DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4, 8, 9, 13, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Messier, US 2006/0251879 A1 in view of either Oda et al., US 5,792,793 or Stone et al., US 2010/0077529 A1, and in further view of Gao et al., US 2014/0366732 A1.
Regarding claim 1, Messier teaches an electrostatically charged non-woven media, which reads on the claimed “electret web.” See Messier [0013]. The electrostatically charged non-woven media consists of fibers, as claimed, because the media only requires a substrate (which can be made exclusively of fibers) with an active agent incorporated into the fibers and with an electrostatic charge provided on the fibers. Id. at [0022], [0025], [0067]. The fibers consist of the material used to make the fibers (the “blend”). Id. at [0067]. The material consists of a thermoplastic polymer resin (the “thermoplastic resin”) and an active agent (the “charge-enhancing additive,” as explained in more detail below). Id. at [0027], [0067]. The material used to make the fibers is a “blend” of the thermoplastic polymer and the active agent because paragraph [0067] describes a process of making the fibers where granules of the thermoplastic polymer and active agent are placed in a hopper of an extruder where they are mixed together, melted and then extruded to form the fibers. Id. at [0067]. The substrate is a “non-woven fibrous web,” as claimed. Id. at [0026].
Messier differs from claim 1 because it is silent as to active agent being a mercapto-benzothiazole or mercapto-benzoxazole salt with the claimed formula.
But Messier teaches that the active agent is an antimicrobial. See Messier [0031]. The antimicrobial agent can be selected from various materials, including compounds with silver, potassium, sodium, calcium, barium or zinc. Id. [0031]–[0048].
With this in mind, Oda teaches an antibacterial agent that can be applied in various applications, including for textiles or filters for sterile rooms. See Oda col. 1, ll. 7–15, col. 27, ll. 1–8. The antibacterial agent comprises a complex formed by the coordination of a thiol-group containing compound and a cation, such as silver, potassium, sodium, calcium or barium. Id. at col. 2, ll. 35–51. Silver, potassium and sodium are metal ions with a valence of 1, while calcium and barium are metal ions with a valence of 2. The thiol-group compound can be 2-mercaptobenzothiazole. Id. at col. 2, ll. 35–44. The structure of 2-mercaptobenzothiazole is:
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Therefore, the antibacterial agent of Oda (a complex of 2-mercaptobenzothiazole with Ag, K, Na, Ca or Ba) satisfies Formula 2, because Y is an S group, R1, R2, R3, and R4 are hydrogen atoms, and M is a metal ion with a valence of 1 or 2.
The antibacterial agent of Oda is beneficial because it has a wide antibacterial spectra with sustained activities while being safe for human contact. See Oda col. 1, ll. 6–15.
It would have been obvious to use the antibacterial agent of Oda as the active agent of Messier to provide these benefits.
With this modification, the antibacterial agent of Oda would read on the claimed “charge-enhancing additive.” Note that the antibacterial agent of Oda would be capable of providing charge-enhancing properties to the electret media of Messier because the antibacterial agent satisfies Formula 2. See MPEP 2112.01, subsection II (if the composition is physically the same, it must have the same properties).
Alternatively, Stone teaches a non-woven article comprising an antimicrobial agent comprising a zinc ion containing compound such as 2-mercaptobenzothiazole. See Stone [0039], [0049]. Zinc has a valence of 2. Therefore, this antibacterial agent satisfies Formula 2, because Y is an S group, R1, R2, R3, and R4 are hydrogen atoms, and M is a metal ion with a valence of 2.
It would have been obvious to use the antibacterial agent of Stone as the active agent of Messier because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
With this modification, the antibacterial agent of Stone would read on the claimed “charge-enhancing additive.” Note that the antibacterial agent of Stone would be capable of providing charge-enhancing properties to the electret media of Messier because the antibacterial agent satisfies Formula 2. See MPEP 2112.01, subsection II (if the composition is physically the same, it must have the same properties).
