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, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, JP 2010030951 A1 in view of Smithies et al., US 2021/0121804 A1.
Regarding claim 1, Iwanaga teaches a carrier manufactured from electrospun fibers with an average fiber diameter of 100 nm or less. See Iwanaga p. 2 (under “Tech-Soution”), p. 6 (6th paragraph). The carrier (also referred to as the toxic substance removal material) reads on the claimed “electrospun polymer nanofibrous membrane.” The fibers of the carrier can be manufactured from polyurethane. Id. at p. 3 (under the “Best-Mode” section). The polyurethane is interpreted as “thermoplastic” because it is a linear polymer (as opposed to a highly cross-linked polymer) comprising a soft segment having a relatively low melting point. Id. at p. 5 (6th full paragraph). The carrier is treated with an antioxidant including licorice extract, as claimed. Id. at p. 8 (6th full paragraph). The carrier is electrospun from a resin solution (the “polymer solution”) that contains lithium chloride, as claimed. Id. at p. 6 (last paragraph).
Iwanaga differs from claim 1 because it is silent as to the efficiency of the carrier. Therefore, the reference fails to provide enough information to teach the carrier having a filtration efficiency of at least 99%.
But, as noted, the carrier is made from electrospun fibers having a diameter of 100 nm or less. See Iwanaga, p. 6 (6th paragraph). Also, the carrier can be used as a filter for a mask or air cleaner. Id. at p. 2 (7th paragraph).
With this in mind, Smithies teaches a filter media 10 for use with an HVAC system or protective mask comprising a nanofiber layer 12 made of nanofibers ranging from 10 to 750 nm. See Smithies Fig. 1, [0022], [0056]. The nanofiber layer 12 would be understood as having an efficiency of 99.97% for 0.3 µm particles because the nanofiber layer 12 largely influences the overall filtration efficiency performance of the filter media 10 (id. at [0022]) and filter media 10 can have a HEPA rating (id. at [0053]), meaning it has an efficiency of 99.97% for 0.3 µm particles. See e.g., Sakano et al., US 2019/0344204 A1, [0002]. The HEPA grade efficiency is beneficial because it enables the nanofiber layer 12 to remove a relatively large percentage of relatively small particles.
It would have been obvious for the carrier of Iwanaga to have a HEPA grade efficiency to enable to the carrier to remove a relatively large percentage of relatively small particles to improve the filtration efficiency of the carrier when it is used as a mask or filter for an air cleaner. With this modification, the carrier has a filtration efficiency of at least 99% because a HEPA rating means that the filter has a filtration efficiency of 99.97% for 0.3 µm particles.
Returning to the “one or more thermoplastic polyurethanes” limitation, as noted the fibers of the carrier can be made from polyurethane, which is interpreted as being “thermoplastic” because it is a linear polymer (as opposed to a highly cross-linked polymer) comprising a soft segment having a relatively low melting point. See Iwanaga p. 5 (6th full paragraph). If not, it is noted that the fibers of the carrier of Iwanaga are electrospun nanofibers made of polyurethane. With this in mind, Smithies teaches that the fibers of the nanofiber layer 12 are electrospun and can be made of thermoplastic polyurethane. See Smithies [0001], [0026]. It would have been obvious to use the thermoplastic polyurethane of Smithies as the polyurethane used to make the fibers of the carrier of Iwanaga because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Regarding claim 17, Iwanaga teaches that the carrier (the “membrane”) is suitable for use in a facemask, as claimed. See Iwanaga p. 12 (7th paragraph).
Regarding claim 18, Iwanaga teaches that the carrier (the “membrane”) is capable of being used for an air filter for use in an HVAC system because it can be used as a filter for an air cleaner. See Iwanaga p. 12 (7th paragraph); MPEP 2114, subsection IV (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, JP 2010030951 A in view of Smithies et al., US 2021/0121804 A1 and in further view of Cwiertny et al., US 2020/0317903 A1.
Regarding claim 7, Iwanaga teaches the limitations of claim 1, as explained above.
Iwanaga differs from claim 7 because, while it teaches that at least part of the fibers of the carrier is electrospun from a resin solution (see Iwanaga p. 6, last paragraph), the reference is silent as to the solution comprising a surfactant selected from the claimed group.
But Cwiertny teaches that surfactants, including cetrimonium bromide, are often included in electrospinning precursor solutions to impart morphological benefits. See Cwiertny [0092]. It would have been obvious to include cetrimonium bromide in the resin solution of Iwanaga to provide morphological benefits.
Claims 8–11 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, JP 2010030951 A in view of Smithies et al., US 2021/0121804 A1 and in further view of Jaganathan et al., US 2018/0169551 A1.
