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 .
Status of Claims
The amendments and arguments filed 20 January 2026 are acknowledged and have been fully considered. Claims 1-5, 7-11, 13, 15, 18-21, 28, and 30-32 are currently pending. Claims 1-5, 7-11, 13, 15, 20, 28, and 30-32 are amended; claims 6, 12, 14, 16-17, 22-27, and 33-35 are cancelled; claims 10-11, 13, and 30-31 are withdrawn; no claims are new.
Claims 1-5, 7-9, 15, 18-21, and 28 are examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. In particular, the objection to claims for informalities is withdrawn in view of Applicant’s amendment to the claims. Further, the rejection of claims under 35 U.S.C. 102(a)(1) is withdrawn in view of Applicant’s amendments. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 recites the biocidal non-woven matrix of claim 1, wherein said matrix consists of the electrospun nanofibers; and wherein each electrospun nanofiber consists of said at least one polymer. Claim 1 recites the biocidal non-woven matrix also comprising a biocidal agent, which is not allowed by the closed “consisting” language of claim 9. As such, claim 9 does not include all of the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
For examination purposes, claim 9 is interpreted as “A non-woven matrix consisting of electrospun nanofibers consisting of at least one polymer selected from a cationic polymer, a non-ionic polymer, and an anionic polymer, or a combination thereof. wherein:
median diameter of said electrospun nanofibers is between 50 to 1500 nanometers, a surface of said matrix is characterized by a water contact angle of less than 90°;
the matrix comprises a plurality of pores characterized by a median pore size in a range between 60 and 800 nanometers, and is characterized by a porosity suitable for capturing a microbe in a range between 50 and 400 nm;
wherein said porosity is at least 80% and allows for air permeability, k between 10-7 [m2] and 10-5 [m2] for flow rate of 8 L/min.”
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.
Claims 1-3, 5, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over des Ligneris et al. (Membranes, 2019, Vol. 9; of record) in view of Liu et al. (Int. J. Environ. Res. Public Health, 2019, Vol. 16, 347; of record), Olmedo et al. (Int Scientific Conference SGEM, 2008; of record), and Maduna et al. (Journal of Industrial Textiles, 2019, Vol. 50, 675-691; of record) as evidenced by Ngadiman et al. (Procedia Manufacturing, 2015, Vol. 2, 568-572; of record)
Claim 1 is drawn to a biocidal non-woven matrix comprising electrospun nanofibers comprising at least one polymer selected from a cationic polymer, a non-ionic polymer, and an anionic polymer, or a combination thereof. wherein:
median diameter of said electrospun nanofibers is between 50 to 1500 nanometers, a surface of said matrix is characterized by a water contact angle of less than 90°;
the matrix comprises a plurality of pores characterized by a median pore size in a range between 60 and 800 nanometers, and is characterized by a porosity suitable for capturing a microbe in a range between 50 and 400 nm;
wherein said porosity is at least 80% and allows for air permeability, k between 10-7 [m2] and 10-5 [m2] for flow rate of 8 L/min; and
wherein said matrix further comprises between 0.1 and 40% of a biocidal agent by weight of said matrix.
Claim 2 is drawn to the matrix of claim 1, wherein said at least one polymer comprises poly(vinyl alcohol).
Claim 7 is drawn to the matrix of claim 1, wherein said biocidal agent comprises a bactericidal agent.
Claim 8 is drawn to the matrix of claim 1, wherein the biocidal agent comprises copper ions.
des Ligneris et al. teach membranes of poly(vinyl alcohol) (PVA) with copper ions formed by electrospinning for bactericidal air filtration (Abstract). des Ligneris et al. further teach the nanofibers having an average diameter of 318 nm (Pg. 6 second paragraph), the membranes comprising 40 wt% copper (Section 2.2.1 on pg. 3), and filtering 99% of particles having a size between 0.3µm and 5 µm (Pg. 9 first paragraph), overlapping with the instantly claimed range of a microbe between 50 and 400 nm.
