DETAILED ACTION
Status of Application
The Examiner acknowledges receipt of the amendments filed on 8/26/2025 wherein claims 1 and 7 have been amended and claims 11-21.
Claims 1-5 and 7-21 are presented for examination on the merits. The following rejections are made.
Response to Applicants’ Arguments
Applicant’s approved terminal disclaimer filed 8/26/2025 renders moot the rejection of claims 1 and 5-10 made by the Examiner under non-statutory obviousness-type double patenting over copending Application No. 17/624460. This rejection has been withdrawn.
Applicant’s amendments filed 8/26/2025 render moot the rejection of claim 7 made by the Examiner under 35 USC 112(b). This rejection has been withdrawn.
Applicant’s arguments filed 8/26/2025 regarding the rejection of claims 1, 5 and 8-10 made by the Examiner under 35 USC 102(a)(1) over Park et al. (KR10-2014-0013138) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 8/26/2025.
Applicant’s arguments filed 8/26/2025 regarding the rejection of claims 1-4 and 8-10 made by the Examiner under 35 USC 103 over Gulrez et al. (US 2018/0243674) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 8/26/2025.
Applicant’s arguments filed 8/26/2025 regarding the rejection of claim 5 made by the Examiner under 35 USC 103 over Gulrez et al. (US 2018/0243674) further in view of Park et al. (KR 10-2014/0013138) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 8/26/2025.
In regards to the 102(a)(1) and 103 rejections, Applicant asserts the following:
A) Park and Gulrez fail to specify a concrete numerical range of 400-900 for the melt index. The melt index is critical to the reduction of defects during manufacturing while enhancing antibacterial performance.
In response to A, the limitation recites “wherein a melt index of the melt is, under certain conditions, 400 to 900 based on a melt index of 900 to 1,200 of a comparative melt including only the first base.” The prior art of both Park and Gulrez anticipates/obviates the limitation because 1) it is claiming a property of the melt which according to the claim is a combination of a thermoplastic resin that comprises a first base and a first antibacterial agent and 2) the language “under certain circumstances” provides a large variance for conditions which may be used to achieve such a melt condition. Regarding the first issue, the thermoplastic polymers identified by the claims include polypropylene which is suggested by Park and Gulrez. Antimicrobials according to the claims include zinc oxide which is indicated by Park and Gulrez. Therefore because the material of the references is overlapping with that claimed the physical properties, e.g. melt index, would be expected to follow absent some showing otherwise. As to the improved properties, these properties, like the melt index, would be expected to be present in the prior art as a result of the materials used to produce the filter rather than the melt index. That is, the prior art and the instant claims all describe a filter made from polypropylene and zinc oxide and so because the materials composition all overlap the properties would be expected to be conserved across all compositions unless there is evidence otherwise. Applicant’s argument is not considered persuasive.
Rejections, Maintained (claims 1-4 and 6-10) and New (claims 11-21)
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 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.
Claims 1, 5 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (KR10-2014/0013138; translation provided; of record).
Park discloses an antimicrobial filter comprising a) a support layer and b) an antimicrobial fiber layer placed thereon (see page 3) wherein the antimicrobial fiber layer serves as an antimicrobial filter (see page 1) (see instant claim 1). The filter layer is made from a polymer such as polypropylene and polyethylene (‘thermoplastic resin-including first base’) (see page 2) (see instant claim 8) wherein the filter fibers are made by a melt blown process of a polymer and antimicrobial masterbatch (see page 3) (see instant claims 1 and 10).
Although the limitation of the filter polymer being ‘melt blown’ is described by the prior art, it is noteworthy that the requirement that the polymer be ‘melt blown’ is a product-by-process limitation. See MPEP 2113(I) which states that the patentability of product does not depend on its method of production and that if the product in the product-by-process claim is the same as or obvious from a product of the art, the claim is unpatentable even though the prior product was made by a different process.
The antimicrobial filter is to include an antibacterial metal or antibacterial metal oxide such as zinc oxide wherein the zinc oxide is present in an amount of 0.01-10% by weight based on the antibacterial fiber layer (see page 3) (see instant claims 1, 5 and 9).
