DETAILED ACTION
This action is in response to the amendments and remarks filed 11/18/2025, in which claim 14 has been amended and claims 1-10, 14 and 16-20 are pending and ready for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original disclosure does not recite or support “an average pore size of the pores in the second layer is about 0.01 to about 3 µm”. It is noted this range of size is disclosed to be used for the fiber diameters (P7/L11-14).
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 1-10 and 14-20 are rejected under 35 U.S.C. 112(b) 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.
Claims 1 and 14 recite the limitation “many pores”. It is not clear if the term is meant to be defined other than its ordinary meaning by the specification which discloses “In the context of the present invention, the diameter of "many pores" is the diameter of an even distribution of pores in a layer. This feature can be determined according to the method defined below.” (P3/L15-18). Wherein the method used to determine the “many pore diameter” is disclosed to be a bubble point test according to DIN ISO 4003:1990 (P20/L11-P21/L5); i.e. a standard measurement of average pore diameter/size. In light of the competing definitions the term “many pores” is not seen to properly be given a special definition in the original disclosure, it will be interpreted by its ordinary meaning, i.e. a plurality of pores.
Claims 2-10 and 16-20 are rejected for depending from an indefinite claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 9-14, 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20140130469 A1 (hereinafter “Nagy”).
Regarding Claim 1 Nagy discloses a filter medium, comprising:
a first layer (either of Nagy’s first or third layers), and
a second layer, wherein the second layer is a porous non-woven and may have a mean flow pore size of from greater than or equal to 4 micron and less than or equal to 10 micron and thus is seen to have “many pores” with a diameter of 4-10 µm (i.e. because to have an average pore size in that range it must necessarily have a plurality of pores in said range, see 112(b) rejection above) as claimed, Fig. 1, [0020], [0027], [0115].
Regarding Claim 2-3 Nagy discloses the filter medium according to claim 1, wherein the second layer is a nonwoven and may be made by a dry laid process, including meltblown process [0150], [0164][0165].
Regarding Claim 4 Nagy discloses the filter medium according to claim 1, wherein the first layer comprises cellulose, [0028], [0035], [0065]-[0066].
Regarding Claim 5 Nagy discloses the filter medium according to claim 1, wherein the filter medium comprises the third layer (either of Nagy’s first or third layers, Fig. 1, [0020]).
Regarding Claim 7 Nagy discloses the filter medium according to claim 1, wherein the second layer comprises polyester fibers; [0028].
Regarding Claim 9 Nagy discloses the filter medium according to claim 1, wherein the second layer may be formed of multiple layers (i.e. sub-layers) wherein the sub-layers differ in one or more properties including air permeability [0091]-[0092], [0111], [0129]. Thus the claimed “first layer” may be one of the sub-layers and the claimed “second layer” another of the claimed sub-layers. As they may differ in just air permeability, the claimed first layer and second layer would have the same pore size and one greater in permeability than the other, the one with the greater permeability thus being the claimed second layer.
Regarding Claim 10 Nagy discloses the filter medium according to claim 1, wherein the first layer has a first basis weight and the second layer has a second basis weight less than the first basis weight (the ranges for the basis weight of the Nagy first [0094] or third layer [0072] contains values greater than the basis eights range disclosed for the second layer [0114]).
Claims 1 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0292320 Al (hereinafter “Verpoort”).
Regarding Claim 1 Verpoort discloses a multi-layer filter medium, comprising:
At least one first layer which is not calendered,
At least one second layer which has been calendered (densified),
wherein the second/calendered layer(s) has an average pore size of between 2 and 10 µm, and including specifically 7 µm [0014], [0016], [0039].
The second/calendered layer thus is seen to have “many pores” with a diameter of 2-10 µm, and specifically 7 µm, i.e. because to have an average pore size in that range it must necessarily have a plurality or pore in said range, thus anticipating the claimed range.
Regarding Claim 3 Verpoort discloses the filter medium according to claim 1, wherein the second layer is a meltblown layer (Examples, [0073], [0081]).