As such, des Ligneris et al. teach a biocidal non-woven matrix comprising an electrospun nanofiber comprising at least one non-ionic polymer comprising PVA, wherein: the median diameter of said electrospun nanofibers is between 50 to 1500 nanometers, the matrix comprises a plurality of pores characterized by a porosity suitable for capturing a microbe in a range between 50 and 400 nm; wherein said matrix further comprises between 0.1 and 40% of a biocidal agent by weight of said matrix, wherein the biocidal agent comprises copper ions.
The matrix of des Ligneris et al. differs from the instantly claimed matrix in the following ways:
des Ligneris et al. are silent as to the water contact angle of the matrix;
the matrix of des Ligneris et al. does not comprises a median pore size between 60 and 800 nm;
des Ligneris et al. are silent as to the porosity of the matrix; and
des Ligneris et al. are silent as to the air permeability of the matrix.
Yet, as to 1: As evidenced by Ngadiman et al., electrospun fibers have a water contact angle of approximately 35° (Table 1 on pg. 570). As such, the matrix of des Ligneris et al. comprising electrospun PVA fibers necessarily has a water contact angle less than 90°.
As to 2: The matrix of des Ligneris et al. comprises a median pore size between 1.15 to 1.81 µm.
However, Liu et al. teach that the efficiency, resistance, and precision of a filter all being dependent on the filter pore size (Abstract).
And, as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the pore size of the matrix is clearly a result-effective variable, determining the filtration efficiency, filtration resistance, and filtration precision. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal pore size in order to best achieve the desired results.
As to 3: Olmedo et al. teach the porosity of an air filter needing to be high to ensure maintained efficiency when filtering particles, further teaching filters commonly having a porosity between 60% and 90%, overlapping with the instantly claimed range (Abstract).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the matrix of des Ligneris et al. to have a porosity of between 60% and 90% as taught by Olmedo et al. It would have been obvious to combine the known air filter with the known porosity suitable for air filters to yield the predictable result of an air filter that maintains efficiency when filtering particles, with a reasonable expectation of success.
And, as to 4: Maduna et al. teach the importance of air permeability for air filters (Abstract). Maduna et al. further teach the air permeability being a determining factor in the lifetime of filters (Pg. 676 third paragraph).
And, as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the air permeability of the matrix is clearly a result-effective variable, determining the lifetime of the matrix. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal air permeability in order to best achieve the desired results.
Based on all of the foregoing, claims 1-2 and 7-8 are rejected as prima facie obvious.
Claim 3 is drawn to the matrix of claim 1, wherein said matrix is in a form of a layer having a thickness of 10 to 500 µm.
des Ligneris et al. further teach the membrane having a thickness of 115 µm (Pg. 3 last paragraph.
As such, claim 3 is rejected as prima facie obvious.
Claim 5 is drawn to the matrix of claim 1, wherein said biocidal agent is in contact with said electrospun nanofiber and is homogeneously dispersed within said matrix.
des Ligneris et al. further teach the nanofibers being electrospun from a homogenous mixture of PVA and copper acetate (Sec. 2.2.1-2.2.2), further teaching the presence of copper nanocrystals distributed throughout the nanofibers (Fig. 2 and pg. 6).
As such, claim 5 is rejected as prima facie obvious.
Claim 2 is ADDITIONALLY rejected under 35 U.S.C. 103 as being unpatentable over des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. as applied to claims 1-3, 5, and 7-8 above, and further in view of Lv et al. (Macromol. Mater. Eng., 2018, Vol. 303, 1800336; of record).
The teachings of des Ligneris et al. have been set forth above.
Claim 2 is drawn to the matrix of claim 9, wherein the electrospun nanofiber comprises a non-ionic polymer comprising polycaprolactone (PCL).
des Ligneris et al. do not teach the matrix comprising Applicant’s elected species of PCL.