In regards to instant claim 6, the limitation that the “melt index of the melt is, under certain conditions, 400 to 900 based on a melt index of 900 to 1,200 of a comparative melt including only the first base’ is an inherent property to the filter material disclosed by Park as Park states that their polymer can be polypropylene which is readable on the material identified as the ‘thermoplastic resin-including first base’. Where the claimed and prior art products are identical or substantially identical in composition, said composition must have the same properties (e.g. melt index), unless shown otherwise. See MPEP 2112.01.
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.
Claims 1-4 and 6-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gulrez et al. (US 2018/0243674; of record).
Gulrez describes an electret-containing filter media having the following generic structure:
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wherein 110 is a support layer and 120 is an adjacent first layer (see [0070]). The first layer is defined by Gulrez as the ‘filter’ (see [0072]).
The support layer is made from synthetic polymer fibers such as polyesters, acrylics, polypropylene and polyethylene (see [0082]) (see instant claims 1 and 7) and may be made by a meltblown process (see [0034]) (see instant claim 2). The support layer may be formulated so as to exhibit antimicrobial properties (see [0197]). Exemplified antimicrobials include silver, zinc and metal oxides (e.g. silver oxide, copper oxide, zinc oxide) (see [0241]).
The filter layer may be made from melt blown polymers (see [0122]) such as polypropylene (‘thermoplastic resin-including first base’) (see [0024, 0026, 0100, 0240]). The fibers of the filter media are to comprise an antimicrobial agent so as to prevent microbial growth (see [0197, 0239]). Exemplified antimicrobials include silver, zinc and metal oxides (e.g. silver oxide, copper oxide, zinc oxide) (see [0241]) (see instant claims 1 and 9).
Gulrez describes their filter as being a HEPA filter (see abstract) wherein the filter is in form of a mesh (see [0007, 0008, 0075]) (see instant claim 12) and be formed into a cylindrical shape (see [0227, 0228]) (see instant claim 13). Regarding instant claim 12, a mesh by its nature possesses a plurality of holes in the structure and so this feature would implicitly be present in Gulrez’s mesh composition.
Regarding instant claims 3 and 4, the selection of the antimicrobial metals in the support layer and in the filter layer would have been obvious given that Gulrez teaches that silver, zinc and metal oxides are suitable in both. The identification and selection of the antimicrobial such that the metal in the two layers is the same or different would have been the outcome of ordinary skill rather than one of innovation. See MPEP 2143(I)(E) which states that choosing from a finite number of identified predictable solutions is supportive of obviousness.
Although the limitation of the support layer polymer and the filter polymer being ‘melt blown’ is described by the prior art, it is noteworthy that the requirement that the polymer be ‘melt blown’ is a product-by-process limitation. See MPEP 2113(I) which states that the patentability of product does not depend on its method of production and that if the product in the product-by-process claim is the same as or obvious from a product of the art, the claim is unpatentable even though the prior product was made by a different process.
In regards to instant claim 6, the limitation that the “melt index of the melt is, under certain conditions, 400 to 900 based on a melt index of 900 to 1,200 of a comparative melt including only the first base’ is an inherent property to the filter material disclosed by Gulrez as Gulrez states that their polymer can be polypropylene which is readable on the material identified as the ‘thermoplastic resin-including first base’. Where the claimed and prior art products are identical or substantially identical in composition, said composition must have the same properties (e.g. melt index), unless shown otherwise. See MPEP 2112.01.
In regards to instant claim 10, this is a product-by-process limitations as it describes how the first antibacterial agent is formed rather than provide a structural limitation to the composition itself. See MPEP 2113(I).
Regarding instant claim 14, providing the support layer to the outside of the filter layer would have been obvious as Gulrez teaches that the filter media can include one or more outer support layers (see [0070]) and so one of ordinary skill in the art would readily envisage the support layer being on the outside of the filter structure.