Regarding claims 8, 9 and 11, Iwanaga as modified teaches the limitations of claim 1, as explained above.
Iwanaga differs from claim 8 because it is silent as to the carrier comprising multiple integrated layers with distinguishable microstructure characteristics. Iwanaga differs from claim 9 because it is silent as to the carrier comprising three layers including a first and third layer having equal pore size separated by a second layer having a different pore size. Iwanaga differs from claim 10 because it is silent as to the first and third layers having a larger pore size as compared to the second layer and the second layer having a smaller pore size compared to the first and third layers.
But Iwanaga teaches that the carrier can be used as a filter, and can be combined with another filter layer. See Iwanaga ps. 12–13 (bridging paragraph).
With this in mind, Jaganathan teaches a filter media comprising two identical support layers 130, 150 arranged on the outside of interior layers including nanofibrous electrospun layers 120, 140. See Jaganathan Fig. 1E, [0025], [0045], [0110], [0186]. The support layers 130, 150 have larger pores than the electrospun layers 120, 140 because the support layers 130, 150 are made from relatively coarse fibers while the electrospun layers 120, 140 are made from relatively fine fibers. Id. A person of ordinary skill in the art would have understood that the support layers 130, 150 are beneficial because they provide support for the interior layers. Id.
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It would have been obvious for the carrier of Iwanaga to comprise two identical exterior support layers on either side of the carrier to provide mechanical support to the carrier layer.
With this modification, the combined structure of the carrier and two identical exterior support layers reads on the “membrane.” The “membrane” comprise multiple integrated layers with distinguishable microstructure characteristics (claim 8) because the exterior support layers have a larger pore size than the carrier, with the carrier being sandwiched in between. The two exterior support layers read on the “first layer” and “third layer,” respectively, and the carrier reads on the “second layer” (claim 9). The two exterior support layers have equal pore size and the carrier has a different pore size (claim 9) because the two exterior support layers are identical and have a larger pore size than the electrospun layers they surround. The two exterior support layers have a larger pore size than the carrier and the carrier has a smaller pore size than the exterior support layers (claim 11) because the two exterior support layers have a larger pore size than the electrospun layers they surround.
Regarding claims 8 and 10, Iwanaga as modified teaches the limitations of claim 1, as explained above.
Iwanaga differs from claim 8 because it is silent as to the carrier comprising multiple integrated layers with distinguishable microstructure characteristics. Iwanaga differs from claim 10 because it is silent as to the carrier comprising three layers with three different pore sizes.
But Iwanaga teaches that the carrier can be used as a filter, and can be combined with another filter layer. See Iwanaga ps. 12–13 (bridging paragraph).
With this in mind, Jaganathan teaches a filter media comprising a prefilter layer (third layer) 130 a support layer (first layer) 110 and a main filter layer (second layer) 120 in between. See Jaganathan Fig. 1D, [0107]. The prefilter layer 130 has a mean flow pore size of 0.5 to 70 microns (id. at [0156]), the support layer 110 has a mean flow pore size of 20 to 250 microns (id. at [0202]) and the main filter layer 120 can be made from an electrospun material and has a mean flow pore size of 0.1 to 50 microns (id. at [0165], [0180]). The prefilter layer 130 is beneficial because it removes relatively coarse particles before they reach the main filter layer 120 (see Iwanaga ps.12–13, bridging paragraph), and a person of ordinary skill in the art would have understood that the support layer 110 is beneficial because it provides support to the filter media.
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It would have been obvious to provide the prefilter layer 130 and support layer 110 of Jaganathan on either side of the carrier of Iwanaga to provide a layer to remove relatively coarse dust particles while providing a layer to support the carrier. It also would have been obvious for the mean flow pore size of the carrier to be smaller than the prefilter and support layers 130, 110 because Jaganathan teaches that the main filter layer 120 (analogous to the carrier) has a mean flow pore size of 0.1 to 50 microns while the prefilter layer 130 has a mean flow pore size of 0.5 to 70 microns, the support layer 110 has a mean flow pore size of 20 to 250 microns.
With these modifications, the combined structure of the prefilter layer 130, the carrier and the support layer 110 reads on the “membrane.” The combined structure comprises multiple integrated layers with distinguishable microstructure characteristics (claim 8) because it comprises three distinct layers. The three layers of the membrane have three different pore sizes (claim 10) because the prefilter layer 130 has a mean flow pore size of 0.5 to 70 microns, the support layer 110 has a mean flow pore size of 20 to 250 microns and it would have been obvious for the carrier to have a mean flow pore size smaller than the prefilter and support layers 130, 110.
