde, which as an aldehyde having a molecular weight lower than 200 g/mol and is according to chemical formula 1 as claimed. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize the sorbent of Gardon as modified above in a stream comprising both urea and formaldehyde, thereby resulting in a sorbent impregnated with formaldehyde as required by Claim 10.
Claim(s) 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over US3874907A, hereinafter ‘Gardon’, in view of CN105482017A, hereinafter ‘Zhong’ and US4737173A, hereinafter ‘Kudirka’.
Regarding Claims 11-15, Gardon as modified does not disclose a filter comprising the polymeric sorbent, wherein the filter is an air purifier or respirator, captures an aldehyde, where the aldehyde is formaldehyde or acetaldehyde, or that the filter further comprises a filter support comprising a substrate, and wherein the polymeric sorbent is distributed on a major surface of the substrate, distributed throughout the substrate, or both.
Kudirka discloses a high efficiency particulate air filter comprising carbon-based filters (Col 2, lines 14-19), specifically targeting removal of impurities from air. A person of ordinary skill in the art would have recognized Kudirka as analogous to Gardon et al., as both references are drawn to the same field of endeavor as the claimed invention, the use of carbon-based sorbents for removal of impurities from a fluid stream - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Kudirka discloses that the air filter of the invention comprises a honeycomb support matrix containing activated carbon, said activated carbon being impregnated with urea for the removal of formaldehyde and other aldehydes (Col 2, lines 59-68). Carbon particles are held in place within honeycomb support matrix by retention screens (Col 3, lines 1-3).
Given this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to integrate the urea-impregnated particles of Gardon as modified above into an air filter as disclosed by Kudirka – such an air filter would be capable of removing formaldehyde from the air when applied as part of an air treatment system. As described by Kudirka, such a configuration includes an air filter having a support containing the carbon particles, capturing formaldehyde, as claimed.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 4 and 15 of U.S. Patent No. 3874907. Although the claims at issue are not identical, they are not patentably distinct from each other.
In particular, the’370 patent claims a nitrogen-containing polymeric material comprising (a) a sulfonic acid-containing polymeric material comprising a reaction product of (i) a precursor polymeric material of Formula (I) and (ii) a sulfonyl-containing compound; and (b) a basic, nitrogen-containing compound. The material of Formula (I) contains aromatic rings and is therefore an “aromatic monomer.” The polymeric material contains at least one –SO3H (sulfonic acid) group. (Claim 4.) The examined specification at page 6, lines 26-27, defines “sulfonic acid agent” as a compound that is reacted with the precursor polymeric material to form a sulfonic acid-containing polymeric material. The ’370 patent’s sulfonyl-containing compound is therefore a sulfonic acid agent. The ’370 patent expressly discloses that the utility of the polymeric material is to capture the nitrogen-containing compound by sorption on a sulfonic acid-containing polymeric material. (Column 2, lines 5-10.) The ’370 patent teaches that the basic, nitrogen-containing compound may contain amine groups. (Claim 15.)
The ’370 patent does not teach that the sulfonic acid-containing polymeric material is impregnated with urea.
As discussed above, Gardon teaches a polymeric sorbent comprising a sulfonic acid-containing polymeric material having covalently attached sulfonic acid groups. Gardon’s material is a reaction product of a mixture comprising a polymerized product of a polymerizable composition comprising aromatic monomers (sulfonated styrene/divinylbenzene copolymer) and a sulfonic acid agent. (OA at page 3.) Gardon teaches that the resulting sulfonic acid resin absorbs urea from saline solutions. (OA at pages 3-4; Gardon at abstract and column 1, lines 53-59).
A person of ordinary skill in the art would have found it obvious to substitute urea for the ’370 patent’s basic, nitrogen-containing compound because Gardon teaches that sulfonic-acid-containing polymers absorb urea and Wikipedia demonstrates that urea contains nitrogen. A skilled artisan would have had a reasonable expectation that the ’370 patent’s material could be impregnated with urea because urea contains nitrogen in the form of amine groups and Gardon teaches that sulfonic acid groups bind urea.
Response to Arguments
Applicant’s arguments, filed 04/23/2025, are acknowledged.
With respect to arguments in regard to prior art rejections under section 103, Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under section 102 in view of Gardon. The arguments of applicant are moot, as they do not pertain to the new grounds of rejection presented above.
Conclusion
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/L.E.L./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738