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 .
Response to Amendment
This office action is responsive to the preliminary amendment filed 02/09/2023. Claims 1-8 remain pending in the application, with claims 9-19 remaining withdrawn as drawn to a non-elected invention. The amendments to the claims has overcome the previously set forth 112(b) rejection in the Non-Final Office Action mailed 08/22/2025.
Response to Arguments
Applicant's arguments filed 10/27/2025 (“Remarks”) have been fully considered but they are not persuasive.
The requirement for restriction/election has been maintained. Claims 1-8 remain pending in the application with claims 9-19 remaining withdrawn.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely exclusively on the reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant's argument that an examiner's conclusion of obviousness to modify the materials used in the filter material is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Applicant argues that selecting the claimed materials would be improper hindsight by selecting from a “vast” range of materials (page 9 “Remarks”). However, the examiner disagrees that the range of materials known in the art is not vast, as the prior art lists a limited number of specific materials used as known alternatives for manufacturing a breathable mask with filtering abilities. See MPEP 2143(I)(B) for simply substituting one known element for another to obtain predictable results (in this case, substituting one known filter material for another). Please refer to the updated rejection below for the reasoning as to why it would have been obvious to a person of ordinary skill in the art to substitute the claimed materials.
Claim Objections
Claims 2 and 8 are objected to because of the following informalities:
Claim 2 has a minor grammatical error in line 2: “comprising” should be “comprises”.
Claim 8 also appears to have a minor grammatical error in line 2, where two articles are missing. The claim should read: “..to have an antimicrobial property, an antiviral property, an antibacterial property…”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “nanofibers of different polymer identity”. It is not clear how the polymer identity of the nanofibers is different, whether the nanofibers themselves have a different polymer identity within that size, or if the nanofibers differ in polymer identity from the substrate. It has been interpreted that both interpretations are correct, and the nanofibers may both differ from each other in composition, and may be different in polymer identity from the substrate.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as unpatentable over Tong et al. (US 102011982 B2), hereafter Tong, in view of Kirk et al. (US 2010/0252047 A1), hereafter Kirk, Takayama et al. (US 2013/0291878 A1), hereafter Takayama, and further in view of Conlon (US 2016/0015098 A1).
Regarding Claim 1, Tong discloses a filter material (col. 11 lines 18-20), comprising: an antistatic substrate (fig. 2, layer 201, col. 10 lines 27-30) having a predefined antistatic capacity (the sheet resistance is disclosed in col. 12 lines 5-12), wherein the substrate comprises a nonwoven fabric (col. 12 lines 5-8, layer 201 is a spun-bond layer, which is a nonwoven fabric),
and one or more layers of nanofibers applied on the substrate (col. 10 lines 30-33, layer 201 has a coating of electrospun fibers including nanofibers), wherein the one or more layers of nanofibers comprise an interlaced structure (col. 11 lines 59-63) which includes interlacing of nanofibers of different polymer identity (col. 10 line 65 to col. 11 line 12, the different types of microfibers, submicron fibers, and nanofibers may have a combination of the polymers listed), interlacing of nanofibers with microfibers (col. 11 lines 36-42, the nanofibers may be interweaved with submicron fibers).
Tong is silent on the substrate layer comprising one or more polymer-based fibers selected from nylon, polycarbonate, polymethylpentene, polyethylene terepthalate (PET), or mixtures thereof (Tong uses polypropylene and the materials listed in col. 11 lines 1-12), as well as silent on the nanofibers are selected from a group consisting of cellulose ether and ester, polyvinylidene fluoride, polvethersulfone, nylon, polycarbonate, or any mixture thereof (Tong col. 11 lines 1-12, the nanofiber material selection is listed but does not include the claimed materials), and wherein the interlaced structure has a gradient in fiber diameter, fiber content, material thickness, or a combination thereof.
Kirk teaches that a filter substrate layer for a nonwoven fibrous web may use several materials including polycarbonate and polyethylene terepthalate (PET) (0052]) as known alternatives to the polypropylene disclosed by Tong. The listed alternative materials are equally capable of being processed into fibers through spunbonding and are able to hold a trapped charge ([0052]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute Tong’s polypropylene material for the substrate for the alternative materials taught by Tong, including polycarbonate and polyethylene terepthalate (PET), as these materials were known in the art to be equally capable of performing as a filtration material to achieve the predictable result of forming a nonwoven filter material substrate.
Takayama teaches that nanofibers may be produced from a variety of materials including nylon ([0012]) as known alternatives in the art. Nylon is equally capable of being manufactured into a nanofiber for filtration as the alternative materials listed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute Tong’s nanofiber material composition for nylon, as taught by Takayama, as nylon was known in the art to be equally capable of performing as a filtration material to achieve the predictable result of forming a nonwoven nanofiber.