However, des Ligneris et al. teach the matrix being a promising green material solution for air sanitization (Pg. 12 first paragraph).
Lv et al. also teach green material nanofibers for air filtration (Title). Lv et al. further teach PCL as being a green polymer material for air filters with good properties such as biocompatibility, bioresorbability, and low cost (Pg. 6 right column first paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the matrix of des Ligneris et al. to include PCL. It would have been obvious to substitute one green material polymer suitable for air filters for another to obtain the predictable result of a green material air filter, with a reasonable expectation of success.
As such, claim 2 is rejected as prima facie obvious.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. as applied to claims 1-3, 5, and 7-8 above, and further in view of Zhang et al. (Nano Letters, 2016, Vol. 16, 3642-3649).
The teachings of des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. have been set forth above.
Claim 4 is drawn to the matrix of claim 1, wherein the matrix is characterized by a pressure drop of less than 5 Pa/cm2 at a flow rate of 8 L/min.
des Ligneris et al. do not teach the pressure drop at a flow rate of 8 L/min. However, des Ligneris et al. teach that the pressure drop of an air filter is related to the thickness of the filter (Pg. 12 first paragraph), indicating that the pressure drop can be optimized.
Zhang et al. teach that the pressure drop of an air filter is directly proportional to the energy consumption of an HVAC system (Pg. 3647 left column third paragraph).
And, as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the pressure drop is clearly a result-effective variable, determining the energy cost of an HVAC system. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal pressure drop in order to best achieve the desired results.
As such, claim 4 is rejected as prima facie obvious.
Claim 8 is ADDITIONALLY rejected under 35 U.S.C. 103 as being unpatentable over des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. as applied to claims 1-3, 5, and 7-8 above, and further in view of Kariwa et al. (Dermatology, 2006, Vol. 212, 119-123; of record).
The teachings of des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. have been set forth above.
Claim 8 is drawn to the matrix of claim 1, wherein the biocidal agent is poly(vinyl pyrrolidone iodine) (Applicant’s elected species).
des Ligneris et al. do not teach the biocidal agent being Applicant’s elected species of poly(vinyl pyrrolidone iodine).
However, des Ligneris et al. teach the inclusion of the biocidal agent leading to anti-bacterial activity against E. coli (Pg. 12 first paragraph).
Kariwa et al. teach povidone-iodine (a.k.a. poly(vinyl pyrrolidone iodine)) as being effective at inactivating SARS coronavirus (Title, Abstract), further teaching SARS being primarily transmitted through the airborne route (Pg. 122 left column first paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the matrix of des Ligneris et al. to include poly(vinyl pyrrolidone iodine) as the biocidal agent. It would have been obvious to substitute one biocidal agent for another to obtain the predictable result of an air filter that is effective at inactivating SARS coronavirus to limit the airborne transmission thereof, with a reasonable expectation of success.
As such, claim 8 is rejected as prima facie obvious.
Claims 18-21 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. as applied to claims 1-3, 5, and 7-8 above, and further in view of Tong et al. (US 2016/0174631; of record) and FDA (“Surgical Masks”; of record).
The teachings of des Ligneris et al., Liu et al., Olmedo et al., and Maduna et al. have been set forth above.
Claim 18 is drawn to a multi-layered article comprising a first layer comprising the matrix of claim 1 bound to an additional layer, wherein said additional layer comprises a non-woven matrix comprising a plurality of polymeric microfibers; and wherein said multi-layered article is characterized by air pressure drop of less than 49 Pa/cm2.
Claim 19 is drawn to the multi-layered article of claim 18, wherein said polymeric microfibers are spun-bond.
Claim 20 is drawn to the multi-layered article of claim 18, wherein the polymeric microfibers comprise polypropylene.
Claim 28 is drawn to the multi-layered article of claim 18, wherein the article is a face mask.
des Ligneris et al. do not teach a multi-layered article.