Messier also differs from claim 1 because it is silent as to the diameter of the fibers. Therefore, the reference fails to provide enough information to teach the fibers have a diameter of 7 to 15 micrometers, as claimed.
But paragraph [0067] of Messier describes a process of making the fibers where the thermoplastic polymer and active agent are mixed in a hopper of an extruder, melted and then extruded to form the fibers. See Messier [0067]. Messier also teaches that the fibers can be manufactured in various processes including melt blown. Id. at [0060]. Messier further teaches that the electrostatically charged non-woven media can be used for filtration. Id. at [0004].
With this in mind, Gao teaches that melt-blown fibers, used for filter media, are fibers that are formed by extruding a molten thermoplastic material to form microfibers with a diameter smaller than 20 microns but larger than 1.5 microns. See Gao [0009], [0017].
It would have been obvious for the fibers made by the extrusion process described in paragraph [0067] of Messier to be meltblown fibers with a diameter ranging from 1.5 to 20 microns because Messier suggests that the fibers can be melt blown (see Messier [0060]) while Gao teaches that melt blown fibers are extruded fibers that conventionally have a diameter ranging from 1.5 to 20 microns (see Gao [0009], [0017]). The prior art range of 1.5 to 20 microns overlaps with the claimed range of 7 to 15 micrometers, establishing a prima facie case of obviousness.
Note that the claim indicates that the web “optionally further comprises at least one additional additive.” The prior art is not required to teach this limitation because it is optional.
Regarding claim 4, Oda teaches that when n is 1, M is K or Na, and when n is 2, M is Ca, as Oda teaches that the cation in the complex can be K+, Na+ or Ca++. See Oda col. 2, ll. 45–51. Also, Stone teaches that when n is 2, M is Zn. See Stone [0039], [0049].
Regarding claim 8, Messier teaches an electrostatically charged filter media (the “electret filter medium”) that is a non-woven fibrous substrate (the “non-woven fibrous web”). See Messier [0004], [0013], [0025]. The substrate consists of fibers, as claimed, because the media only requires a substrate (which can be made exclusively of fibers) with an active agent incorporated into the fibers and with an electrostatic charge provided on the fibers. Id. at [0022], [0025], [0067]. The fibers consist of the material used to make the fibers (the “blend”). Id. at [0067]. The material consists of a thermoplastic polymer resin (the “thermoplastic resin”) and an active agent (the “charge-enhancing additive,” as explained in more detail below). Id. at [0027], [0067]. The material used to make the fibers is a “blend” of the thermoplastic polymer and the active agent because paragraph [0067] describes a process of making the fibers where granules of the thermoplastic polymer and active agent are placed in a hopper of an extruder where they are mixed together, melted and then extruded to form the fibers. Id. at [0067].
Messier differs from claim 8 because it is silent as to active agent being a mercapto-benzothiazole or mercapto-benzoxazole salt with the claimed formula.
But Messier teaches that the active agent is an antimicrobial. See Messier [0031]. The antimicrobial agent can be selected from various materials, including compounds with silver, potassium, sodium, calcium, barium or zinc. Id. [0031]–[0048].
With this in mind, Oda teaches an antibacterial agent that can be applied in various applications, including for textiles or filters for sterile rooms. See Oda col. 1, ll. 7–15, col. 27, ll. 1–8. The antibacterial agent comprises a complex formed by the coordination of a thiol-group containing compound and a cation, such as silver, potassium, sodium, calcium or barium. Id. at col. 2, ll. 35–51. Silver, potassium and sodium are metal ions with a valence of 1, while calcium and barium are metal ions with a valence of 2. The thiol-group compound can be 2-mercaptobenzothiazole. Id. at col. 2, ll. 35–44. The structure of 2-mercaptobenzothiazole is:
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Therefore, the antibacterial agent of Oda (a complex of 2-mercaptobenzothiazole with Ag, K, Na, Ca or Ba) satisfies Formula 2, because Y is an S group, R1, R2, R3, and R4 are hydrogen atoms, and M is a metal ion with a valence of 1 or 2.