Regarding Claim 4 Verpoort discloses the filter medium according to claim 1, wherein the first layer comprises cellulose [0047].
Regarding Claim 5 Verpoort discloses the filter medium according to claim 1, wherein the filter medium comprises the third layer ([0014], Examples).
Regarding Claim 6 Verpoort discloses the filter medium according to claim 1, wherein the second layer is a calendered/densified layer (Examples, [0073], [0081]).
Regarding Claim 7 Verpoort discloses the filter medium according to claim 1, wherein the second layer comprises polyester fibers [0048].
Regarding Claim 8 Verpoort discloses the filter medium according to claim 1, wherein the second layer comprises a calendered/densified meltblown layer (Examples, [0073], [0081]).
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.
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.
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nagy further in view of Verpoort.
Regarding Claims 6 and 8 Nagy discloses the filter medium according to claim 1, but does not disclose wherein the second layer is a densified layer.
However Verpoort discloses a similar multilayer non-woven filter for filtration of leukocytes from blood, wherein at least one layer is calendered/densified to reduce pore size and increase leukocyte retention capacity,[0014], [0016], [0039].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter medium of Nagy (which may be used for medical/blood filters [0167]) by calendaring the second layer as disclosed by Verpoort in order to reduce pore size and increase leukocyte retention capacity.
With regard to claim 8, as the second layer pf Nagy may be meltblown [0150], [0164][0165], the second layer having been calendered would therefore comprises a densified meltblown layer.
Claims 14 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nagy further in view of US 2021/0077930 Al (hereinafter “Iiba”).
Regarding Claim 14 Nagy discloses a filter medium, comprising:
a first layer (either of Nagy’s first or third layers), and
a second layer, wherein the second layer is a porous non-woven and may have a mean flow pore size of from greater than or equal to 4 micron and less than or equal to 10 micron and thus is seen to have “many pores with a diameter of 4-13 μm” (i.e. because to have an average pore size in that range it must necessarily have a plurality or pore in said range, see 112(b) rejection above) as claimed, Fig. 1, [0020], [0027], [0115].
Nagy does not disclose wherein a maximum pore diameter in the second layer of 5-17 μm.
However Iiba discloses a similar multilayer nonwoven filter media, having a layer with pore size 10 micron or less, i.e. similar to that of Nagy, and which has a maximum pore size of 20.0 micron or less, [0153]-[0157].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter medium of Nagy by using a maximum pore size of 20 micron or less as disclosed by Iiba because it is known that the maximum pore size effects the size of the particles which a filter medium will retrain or allow through and it is thus clearly a result effective variable and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, and by using at least values including those disclosed by Iiba for use in a similar material, so as to produce desired end results. See MPEP § 2144.05 (B).
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 17 Nagy discloses the filter medium of claim 14, wherein the second layer may be formed of multiple layers (i.e. sub-layers) wherein the sub-layers differ in one or more properties including air permeability [0091]-[0092], [0111], [0129]. Thus the claimed “first layer” may be one of the sub-layers and the claimed “second layer” another of the claimed sub-layers. As they may differ in just air permeability, the claimed first layer and second layer would have the same pore size and one greater in permeability than the other, the one with the greater permeability thus being the claimed second layer.
Regarding Claim 18 Nagy discloses the filter medium of claim 17, further comprising a third layer, wherein the third layer (either the first or third layers of Nagy) has a third air permeability greater than the second air permeability; [0020].
Regarding Claim 19 Nagy discloses the filter medium of claim 14, wherein the first layer has a first basis weight and the second layer has a second basis weight less than the first basis weight (the ranges for the basis weight of the Nagy first [0094] or third layer [0072] contains values greater than the basis eights range disclosed for the second layer [0114]).
Regarding Claim 20 Nagy discloses the filter medium of claim 19, further comprising a third layer (Nagy’s fourth layer) that is a “relatively low basis weight” including less than 10 g/m2 [0122], where the second layers second basis weight may be greater than or equal to 20 g/m2 [0014].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Verpoort further in view of US 2021/0077930 Al (hereinafter “Iiba”).
