DETAILED ACTION
Claims 12-13 and 15-19 were rejected in the Office Action mailed 08/26/2025.
Applicant filed a response, amended claims 1 and 12, and cancelled claim 17 on 10/16/2025.
Claims 1-13, 15-16, and 18-19 are pending, of which claims 1-11 are withdrawn.
Claims 12-13, 15-16, and 18-19 are rejected.
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12-13, 15-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US 2017/0241054) (Song) in view of Wang et al. (US 4,256,626) (Wang).
Regarding claims 12-13
Song teaches a spunbonded electret web comprising thermoplastic fibers that include a charging additive. The thermoplastic fibers comprise a polyolefin, such as polypropylene. The charge additive include light stabilizers. See, e.g., abstract, paragraphs [0002], [0010], [0027], [0029-0032], and clams 1-2.
Song does not explicitly teach the light stabilizer.
With respect to the difference, Wang teaches an effective ultraviolet stabilizer that may be incorporated into film or fibers that are susceptible to ultraviolet degradation, including polyolefins. The ultraviolet stabilizer contains a benzoxazole or benzothiazole, as shown below.
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Benzoxazole where R1-R4 are hydrogen. I is a substituent listed for R1-R4 and present on all positions of the benzenoid ring.
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Benzothiazole where R1-R4 is hydrogen. I is a substituent listed for R1-R4 and present on all positions of the benzenoid ring.
See, e.g., abstract and col. 1, lines 17-34 and 55-60, col. 2, line 9 – col. 3, line 66, col. 5, line 61 – col. 6, line 10.
Wang and Song are analogous art as they are both drawn to light stabilizers.
In light of the motivation as provided by Wang, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the ultraviolet stabilizer comprising a benzoxazole or benzothiazole of Wang, as shown above, as the light stabilizer in the web of Song, as Wang teaches the stabilizer is effective and efficient, specifically for film or fibers susceptible to ultraviolet degradation, including polyolefin, and thereby arrive at the claimed invention.
The ultraviolet stabilizer of Song in view of Wang would read on the claimed “charge-enhancing additive” as the ultraviolet stabilizer would be capable of providing charge-enhancing properties to the electret filter medium as it satisfies Formula 1 as claimed.
Given the electret web includes thermoplastic fibers and charge additives, wherein the charge additive corresponds to the charge-enhancing additive, as discussed above, it follows the electret web consists of a thermoplastic resin and a charge-enhancing additive. It is noted Song includes the presence of polylactic acid fibers, however polylactic acid fibers are thermoplastic fibers and since claim 12 recites, “a thermoplastic resin comprising…”, i.e., an open transitional phrase, it follows the thermoplastic resin is open to thermoplastics outside of those listed in claim 12, including polylactic acid.
Regarding claim 15
Song in view of Wang teaches all of the limitations of claim 12 above. Song further teaches the web comprises 0.1 to about 5.0 wt.% of the charging additive. Paragraphs [0002] and [0029] and claims 1-2.
Regarding claim 16
Song in view of Wang teaches all of the limitations of claim 12 above. Song further teaches the web contains an electrostatic charge imparted through corona treatment. Paragraphs [0055] and [0074] and claim 19.
Regarding claim 18
Song in view of Wang teaches all of the limitations of claim 12 above. Song further teaches the web comprises a Quality Factor Retention of at least 75% after being aged for three days at 70°C at 15% humidity. Paragraphs [0074] and [0097] and claim 14.
Although there is no disclosure that the test method of Song is in conformity with the test standard as claimed, given that Song discloses Quality Factor Retention as the presently claimed and the absence of evidence of the criticality of how Quality Factor is measured, it is the examiner's position that Quality Factor Retention disclosed by Song meets the claim limitation.
Claims 12-13, 15-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US 2017/0241054) (Song) in view of Hardy et al. (US 3,049,509) (Hardy).
Regarding claims 12-13 and 19
Song teaches a spunbonded electret web comprising thermoplastic fibers that include a charging additive. The thermoplastic fibers comprise a polyolefin, such as polypropylene. The charge additive include light stabilizers. See, e.g., abstract, paragraphs [0002], [0010], [0027], [0029-0032], and clams 1-2.
Song does not explicitly teach the light stabilizer.
With respect to the difference, Hardy teaches a film comprising a thermoplastic resin and an ultraviolet light stabilizer having high absorption capacities, such as 2-(2-hydroxyphenyl)benzothiazole shown below.
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See, e.g., abstract, col. 1, lines 10-27, col. 3, line 10 – col. 4, line 36, col. 5, lines 5-25, Example 1 & 2, Table 1, and claims 1-2.
Hardy and Song are analogous art as they are both drawn to light stabilizers.
In light of the motivation as provided by Hardy, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use 2-(2-hydroxyphenyl)benzothiazole, as taught by Hardy, as the light stabilizer of Song, in order to provide high UV absorption capacities to the electret filter medium, and thereby arrive at the claimed invention.
The ultraviolet stabilizer of Song in view of Hardy would read on the claimed “charge-enhancing additive” as the ultraviolet stabilizer would be capable of providing charge-enhancing properties to the electret filter medium as it satisfies Formula 1 and Formula 1E as claimed.