The antibacterial agent of Oda is beneficial because it has a wide antibacterial spectra with sustained activities while being safe for human contact. See Oda col. 1, ll. 6–15.
It would have been obvious to use the antibacterial agent of Oda as the active agent of Messier to provide these benefits.
With this modification, the antibacterial agent of Oda would read on the claimed “charge-enhancing additive.” Note that the antibacterial agent of Oda would be capable of providing charge-enhancing properties to the electret media of Messier because the antibacterial agent satisfies Formula 2. See MPEP 2112.01, subsection II (if the composition is physically the same, it must have the same properties).
Alternatively, Stone teaches a non-woven article comprising an antimicrobial agent comprising a zinc ion containing compound such as 2-mercaptobenzothiazole. See Stone [0039], [0049]. Zinc has a valence of 2. Therefore, this antibacterial agent satisfies Formula 2, because Y is an S group, R1, R2, R3, and R4 are hydrogen atoms, and M is a metal ion with a valence of 2.
It would have been obvious to use the antibacterial agent of Stone as the active agent of Messier because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
With this modification, the antibacterial agent of Stone would read on the claimed “charge-enhancing additive.” Note that the antibacterial agent of Stone would be capable of providing charge-enhancing properties to the electret media of Messier because the antibacterial agent satisfies Formula 2. See MPEP 2112.01, subsection II (if the composition is physically the same, it must have the same properties).
Messier also differs from claim 8 because it is silent as to the diameter of the fibers. Therefore, the reference fails to provide enough information to teach the fibers have a diameter of 7 to 15 micrometers, as claimed.
But paragraph [0067] of Messier describes a process of making the fibers where the thermoplastic polymer and active agent are mixed in a hopper of an extruder, melted and then extruded to form the fibers. See Messier [0067]. Messier also teaches that the fibers can be manufactured in various processes including melt blown. Id. at [0060]. Messier further teaches that the electrostatically charged non-woven media can be used for filtration. Id. at [0004].
With this in mind, Gao teaches that melt-blown fibers, used for filter media, are fibers that are formed by extruding a molten thermoplastic material to form microfibers with a diameter smaller than 20 microns but larger than 1.5 microns. See Gao [0009], [0017].
It would have been obvious for the fibers made by the extrusion process described in paragraph [0067] of Messier to be meltblown fibers with a diameter ranging from 1.5 to 20 microns because Messier suggests that the fibers can be melt blown (see Messier [0060]) while Gao teaches that melt blown fibers are extruded fibers that conventionally have a diameter ranging from 1.5 to 20 microns (see Gao [0009], [0017]). The prior art range of 1.5 to 20 microns overlaps with the claimed range of 7 to 15 micrometers, establishing a prima facie case of obviousness.
Note that the claim indicates that the web “optionally further comprises at least one additional additive.” The prior art is not required to teach this limitation because it is optional.
Regarding claim 9, Oda teaches that when n is 1, M is K or Na, and when n is 2, M is Ca, as Oda teaches that the cation in the complex can be K+, Na+ or Ca++. See Oda col. 2, ll. 45–51. Also, Stone teaches that when n is 2, M is Zn. See Stone [0039], [0049].
Regarding claim 13, Messier teaches that the thermoplastic resin comprises a polyolefin (i.e., polyethylene or polypropylene) or polyester. See Messier [0027].
Regarding claim 15, Messier teaches that the media comprises an electrostatic charge imparted through corona treatment. See Messier [0070].
Regarding claim 17, the claim requires that the filter medium retains “at least 65% filtration performance as measured by Quality Factor after aging for 72 hours at 71°C.” The claim does not define what is meant by “filtration performance” or “Quality Factor.” Also, the specification does not provide a special definition for “filtration performance” or “Quality Factor.” Instead, the disclosure says that filtration performance can be assessed by “a variety of filtration testing protocols” and that Quality Factor “may be calculated” by an equation provided in the disclosure. See Spec. filed May 17, 2022 (“Spec.”) p. 14, ll. 5–17 (emphasis added).
