DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
The claims are rejected as follows:
Claims 1, 3–4, 7 are rejected under 35 U.S.C. 103 as being obvious over Janikowski et al., US 2019/0160405 A1 (“Janikowski”) in view of Nagy et al., US 2014/0331626 A1 (“Nagy”).
Regarding claim 1:
It is noted that the term “ultrafine” is defined in the instant specification as “a fiber having a fiber diameter of less than 500 nm. Spec. p. 5, ll. 19–22.
It is also noted that the instant specification defines the limitation of “coefficient of variation” as calculated by dividing a standard deviation by the average value. Spec. dated Sep. 26, 2021 (“Spec.”) p. 21, [0042]. It is also noted that the instant disclosure use “nm” as unit. Id.
The limitation of “dust retention amount” is interpreted as the weight or quantity of dust a filter has captured before being replaced or cleaned, while "dust holding capacity" represents the total amount of dust a filter can retain before reaching a specified resistance or pressure drop. In essence, dust retention amount is a measurement of what's already captured, and dust holding capacity is the potential amount the filter can hold before becoming ineffective.
Janikowski discloses the claimed limitation of that a filter medium (Janikowski’s composite filter media 100, Janikowski Fig. 1, [0040]) comprising a composite structure (Janikowski’s nanofiber layer 110) containing ultrafine fibers having a fiber diameter of less than 500 nm (Janikowski’s polymetric fibers with geometric mean diameter less than or equal to 0.5 µm or 500 nm, Janikowski’s fiber range therefore overlaps the claimed range and thus support a prima facie case of obviousness. MPEP 2144.05(I)) and beads (Janikowski’s polymeric masses 130). Janikowski Fig. 1, [0040]–[0042].
Janikowski discloses the claimed limitation of that the beads 130 are contained on an outermost surface of the composite structure ((as shown in Fig. 1, beads 130 are contained on the uppermost surface of composite media 110). Janikowski Fig. 1, [0041]. Janikowski also discloses the ultrafine fibers and beads 130 have the same component (Janikowski discloses its nanofiber layer and polymeric mass could be made of the same polymer). Janikowski [0010] and [0039]. Janikowski discloses that its beads 130 preferably having an area equivalent diameter of greater than 5 µm. Janikowski [0052]. Janikowski therefore discloses beads with an area equivalent diameter range overlaps the claimed range of 5 µm or more and thus support a prima facie case of obviousness. MPEP 2144.05(I).
Janikowski also discloses that a coefficient of variation of the fiber diameter with respect to all the fibers contained in the composite structure is less than 0.5, because Janikowski discloses a geometric standard deviation of 1.5 to 2.0 and a geometric mean diameter of 0.1 to 0.5 microns (100 to 500 nm), which gives a coefficient of variation of 100/1.5 = 0.06, falls within the claimed range and support a prima facie case of obviousness. MPEP 2144.05(I).
Janikowski discloses that the claimed limitation of that number of beads 130 having a diameter of 5 µm or more contained on an outermost surface of the composite structure is at least 500/mm2. Because Janikowski discloses that the plurality of polymeric masses covers 1-25% of media surface area. Janikowski [0009]. Janikowski also discloses its polymeric masses could have an area equivalent diameter in the range of between 5 microns to 130 microns. Janikowski [0008]. One could convert the claimed limitation of “number of beads having a diameter of 5 micron or more contained on an outermost surface of the composite structure is at least 500/mm2” to a surface area coverage, by using the formular of 500π(D/2)2 to calculate a coverage of beads (using diameter of 5 microns), which gives 9,812.5 µm2, and a surface area coverage would be 9812.5/1000000*100=0.98125%. The claimed limitation of “that number of beads 130 having a diameter of 5 µm or more contained on an outermost surface of the composite structure is at least 500/mm2” is therefore equivalent to claiming a surface area coverage of more than 0.98125%. Since Janikowski discloses a surface area coverage from 1–25%, Janikowski’s range falls within the claimed range. And therefore, Janikowski reads on the claimed limitation of number of beads having a diameter of 5 microns or more, to be at least 500/mm2.
