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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21-43 are rejected under 35 U.S.C. 103 as being unpatentable over Wertz et al. (US Pub. No. 2009/0120048) in view of Sharma et al. (US Pub. No. 2003/0026927) evidenced by Engineered Fibers Technology paper (previously provided) and the “Handbook of Nonwoven Filter Media (2nd Edition)” (2016, chapter 6, provided in PDF form).
Claims 21, 25, 29, and 33: Wertz et al. teach a filter comprising a spunbonded nonwoven layer (first layer) (Figs denoted by element 14)[0071-0076] and a meltblown layer (second layer) (Figs. Denoted by element 16)[0054]. Wertz et al. teach a three layer arrangement with the intermediate layer (14) between a meltblown layer (16) and a support (12) (third layer). In specific examples such as Samples A (0.8 micron meltblown fibers), Sample D (0.7 micron meltblown fibers), Sample F (0.7 micron), Sample G (0.7 micron meltblown fibers), Sample H (0.7 meltblown fibers), Sample I (0.7 micron meltblown fibers), and Sample O (0.6 micron meltblown fibers), the fibers used have a diameter of from 0.6 microns to 0.9 microns. Given that there are no other fiber diameters disclosed in each of the embodiments, one of ordinary skill in the art would reasonably interpret the meltblown fibers of the above examples to be essentially 100% of the meltblown fibers, which would mean that more than 40% of the meltblown fibers are from 0.6—0.9 microns in these examples. Wertz et al. teach that the meltblown layer (16) includes PBT fibers [0078].
Wertz et al. and Sharma et al. do not teach the thickness of the material “at a contact pressure of 0.1 bar”. However, Wertz et al. and Sharma et al.’s material appears to be substantially the same as that claimed. This limitation is similar to a product-by-process limitation wherein the product is claimed after a process has been applied to it. MPEP 2113 teaches that "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)”
Wertz et al. teach that the nonwoven layer (substrate 12) is made of fibers [0056-0057] and in one embodiment is a bicomponent film [0213]. They do not recite that the bicomponent film is made of bicomponent fibers.
Sharma et al. teach a filter material comprising a meltblown layer (16)[0016] on a nonwoven support layer (14/18) wherein the nonwoven support layer comprises bicomponent polyester/copolyester fibers [0015]. The bicomponent fibers serve as binder fibers and provide enhanced strength properties to the web [0015].
One of ordinary skill in the art at the time of the invention would have found it obvious to use bicomponent fibers to form Wertz et al.’s bicomponent nonwoven film layer and/or to form Wertz et al.’s nonwoven layer generally because the bicomponent fibers bind the web and provide enhanced support. Sharma et al. teach that the denier of the fiber in the nonwoven layer is 2-6 denier [0015]. The bicomponent fiber diameter in microns of a 2 denier polyester/co-polyester fiber is typically about 14um (see the Engineered Fibers Technology paper).
Wertz et al. do not disclosure the porosity or air permeability of the material. However, the porosity and air permeability of a filter material is a well-known result effective variable that is optimized to control the flow through characteristics of the filter material. Please see the excerpt from the “Handbook of Nonwoven Filter Media (2nd Edition), 6.8 “Pore Size and Pore Structure”, which teaches that “Pore size, pore structure, along with porosity are related properties that help define a nonwoven filter medium. Porosity relates to the void volume within a filter medium and its capacity to hold dirt.” See also the discussion in 6.5 of “Air Permeability” which discusses the ways that changing the air permeability affects the filter media. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 22: The layers are point calendar bonded together [0124].
Claims 23 and 24: Wertz et al. do not disclosure the porosity of the material. However, the porosity of a material is a well-known result effective variable that is optimized to control the flow through characteristics of the filter material. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 27: the third layer (12) comprises monocomponent fibers [0056], including synthetic fibers [0056]. Wertz et al. do not define synthetic fibers in the description of the third layer (12) but they disclose polymer fiber materials suitable for the support material (14) to be polyester [0073]. One of ordinary skill in the art would have reasonably concluded that “synthetic” fibers in the support layer (12) to include polyester as described as a suitable material for the other support material (i.e. scrim) (14) because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 28: the third layer (12) has a basis weight of at least 25 gsm [0059]. They teach that “the basis weight of substrate 12 is usually selected so that substrate 12 provides a desired amount of mechanical integrity to filter medium 10.” Therefore, while the claimed range is below the preferred range of starting at 25 gsm, it is clear that the basis weight is a result effective variable that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980).
Claim 30: the second layer (16) has a basis weight of from about 9 to about 35 gsm [0080].
Claim 31: Wertz et al. and Sharma et al. do not teach the thickness of the material “at a contact pressure of 0.1 bar”. However, Wertz et al. and Sharma et al.’s material appears to be substantially the same as that claimed. This limitation is similar to a product-by-process limitation wherein the product is claimed after a process has been applied to it. MPEP 2113 teaches that "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)”
Claim 34, 35, 36, 38, 41, and 43: Wertz et al. teach a filter comprising a spunbonded nonwoven layer (first layer) (Figs denoted by element 14)[0071-0076] and a meltblown layer (second layer) (Figs. Denoted by element 16)[0054]. Wertz et al. teach a three layer arrangement with the intermediate layer (14) between a meltblown layer (16) and a support (12) (third layer).