Here, Messier teaches that the filter media holds its charge for 6 months to 2 years. See Messier [0071]. Also, while the reference is silent as to the temperature conditions that the filter media operates in, it would have been obvious for the temperature to be 71°C because this is around room temperature. Therefore, this teaching of Messier is interpreted as the filter medium retaining at least 65% of some type of filtration performance as measured by some type of quality factor metric after 72 hours at 71°C.
Claims 5, 7, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Messier, US 2006/0251879 A1 in view of Stone et al., US 2010/0077529 A1 and in further view of Gao et al., US 2014/0366732 A1.
Regarding claims 5 and 10, Stone teaches that the antibacterial agent is a zinc ion containing compound such as 2-mercaptobenzothiazole. See Stone [0049]. The structure of 2-mercaptobenzothiazole is:
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Therefore, Y is an S group, R1, R2, R3, and R4 are hydrogen atoms, M is Zn and n is 2.
Regarding claims 7 and 12, Stone teaches that the antibacterial agent is a zinc ion containing compound such as 2-mercaptobenzothiazole, which satisfies Formula 2A of claim 7.
Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Messier, US 2006/0251879 A1 in view of Stone et al., US 2010/0077529 A1 in view of Gao et al., US 2014/0366732 A1 and in further view of Dall, US 5,347,753.
Regarding claims 6 and 11, Stone teaches that the antibacterial agent is a zinc ion containing compound such as 2-mercaptobenzothiazole. See Stone [0049]. Stone differs from claims 6 and 11 because is silent as to the Y group being O, as 2-mercaptobenzothiazole has the Y group being S.
But Dall teaches that 2-mercaptobenzothiazoles and 2-mercaptobenzoxazoles are in the same class of microbiocide compounds, useful for treating fibrous materials. See Pall col. 5, ll. 14–24. Therefore, it would have been obvious for the antibacterial agent of Stone to comprise 2-mercaptobenzoxazole instead of 2-mercaptobenzothiazole, because this would merely represent substituting equivalents. The structure of 2-mercaptobenzoxazole is:
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Therefore, with this modification, Y is an O group, R1, R2, R3, and R4 are hydrogen atoms, M is Zn and n is 2.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Messier, US 2006/0251879 A1 in view of either Oda et al., US 5,792,793 or Stone et al., US 2010/0077529 A1, in view of Gao et al., US 2014/0366732 A1 and in further view of Ylitalo et al., US 2011/0290119 A1.
Regarding claim 14, Messier as modified teaches the limitations of claim 8, as explained above.
Messier as modified differs from claim 14 because it is silent as to the weight percentage of the antibacterial agent (the “charge-enhancing additive”) with respect to the weight of the web. But Ylitalo teaches that the amount of antimicrobial additive applied to the web should be selected to ensure that it is effective but with no more than is necessary to obtain the desired antimicrobial properties. See Ylitalo [0058]. Therefore, it would have been obvious to use routine experimentation to determine the optimal amount of antimicrobial additive applied to the web of Messier in order to balance these competing needs. See MPEP 2144.05, subsection II.
Response to Arguments
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections because of the amendments.
35 U.S.C. 103 Rejections
The Applicant argues that it is unclear whether the embodiment of paragraph [0067] of Messier—where the active agent is mixed with polymer granules, with the mixture melted and then extruded to form fibers—would work, asserting that it is essential that the antimicrobial be on the surface of the fibers. See Applicant Rem. dated August 27, 2025 (“Applicant Rem.”) 9.
The Examiner respectfully disagrees. The Applicant’s argument is that the embodiment of paragraph [0067] of Messier is inoperable. When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. See MPEP 2121, subsection I. Once such a reference is found, the burden is on the applicant to rebut the presumption of operability. Id. Also, arguments presented by the applicant cannot take the pace of evidence in the record. See MPEP 2145, subsection I.
