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 .
Status of Claims
The present Office action is responsive to the Remarks and Amendments filed on 01-14-2026 after final, and the Request for Continued Examination which presents those same Remarks and Amendments. As directed, claims 1 and 16-20 have been amended, claims 2-7 and 11-15 were previously canceled, and new claim 21 has been added. Thus, claims 1, 8-10, and 16-21 are currently pending examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02-16-2026 has been entered.
Response to Amendment
Applicant has amended each of claims 1, 19, and 20 to address minor informalities therein. The previously held claim objections are hereby withdrawn.
Applicant has amended each of claims 16-18 to address indefiniteness within the preamble of each claim. The previously held rejections under 35 USC 112(b) are hereby withdrawn as they relate to the use of the term “prefilter”.
Response to Arguments
Applicant argues (see Remarks as filed at pages 5-6), that the subject matter of claim 17 is supported, and cites to the accompanying WIPO publication of the instant specification, where a list of electrostatic charging additives is cited, and further argues that the use of “may” in the list means that it is possible to use an electrostatic charging additive that does not contain fluorine or fluorine-containing compounds.
While that may be true, the issue at play in the rejection of claim 17 under 35 USC 112(a) is whether this alleged support for the electrostatic charging additive being selected so as not to contain a fluorinated compound proves that the entirety of the first and second nonwoven fibrous webs do not contain fluorine or fluorinated compounds. As has been previously established, claim 1 sets forth that the second nonwoven fibrous web contains several additional components in concert with the charging additive (see claim 1, lines 3-9), and the instant specification also sets forth that the first nonwoven fibrous web also contains components in addition to the electrostatic charging additive (see page 4, lines 3-6). Therefore, the principle issue is whether the entirety of each of the nonwoven fibrous webs are reasonably disclosed as being free of fluorine. Since Applicant has not addressed this specific contention, the rejection will be maintained below.
Applicant further argues (see Remarks as filed pages 6-9) with citation to Huberty (Col. 9, lines 30-54, Col. 14, lines 6-9, and claim 20-23) as well as citation to Comparative Example A derived from WO 99/16532, see Remarks as filed bottom of page 5 through the top of page 9, that Huberty essentially only contemplates use of fluorochemicals in the fibrous layers for achieving oily mist resistance. Applicant cites to comparative example A of Huberty as allegedly requiring only the Exxon Escorene 3505G and a fluorochemical in its disclosed filter layers.
Examiner respectfully disagrees. First, Huberty explicitly outlines that the embodiments and examples provided are illustrative of the practice of the invention, but should not be construed as limiting (Col. 19, lines 8-18). Also, in Huberty’s comparative example cited, Huberty does not outline a specific chemical used, rather indicates that the filter material is manufactured in a method similar to that recited in Example 7 of WO 99/16532,and goes on to detail that the difference in methodology was in the water spray-quenching (Col. 16, lines 50-65). Given that the comparative example given at pages 24-25 of WO 99/16532 details method steps including a rate, a melt temperature, die drilling, dimensions for manufacturing the filter element at, a pressure drop to utilize, annealing, and charging the web, it is not clear that Huberty specifically discloses that the materials of this method are used, rather than the particular variables surrounding how a filtration layer of the sort is manufactured.
To further outline this point, Huberty is replete with exemplary materials for constructing the fibrous webs, most of which do not require the Exxon Escorene 3505G and the associated fluorochemical of Comparative Example A. For example, the fibers are detailed as being comprised of PMP, polypropylene, polyethylene, polystyrene, polyester, polycarbonate, and combinations thereof (Col. 9, lines 16-20), with performance enhancing additives which may include fluorochemicals (Col. 9, lines 30-40). However, Rousseau, one of the cited documents containing useful additives, very explicitly recites that triazines are a suitable performance enhancing additive (Col. 2, lines 50-58), and notably a triazine isa not a fluorochemical.
Therefore, given that Huberty merely identifies that the methodology of manufacturing the fiber webs of its device are similar to the examples presented in WO 99/16532 (Col. 16, lines 50-65), that Huberty identifies numerous polymers that do not contain fluorochemicals for the fibers of the webs (see for example Col. 9, lines 16-20), and includes at least one example of an additive which does not contain fluorochemicals, where these additives are explicitly stated to provide oily mist resistance (see triazine outlined in Rousseau at Col. 2, lines 50-58, as cited in Huberty at Col. 9, lines 35-36), Applicant’s characterization of Huberty requiring fluorochemicals seems incorrect, and thus it is concluded that Huberty can be correctly relied upon hereinbelow for the prior art rejections of record, particularly with respect to claim 17. It is also noted that Applicant has failed to successfully amend around or persuasively argue the 112(a) rejection of record over claim 17, which contains the argued limitations with respect to the allegedly required fluorochemical composition of Huberty, and thus has not successively shown that these limitations are even supported by the instant specification.
Applicant further argues (see Remarks as filed pages 9-10), that Nambiar is directed towards acid resistant fibers and therefore also does not contemplate oily mist resistance, and that Masuda explicitly contains fluorine in the sheath of its fibers, and thus the relied upon references cannot render obvious at least the subject matter of claims 17-18.