Regarding instant claim 15 wherein the filter having a corrugated shape with alternatively occurring ridges and groove, this feature is taught by Gulrez’s Figure 2D wherein the filter is described as having a plurality of peaks and troughs (see [0171]). The figure demonstrates that the peaks and troughs (i.e. ridges and grooves) occur in an alternating pattern. It would have been obvious that the filter would possesses these ridges and grooves in a vertical direction with a reasonable expectation for success in producing a suitable filter material.
The only difference between Gulrez and the instant claims is that Gulrez does not teach the specific combination of components as claimed in a single embodiment (i.e. as set forth by instant claim 1), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Gulrez, but ‘such ‘picking and choosing’ within several variable does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP 2141(I). Consistent with this reasoning, it would have been obvious to have selected from the various disclosed structures and ingredients from within Gulrez's disclosure, to arrive at a filter comprising a support layer and a filter layer disposed on the support layer wherein the filter layer comprises a melt blown thermoplastic resin and a first antibacterial agent wherein the antibacterial agent includes an antibacterial metal or antibacterial metal oxide
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gulrez et al. (US 2018/0243674; of record) as applied to claims 1-4 and 6-15 above, and further in view of Park et al. (KR10-2014/0013138; translation provided).
Gulrez fails to teach the antimicrobial agent as being present in the filter layer in an amount of 0.1-5%.
Park discloses an antimicrobial filter comprising a) a support layer and b) an antimicrobial fiber layer placed thereon (see page 3) wherein the antimicrobial fiber layer serves as an antimicrobial filter (see page 1) (see instant claim 1). The filter layer is made from a polymer such as polypropylene and polyethylene (‘thermoplastic resin-including first base’) (see page 2) (see instant claim 8) wherein the filter fibers are made by a melt blown process of a polymer and antimicrobial masterbatch (see page 3) (see instant claims 1 and 10). Like Gulrez, the antimicrobial filter is to include an antibacterial metal or antibacterial metal oxide such as zinc oxide wherein the zinc oxide is present in an amount of 0.01-10% by weight based on the antibacterial fiber layer (see page 3) (see instant claims 1, 5 and 9). It would have been obvious to modify Gulrez’s filter composition such that the filter portion comprised between 0.1-10% by weight of the antimicrobial metal with a reasonable expectation for success in providing antimicrobial activity. See MPEP 2143(I)(A) and 2144.05(I).
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gulrez et al. (US 2018/0243674; of record) as applied to claims 1-4 and 6-15 above, and further in view of Stinzendorfer et al. (DE 102015016446; translation provided).
Gulrez fails to teach the filter as comprising a pre-filter detachably couple to the support layer.
Stinzendorfer describes a multistage filter for use within a housing, the multistage filter comprising a HEPA filter and a pre-filter, wherein the components of the filter materials are held together via a fastening mechanism such as Velcro (see pages 4 and 11). It is taught that the prefilter is useful to remove larger particles prior to passing through the HEPA filter. It would have been obvious to modify Gulrez’s filter so as to include a pre-filter to efficiently remove larger particles prior to filtration via the HEPA filter wherein the pre-filter is detachable via a Velcro fastener. The location of the pre-filter would readily be envisaged as preceding the HEPA filter portion as the reference teaches the system utilizes the pre-filter prior to the other means of filtration.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gulrez et al. (US 2018/0243674; of record) as applied to claims 1-4 and 6-15 above, and further in view of Aston et al. (US 5288298).
Gulrez fails to teach the filter as comprising a deodorizing filter coupled to the filter layer.
Aston describes an antimicrobial air filter. The air filter possesses a multistage system wherein the first stage being a porous fabric comprising activated carbon particulate deodorizing agents which is provided prior to a HEPA filter (see abstract and claim 1). It is taught that the deodorizing layer is useful for removing odor generating molecules present in air streams. It would have been obvious to modify Gulrez’s filter so as to include a deodorizing filter layer so as to remove undesirable odors from the atmosphere. Regarding the location of the deodorizing filter, it would have been obvious to place the filter layer surrounding the deodorizing filter so as to achieve a deodorizing benefit. Moreover, the positioning of the HEPA filter and deodorizing filter relative to one another would have been well within the skill of an ordinary person to move around to optimize the filtration result. See MPEP 2144.04(VI).
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611