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 argues that the limitation as claimed of “wherein the first layer has a thickness of about 0.25 to about 38 mm at a contact pressure of about 0.1 bar” is a structural property and not a product-by-process type or manufacturing type limitation. Applicant argues that “The layer is not permanently altered, transformed, or processed by the act of measuring its thickness under 0.1 bar of contact pressure” and that it “…does not modify the product in any way.” (page 8 of Remarks, para. 1).
Applicant also argues that the limitation is a measurement and that “Measuring a property does not manufacture or treat the product.” Applicant also states that the Examiner’s position would lead to “absurd results”.
If Applicant’s argument is true – that the measurement at 0.1 bar of contact pressure “does not modify the product in any way” and that “The layer is not permanently altered, transformed, or processed by the act of measuring its thickness under 0.1 bar of contact pressure”, then the thickness under standard atmospheric pressure would be no different than that at 0.1 bar of contact pressure. As such, the Examiner’s position remains that the prior art teaches substantially the same material as claimed and that the prior art will necessarily result in the same thickness as claimed unless these properties arise from features not yet claimed.
The claimed range of “about 0.25 to about 38 mm” is a huge range. One of ordinary skill in the art at the time of the invention would also have found it obvious that the application of 0.1 bar of pressure would not significantly change the thickness of the material to be outside this range. This is supported by Applicant’s own arguments that “The layer is not permanently altered, transformed, or processed by the act of measuring its thickness under 0.1 bar of contact pressure” and that it “…does not modify the product in any way.” (page 8 of Remarks, para. 1).
Wertz et al. teach that the thickness of the first layer (identified as 14 in Wertz et al.) is at least 50 um (i.e. 0.05mm) and up to 1000um (i.e. 1 mm). As such, Wertz et al.’s material meets the claim limitation as 1. Applicant has stated on the record that nothing changes when the pressure of 0.1 bar is applied and 2. The thickness range claimed is so large that even at 0.1 bar assuming some change, the material would inherently be in the claimed range as the starting materials are the same.
The Examiner notes that it is impossible for the Office to test materials under a myriad of conditions to determine properties. The same argument goes for the scenarios described by Applicant in the Remarks. In scenarios 1-4 on Page 7, these properties determined by specific measurements are resultant from the material itself. That is to say, if two materials having the same structure, they will necessarily have the same tensile strength, porosity, air permeability, and basis weight when tested under the described conditions. The issue is that the materials must be tested at these conditions for the prior art to explicitly state the same variable under the same condition. However, if two materials are the same or substantially the same, then the properties are inherently the same. That is the same as here. Wertz et al. teach the same or substantially the same material wherein the thickness when measured under the claimed conditions will inherently be the same – unless this property arises from some structure Applicant has failed to yet claim.
The office does not simply issue patents on materials tested by different processes that cannot be verified by the office when the materials are the same.
And while Applicant alleges that the claim limitation is not a “product-by-process” type limitation, the Examiner disagrees. The claim quite literally requires an application of 0.1 bar pressure to the material in order to get the material to a state to measure the thickness; this is literally a product formed by a process of manufacturing – even if the intention is solely for measuring a thickness.
The Examiner has provided a sound basis for inherency as shown in the rejection above. While Applicant has decided that the Examiner’s position is “conclusory” and not supported by fact, the Examiner has put out the facts in the rejection above and the conclusions made from such facts. The Examiner has also pointed out here in the response to the Remarks, that Wertz et al. even teach “Generally, the thickness of scrim 14 can be selected as desired. In certain embodiments, scrim 14 is at least 50 microns (e.g., at least 100 microns, at least 200 microns) thick, and/or at most 1000 microns (e.g., 900 microns, 750 microns) thick. For example, the thickness of scrim 14 can be from 50 microns to 1000 microns (e.g. from 100 microns to 900 microns, from 250 microns to 750 microns) thick. As referred to herein, the thickness of scrim 14 is determined according to TAPPI T411.” [0074] Wherein given Applicant’s arguments above, it is clear that the material’s thickness is the same as claimed as Applicant states that the 0.1 bar of pressure does not change anything. The burden is now on Applicant to show why the prior art would not have the same claimed thickness.
The arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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