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 Status
The claims are newly amended.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/24/26 has been entered.
Response to Arguments
Applicant's arguments filed 4/24/26 have been fully considered but they are not persuasive.
The remarks argue the following on pages 5-6:
(1) Structural Differences Based on "Impregnation + Adsorption" and "Coating"
The present disclosure is characterized in that it simultaneously provides: 1) a
configuration in which the cationic fluororesin and the cationic surfactant are adsorbed onto the glass fibers by impregnation; and 2) a configuration in which the cationic binder resin coats the surfaces of the glass fibers.
Here, "impregnation" differs from mere surface attachment and means that the treatment liquid penetrates into the inter-fiber voids of the wet-laid nonwoven fabric and into the interior of the fabric, thereby forming a structure in which the components are distributed both inside and on the surface of the wet-laid nonwoven fabric after drying. See the LONGMAN dictionary definition of Impregnation. Impregnation, LONGMAN,
https://www.ldoceonline.com/dictionary/impregnate (last visited April 20, 2026). Further, see para. [0021] of the present specification.
In contrast, "coating" means a state in which a film is formed on the surfaces of the glass fibers, which is a different mode of arrangement from the impregnated components. See LONGMAN dictionary definition of coating. Coating, LONGMAN
https://www.ldoceonline.com/dictionary/coating (last visited April 20, 2026). Further, see paras. [0005] and [0025] of the present specification.
Accordingly, the present disclosure has an essential feature in that it has a structure in which: components distributed inside and on the surface of the wet-laid nonwoven fabric by impregnation (the cationic fluororesin and the cationic surfactant), and components that coat the surfaces of the glass fibers (the cationic binder resin) are functionally differentiated.
Although Yamamoto discloses an impregnation process itself, as stated on p.4 of the
Office Action, it does not disclose or suggest (i) a structure in which the cationic fluororesin and the cationic surfactant are adsorbed onto the glass fibers by impregnation and (ii) a structure in which the cationic binder resin coats the surfaces of the glass fibers.
Similarly, although Soyama discloses the presence of a binder resin, a fluororesin, and a
surfactant (none of which are cationic), it does not disclose, suggest, or recognize any structural distinction between adsorption of the cationic fluororesin and the cationic surfactant onto the glass fibers by impregnation and coating of the surfaces of the glass fibers by a cationic binder resin.
The remarks are respectfully not persuasive. The remarks attempt to distinguish between the impregnation of the cationic fluororesin and the cationic surfactant into the filter and the cationic binder used to coat the filter. However, the process used in the examples combine all three, the cationic fluororesin, the cationic surfactant and the cationic binder, with a slurry of wet paper (see examples 1, 2). There is only a few mentions of coating the binder in paragraph 29 of the published specification, but this paragraph only states “Using a cationic binder resin, the surface of the glass fiber can be efficiently coated, so that both improvement in stiffness and strength and expression of water repellency can be achieved. If an anionic binder resin is used, the effect of efficiently coating the surface of the glass fiber cannot be obtained, and, under certain circumstances, the anionic binder resin is mixed with the cationic fluororesin and/or the cationic surfactant used in the present embodiment, therefore aggregation easily occurs. . “ (para. 29 of the published specification). There are no other mentions of the word “coat” or “coating” or “coated” in the disclosure. Therefore, there is not disclosure that the binder is separately coated in a manner different than the surfactant and the fluororesin. There is only a disclosure that supports that the manner the three are combined with the filter, which is by mixing them together, is the manner by which this invention both impregnates and coats the compounds.
Next, the remarks argue the following:
(2) Lack of Motivation to Combine Three Cationic Components
The present disclosure employs a combination of: a cationic binder resin, a cationic
fluororesin, and a cationic surfactant. As described in the specification, since the glass fibers have a negative surface charge (p.10 para. [0021]), the use of cationic components improves adhesion to the glass fibers. The cited combination of Yamamoto, Nokai, Soyama, and Smith fails to disclose or suggest this combination for at least the following reasons:
- Yamamoto and Soyama do not disclose the cationic nature of the respective components;
- Smith merely exemplifies a cationic surfactant and does not suggest making the binder resin and the fluororesin cationic; and
- Furthermore, Smith does not disclose adsorption behavior of a cationic fluororesin and a cationic surfactant onto glass fibers, or a coating structure formed by a cationic binder resin, nor any interaction or cooperative behavior among such cationic components.
Accordingly, there is no motivation in the cited references to adopt a configuration in which all three components are cationic, as in the present specification.
The remarks are respectfully not persuasive. It was acknowledged in the rejection that Yamamoto and Soyama do not disclose the cationic nature of the components. However, the specification itself states that the term “cationic” can mean that either the compound itself is cationic or that the emulsifier “or the like” is cationic or that if the surfactant is cationic (see published specification, para. 28, 29).
Smith therefore provides the cationic feature and explains that use of a cationic resin are known to modify the hydrophilicity of the filter layers and adjusts the hydrophobicity of the air filter.
