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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8, 11 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo, et al (KR 20050087630 A; cited in IDS, copy in IFW) in view of Dong, et al (CN 107715571 A; cited in IDS, copy in IFW).
Regarding claim 1, Woo discloses a filter for air or fluids, comprising:
A photocatalytic element (12) having a mesh support (claim 1; Fig. 3) covered at least in part by a layer of material comprising a solution based on a photocatalytic semiconductor, which can be activated by exposure to light radiation having a frequency in the visible spectrum (TiO2 and WO3, which are both optically active semiconductor materials, see p. 3 of translation);
A plurality of LED light sources (13) arranged so as to illuminate, when in use, at least one face of the photocatalytic element (12); and
A filter element (10) comprising a support of fabric (HEPA filter, Fig. 3; pp. 2-3 of translation).
Woo fails to teach the fabric is made of hydrophilic material impregnated with a solution of copper nanocluster; however, Dong teaches a HEPA filter that has had a hydrophilic treatment and is impregnated with a solution of copper nanoclusters to improve its antibacterial effect (abstract; paragraphs 0015-0033; claims 1-9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to apply the fabric of Dong’s HEPA filter in Woo’s HEPA filter, in order to improve the filter’s ability to remove bacteria from the filtered air.
Regarding claim 2, Woo teaches wherein the photocatalytic semiconductor comprises tungsten trioxide (claim 3).
Regarding claim 3, Woo discloses wherein the layer covering the grid support of the at least one photocatalytic element comprises one or more doping substances selected from platinum, silver, and vanadium (V2O2, see claim 3).
Regarding claim 4, although Woo does not specify the size of the openings in the grid support, one of ordinary skill in the art would know how to adjust the size of the openings to determine the optimum size for filtering specific fluids; therefore, it would have been obvious to one of ordinary skill in the art to use an opening size between 0.5-4 mm when such a size provides optimum filtering of the desired fluid.
Regarding claim 5, Woo teaches wherein the plurality of light sources is arranged so as to illuminate, when in use, both sides of the at least one photocatalytic element (p. 3, lines 1-3).
Regarding claim 6, the mere duplication of parts (in this case duplicating the photocatalytic element and the filtering element with fabric impregnated with copper nanoclusters, in alternation with each other) cannot patentably distinguish over the prior art. In re Harza, 274 F.2d 669, 124 (CCPA 1960).
Regarding claim 7, Woo discloses wherein the grid support of the at least one catalytic element is a substantially flat grid (Figs. 1-3).
Regarding claim 8, Woo teaches the at least one photocatalytic element comprises an independent module (Figs. 1-3), but does not teach a plurality of such modules arranged substantially parallel to each other so as to form channels, the distance between a module and the next being between 0.5 mm and 4 mm; however, the mere duplication of parts (in this case providing a plurality of the modules taught by Woo) cannot patentably distinguish over the prior art. Id. Furthermore, the selection of the spacing between a module and the next being between 0.5 mm and 4 mm would be obvious to one of ordinary skill in the art while adjusting the spacing to achieve optimum filtration of a particular fluid.
Regarding claim 11, Dong teaches wherein the volume percentage of the copper nanocluster, with respect to the support of fabric, is between 0.1% and 5% preferably between 0.5% and 1.5% (claims 3 and 4).
Regarding claim 12, Woo discloses a support structure (11) that contains and keeps in position with respect to each other the at least one photocatalytic element, the plurality of LED light sources and the at least one fabric filter element (Figs. 1-3).
Regarding claim 13, Woo discloses wherein the grid/mesh support is made of steel or a metal alloy (“Particularly, in the present invention . . . a metal mesh is installed to be close to the filter member 10”).
Regarding claim 14, Dong’s HEPA filter cloth is made of a hydrophilic textile material (claim 8).
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo in view of Dong as applied to claim 1 above, and further in view of Dhau, et al (U.S. Patent Application Publication 2019/0113246 A1).
Regarding claims 9 and 10, Woo in view of Dong teaches the filter according to claim 1; however, it does not specify the grid support/filter having a wavy shape or a substantially toroidal shape in which the at least one photocatalytic element and the at least one filter element impregnated with copper nanocluster are concentric with each other.
Dhau teaches that such filters may take many shapes to optimize their use in different applications, such shapes including a wavy shape (Fig. 7C) and a toroidal shape (Figs. 5, 11, 14 and 15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to give the filter taught by Woo and Dong a wavy shape or a toroidal shape in which the at least one photocatalytic element and the at least one filter element impregnated with copper nanocluster are concentric with each other, in order to provide the optimal shape for particular applications.
Response to Arguments
Applicant's arguments filed 08/29/2025 have been fully considered but they are not persuasive. Applicant argues that the combination of Woo and Dong is improper because “the synergistic effect of the claimed invention is notably different from and greater than the sum of merely combining fabric of Dong’s HEPA filter in Woo’s HEPA filter,” citing MPEP 716.02(a)(1) which states that “Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of the effects taken separately (i.e. demonstrating “synergism”). (Reply, p. 5.) This is not persuasive, first because 37 CFR 1.132 states that “any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” MPEP 716. Applicant has not provided an affidavit or declaration under 37 CFR 1.132 to support the “evidence of a greater than expected result,” therefore, the argument is not persuasive.
Second, the argument is not persuasive, even if evidence of the alleged “synergism” is provided by affidavit or declaration, because the secondary consideration presented is insufficient to overcome the prima facie case of obviousness set forth in the rejection. “The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself . . . All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case.” MPEP 716.01(d). In this case, a clear prima facie case of obviousness is established by the fact that Woo uses a HEPA filter with no particular special characteristics recited, while Dong presents a HEPA filter with a fabric impregnated with copper nanoclusters to improve its antibacterial effect. Since the use of Dong’s fabric in Woo’s HEPA filter would provide a clear advantage that one of ordinary skill in the art would readily recognize, and there is no evidence that one of ordinary skill in the art would be in any way discouraged from doing so, the mere fact that an additional unexpected advantage was discovered (e.g. “synergism”) when combining the elements does not prevent a finding that one of ordinary skill in the art would have found it obvious to make the combination. In other words, the advantages already known from Dong would be enough to justify the combination, even if the skilled artisan had no idea that yet more advantages would appear after doing so.
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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/MICHAEL MASKELL/Primary Examiner, Art Unit 2881 18 October 2025