Examiner respectfully disagrees that the combination further employing Nambiar and Masuda is improper in rejecting claim 1. Nambiar is relied on to teach the fiber core additive present in the instant claims and the PMP sheath of analogous core-sheath fibers. Similarly, Masuda is relied on to show that polypropylene, polyethylene, and polyester resin are suitable alternative fiber core materials to the polyphenylene sulfide resins taught by Nambiar. Masuda is not relied on for the fluorochemicals in the sheath layer, nor for any teaching relative to the sheath layer.
Thus, the structural limitations with respect to each of claims 1 and 17 and claims 1 and 18 are met by the prior art combination of record. In other words, the second nonwoven web of the filter assembly present in the device of modified Huberty does not expressly contain fluorine containing compounds given that the sheath is constructed of PMP, the core additive is a metal salt, zinc ethylhexanoate, and the core is constructed of polypropylene, polyethylene, or polyester resin, as taught/disclosed by each of Huberty, Nambiar, and Masuda.
Huberty further discloses that the first nonwoven web may be comprised of PMP (Col. 6, lines 1-5, where the first and second layers may be made from the same materials; Col. 8, line 61 through Col. 9, line 18, where poly(4-methylpentene) is described as a useful polymer for electret filter layers 20 and 30, and claims 1 and 18 outline the use of poly(4-methylpentene) in the electret filter layers, and PMP is not denoted as containing fluorine or being perfluorinated), and while Huberty indicates the use of performance enhancing additive, this additive does not necessarily contain fluorine (while Col. 6, lines 11-16 outline that the fiber webs “may also contain” or “may also include” performance enhancing additives, note that Huberty cites to performance-enhancing additives including those recited by Rousseau in US 5,908,598, see Col. 9, lines 30-36, which includes triazine, see Rousseau at Col. 2, lines 50-57, where triazine does not contain fluorine or perfluorinated polymers). Hence, given that the structural limitations of the claims are met, it is understood that the filter assembly as modified includes the capability of oily mist resistance as outlined in claim 18 (see MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”, in other words, since the filter assembly of the modified Huberty combination contains all the structural limitations set forth in claim 1, the functions of oil removal while maintaining acceptable filtration performance are considered to be present in the modified Huberty filter), and further does not contain fluorine or perfluorinated polymers as constructed, as outlined in claim 17. Hence, each of Huberty, Nambiar, and Masuda are relied on hereinbelow to reject amended claim 1, and its dependents.
Finally, the PTAB decision relied on by Applicant in attempt to obviate the double patenting rejections of record is unpersuasive. First, as a general rule, PTAB decisions are not controlling in terms of examination practice unless official memorandum or changes to the MPEP are made in accordance with such rulings. Second, the fact pattern argued by Applicant does not even match that of the double patenting rejections of the instant case. The relied upon decision regards a double patenting rejection using a patent with a later filed date than that of its instant case. The double patenting rejections in the current case are provisional, as application 18/249,989 has not issued as a patent. MPEP 804.I.B. and 804.I.B(1) outline the proper procedure in making provisional double patenting rejections. In MPEP 804.I, Chart I-B_AIA outlines the appropriate procedure for making provisional double patient rejections. Per MPEP 804.I.B(2)(b)(iv), the earlier filed application in provisional double patenting rejections are only withdrawn when it is the last type of rejection outstanding, and the provisional rejection in the later filed application will be converted to a non-statutory double patenting rejection against the issued patent. Applicant's arguments are thus unpersuasive, and the double patenting rejections of record will be maintained hereinbelow.
Claim Objections
Claims 17 and 19-20 are objected to because of the following informalities:
At claim 17, line 2, it is suggested that “the” be added before “second nonwoven” for clarity.
At claim 19, line 4, it is suggested that “comprises” be added before “core-sheath fibers” for clarity.
At claim 19, line 4, it is suggested that a colon be added following “comprising” and that commas be added following “thereon” in line6, and after fibers in line 9 to clarify the claim.
At claim 20, line 4, it is suggested that “comprises” be added before “core-sheath fibers” for clarity.
At claim 20, line 4, it is suggested that a colon be added following “comprising” and that commas be added following “thereon” in line6, and after fibers in line 9 to clarify the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 17 and 19-21 are rejected under 35 U.S.C. 112(a) 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.
Regarding claim 17, the claim recites that the fibrous webs “do not comprise fluorine-containing compounds”. Applicant alleges that page 6, second paragraph of WO 2020/261034 (i.e. the WIPO document that the instant application takes priority from, see the same citation in the instant application) provides written description support for this limitation. The cited paragraph states the following:
“The first and second nonwoven fibrous webs comprise at least one charge enhancing additive, which may be the same or different. Many charge enhancing additives for making electret-containing fiber webs are known in the art. Exemplary electrostatic charge enhancing additives may include pigments, light stabilizers, primary and secondary antioxidants, metal deactivators, hindered amines, hindered phenols, metal salts, phosphite triesters, phosphoric acid salts, fluorine-containing compounds, and combinations thereof.”