The meltblown layer comprises fibers having an average diameter of from 0.2 to 1.5 microns [0077]. According to Applicant, absent a teaching of a specific distribution of fiber diameter, one would conclude that the fiber distribution is a standard fiber size distribution. This would center the peak around 0.9 um and have 50% on either side of that peak. As such, one would reasonably conclude that at least 50% would be less than 1um.
Wertz et al. teach that the nonwoven layer (substrate 12) is made of fibers [0056-0057] and in one embodiment is a bicomponent film [0213]. They do not recite that the bicomponent film is made of bicomponent fibers.
Sharma et al. teach a filter material comprising a meltblown layer (16)[0016] on a nonwoven support layer (14/18) wherein the nonwoven support layer comprises bicomponent polyester/copolyester fibers [0015]. The bicomponent fibers serve as binder fibers and provide enhanced strength properties to the web [0015].
One of ordinary skill in the art at the time of the invention would have found it obvious to use bicomponent fibers to form Wertz et al.’s bicomponent nonwoven film layer and/or to form Wertz et al.’s nonwoven layer generally because the bicomponent fibers bind the web and provide enhanced support.
Wertz et al. do not disclosure the porosity or air permeability of the material. However, the porosity and air permeability of a filter material is a well-known result effective variable that is optimized to control the flow through characteristics of the filter material. Please see the excerpt from the “Handbook of Nonwoven Filter Media (2nd Edition), 6.8 “Pore Size and Pore Structure”, which teaches that “Pore size, pore structure, along with porosity are related properties that help define a nonwoven filter medium. Porosity relates to the void volume within a filter medium and its capacity to hold dirt.” See also the discussion in 6.5 of “Air Permeability” which discusses the ways that changing the air permeability affects the filter media. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 37: Sharma et al. teach that the denier of the fiber in the nonwoven layer is 2-6 denier [0015]. The bicomponent fiber diameter in microns of a 2 denier polyester/co-polyester fiber is typically about 14um (see the Engineered Fibers Technology paper).
Claim 39: the meltblown fibers are made of one polymer type which would be a monocomponent fiber.
Claim 40: the third layer (12) has a basis weight of at least 25 gsm [0059]. They teach that “the basis weight of substrate 12 is usually selected so that substrate 12 provides a desired amount of mechanical integrity to filter medium 10.” Therefore, while the claimed range is below the preferred range of starting at 25 gsm, it is clear that the basis weight is a result effective variable that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980).
Claim 42: The layers are point calendar bonded together [0124].
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-30 and 33-43 have been considered but are not sufficient to overcome the prior art.
Applicant again argues unexpected results associated with the claimed combination of properties and structure.
Applicant cites “Data Demonstrating Unexpected and Non-Obvious Performance” and states that a comparison of Example 1 to Comparative Example 1 shows a stark contrast and demonstrates the unexpected/superior results.
A careful consideration of Example 1 vs. Comparative Example 1 it appears that the only physical difference between Example 1 and the Comparative Example 1 is that the melt-blown material of Example 1 is PBT and that of the Comparative Example 1 is PP. However, Wertz et al. teach that the meltblown material includes PBT [0078]. The porosity and permeability of Comparative Example 1 also falls squarely in the claimed range. According to MPEP 2123, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). As such, it is clear that using PBT in place of PP in Wertz et al.’s Example 1 would be an obvious substitution with predictable results. Presumably, the obvious substitution for PP of PBT in Wertz et al. would be the same material.
In the comparison, Applicant states that the invention claimed has palatability that is “Very high, allows many folds” and the comparative example of Wertz et al. comprises “Lower, fewer folds possible”. There is no way provided by Applicant to quantify what is considered “very high, allows many folds” versus “Lower, fewer folds”. This argument is insufficient to establish unexpected results.
Further, Applicant argues that the service life is “Long” vs. “Shorter” without providing any way to determine what, exactly, would be considered “Long” or “Shorter”. As such, it is impossible to determine if this is actually an unexpected or superior result.
Given that PBT is listed by Wertz et al. as a possible melt-blown material, the properties associated with PBT identified by Applicant would be the same.
With respect to the thickness of the first layer when at a specific contact pressure, the Examiner and the Applicant both agree that this is claiming the thickness of the material when measured under certain conditions. That is, a specific process is applied to the material and then the thickness is measured. As such, the product-by-process guidance is relevant such that the MPEP also teaches that “As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).”
It is impossible for the Examiner to take Wertz et al.’s material and test it under the specific testing regiment as claimed. The material claimed is substantially the same and made obvious over the prior art as is applied to claim 1. As such, it would follow that the material would have the same or substantially similar structure under the same applied conditions. This is what the “product-by-process” citation above addresses. If the Office were to issue a patent for a material based on only testing the material under testing conditions not disclosed in the prior art, there would be multiple patents for the same material but only described using different testing conditions. It would be impossible for the Office to test a material under any specific condition Applicant chooses to claim.
The arguments are not persuasive.
Conclusion
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773