Tong et al. teach multi-layered masks comprising a layer of spun bond polypropylene microfibers coated with a layer of biocide loaded polymer nanofibers (Par. [0048]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of des Ligneris et al. and Tong et al. to arrive at the instantly claimed invention. It would have been obvious to combine the known biocide loaded polymer nanofiber filter of des Ligneris et al. and the face mask of Tong et al. to yield the predictable result of a facemask with a biocidal filter for further protection, with a reasonable expectation of success.
As such, des Ligneris et al. and Tong et al. teach a multi-layered article in the form of a face mask comprising a first layer comprising the biocidal non-woven matrix of claim 1 bound to an additional layer, wherein said additional layer comprises a non-woven matrix comprising a plurality of spun bond polymeric microfibers comprising polypropylene.
Tong et al. do not teach the mask having an air pressure drop of less than 49 Pa/cm2.
However, FDA teaches that the pressure drop of a mask relates to the breathability and comfort of the surgical mask (Sec. 9 on pg. 9).
And, as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the pressure drop of the mask is clearly a result-effective variable, determining the breathability and comfort. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal pressure drop in order to best achieve the desired results.
As such, claims 18-20 and 28 are rejected as prima facie obvious.
Claim 21 is drawn to the multi-layered article of claim 18, wherein the textile weight of the additional layer is between 40 to 60 g/m2.
Tong et al. further teach the spun bond polypropylene layer having a weight of 20-50 g/m2 (Par. [0098]), overlapping with the instantly claimed range.
As such, claim 21 is rejected as prima facie obvious.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over des Ligneris et al., Liu et al., Olmedo et al., Maduna et al., Tong et al., and FDA as applied to claims 18-21 and 28 above, and further in view of Angadjivand et al. (US 6,923,182; of record).
The teachings of des Ligneris et al., Liu et al., Olmedo et al., Maduna et al., Tong et al., and FDA have been set forth above.
Claim 15 is drawn to the matrix of claim 1, wherein the matrix is further in contact with an adhesive layer.
des Ligneris et al., Tong et al., and FDA do not teach an adhesive layer.
Tong et al. further teach the layers of the mask being attached via ultrasonic welding (Par. [0048]).
Angadjivand et al. teach similar multi-layer masks having a filtration layer, wherein the layers are held together by an adhesive layer (Abstract).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the matrix of des Ligneris et al., Tong et al., and FDA to include an adhesive layer as taught by Angadjivand et al. It would have been obvious to substitute one method for attaching layers in a facemask for another to obtain the predictable result of a multilayer face mask, with a reasonable expectation of success.
As such, claim 15 is rejected as prima facie obvious.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Matulevicius et al. (Journal of Nanomaterials, 2014, Vol. 2014, 859656) in view of Liu et al. (Int. J. Environ. Res. Public Health, 2019, Vol. 16, 347) and Maduna et al. (Journal of Industrial Textiles, 2019, Vol. 50, 675-691; of record) as evidenced by Esenoğlu et al. (ACS Omega, 2023, Vol. 8, 32656-32666).
Claim 9 is drawn to a non-woven matrix consisting of electrospun nanofibers consisting of at least one polymer selected from a cationic polymer, a non-ionic polymer, and an anionic polymer, or a combination thereof. wherein:
median diameter of said electrospun nanofibers is between 50 to 1500 nanometers, a surface of said matrix is characterized by a water contact angle of less than 90°;
the matrix comprises a plurality of pores characterized by a median pore size in a range between 60 and 800 nanometers, and is characterized by a porosity suitable for capturing a microbe in a range between 50 and 400 nm;
wherein said porosity is at least 80% and allows for air permeability, k between 10-7 [m2] and 10-5 [m2] for flow rate of 8 L/min.