Here, the embodiment of paragraph [0067] of Messier is presumed to be operable because it is taught in the reference, and the prior art reference is presumed to be operable. See MPEP 2121, subsection I. The Applicant has failed to meet its burden in demonstrating that paragraph [0067] of Messier is inoperable, because the Applicant has not presented evidence of inoperability, other than arguments of the Applicant’s attorney. In other words, for the Examiner to withdraw the rejection based on the premise that paragraph [0067] won’t work (i.e. is inoperable), the Applicant needs to provide much more convincing evidence than mere arguments from the attorney. Therefore, the Applicant’s arguments that paragraph [0067] of Messier would not work are unpersuasive.
The Applicant also argues that the fibers produced with the method of paragraph [0067] of Messier would have the same diameter as human hair (50 to 120 microns) because this paragraph describes the process as forming “a thin ‘hair’ fiber.” See Applicant Rem. 10. Therefore, it is argued that the fibers of paragraph [0067] cannot have a diameter of 7 to 15 micrometers, as claimed. Id.
The Examiner respectfully disagrees. Paragraph [0060] of Messier teaches that the fibers can be manufactured using various techniques, including melt blown. See Messier [0060]. Also, while paragraph [0067] is silent as to the particular technique used to make the fibers—this paragraph does teach that the fibers are manufactured with an extrusion process. Id. at [0067]. With this in mind, Gao teaches that melt-blown fibers for a nonwoven mat used for filtration, are extruded fibers that conventionally have a diameter from 1.5 to 20 micrometers. See Gao [0009], [0017]. Therefore, it would have been obvious for the fibers of paragraph [0067] of Messier to have a diameter from 1.5 to 20 micrometers because Messier suggests that the fibers can be meltblown and are made using an extrusion process. The prior art range of 1.5 to 20 microns overlaps with the claimed range of 7 to 15 micrometers, establishing a prima facie case of obviousness.
Also, the Examiner notes that paragraph [0067] of Messier does not say that the fibers have the size of a human hair. Instead, this paragraph merely says that the fibers are each “thin ‘hair’ fibers” without specifying the size of each fiber. A person of ordinary skill in the art would have understood that the reference to “hair” refers to the general structure of each fiber (being a relatively thin filament) instead of the specific size of each fiber.
The Applicant presents arguments with respect to the Mathis reference (US 2007/0044801 A1). See Applicant Rem. 11–13. The current rejection does not rely on the Mathis reference. Therefore, the Applicant’s arguments with respect to Mathis are unpersuasive.
The Applicant presents the arguments from the 2 month response. See Applicant Rem. 14–22. The Examiner maintains that these arguments are unpersuasive for the reasons stated in the Advisory Action dated August 14, 2025.
The Examiner addresses the most relevant portions of the arguments below.
The Applicant argues that the fibers of paragraph [0067] of Messier have the active agent on the exterior of the fibers and would not be the articles of the current claims. See Applicant Rem. 18.
The Examiner respectfully disagrees. The claimed “charge-enhancing additive” could be at least partially located on the exterior of the fibers, because there is nothing in the claims to say that the charge-enhancing additive is only in the interior of the fibers (and not on the exterior). Independent claims 1 and 8 merely describe the fibers as consisting of a blend consisting of a thermoplastic resin and a charge-enhancing additive. The fibers in paragraph [0067] of Messier comprise a blend of the thermoplastic polymer resin and the active agent because these components are mixed together in a hopper, melted and then extruded to form the fibers. See Messier [0067]. Even if the active agent is located on the exterior surface of the fibers, the material of the fibers is still a “blend” of the active agent and thermoplastic polymer because they are melted together and then extruded, with there being nothing in the claims to specify that the charge-enhancing additive is excluded from the exterior surface of the fibers.
Conclusion
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776