Next, the remarks argue the following:
(3) Non-Obviousness of Numerical Range
The solid content mass ratio of the cationic fluororesin to the cationic surfactant (30/70 to 80/20) in the present disclosure is clearly different from the ratios in Yamamoto (about 87.5/12.5 and about 90.9/9.1). Since Soyama does not disclose cationic components, it clearly does not disclose the claims mass ratio.
Furthermore, as shown in paragraph [0061] of the present specification, only within this range are the following simultaneously achieved: a high PF value, excellent water repellency, and both strength and stiffness.
On the other hand, as shown in paragraph [0062] of the present specification, when the blending ratio of the fluororesin or the surfactant is outside the claimed range, the PF value and the water repellency decrease.
Accordingly, the claimed numerical range is not a mere matter of design choice and could not have been predicted from Soyama by a person having ordinary skill in the art.
The remarks are respectfully not persuasive. The ratio cited with regard to Yamamoto does not indicate where in the reference this was disclosed. Nonetheless, use of one example in Yamamoto does not hold for the entire reference. It was stated in the rejection that the solids ratio is not disclosed by Yamamoto and Nokia but by the Soyama reference. Soyama states that the ratio of the a fluorine-based water repellent compound to the weight of the surfactant can be from 3.2.
Next, the remarks argue the following:
(4) Remarkable Effects (Unexpected Results)
As shown in paragraphs [0061] and [0062] of the specification, the present disclosure achieves simultaneous realization of performance characteristics that have been difficult to achieve in combination in the prior art. This is at least due to the synergistic effect of: the component distribution structure resulting from impregnation; the combination of cationic components; and the specific solid content mass ratio, In particular, a high PF value and excellent water repellency are obtained by maintaining the cationic fluororesin/cationic surfactant ratio within the specified range. Further, sufficient strength and stiffness are ensured by coating the glass fibers with the cationic binder resin. These effects are achieved in combination.
In contrast, the Comparative Examples in the present specification demonstrate that when these conditions are not satisfied, performance is significantly degraded. (See paras. [0042]- [0050]).
Accordingly, a person skilled in the art could not have predicted the advantageous effects of the present disclosure based on the cited references.
The remarks are respectfully not persuasive. The comparative example 1 states that the difference between their process and example 1 is used of a cationic binder resin in a certain amount, but it is unclear in this example if the fluororesin and surfactant of example 1 is also used. As to the synergetic effect, the remarks are not clear what the synergistic achievement is, but it is posited that the combination is obvious in light of the rejection below.
Next, the remarks argue the following:
(5) Lack of Motivation to Combine
Each of the cited references is directed to independent purposes and technical effects, namely impregnation (Yamamoto), material selection (Nokai), numerical examples (Soyama), and general teachings regarding surfactants (Smith).
Even if the teachings of the cited references were combined, they would not lead to the integrated structural concept of the present disclosure, namely: "impregnation + adsorption + coating". Therefore, there is no reasonable motivation to arrive at the present claims.
The remarks are respectfully not persuasive. As mentioned earlier, the specification does not show a different method of application for the coated binder and therefore the same application process is presumed to be effective to coat the glass fibers.
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.
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) 1, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (JP2017/042762) and in view of Nokai (JP H 615126) and in view of Soyama (JP H 10156116) and in view of Smith (WO 2018/175556).
The Examiner has provided a machine translation of JP2017/042762 and JP H 615126. The citation of the prior art in this rejection refers to the machine translation.
For the product claim of Claim 1, the claims include features in the preamble, which are treated by the courts as such:
A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Nonetheless, these features are taught by the reference. Also, the method steps of Claim 6 are also treated here.
Yamamoto describes a filter medium useable for an air filter (para. 1) composed of glass fibers (para. 3). The filter is made by processing wet paper (para. 12), in a slurry (para. 24), such that the glass fibers, the binder resin, the fluorine-based surfactant and a water repellent agent are mixed together (para. 12). This can be considered a process of impregnating the nonwoven fabric and since the compounds are the same, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same process used would be effective to adsorb the same composition onto the same glass fibers.
Also, since the wet paper slurry is impregnated with the liquid solution (para. 28), this can be considered to meet the “wet-laid” feature of Claim 1, line 1.
As to the composition, the filter may be a mixture of binder resin and a fluorosurfactant (para. 9) in water (para. 21, 22). The water repellency of the filter is important (para. 8) and that water-repellent agents may be used to impart water repellency to improve the PF value of the filter medium (para. 17). In the examples, Yamamoto teaches that the filter can be made up of an acrylic resin emulsion, a fluorine-based surfactant and a binder (examples 1, 2), where the fluorine-based composition is a water repellent compound (para. 30). The product is dried (para. 12, 26).
As to the features of Claim 1, Yamamoto describes use of an acrylic resin emulsion (para. 29). This can be considered the binder. This is combined with a fluorine-based water repellent (para. 29). Both of these are then combined with a fluorine-based surfactant (para. 29).
Yamamoto does not specifically describe that the fluorine-based water repellent is a perfluoroalkyl group-containing resin or that the binder, the fluororesin and the surfactant are cationic or that the solid content mass ratio of the fluororesin to the surfactant is 30/70 to 80/20.