Janikowski also discloses the claimed limitation of “a dust retention amount of the composite structure is equal to or more than 57 mg/100 cm2”. Because, Janikowski discloses a dust holding capacity of at least 58 g/m2, which is equivalent to 5.8 mg/cm2 or 580 mg/100cm2). Janikowski [0055]. Janikowski’s structure is therefore capable of have a dust retention amount up to 580 mg/100 cm2, which overlaps with the claimed range of 57 mg/100 cm2 and support a prima facie case of obviousness. MPEP 2144.05(I).
While Janikowski does not disclose the claimed average diameter of the beads 130 is in the range of 3 to 30 µm, Janikowski discloses its beads 130 provides anchor points for nanofiber layer, provides texture to the surface increasing media surface, yield localized areas of greater depth than the surrounding media. Janikowski [0041]. Janikowski discloses that its beads 130 produce a three-dimensional surface to the nanofiber layer face with peaks and valleys that effectively increases the surface area of the media at a microscale. Janikowski discloses that its area equivalent diameter of its beads are preferably greater than 5 µm. Janikowski [0052]. Additionally, Janikowski discloses that the total amount of the polymeric masses in the media is controlled. If too abundant, there is insufficient nanofiber to provide the desired particle removal efficiency. The media may even become excessively restrictive. If too few, dust-holding capacity and removal efficiency may suffer. Janikowski [0053]. Based on the disclosure, it is understood that a size of Janikowski bead would affect surface texture and surface area, and thus affecting the filtration efficiency. A person of ordinary skill in the art is therefore motivated to optimize the size and amount of its beads 130 to ensure sufficient particle removal efficiency and sufficient media surface with little media restriction. There is reasonable expectation of success for Janikowski’s polymer beads 130 to have an average diameter falls within the range of 3 to 30 µm, based on Janikowski’s preferred embodiment of have preferable area equivalent diameter being greater than 5 µm. It is further noted that an average diameter is calculated by adding all individual diameter of beads 130 and then divided the sum by a total number of beads 130. Worth noting that a largest observed diameter is not directly related with an average diameter, for example if Janikowski has a total of 10 polymer beads, with a largest one of 77 µm (as disclosed by Janikowski’s Table 1, example A), and all the other 9 being 5 µm, which would give an average diameter of (77*1+9*5)/10=12.2, which falls within the claimed range.
Furthermore, the instant disclosure does not teach the claimed average bead diameter range is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Janikowski does not disclose that a specific volume of the base material is 5 cm3/g or less.
In the analogous art of base material of a filter medium, Nagy discloses a base material (Nagy’s third layer, Nagy [0133]). Nagy discloses its third layer could have a density of greater than or equal to 1.75 kg/m3 (equivalent to 0.00175 g/cm3), Nagy [0134]. A specific volume is the inverse of density, and therefore, Nagy discloses a specific volume of less than or equal to 1/0.00175 g/cm3, which is 571.43 cm3/g. Nagy therefore discloses a specific volume range of a base layer overlapping the claimed range of 5 cm3/g. Nagy discloses its support layer have advantageous performance properties such as relatively high dry Mullen Burst strength, Nagy [0136]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to replace Janikowski’s base material with Nagy’s support layer for a relatively high dry Mullen Burst strength. With such modification, modified Janikowski would have a specific volume overlapping the claimed range and therefore support a prima facie case of obviousness. MPEP 2144.05(I).
Regarding claim 3:
Janikowski discloses an embodiment with geometric mean diameter of 0.1–0.4 µm (equivalent to 100–400 nm). Janikowski [0042]. Therefore, Janikowski discloses fibers with a fiber diameter of 200 nm or less exists in its composite structure 110.
Janikowski does not disclose the claimed range of 50% or more of ultrafine fibers having a fiber diameter of 200 nm or less is contained with respect to a total amount of fibers.