First, this citation refers to different charging additives that may be added to either the first or second nonwoven fibrous web, and dictates that fluorine-containing compounds are one such example of a charging additive. Second, claim 1, from which claim 17 depends, at least establishes that the second fibrous web contains core-sheath fibers with a fiber core and a sheath layer disposed thereon with the electrostatic charging additive contained within the core-sheath fibers. Thus, with respect to at least the second fibrous web, the claims establish that the web contains elements that are additional to the charging additive. It is noted that the instant application, see final paragraph of page 3 through the first line of page 4, also establishes that the first nonwoven fibrous web at least contains additional polymeric compounds. Thus, Applicant’s alleged support for the subject matter of claim 17 does not seem to adequately support that which is claimed. Given that Applicant’s own instant claims and specification set forth that the fibrous webs contain more elements than the charging additive referenced at page 6, second paragraph, it would not be readily apparent to the skilled artisan that the entirety of the first and second nonwoven fibrous webs would be free from fluorine-containing compounds as recited in claim 17 and alleged by Applicant. It is of further note that the specification does not seem to contain any working examples nor particular language that explicitly demonstrates a lack of fluorine-containing compounds in either web. Applicant is encouraged to provide additional evidence from the instant specification to support their assertion that the subject matter of claim 17 does in fact derive support therefrom, or else eliminate the language from the claim to overcome the rejection.
Claim 21 is rejected by virtue of its dependence on claim 17.
Regarding claim 19, lines 6-7 recite “wherein the sheath layer comprises poly(4-methylpentene) and a polymer selected from polypropylene, polyester, polystyrene, or polyethylene” which is not supported by the instant application.
First, at page 4, lines 7-12, the instant specification does set forth that the second nonwoven fibrous web may contain “a plurality of interconnected and/or entangled fibers. comprising poly(4-methyl-1-pentene). In some preferred embodiments, the fibers also comprise a thermoplastic component other than poly(4-methyl-1-pentene). In such embodiments, the fibers may comprise core-sheath fibers as discuss hereinbelow. However, if desired a blend of the fibers with other materials (e.g., in particulate and/or fiber form) may also be used.” However, it appears that the embodiments in which the additional thermoplastic is added into the fibers of the second nonwoven fibrous webs is in the sheath-core configuration, and the recited polymers in claim 19 (polypropylene, polyester, polystyrene, or polyethylene) are only ever recited as being located in the fiber core (see page 8, lines 6-17; page 12, lines 20-23; page 13, lines 9-11), and are not recited as being in the sheath of the fibers. Further, the recitation that “if desired a blend of the fibers with other materials (e.g., in particulate and/or fiber form) may also be used” seems to indicate that the actual web layer may be combined with additional particulate and/or fiber material, not that the sheath can be combined with additional materials.
Thus, the newly claimed matter of claim 19 appears to have no basis in the originally filed specification, and therefore fails to comply with the written description requirement.
Regarding claim 20, lines 6-7 recite “wherein the sheath layer comprises poly(4-methylpentene) and a polymer selected from polypropylene, polyester, polystyrene, or polyethylene” which is not supported by the instant application.
First, at page 4, lines 7-12, the instant specification does set forth that the second nonwoven fibrous web may contain “a plurality of interconnected and/or entangled fibers. comprising poly(4-methyl-1-pentene). In some preferred embodiments, the fibers also comprise a thermoplastic component other than poly(4-methyl-1-pentene). In such embodiments, the fibers may comprise core-sheath fibers as discuss hereinbelow. However, if desired a blend of the fibers with other materials (e.g., in particulate and/or fiber form) may also be used.” However, it appears that the embodiments in which the additional thermoplastic is added into the fibers of the second nonwoven fibrous webs is in the sheath-core configuration, and the recited polymers in claim 20 (polypropylene, polyester, polystyrene, or polyethylene) are only ever recited as being located in the fiber core (see page 8, lines 6-17; page 12, lines 20-23; page 13, lines 9-11), and are not recited as being in the sheath of the fibers. Further, the recitation that “if desired a blend of the fibers with other materials (e.g., in particulate and/or fiber form) may also be used” seems to indicate that the actual web layer may be combined with additional particulate and/or fiber material, not that the sheath can be combined with additional materials.
Thus, the newly claimed matter of claim 20 appears to have no basis in the originally filed specification, and therefore fails to comply with the written description requirement.
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.
Claims 8, 16, 18, and 21 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.
Regarding claim 8, lines 1-2 recite the limitation "the electrostatic charging additive". There is insufficient antecedent basis for this limitation in the claim.
For the purposes of examination, the limitation will be interpreted as “an electrostatic charging additive”. Applicant is encouraged to make this amendment to overcome the rejection, or to amend claim 1 to include the limitation.
Regarding claim 16, lines 1-2 recite the limitation "the electrostatic charging additive". There is insufficient antecedent basis for this limitation in the claim.
For the purposes of examination, the limitation will be interpreted as “an electrostatic charging additive”. Applicant is encouraged to make this amendment to overcome the rejection, or to amend claim 1 to include the limitation.
Regarding claim 18, the term “acceptable” in claim 18 is a relative term which renders the claim indefinite. The term “acceptable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the metes and bounds of the claim are uncertain, as there does not seem to be a qualitative or quantitative degree proffered by Applicant to determine what constitutes “acceptable” filtration performance.