Conlon teaches a filtering face mask (fig. 1, abstract) which uses nanofibers coating a filtration layer ([0074] nanofibers can be disposed on a middle layer of a mask; [0077] the nanofibers may be coated on any of the inner, middle, and/or outer layers), where the nanofibers can be distributed to create a gradient in which the nanofibers have different composition (i.e. material composition) and different density (which results in a different material thickness) ([0076]). The construction of the mask is adjusted to achieve a specific level of filtration efficacy and improving breathability by reducing the pressure differential ([0080]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Tong’s interlaced nanofiber structure to have a gradient in fiber density and/or pore size, as taught by Conlon, in order to fine-tune the desired mask filtration efficacy and breathability (Conlon [0080]).
Regarding Claim 2, Tong discloses a filter material according to claim 1, wherein the nonwoven fabric further comprising one or more polymer-based fibers selected from polypropylene (col. 12 line 10), polyurethane (col. 11 line 5), cellulose (col. 11 line 1), polybutylene terephthalate (col. 11 lines 4-5), polystyrene (col. 11 line 2), or spunbonded polypropylene (PPSB) (col. 12 line 10), or mixtures thereof (col. 11 lines 11-12).
Regarding Claim 3, Tong discloses a filter material according to claim 2, wherein the substrate has an electric resistance at least of 106 Ω (the sheet resistance is 106 - 108Ω, col. 12 lines 9-12; where the prior art discloses a range that lies within the claimed range, the prior art anticipates the claim (MPEP 2131.03)).
Regarding Claim 4, Tong discloses a filter material according to claim 1, wherein the nanofibers (col. 10 lines 61-65) are further selected from a group consisting of polyamide (col. 11 line 1), cellulose acetate (col. 11 line 1), polyacrylonitrile (col. 1 line 3), polyvinyl alcohol (col. 11 line 3), polystyrene (col. 11 line 2), chitosan (col. 11 line 6).
Regarding Claim 5, Tong discloses a filter material according to claim 1, wherein the interlaced structure of the one or more layers of nanofibers further includes interlacing of nanofibers of different types and interlacing of nanofibers of different diameters (col. 11 lines 59-60, the fibrous coating can comprise partially gelled submicron fibers with nanofibers; both fiber types have a different type and different diameter).
Regarding Claim 6, Tong discloses a filter material according to claim 5, but is silent on wherein the interlaced structure has the gradient in fiber density, fiber pore size, or a combination thereof.
Conlon teaches a filtering face mask (fig. 1, abstract) which uses nanofibers coating a filtration layer ([0074] nanofibers can be disposed on a middle layer of a mask; [0077] the nanofibers may be coated on any of the inner, middle, and/or outer layers), where the nanofibers can be distributed to create a gradient in material properties such as fiber density and pore size ([0076]). The construction of the mask is adjusted to achieve a specific level of filtration efficacy and improving breathability by reducing the pressure differential ([0080]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Tong’s interlaced nanofiber structure to have a gradient in fiber density and/or pore size, as taught by Conlon, in order to fine-tune the desired mask filtration efficacy and breathability (Conlon [0080]).
Regarding Claim 7, Tong discloses a filter material according to claim 1, but is silent on wherein the one or more layers of nanofibers are deposited on both sides of the substrate. Instead, Tong only discloses a layer of nanofibers deposited on one side of the substrate (col. 10 lines 34-35).
However, Conlon teaches a filtering face mask (fig. 1, abstract) which uses nanofibers coating a filtration layer ([0074] nanofibers can be disposed on a middle layer of a mask; [0077] the nanofibers may be coated on any of the inner, middle, and/or outer layers) which may have the nanofiber coating applied to both surfaces of the substrate filtering layer ([0079] the nanofiber layer may be coated onto inner and outer surfaces of second layer 36 in fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Tong’s filter material to be coated on both sides as taught by Conlon in order to enhance filtration of airborne pathogens (Conlon [0079]).
Regarding Claim 8, Tong discloses a filter material according to claim 1, wherein the one or more layers of nanofibers are functionalized to have antimicrobial property, antibacterial property (col. 10 lines 36-39, the nanofibers can be biocide-loaded polymer fibers), or are cross linked to a layer of biocides (col. 10 lines 55-56).
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 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 SARA K. TOICH whose telephone number is (703)756-1450. The examiner can normally be reached M-Th 7:30 am - 4:30 pm, every other F 7:30-3:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy S. Lee can be reached at (571) 270-7410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA K TOICH/Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785
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