However, Janikowski discloses fiber diameter is a result effective variable because fiber diameter affects contaminant removal efficiency and pressure drop increase. Janikowski [0037]. Janikowski further discloses use of nanofibers (Janikowski defined as fibers smaller or equal to 0.5 µm) favors the tradeoff between efficiency and pressure drop. Id. It would therefore have been a routine engineering choice to optimize the percentage of ultrafine fibers having a fiber diameter of less than 200 nm or less in order to achieve the desired balance between pressure loss increase and contaminant removal efficiency. MPEP 2144.05(Ⅱ). Additionally, since the instant disclosure fails to show critical or unexpected results regarding the claimed range of ultrafine fibers with a diameter of 200 nm or less, the difference between the prior art and the claimed range is thus insufficient for patentability.
Additionally, the instant disclosure does not teach the claimed average diameter is critical to the operation of the claimed invention. While the applicant refers to its specification [0016] to illustrate that an average diameter in the range of 3 to 30 µm is able to achieve high filter performance, this is not sufficient to prove criticality. For example, the applicant fails to illustrate that when an average diameter is 2.9 µm, filtration performance is drastically decreased. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 4:
It is noted that the limitation of “total fibers” is interpreted to be a sum of ultrafine fibers (less than 500 nm) and fine fibers (500 nm or more).
Janikowski discloses its filter medium comprises fine fibers having a fiber diameter of 500 nm or more are contained in a total amount of fiber because Janikowski discloses its nanofiber has a geometric mean diameter of equal or less than 0.5 microns or 500 nm. Janikowski [0039].
Janikowski does not disclose the claimed range of “5% or more” of fine fibers.
However, Janikowski discloses that three-dimensional structure of nanofiber media can be stabilized through the use of nanofibers with broad fiber diameter distribution. Janikowski [0064]. Janikowski further discloses its broad fiber diameter distribution is evident from its geometric standard deviation. The geometric fiber diameter standard deviation is greater than 1.4, and more preferably between 1.5 and 2.0 in particular embodiments. Janikowski [0049]. It is therefore understood that percentage of fine fibers is a result effective variable because it affects the geometric standard deviation, which is directly associated with fiber diameter distribution, which would affect media stability. It would therefore have been a routine engineering choice to optimize the percentage of fine fibers having a fiber diameter of 500 nm or more to achieve an optimized fiber diameter distribution for a filter media of optimized stability. MPEP 2144.05(II). Additionally, since the instant disclosure fails to show critical or unexpected results regarding the claimed range, the difference between the prior art and the claimed range is thus insufficient for patentability.
Regarding claim 7:
It is noted that the limitation of “total fibers” is interpreted to be a sum of ultrafine fibers (less than 500 nm) and fine fibers (500 nm or more).
Janikowski discloses its filter medium comprises fine fibers having a fiber diameter of 500 nm or more are further contained in the total amount of fibers because Janikowski discloses its nanofiber has a geometric mean diameter of equal or less than 0.5 microns or 500 nm. Janikowski [0039].
Janikowski does not disclose the claimed range of “5% or more” of fine fibers.
However, Janikowski discloses that three-dimensional structure of nanofiber media can be stabilized through the use of nanofibers with broad fiber diameter distribution. Janikowski [0064]. Janikowski further discloses its broad fiber diameter distribution is evident from its geometric standard deviation. The geometric fiber diameter standard deviation is greater than 1.4, and more preferably between 1.5 and 2.0 in particular embodiments. Janikowski [0049]. It is therefore understood that percentage of fine fibers is a result effective variable because it affects the geometric standard deviation, which is directly associated with fiber diameter distribution, which would affect media stability. It would therefore have been a routine engineering choice to optimize the percentage of fine fibers having a fiber diameter of 500 nm or more to achieve an optimized fiber diameter distribution for a filter media of optimized stability. MPEP 2144.05(II). Additionally, since the instant disclosure fails to show critical or unexpected results regarding the claimed range, the difference between the prior art and the claimed range is thus insufficient for patentability.
Claims 6 and 11–13 are rejected under 35 U.S.C. 103 as being obvious over Janikowski in view of Nagy as applied to claim 1 above, and further in view of Inagaki et al., WO 2013/051185 A1 (“Inagaki”)1.
Regarding claim 6:
It is noted that that “electrospinning” is the same as “electrostatic-spinning.”
Janikowski discloses that its nanofiber could be produced by electrospinning. Janikowski [0037]. Janikowski also discloses that its polymer could be poly (vinylidene fluoride) or polyamide. Janikowski [0049].
