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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-12 and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsushita et al. US 6,210,625.
For claim 1 the Matsushita et al. reference discloses a permeable material comprising: a plurality of individual hollow structures having a plurality openings in each hollow structure (figure 2, objects 1, 11 and 10) the openings allowing fluid transfer between an inside volume of the hollow structures and an environment outside of the hollow structures (column 14, lines 21-56; and a bond between aggregates adjacent ones of the plurality of hollow structures (column 5, lines 35-40).
For claim 2, the Matsushita et al. reference discloses wherein the structures are shape memory material (column 5, lines 31-34).
For claim 3, the Matsushita et al. reference discloses the bond comprises a shape memory material (column 5, lines 41-45).
For claim 4, the Matsushita et al. reference discloses the bond is the same material as the structures (column 5, lines 41-45).
For claim 5 and 6, the Matsushita et al. reference discloses the bond material is a different material than the structures and the bond is created by an adhesive (claim 19, lines 14-17). It is noted that adhesives when present in adjacent spheres will also create bonds.
For claim 7, the Matsushita et al. reference discloses the bond is a sintered bond (column 5, lines 41-45).
For claim 8, the Matsushita et al. reference discloses wherein one or more of the hollow structures is a foam material (figures 5 and 6).
For claim 9, the Matsushita et al. reference discloses the foam material is permeable foam (column 21, lines 12-19).
For claim 10, the Matsushita et al. reference discloses at least one of the plurality of hollow structures includes a multiplicity of openings therein (figure 2, objects 1, 11 and 10).
For claim 11, the Matsushita et al. reference discloses the hollow structures are of varying size and geometry (claim 145, as the polymer changes size so will with resulting hollow structure).
For claim 12, the Matsushita et al. reference discloses the hollow structures are of homogenous size and geometry (Examples 1, 3 and 4).
For claim 15, the Matsushita et al. reference discloses a method for making a permeable material comprising aggregating a plurality of hollow structures into a mass and bonding the structures together (column 5, lines 41-45 and figure 2, objects 1, 11 and 10).
For claim 16, the Matsushita et al. reference discloses the bonding is sintering (column 5, lines 41-45).
For claim 17, the Matsushita et al. reference discloses foaming a material to create the hollow structures (column 21, lines 12-19).
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.
Claim(s) 13-14, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richard et al. US 2011/0073296 in view of Matsushita et al. US 6,210,625.
For claims 13, 19 and 20, the Richard et al. reference discloses a downhole filtration tool comprising: a mandrel; and a foam layer disposed about the mandrel (figure 1, objects 10, 12 and 14). Richard also discloses a borehole system comprising a borehole in a subsurface formation and a foam layer disposed in the borehole (figure 3). The reference does not disclose the material as claimed in claim 1.
The Matsushita et al. reference discloses the material as claimed in claim 1 (as shown above).
It would have been obvious to one having ordinary skill in the art to have modified the Richard et al. reference to include in replace of or in addition its own foam material, the material as claimed in claim 1 (Matsushita et al. as shown above) so as to obtain a desired filtration or even absorption of other elements within the fluid being filtered. Further it is noted that both references demonstrate filtration materials made from shape memory material. 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 for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
For claim 14, as shown above the Matsushita et al. reference discloses the claimed material of claim 1. The material properties would naturally flow from the composition and structure itself. As the composition and structure of claim 1 are demonstrated by Matsushita et al. the Matsushita et al. material would also be “expandable”. The courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita et al. US 6,210,625 in view of as applied in claim 15 above and further in view of Lawing US 20160030923
For claim 18, the Matsushita et al. reference does not disclose extruding material to create the hollow structures.
The Lawing et al. reference discloses extruding the hollow structures prior to sintering (claim 17).
It would have been obvious to one having ordinary skill in the art to have modified the Matsushita et al. to include extruding the hollow structures prior to sintering (Lawing claim 17) so as to allow for stacking and shaping of layers of the material.
Response to Arguments
Applicant’s arguments, see pages 5-6, filed 07/25/2025, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Matsushita et al. US 6,210,625.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER ROSE ORLANDO whose telephone number is (571)270-3149. The examiner can normally be reached Monday-Thursday 6:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
AMBER ROSE ORLANDO
Primary Examiner
Art Unit 1731
/AMBER R ORLANDO/ Primary Examiner, Art Unit 1731