For the purposes of examination, so long as the prior art combination used to reject claims 1 and 18 includes all the structural limitations of the claim, the filter assembly will be regarded as having acceptable filtration performance.
Regarding claim 18, the term “can” in line 2 renders the claim indefinite because it is unclear whether the limitations following the recitation are positively recited or not. See MPEP § 2173.05(d).
It is suggested that “can” be replaced with “is configured to” to overcome the rejection.
Claim 18 recites the limitation "the filter medium” in line 1. There is insufficient antecedent basis for this limitation in the claim.
It is suggested, and will be interpreted as such, that “filter” be replaced with “prefilter” to overcome the rejection.
Regarding claim 21, the phrase “better than the same fibrous web without the poly(4-methylpentene” renders the claim indefinite. The term “better” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the metes and bounds of the claim are uncertain, as there does not seem to be a qualitative or quantitative degree proffered by Applicant to determine what constitutes “better” filtration performance.
For the purposes of examination, so long as the prior art combination used to reject claims 1, 17, and 21 includes all the structural limitations of the claim, the filter assembly will be regarded as having “better” filtration performance by virtue of the inclusion of the poly(4-methylpentene) sheath.
Regarding claim 21, the term “can” in line 2 renders the claim indefinite because it is unclear whether the limitations following the recitation are positively recited or not. See MPEP § 2173.05(d).
It is suggested that “can” be replaced with “is configured to” to overcome the rejection.
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 non-obviousness.
Claims 1, 8-10, 16-18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Huberty (US 6,627,563) in view of Nambiar (US 2014/0308866) and in further view of Masuda (JP 2007/211376).
Regarding claim 1, Huberty discloses a filter assembly (10) (Col. 5, lines 11-16; Fig. 1) comprising:
an air filter medium (30) comprising a first nonwoven fibrous web having a first electret charge (Col. 5, lines 13-23 and 61-63; Col. 6, lines 1-3 detail that the second electret filter layer includes fibers; Col. 3, lines 44-46 defines that an electret filter layer exhibits at least a quasi-permanent electrical charge by definition, and thus the second electret layer 30 has a first charge; Col. 10, lines 41-55 describe different forms that the first and second electret filter layers may take, where lines 53-55 explicitly define that the layers may be comprised of nonwoven web microfibers; Fig. 1; see also Col. 5, lines 34-37 which explains that the first and second electret filter layers 20 and 30 are denoted as such based on the sequential order of airflow through the assembly 10, such that airflow passes through first layer 20 first and second layer 30 second, thus layer 20 is regarded as a prefilter because airflow occurs through it before second layer 30, and second layer 30 is regarded as a filter medium because air passes through it after passing through first prefilter layer 20); and
a prefilter medium (20) comprising a second nonwoven fibrous web having a second electret charge (Col. 5, lines 13-23 and 61-63; Col. 6, lines 1-3 detail that the first electret filter layer includes fibers; Col. 3, lines 44-46 defines that an electret filter layer exhibits at least a quasi-permanent electrical charge by definition, and thus the first electret layer 20 has a second charge; Col. 10, lines 41-55 describe different forms that the first and second electret filter layers may take, where lines 53-55 explicitly define that the layers may be comprised of nonwoven web microfibers; Fig. 1; see also Col. 5, lines 34-37 which explains that the first and second electret filter layers 20 and 30 are denoted as such based on the sequential order of airflow through the assembly 10, such that airflow passes through first layer 20 first and second layer 30 second, thus layer 20 is regarded as a prefilter because airflow occurs through it before second layer 30, and second layer 30 is regarded as a filter medium because air passes through it after passing through first layer 20), wherein the second nonwoven fibrous web comprises core-sheath fibers comprising a fiber core (Col. 10, lines 33-34),
wherein the filter assembly (10) is configured such that air passing through the prefilter medium (20) is directed through the air filter medium (30) (Col. 5, lines 34-37 which explains that the first and second electret filter layers 20 and 30 are denoted as such based on the sequential order of airflow through the assembly 10, such that airflow passes through first layer 20 first and second layer 30 second, thus layer 20 is regarded as a prefilter because airflow occurs through it before second layer 30, and second layer 30 is regarded as a filter medium because air passes through it after passing through first layer 20).
Huberty fails to disclose that the second nonwoven fibrous web includes core-sheath fibers specifically that comprise a fiber core selected from polypropylene, polyester, polystyrene, or polyethylene, and having a poly(4-methylpentene) sheath layer disposed thereon that comprises 1-50% by weight of the core-sheath fibers, and an electrostatic charging additive.