However, Janikowski does not disclose the details of the electrospinning method, including the preparation of a spinning solution and the step of obtaining a composite structure containing ultrafine fibers and bead.
Similar to Janikowski, Inagaki discloses a filter medium 12 comprising fibers 14 and beads 15. Inagaki Fig. 2, p. 2. para. 7. Similar to Janikowski, Inagaki discloses its fibers 14 could be less 500 nm. Inagaki Fig. 2, p. 1, abstract. Also similar to Janikowski, Inagaki discloses its fine fiber 12 could be produced by an electrostatic spinning method. Inagaki Fig. 2, p. 2, last paragraph. Additionally, Inagaki discloses its electrostatic spinning methods comprising a step of preparing a spinning solution of polymer by dissolving a raw material of its fine fiber 12 (for example, polyurethane) in an appropriate solvent. Inagaki p. 3, 2nd paragraph from bottom and p. 3, 5th paragraph from top. Inagaki discloses a step of spinning the spinning solution in an electrostatic spinning method (Inagaki discloses a general electrospinning method) and obtain a composite structure containing ultrafine fibers 14 and beads 15. Inagaki p. 3, 5th paragraph from top. It would have been obvious for Janikowski’s electrospinning method to have the detailed steps as disclosed by Inagaki because Inagaki discloses electrospinning method generally would have the steps recited and Inagaki’s electrospinning method produces a structure very similar to that disclosed by Janikowski.
Regarding claim 11:
It is noted that claim 11 is identical to claim 6 except the dependency, i.e., claim 11 depends on claim 3 while claim 6 depends on claim 1. It is also noted that the filter medium of claim 3 is just a routinely optimized product of claim 1 and therefore, the general procedure of electrospinning would be the same. The same rejection of claim 6 applies to claim 11, which is reproduced below.
Janikowski discloses that its nanofiber could be produced by electrospinning. Janikowski [0037]. Janikowski also discloses that its polymer could be poly (vinylidene fluoride) or polyamide. Janikowski [0049].
However, Janikowski does not disclose the details of the electrospinning method, including the preparation of a spinning solution and the step of obtaining a filter medium containing ultrafine fibers and bead.
Similar to Janikowski, Inagaki discloses a filter medium 12 comprising fibers 14 and beads 15. Inagaki Fig. 2, p. 2. para. 7. Similar to Janikowski, Inagaki discloses its fibers 14 could be less 500 nm. Inagaki Fig. 2, p. 1, abstract. Also similar to Janikowski, Inagaki discloses its fine fiber 12 could be produced by an electrostatic spinning method. Inagaki Fig. 2, p. 2, last paragraph. Additionally, Inagaki discloses its electrostatic spinning methods comprising a step of preparing a spinning solution of polymer by dissolving a raw material of its fine fiber 12 (for example, polyurethane) in an appropriate solvent. Inagaki p. 3, 2nd paragraph from bottom and p. 3, 5th paragraph from top. Inagaki discloses a step of spinning the spinning solution in an electrostatic spinning method (Inagaki discloses a general electrospinning method) and obtain a filter medium containing ultrafine fibers 14 and beads 15. Inagaki p. 3, 5th paragraph from top. It would have been obvious for Janikowski’s electrospinning method to have the detailed steps as disclosed by Inagaki because Inagaki discloses electrospinning method generally would have the steps recited and Inagaki’s electrospinning method produces a structure very similar to that disclosed by Janikowski.
Regarding claim 12:
It is noted that claim 12 is identical to claim 6 except the dependency, i.e., claim 12 depends on claim 4 while claim 6 depends on claim 1. It is also noted that the filter medium of claim 4 is just a routinely optimized product of claim 1 and therefore, the general procedure of electrospinning would be the same. The same rejection of claim 6 applies to claim 12, which is reproduced below.
Janikowski discloses that its nanofiber could be produced by electrospinning. Janikowski [0037]. Janikowski also discloses that its polymer could be poly (vinylidene fluoride) or polyamide. Janikowski [0049].