Given the electret web includes thermoplastic fibers and charge additives, wherein the charge additive corresponds to the charge-enhancing additive, as discussed above, it follows the electret web consists of a thermoplastic resin and a charge-enhancing additive. It is noted Song includes the presence of polylactic acid fibers, however polylactic acid fibers are thermoplastic fibers and since claim 12 recites, “a thermoplastic resin comprising…”, i.e., an open transitional phrase, it follows the thermoplastic resin is open to thermoplastics outside of those listed in claim 12, including polylactic acid.
Regarding claim 15
Song in view of Hardy teaches all of the limitations of claim 12 above. Song further teaches the web comprises 0.1 to about 5.0 wt.% of the charging additive. Paragraphs [0002] and [0029] and claims 1-2.
Regarding claim 16
Song in view of Hardy teaches all of the limitations of claim 12 above. Song further teaches the web contains an electrostatic charge imparted through corona treatment. Paragraphs [0055] and [0074] and claim 19.
Regarding claim 18
Song in view of Hardy teaches all of the limitations of claim 12 above. Song further teaches the web comprises a Quality Factor Retention of at least 75% after being aged for three days at 70°C at 15% humidity. Paragraphs [0074] and [0097] and claim 14.
Although there is no disclosure that the test method of Song is in conformity with the test standard as claimed, given that Song discloses Quality Factor Retention as the presently claimed and the absence of evidence of the criticality of how Quality Factor is measured, it is the examiner's position that Quality Factor Retention disclosed by Song meets the claim limitation.
Claims 12-13, 15-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US 2017/0241054) (Song) in view of Seltzer et al. (US 5,521,237) (Seltzer).
Regarding claims 12-13 and 19
Song teaches a spunbonded electret web comprising thermoplastic fibers that include a charging additive. The thermoplastic fibers comprise a polyolefin, such as polypropylene. The charge additive include light stabilizers. See, e.g., abstract, paragraphs [0002], [0010], [0027], [0029-0032], and clams 1-2.
Song does not explicitly teach the light stabilizer.
With respect to the difference, Seltzer teaches a suitable light stabilizer for fibers comprising polyolefin material includes 2-(2’-hydroxyphenyl benzotriazoles) shown below. See, e.g., abstract and col. 9, lines 7-19, col. 11, lines 16-18, and col. 14, lines 20-21.
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Seltzer and Song are analogous art as they are both drawn to light stabilizers.
In light of the motivation as provided by Seltzer, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use 2-(2-hydroxyphenyl)benzothiazole, as taught by Seltzer, as the light stabilizer of Song, in order to form the electret web with predictable success, as Seltzer teaches 2-(2-hydroxyphenyl)benzothiazole is suitable for use in polyolefin fibers, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 227 F.2d 198 (CCPA 1960).
The light stabilizer of Song in view of Seltzer would read on the claimed “charge-enhancing additive” as the light stabilizer would be capable of providing charge-enhancing properties to the electret filter medium as it satisfies Formula 1 and Formula 1E as claimed.
Given the electret web includes thermoplastic fibers and charge additives, wherein the charge additive corresponds to the charge-enhancing additive, as discussed above, it follows the electret web consists of a thermoplastic resin and a charge-enhancing additive. It is noted Song includes the presence of polylactic acid fibers, however polylactic acid fibers are thermoplastic fibers and since claim 12 recites, “a thermoplastic resin comprising…”, i.e., an open transitional phrase, it follows the thermoplastic resin is open to thermoplastics outside of those listed in claim 12, including polylactic acid.
Regarding claim 15
Song in view of Seltzer teaches all of the limitations of claim 12 above. Song further teaches the web comprises 0.1 to about 5.0 wt.% of the charging additive. Paragraphs [0002] and [0029] and claims 1-2.
Regarding claim 16
Song in view of Seltzer teaches all of the limitations of claim 12 above. Song further teaches the web contains an electrostatic charge imparted through corona treatment. Paragraphs [0055] and [0074] and claim 19.
Regarding claim 18
Song in view of Seltzer teaches all of the limitations of claim 12 above. Song further teaches the web comprises a Quality Factor Retention of at least 75% after being aged for three days at 70°C at 15% humidity. Paragraphs [0074] and [0097] and claim 14.
Although there is no disclosure that the test method of Song is in conformity with the test standard as claimed, given that Song discloses Quality Factor Retention as the presently claimed and the absence of evidence of the criticality of how Quality Factor is measured, it is the examiner's position that Quality Factor Retention disclosed by Song meets the claim limitation.
Response to Arguments
In view of the amendments to claim 12, it is agreed the previous 35 U.S.C. 103 rejections do not meet the presently claimed and therefore are withdrawn. However, the amendment necessitates a new set of rejections as set forth above.
Applicant’s arguments with respect Schultz et al. (US 2015/0343455) and Peters et al. (US 2017/0225104) have been considered but are moot because the new ground of rejection does not rely on these references in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's remaining arguments filed 10/16/2025 have been fully considered but they are not persuasive, as set forth below.
Regarding Election/Restriction
Applicant requests the withdrawn of the Restriction Requirement in view of the amendments to claims 1 and 12.
The Examiner respectfully disagrees, as follows:
The technical features still does not make a contribution over the prior art as shown by the 35 U.S.C. 103 rejections above.
Conclusion
Applicant's amendment necessitated any new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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