Claims 8 and 12–14 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, JP 2010030951 A in view of Smithies et al., US 2021/0121804 A1 and in further view of Seo et al., US 2018/0133658 A1.
Regarding claims 8, 12 and 13, Iwanaga as modified teaches the limitations of claim 1, as explained above.
Iwanaga differs from claim 8 because it is silent as the carrier comprising multiple integrated layers with distinguishable microstructure characteristics. Iwanaga differs from claims 12 and 13 because it is silent as to the carrier comprising a structure formed by the claimed product-by-process limitations of a textile material comprising a first electrospun nanofiber layer on a first side of the textile material and a second electrospun nanofiber layer on the second side of the textile material.
But Iwanaga teaches that the carrier can be used as a filter, and can be combined with another filter layer. See Iwanaga ps. 12–13 (bridging paragraph).
With this in mind, Seo teaches a filter material (adsorptive membrane) comprising a support member 110 with a first electrospun adsorptive member 120a comprising nanofibers on one side of the support member 110 and a second electrospun adsorptive member 120a comprising nanofibers on the other side of the support member 110. See Seo Fig. 4, [0061], [0067]. The configuration is beneficial because it provides removal of foreign substances compared to conventional arrangements. Id. at [0026].
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It would have been obvious for the filter of Iwanaga to comprise the support member 110 of Seo with a carrier layer of Iwanaga attached to one side of the support member 110 and another carrier layer attached to the other side of the support member 110 to improve the ability of the filter to remove foreign substances.
With this modification, the combined structure reads on the “membrane.” It comprises multiple integrated layers with distinguishable microstructure characteristics (claim 8) because it comprises three distinct layers. Also, the combined structure is the same as formed by the claimed product-by-process limitations of the support member 110 (the textile material) comprising a carrier layer on one side (the first electrospun nanofiber layer on a first side of the textile material) and a carrier layer on the other side (the second electrospun nanofiber layer on the second side of the textile material). See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production unless the process steps impart structure).
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Regarding claim 14, Iwanaga as modified teaches the limitations of claim 8, as explained above.
As noted in the rejection of claim 8 above, it would have been obvious to modify Iwanaga so that one carrier layer is provided on one side of the support member 110 of Seo with another carrier layer provided on the other side of the support member 110. However, Iwanaga as modified by Seo differs from claim 14 because it is silent as to a further carrier layer stacked on either of the carrier layers provided on either side of the support member 110.
But Seo provides an embodiment (Fig. 5) where two electrospun adsorptive members 120c, 120d are stacked on top of one another and located on the same side of the support member 110. See Seo Fig. 5, [0070].
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It would have been obvious to modify the combined structure of Iwanaga in view of Seo by providing an additional carrier on top of the carrier provided on the first side of the support member 110 to provide an additional carrier layer to provide additional filtration capacity.
With this modification, the combined structure of Iwanaga in view of Seo teaches the structure of the product produced by the process of claim 14 of a first carrier layer on one side of the support member 110 (the first nanofiber layer on the first side of the textile material), a second carrier layer on the first carrier layer (the second nanofiber layer on the first side of the textile material), and a third carrier layer on the other side of the support member 110 (the third nanofiber layer on the second side of the textile material). See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production unless the process steps impart structure).
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Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, JP 2010030951 A in view of Smithies et al., US 2021/0121804 A1 and in further view of Leung, US 2019/0314746 A1.
Regarding claim 15, Iwanaga as modified teaches the limitations of claim 1, as explained above.
Iwanaga as modified differs from claim 1 because it is silent as to the carrier (the “membrane”) being triboelectrically charged.
But the carrier can be used as a filter, such as in a facemask. See Iwanaga p. 12 (7th paragraph).
With this in mind, Leung teaches a filter media that can be used in a facemask comprising a nanofiber mat that is electrostatically charged by triboelectric effect, with the charging being used to improve the attraction between particles and the filter. See Leung [0086], [0007].
It would have been obvious to electrostatically charge the carrier of Iwanaga by triboelectric effect to improve the attraction between particles and the carrier.
With respect to the limitation of the membrane being triboelectrically charged using a “triboelectric nanogenerator (TENG)”—this limitation fails to further limit the scope of the claim because it describes the process of manufacturing the membrane rather than its structure. See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production unless the process steps impart structure).
Response to Arguments
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections in light of the amendments.
35 U.S.C. 102 & 103 Rejections
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
1 Both a translation and original, untranslated copy of Iwanaga are provided with this communication. The rejection cites to the translation for text.