Regarding Claim 14 Verpoort discloses a multi-layer filter medium, comprising:
At least one first layer which is not calendered,
At least one second layer which has been calendered (densified),
wherein the second/calendered layer(s) has an average pore size of between 2 and 10 µm, and including specifically 7 µm, i.e. because to have an average pore size in that range it must necessarily have a plurality or pore in said range, [0014], [0016], [0039].
The second/calendered layer thus is seen to have “a substantially even distribution of pores” (see 112(b) rejection above) with a diameter of 2-10 µm, and specifically 7 µm, thus anticipating the claimed range.
Verpoort does not disclose wherein a maximum size of the pores in the second layer is about 5-17 μm.
However Iiba discloses a similar multilayer nonwoven filter media, having a layer with pore size 10 micron or less, i.e. similar to that of Verpoort, and which has a maximum pore size of 20.0 micron or less, [0153]-[0157].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter medium of Verpoort by using a maximum pore size of 20 micron or less as disclosed by Iiba because it is known that the maximum pore size effects the size of the particles which a filter medium will retrain or allow through and it is thus clearly a result effective variable and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, and by using at least values including those disclosed by Iiba for use in a similar material, so as to produce desired end results. See MPEP § 2144.05 (B).
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0292320 Al (hereinafter “Verpoort”)
Regarding Claim 16 Verpoort discloses the filter medium of claim 14, wherein an average size of the pores in the second layer is 2 and 10 µm, and including specifically 7 µm [0016], [0039].
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
It is noted that Applicants’ arguments did not address the 112a rejection of claim 16; and thus the rejection is maintained.
In response to Applicants’ argument that the term “many pores” is not indefinite; the Examiner disagrees. While Applicant’s disclosure is seen to provide a means for determining a value of “many pores”, i.e. DIN ISO 4003:1990, the disclosure is not seen to provide a special definition of “many pores”, and further provides a more broad description i.e. “an even distribution of pores in a layer”, which renders the interpretation of the term “many pores” indefinite. It is further noted that the instant specification has an explicit Definitions section from Pages 17-18, and neither “many pores” nor the diameter of “many pores” is defined in that section “To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess”, “it is important to note that any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention” and “where the specification is ambiguous as to whether the inventor used claim terms inconsistent with their ordinary meaning, the ordinary meaning will apply”; see MPEP 2111.01. Thus, just because the disclosure set out the test methods for all the different properties on Pages 19-21, these do not constitute definitions. Since the term “many pores” is not seen to properly be given a special definition is the original disclosure, it will be interpreted by its ordinary meaning, i.e. a plurality of pores. Specifically, even if it were to be interpreted that the diameter of “many pores” is the diameter of an even distribution of pores in a layer, as on pg. 3 of the instant disclosure, this does not mean that “many pores” is all the pores in the layer, and that all the pores in the layer would be distributed evenly in the layer. Since “many pores” does not necessarily mean “all pores”, the diameter of “many pores” does not necessarily correspond to the average pore size in the layer.
Similarly, the original disclosure is not seen to provide a special definition of “maximum pore size” or “average pore size”.
Thus, Applicant’s further arguments that Nagy and Verpoort do not disclose “many pores” with a diameter as claimed are not persuasive because Applicant’s arguments reply on a narrower definition of “many pores” which does not apply to the claims.
In response to Applicants’ argument that Nagy and Ibia are directed to fundamentally different technical fields and applications and their teachings are not combinable in the manner suggested: the Examiner disagrees. Applicants argue that Nagy and Ibia are non-analogues art because Nagy is directed to air or gas filtration while Ibia is directed to filtration of blood or blood components. However, Nagy is seen to be directed to a general fiber web filter, which may be used for liquids as well as gases [0003]. MPEP 2141.01(a), states that “a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); OR (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”. Nagy and Ibia and Applicants’ invention are all related as to the same field of endeavor, fiber web filters for liquids, they need not be related further to more specific problems addressed by Applicants'.
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 Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773