However, Nambiar teaches a bicomponent fiber of a core-sheath form (paragraph 56, lines 1-6) that includes a core layer of polyphenylene sulfide with an electrostatic charging additive contained in the core (paragraph 56, lines 1-2, where zinc ethylhexanoate is a metal salt, and the instant specification at page 6, lines 5-10 define metal salts as one possible choice for an electrostatic charging additive, and thus the zinc ethylhexanoate contained in the fiber core is regarded as the claimed electrostatic charging additive), and a poly(4-methylpentene) sheath disposed on the fiber core (paragraph 56, lines 1-6, where “polymethylpentene” or “PMP” is analogous to poly(4-methyl-1-pentene)), where the metal salt electrostatic charging additive is described as stabilizing the polyphenylene sulfide component (paragraph 56, lines 1-3), and it is noted that poly(4-methyl pentene) has high permeability, and further wherein the sheath layer comprises 30 percent by weight of the core-sheath fiber (see paragraphs 56-59 which describe Fiber Example B, in the Table following paragraph 59, the sheath layer is described in each example as being 30% of the weight of the core-sheath fiber; per MPEP 2131.03 I, a specific example in the prior art that lies within a claimed range anticipates the range, and 30 percent lies within 1 and 50 percent).
Given that Huberty discloses that the electret webs of the filter assembly are permeable (Col. 4, lines 51-54) and also indicates the usage of poly(4-methylpentene) for the fiber (Col. 8, line 61 through Col. 9, line 18, where poly(4-methylpentene) is described as a useful polymer for electret filter layers 20 and 30, and claims 1 and 18 outline the use of poly(4-methylpentene) in the first electret filter layer), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have manufactured the sheath of the sheath-core fiber of Huberty from poly(4-methylpentene) where the PMP makes up 30% by weight of the core-sheath fibers, as taught by Nambiar, in order to provide a suitably permeable sheath layer for Huberty’s filter.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the core of Huberty’s sheath-core fiber be manufactured from polyphenylene sulfide and include a metal salt electrostatic charging additive, as further taught by Nambiar, in order to provide a stable core component for the fiber.
Now modified Huberty fails to disclose wherein the fiber core comprises polypropylene, polyester, polystyrene, or polyethylene, given that Nambiar provides a polyphenyl sulfide fiber core.
However, Masuda teaches a sheath-core fiber structure (abstract, lines 1-7) that can be used in filtration (page 1: “Applications include articles such as clothing, leisure goods, household goods, wipers, filters, civil engineering materials, building materials, sanitary goods, and medical goods, which are made using this composite fiber fabric”) wherein polypropylene, polyethylene, and polyester resin are all given to be suitable alternative fiber core materials to polyphenylene sulfide resins (page 3: “Examples of the thermoplastic resin used for the core include polyamide resin (for example, nylon 6,nylon 12, nylon 66, aromatic nylon, copolymer nylon), polyester resin (for example, polyethyleneterephthalate, polybutylene terephthalate), polyolefin resin ( For example, polyethylene, polypropylene, copolymers of ethylene and propylene, copolymers of ethylene or propylene and C.sub.4 to C .sub.20 α olefins, terpolymers of ethylene, propylene and C .sub.4 to C .sub.20 α olefins, ethylene and vinyl acetate Copolymer, copolymer of propylene and vinyl acetate, copolymer of styrene and α-olefin, polyisobutylene), polyether resin, polyether ester resin, polyacrylate resin, ethylene alkyl Acrylate resins, polydiene resins (e.g., polybutadiene, copolymers of isobutylene and isoprene), and the like polyurethane resins, polyether ether ketone resins, polyether imide resins, polyether sulfoneresins, polyphenylene sulfide resins, polycarbonate resins”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the polyphenylene sulfide resin of modified Huberty’s fiber core (see paragraph 56, lines 1-6 of Nambiar) with polypropylene, polyester, or polyethylene given that Masuda teaches that the four compounds are art-recognized equivalents for manufacturing a fiber core of a sheath-core fiber (see MPEP 2144.06 II).
Regarding claim 8, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 1, as discussed above.
Modified Huberty further discloses wherein the electrostatic charging additive is a metal salt (Nambiar: paragraph 56, lines 1-2, where zinc ethylhexanoate, regarded as the electrostatic charging additive, is a metal salt).
Regarding claim 9, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 1, as discussed above.
Huberty further discloses wherein the first nonwoven fibrous web comprises poly(4-methyl-1-pentene) (Huberty: Col. 6, lines 1-5, where the first and second layers may be made from the same materials; Col. 8, line 61 through Col. 9, line 18, where poly(4-methylpentene) is described as a useful polymer for electret filter layers 20 and 30, and claims 1 and 18 outline the use of poly(4-methylpentene) in the electret filter layers).
Regarding claim 10, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 1, as discussed above.
Modified Huberty further discloses a respirator comprising the filter assembly of claim 1 (Huberty: Col. 8, lines 14-16; see also Nambiar: paragraph 4, lines 1-7 and paragraph 5, lines 1-12 which describe the use of related compounds in filtration, and Mauda at page 1: “Applications include articles such as clothing, leisure goods, household goods, wipers, filters, civil engineering materials, building materials, sanitary goods, and medical goods, which are made using this composite fiber fabric”).
Regarding claim 16, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 1, as discussed above.
Modified Huberty discloses wherein the electrostatic charging additive is present in the fiber core (Nambiar: paragraph 56, lines 1-2, where zinc ethylhexanoate is contained in the fiber core and is regarded as the claimed electrostatic charging additive, as discussed above with respect to claim 1).
Regarding claim 17, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 1, as discussed above.