Matulevicius et al. teach electrospun polyamide nanofiber air filters (Abstract). Matulevicius et al. further teach in Table 1 at Experiment 30 a matrix formed by electrospinning PA 66 with an average fiber diameter of 62±8 nm, and having a solidity of 0.035. Matulevicius et al. further teach in Table 2 the filter PA6/6_30, which has an 84.9% filtration efficiency for 100nm particles and 90.9% filtration efficiency for 300nm particles. Matulevicius et al. further teach porosity being the opposite of solidity (Pg. 3 left column), indicating that a solidity of 0.035 corresponds to a porosity of 96.5%, as calculated by examiner.
As such, Matulevicius et al. teach a non-woven matrix consisting of electrospun nanofibers consisting of at least one non-ionic polymer, wherein: the median diameter of said electrospun nanofibers is between 50 to 1500 nm, the matrix is characterized by a porosity suitable for capturing a microbe in a range between 50 and 400 nm, and wherein said porosity is at least 80%.
The matrix of Matulevicius et al. differs from the instantly claimed matrix in the following ways:
Matulevicius et al. are silent as to the water contact angle of the matrix;
Matulevicius et al. do not teach the median pore size between 60 and 800 nm; and
Matulevicius et al. are silent as to the air permeability of the matrix.
Yet, as to 1: As evidenced by Esenoğlu et al., the water contact angle of PA66 nanofibers is less than 90° (Fig. 9). As such the matrix of Matulevicius et al. consisting of PA66 nanofibers necessarily has a water contact angle of less than 90°.
As to 2: Matulevicius et al. do not teach the pore size of the matrix.
However, Liu et al. teach that the efficiency, resistance, and precision of a filter all being dependent on the filter pore size (Abstract).
And, as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the pore size of the matrix is clearly a result-effective variable, determining the filtration efficiency, filtration resistance, and filtration precision. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal pore size in order to best achieve the desired results.
And, as to 3: Maduna et al. teach the importance of air permeability for air filters (Abstract). Maduna et al. further teach the air permeability being a determining factor in the lifetime of filters (Pg. 676 third paragraph).
And, as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the air permeability of the matrix is clearly a result-effective variable, determining the lifetime of the matrix. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal air permeability in order to best achieve the desired results.
Based on all of the foregoing, claim 9 is rejected as prima facie obvious.
Response to Arguments
Applicant's arguments filed 20 January 2026 have been fully considered but they are not persuasive.
Applicant argues on pg. 10 of the Remarks that des Ligneris et al. would guide a skilled artisan specifically to use a membrane with an average pore size of 1.7 µm, and would not be motivated to optimize the pore size.
This argument is not persuasive. While des Ligneris et al. do teach that the filter with a pore size of 1.7 µm demonstrates the highest filtration efficiency, there is no teaching that filters with other pore sizes are inoperable as air filters. As discussed in MPEP 2123(II), Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). As there is no teaching in des Ligneris et al. that criticizes, discredits, or otherwise discourages optimizing the pore size, there is no teaching away. Further, as optimizing the pore size is taught by Liu et al. to optimize the efficiency, resistance, and precision of the filter, one of ordinary skill in the art would have been motivated through routine optimization to find the pore size that provides the best results.
Applicant argues on pg. 10 of the remarks that des Ligneris et al. teach that Cu-PVA is essential to the filter, and one of ordinary skill in the art would not be motivated to modify these polymeric fibers to arrive at the fibers as recited by claim 2.
This argument is not persuasive. While des Ligneris et al. disclose the benefits of the Cu-PVA filters, there is no indication that these two specific ingredients are essential and the filter would be rendered inoperable by substituting them. Further, filters comprising electrospun nanofibers of different polymers and biocides are taught in the art (See e.g., Tong et al. US 2016/0174631 pars. [121-122]). As such, one of ordinary skill in the art would understand that the polymer and biocide could be substituted without rendering the filter inoperable.
Further, as the fibers of des Ligneris et al. comprise PVA and a biocide, they read on the fibers of claim 2 without any substitution of ingredients.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/Examiner, Art Unit 1611
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