However, Janikowski does not disclose the details of the electrospinning method, including the preparation of a spinning solution and the step of obtaining a filter medium containing ultrafine fibers and bead.
Similar to Janikowski, Inagaki discloses a filter medium 12 comprising fibers 14 and beads 15. Inagaki Fig. 2, p. 2. para. 7. Similar to Janikowski, Inagaki discloses its fibers 14 could be less 500 nm. Inagaki Fig. 2, p. 1, abstract. Also similar to Janikowski, Inagaki discloses its fine fiber 12 could be produced by an electrostatic spinning method. Inagaki Fig. 2, p. 2, last paragraph. Additionally, Inagaki discloses its electrostatic spinning methods comprising a step of preparing a spinning solution of polymer by dissolving a raw material of its fine fiber 12 (for example, polyurethane) in an appropriate solvent. Inagaki p. 3, 2nd paragraph from bottom and p. 3, 5th paragraph from top. Inagaki discloses a step of spinning the spinning solution in an electrostatic spinning method (Inagaki discloses a general electrospinning method) and obtain a filter medium containing ultrafine fibers 14 and beads 15. Inagaki p. 3, 5th paragraph from top. It would have been obvious for Janikowski’s electrospinning method to have the detailed steps as disclosed by Inagaki because Inagaki discloses electrospinning method generally would have the steps recited and Inagaki’s electrospinning method produces a structure very similar to that disclosed by Janikowski.
Regarding claim 13:
It is noted that claim 13 is identical to claim 6 except the dependency, i.e., claim 13 depends on claim 7 while claim 6 depends on claim 1. It is also noted that the filter medium of claim 7 is just a routinely optimized product of claim 1 and therefore, the general procedure of electrospinning would be the same. The same rejection of claim 6 applies to claim 13, which is reproduced below.
Janikowski discloses that its nanofiber could be produced by electrospinning. Janikowski [0037]. Janikowski also discloses that its polymer could be poly (vinylidene fluoride) or polyamide. Janikowski [0049].
However, Janikowski does not disclose the details of the electrospinning method, including the preparation of a spinning solution and the step of obtaining a filter medium containing ultrafine fibers and bead.
Similar to Janikowski, Inagaki discloses a filter medium 12 comprising fibers 14 and beads 15. Inagaki Fig. 2, p. 2. para. 7. Similar to Janikowski, Inagaki discloses its fibers 14 could be less 500 nm. Inagaki Fig. 2, p. 1, abstract. Also similar to Janikowski, Inagaki discloses its fine fiber 12 could be produced by an electrostatic spinning method. Inagaki Fig. 2, p. 2, last paragraph. Additionally, Inagaki discloses its electrostatic spinning methods comprising a step of preparing a spinning solution of polymer by dissolving a raw material of its fine fiber 12 (for example, polyurethane) in an appropriate solvent. Inagaki p. 3, 2nd paragraph from bottom and p. 3, 5th paragraph from top. Inagaki discloses a step of spinning the spinning solution in an electrostatic spinning method (Inagaki discloses a general electrospinning method) and obtain a filter medium containing ultrafine fibers 14 and beads 15. Inagaki p. 3, 5th paragraph from top. It would have been obvious for Janikowski’s electrospinning method to have the detailed steps as disclosed by Inagaki because Inagaki discloses electrospinning method generally would have the steps recited and Inagaki’s electrospinning method produces a structure very similar to that disclosed by Janikowski.
Response to Arguments
Claim Rejections - 35 USC § 112(b)
The examiner drops the current rejection because applicant’s amendment overcomes the current rejection.
Claim Rejections - 35 USC § 103
The applicant argues that Janikowski does not teach the claimed specific volume of the base material and Inagaki does not cure the deficiency. Applicant Rem. dated Dec. 10, 2025 (“Applicant Rem.”) ps. 6–8.
The examiner relies on Nagy to teach the claimed specific volume of the base material. Applicant’s argument regarding Janikowski and Inagaki is therefore moot.
Conclusion
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/Qianping He/Examiner, Art Unit 1776
1 Inagaki is 51-page Foreign Document. A copy of Inagaki’s machine translation is provided with the Office Action. The examiner relies on the machine translation for the text and original document for the Figure.