Modified Huberty further discloses wherein the first and second nonwoven fibrous webs do not comprise fluorine-containing compounds or perfluorinated compounds (for the second web, see Nambiar at paragraph 56, lines 1-2, where zinc ethylhexanoate is the electrostatic charging additive, paragraph 56, lines 1-6, where “polymethylpentene” or “PMP” is analogous to poly(4-methyl-1-pentene) and is the sheath, and see Masuda at page 3: “Examples of the thermoplastic resin used for the core include polyamide resin (for example, nylon 6,nylon 12, nylon 66, aromatic nylon, copolymer nylon), polyester resin (for example, polyethyleneterephthalate, polybutylene terephthalate), polyolefin resin ( For example, polyethylene, polypropylene, copolymers of ethylene and propylene, copolymers of ethylene or propylene and C.sub.4 to C .sub.20 α olefins, terpolymers of ethylene, propylene and C .sub.4 to C .sub.20 α olefins, ethylene and vinyl acetate Copolymer, copolymer of propylene and vinyl acetate, copolymer of styrene and α-olefin, polyisobutylene), where polyethylene or polypropylene make up the fiber core, and note that none of ethylhexanoate, PMP, or polyethylene or polypropylene are denoted as containing fluorine or being perfluorinated; for the first fiber web, note Huberty: Col. 6, lines 1-5, where the first and second layers may be made from the same materials; Col. 8, line 61 through Col. 9, line 18, where poly(4-methylpentene) is described as a useful polymer for electret filter layers 20 and 30, and claims 1 and 18 outline the use of poly(4-methylpentene) in the electret filter layers, and PMP is not denoted as containing fluorine or being perfluorinated, and while Col. 6, lines 11-16 outline that the fiber webs “may also contain” or “may also include” performance enhancing additives, note that Huberty cites to performance-enhancing additives including those recited by Rousseau in US 5,908,598, see Col. 9, lines 30-36, which includes triazine, see Rousseau at Col. 2, lines 50-57, where triazine does not contain fluorine or perfluorinated polymers).
Regarding claim 18, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 1, as discussed above.
Modified Huberty further discloses wherein the prefilter medium (Huberty: 20) is configured to remove oily aerosols from an airstream while maintaining acceptable filtration performance (see Huberty, at the title; note also the combination of claim 1which gives rise to the first and second webs, and the core-sheath fibers comprising polypropylene or polyethylene at the core with a metal salt charging additive, and a sheath of PMP, and per MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”, in other words, since the filter assembly of the modified Huberty combination contains all the structural limitations set forth in claim 1, the functions of oil removal while maintaining acceptable filtration performance are considered to be present in the modified Huberty filter).
Regarding claim 21, Huberty in view of Nambiar and Masuda disclose the filter assembly of claim 17, as discussed above.
Modified Huberty further discloses wherein the second nonwoven fibrous web can remove oily aerosols from an airstream better than the same fibrous web without the poly(4-methylpentene) (see Nambiar, paragraph 56, lines 1-6, for the PMP sheath; note Huberty’s title which indicates that its core-sheath fibers are concerned with oily mist performance; further see MPEP 2112.01, where when the structures claimed are substantially identical to those of the prior art combination, the functions claimed are assumed to be present).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
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Claims 1, 8-10, 16-18, and 21 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 9 of co-pending Application No. 18/249,989 in view of Huberty (US 6,627,563) and Nambiar (US 2014/0308866).
Examiner notes that the citations of the ‘989 application are given with respect to the amended claim set from 02-12-2026.
Regarding claim 1, Schultz ‘989 discloses a thermoplastic core-sheath fiber (claim 1, line 1)
comprising:
a fiber core that comprises polypropylene (claim 9, lines 1-2) and having a poly(4-methylpentene) sheath layer disposed thereon, wherein an electrostatic charging additive is contained in the fiber core (claim 1 lines 1-8).
Schultz ‘989 fails to disclose a filter assembly comprising the thermoplastic core-sheath fibers and forming:
an air filter medium comprising a first nonwoven fibrous web having a first electret charge; and
a prefilter medium comprising a second nonwoven fibrous web having a second electret charge,
wherein the PMP sheath layer comprises 1-50 percent by weight of the core-sheath fibers, and
wherein the filter assembly is configured such that air passing through the prefilter medium is directed through the air filter medium.