As to the cationic features, the specification of this application explains that cationic features of the composition. Specifically, the disclosure states that the term “cationic” means that either the compound is cationic itself or “the emulsifier or the like is cationic” (published specification, para. 27, 29) and that the surfactant used can be nonionic (published specification, para. 28), as long as the filter medium includes a cationic surfactant. On this last features, this is taught by Smith (below).
As to the use of use of a perfluoroalkyl group-containing resin, Yamamoto describes use of a fluorine-based water repellent, but not use of a perfluoroalkyl group-containing resin.
Nokai describes an air filter (title) obtained by wet paper making (abstract). The method includes combining a binder element with a a fluorien-containing resin (see para. 21).
As to the water repellent features, Nokai teaches that use of a perfluoroalkyl group-containing resin is effective as a fluorine-containing resin for use with the air filter (see page 5, lines 23-24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a perfluoroalkyl group-containing resin as the water repellent compound of Yamamoto because Nokai explains that perfluoroalkyl group-containing resin is an effective water repellent for use in air filtration manufacture.
As to the solid content mass ratio of the fluororesin to the surfactant, Soyama describes an air filter media for use with air filters (title) that is made using a fluorine-based surfactant (para. 11, para. 1) that is added to the air filter slurry along with a binder and a fluorine-based water repellent compound (example 1). The ratio of the fluorine-based water repellent compound to the weight of a fluorine-based surfactant can be about 3.2% (see example 1, calculated from 0.16%: 0.05%).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the water repellent compound in an amount that is about 3.2% to the weight of a fluorine-based surfactant, as taught by Soyama for use with the air filter media of Yamamoto, Nokai and Smith because this ratio is known to produce predictable and effective results for use in an air filter.
Yamamoto describes use of a surfactant (examples 1, 2), and an additional water repellent compound (para. 12), but does not describe use of a cationic surfactant.
Smith describes a filter material (title) that is hydrophobic (abstract, para. 85) for use in air filtration (para. 115). The filter is made-up of glass fibers (para. 44, 45), a binder material (para. 60), which can include acrylates (para. 61). The compounds can include a variety of resins (para. 79). As to the surfactant, Smith teaches that the surfactant can function as the wetting agent and can be used to modify the hydrophilicity of the layers in the filter (para. 96). To do this, Smith explains that various wetting agents can be employed to adjust the hydrophobicity, which includes use of a cationic surfactant (para. 96).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ cationic surfactants, as the surfactant of Yamamoto because Smith teaches these surfactants are known for use to modify the hydrophilicity of the layers in the filter and adjust the hydrophobicity of the air filter.
As to the coating, since Yamamoto teaches adding the surfactant by mixing it with the glass fibers (see above), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the cationic surfactant of Smith during mixing with the glass fibers of Yamamto because Yamamoto employs the surfactant at this stage in the making of the product.
Furthermore, since the disclosure of this application adds the surfactant during the mixing phase with the glass fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same process used would be effective to produce the same coating features.
Claim(s) 3, 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto, Nokai, Soyama and Smith as applied to claim 1 above, and further in view of Sato (JP 2011/062643).
The references do not disclose how much of the filter medium is added to the filter.
Sato describes a filter medium for use in an air filter (title). The filter medium includes a fluorine-containing resin (page 2, “description”, para. 2). This binder resin is used with a water repellent agent in order to bind the filter fibers and give them strength (page 2, “description”, para. 4). In example 1, Sato teaches that the filter medium is added to the air filter, such that the solid content added to the filter is about 5.4 mass% relative to the filter medium and the filter (see example 1).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include filter medium with the filter in an amount of 5.4 mass%, as taught by Sato for use with the filter medium and filter composition of Yamamoto, Nokai, Soyama and Smith because this amount of filter medium added is known to lead to predictable and expected results.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto, Nokai, Soyama and Smith as applied to claim 1 above, and further in view of Sato (WO 2014/171165), Sato II.
Yamamoto teaches that the filter has a glass fiber that has an average diameter of 0.65 micrometers, combined with a glass fiber have an average diameter of 2.7 micrometers, combined with glass fibers with an average diameter of 6 micrometers (para. 28).
Yamamoto does not teach that some of these glass fibers are glass wool.
Sato II teaches an air filter material (title) that is made of glass fibers (abstract). The wet non-woven fabric includes a fluorine resin and a surface active agent (abstract) as well as surfactant (page 4, para. 34-36). Sato II teaches that a solids content has a mass ratio of between 0.5-20 parts by mass of the fluororesin and the surfactant (page 4, lines 41-45).
Sato teaches that in addition to the glass fiber and the binder fibers, various other fibers can be used, such as glass wool fibers (page 5, para. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include glass wool fibers in-place of some of the glass fibers of Yamamoto, Nokai, Soyama and Smith, as taught by Sato II because Sato II explains that some of the glass fibers can be substituted with glass wool fibers.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 June 19, 2026
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