However, Huberty teaches a filter assembly (10) (Col. 5, lines 11-16; Fig. 1) comprising:
an air filter medium (30) comprising a first nonwoven fibrous web having a first electret charge (Col. 5, lines 13-23 and 61-63; Col. 6, lines 1-3 detail that the second electret filter layer includes fibers; Col. 3, lines 44-46 defines that an electret filter layer exhibits at least a quasi-permanent electrical charge by definition, and thus the second electret layer 30 has a first charge; Col. 10, lines 41-55 describe different forms that the first and second electret filter layers may take, where lines 53-55 explicitly define that the layers may be comprised of nonwoven web microfibers; Fig. 1; see also Col. 5, lines 34-37 which explains that the first and second electret filter layers 20 and 30 are denoted as such based on the sequential order of airflow through the assembly 10, such that airflow passes through first layer 20 first and second layer 30 second, thus layer 20 is regarded as a prefilter because airflow occurs through it before second layer 30, and second layer 30 is regarded as a filter medium because air passes through it after passing through first prefilter layer 20); and
a prefilter medium (20) comprising a second nonwoven fibrous web having a second electret charge (Col. 5, lines 13-23 and 61-63; Col. 6, lines 1-3 detail that the first electret filter layer includes fibers; Col. 3, lines 44-46 defines that an electret filter layer exhibits at least a quasi-permanent electrical charge by definition, and thus the first electret layer 20 has a second charge; Col. 10, lines 41-55 describe different forms that the first and second electret filter layers may take, where lines 53-55 explicitly define that the layers may be comprised of nonwoven web microfibers; Fig. 1; see also Col. 5, lines 34-37 which explains that the first and second electret filter layers 20 and 30 are denoted as such based on the sequential order of airflow through the assembly 10, such that airflow passes through first layer 20 first and second layer 30 second, thus layer 20 is regarded as a prefilter because airflow occurs through it before second layer 30, and second layer 30 is regarded as a filter medium because air passes through it after passing through first layer 20, and note that Col. 8, lines 14-25 and Col. 11, lines 16-17 contemplate use of the fibers in a respirator),
wherein the second nonwoven fibrous web comprises core-sheath fibers comprising a fiber core (Col. 10, lines 33-34), and
wherein the filter assembly (10) is configured such that air passing through the prefilter medium (20) is directed through the air filter medium (30) (Col. 5, lines 34-37 which explains that the first and second electret filter layers 20 and 30 are denoted as such based on the sequential order of airflow through the assembly 10, such that airflow passes through first layer 20 first and second layer 30 second, thus layer 20 is regarded as a prefilter because airflow occurs through it before second layer 30, and second layer 30 is regarded as a filter medium because air passes through it after passing through first layer 20).
Thus, Huberty teaches that a known application of sheath-core fibers is in filter assemblies comprising first and second nonwoven webs of electret material (Col. 5, lines 13-23 and 61-63; Col. 6, lines 1-3 detail that the first electret filter layer includes fibers; Col. 10, lines 33-34), where the fibers of the fibrous webs hold the electric charge (Col. 4, lines 1-6), and poly(4-methylpentene) is a suitable polymer for such sheath-core fibers of an electret web (Col. 8, line 61 through Col. 9, line 18, where poly(4-methylpentene) is described as a useful polymer for electret filter layers 20 and 30, and claims 1 and 18 outline the use of poly(4-methylpentene) in the first electret filter layer; Col. 10, lines 53-55 describe the layer as a nonwoven fibrous web, see also Col. 6, lines 11-16). Huberty further teaches that the relevant fibers are capable of forming a self-supporting electret filter layer (Col. 10, lines 41-44)
Given that Huberty teaches the use of sheath-core fibers in nonwoven electret webs of prefilter and filter media of a filter assembly, and that poly(4-methylpentene) is a suitable polymer for such sheath-core fibers of an electret web, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the thermoplastic core-sheath fibers of Schultz ‘989 in respective nonwoven electret webs of a prefilter medium and a filter medium of a filter assembly, such as the one taught by Huberty, in order to form self-supporting electret filter layers within the filter assembly.
Modified Schultz ‘989 fails to disclose wherein the sheath layer comprises 1 to 50 percent by weight of the core-sheath fiber.
However, Nambiar teaches a bicomponent fiber of a core-sheath form (paragraph 56, lines 1-6) that includes a core layer of polyphenylene sulfide with an electrostatic charging additive contained in the core (paragraph 56, lines 1-2, where zinc ethylhexanoate is a metal salt, and the instant specification at page 6, lines 5-10 define metal salts as one possible choice for an electrostatic charging additive, and thus the zinc ethylhexanoate contained in the fiber core is regarded as the claimed electrostatic charging additive), and a poly(4-methylpentene) sheath disposed on the fiber core (paragraph 56, lines 1-6, where “polymethylpentene” or “PMP” is analogous to poly(4-methyl-1-pentene)),
wherein the sheath layer comprises 30 percent by weight of the core-sheath fiber (see paragraphs 56-59 which describe Fiber Example B which has been relied on in rejecting the instant claims, in the Table following paragraph 59, the sheath layer is described in each example as being 30% of the weight of the core-sheath fiber; per MPEP 2131.03 I, a specific example in the prior art that lies within a claimed range anticipates the range, and 30 percent lies within 1 and 50 percent).
Given that both Schultz ‘989 and Nambiar disclose/teach the formation of sheath-core fibers with a poly(4-methylpentene) sheath and a core with a charging additive, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have manufactured the sheath layer of the sheath-core fiber of modified Schultz ‘989 to be 30 percent by weight of the core-sheath fiber, as taught by Nambiar, given that it is a known weight ratio to form the fiber sheath from in order to form a suitable sheath-core fiber.
Regarding claim 8, Schultz ‘989 in view of Huberty disclose the filter assembly of claim 1, as discussed above.
Modified Schultz ‘989 fails to disclose wherein the electrostatic charging additive is selected from the group consisting of pigments, light stabilizers, primary and secondary antioxidants, metal deactivators, hindered amines, hindered phenols, metal salts, phosphite triesters, phosphoric acid salts, and combinations thereof.
However, Nambiar teaches a bicomponent fiber of a core-sheath form (paragraph 56, lines 1-6) that includes a core layer of polyphenylene sulfide with an electrostatic charging additive contained in the core (paragraph 56, lines 1-2, where zinc ethylhexanoate is a metal salt, and each of claim 8 and the instant specification at page 6, lines 5-10 define metal salts as one possible choice for an electrostatic charging additive, and thus the zinc ethylhexanoate contained in the fiber core is regarded as the claimed electrostatic charging additive), and a poly(4-methylpentene) sheath disposed on the fiber core (paragraph 56, lines 1-6, where “polymethylpentene” or “PMP” is analogous to poly(4-methyl-1-pentene)), where the metal salt electrostatic charging additive is described as stabilizing the polyphenylene sulfide component (paragraph 56, lines 1-3), and it is noted that poly(4-methyl pentene) has high permeability.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the core of modified Schulz’s sheath-core fiber be manufactured from polyphenylene sulfide and include a metal salt electrostatic charging additive, as taught by Nambiar, in order to provide a stable core component for the fiber.
Regarding claim 9, Schultz ‘989 in view of Huberty and Nambiar disclose the filter assembly of claim 1, as discussed above.
Modified Schultz ‘989 further discloses wherein the first nonwoven fibrous web comprises poly(4-methyl-1-pentene) (Schultz ‘989: claim 1, lines 6-9; see Huberty where Col. 5, lines 13-23 and 61-63; Col. 6, lines 1-3 detail that the first and second electret filter layer includes fibers, where Col. 10, lines 41-55 describe different forms that the first and second electret filter layers may take, where lines 53-55 explicitly define that the layers may be comprised of nonwoven web microfibers).
Regarding claim 10, Schultz ‘989 in view of Huberty and Nambiar disclose the filter assembly of claim 1, as discussed above.
Modified Schultz ‘989 further discloses a respirator comprising the filter assembly of claim 1 (see rejection of claim 1 above for the filter assembly; see Huberty at Col. 8, lines 14-25; Col. 11, lines 16-17 where the filter is used in a respirator).
Regarding claim 16, Schultz ‘989 in view of Huberty and Nambiar disclose the filter assembly of claim 1, as discussed above.
Modified Schulz ‘989 further discloses wherein the electrostatic charging additive is present in the fiber core (Schulz ‘989: claim 1 lines 1-8).
Regarding claim 17, Schulz ‘989 in view of Huberty and Nambiar disclose the filter assembly of claim 1, as discussed above.
Modified Schulz ‘989 further discloses wherein the first and second nonwoven fibrous webs do not comprise fluorine-containing compounds or perfluorinated compounds (note Schulz ‘989 at claims 1 and 9, where no mention of fluorine or perfluorinated polymers is present in the core-sheath fibers, and Huberty: Col. 6, lines 1-5, where the first and second layers may be made from the same materials; Col. 8, line 61 through Col. 9, line 18, where poly(4-methylpentene) is described as a useful polymer for electret filter layers 20 and 30, and claims 1 and 18 outline the use of poly(4-methylpentene) in the electret filter layers, and PMP is not denoted as containing fluorine or being perfluorinated, and while Col. 6, lines 11-16 outline that the fiber webs “may also contain” or “may also include” performance enhancing additives, note that Huberty cites to performance-enhancing additives including those recited by Rousseau in US 5,908,598, see Col. 9, lines 30-36, which includes triazine, see Rousseau at Col. 2, lines 50-57, where triazine does not contain fluorine or perfluorinated polymers).
Regarding claim 18, Schulz ‘989 in view of Huberty and Nambiar disclose the filter assembly of claim 1, as discussed above.
Modified Schulz ‘989 further discloses wherein the prefilter medium (Huberty: 20) is configured to remove oily aerosols from an airstream while maintaining acceptable filtration performance (see Huberty, at the title; note also the combination of claim 1 which gives rise to the first and second webs, and the core-sheath fibers comprising polypropylene with a charging additive, and a sheath of PMP, and per MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”, in other words, since the filter assembly of the modified Schulz ‘989 combination contains all the structural limitations set forth in claim 1, the functions of oil removal while maintaining acceptable filtration performance are considered to be present in the modified Schulz ‘989 filter).
Regarding claim 21, Schulz ‘989 in view of Huberty andNambiar disclose the filter assembly of claim 17, as discussed above.
Modified Schulz ‘989 further discloses wherein the second nonwoven fibrous web can remove oily aerosols from an airstream better than the same fibrous web without the poly(4-methylpentene) (see claim 1, lines 1-8 for PMP; note Huberty’s title which indicates that its core-sheath fibers are concerned with oily mist performance; further see MPEP 2112.01, where when the structures claimed are substantially identical to those of the prior art combination, the functions claimed are assumed to be present).
Conclusion
Examiner notes that no art rejection has been applied against claim 19 and 20, because the combination of poly(4-methylpentene) and one of the additionally recited polymers was not found in the prior art.
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/PAIGE KATHLEEN BUGG/Primary Examiner, Art Unit 3785