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 § 112(b)
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 1–4, 6, 8, 9, 11 and 13–15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 8 each recite:
1. An electret web consisting of:
a blend comprising:
a thermoplastic resin; and
a charge-enhancing additive comprising substituted-aromatic carboxylic acids or substituted-aromatic carboxylate salts, wherein the substituted-aromatic carboxylic acids are of Formula 1:
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where the R1, R2, R3, and R4 independently are a hydrogen atom, an alkyl, an aryl, a substituted alkyl, or R2 and R3 together comprise linkages to a fused aromatic ring; and X is an -OH or -NR5R6 group, wherein R5 and R6 independently are a hydrogen atom, an alkyl, or a substituted alkyl; and
wherein the substituted-aromatic carboxylate salts are of Formula 2:
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where the R1, R2, R3, and R4 independently are a hydrogen atom, an alkyl, an aryl, a substituted alkyl, or R2 and R3 together comprise linkages to a fused aromatic ring;
X is an -OH or -NR5R6 group, wherein R5 and R6 independently are a hydrogen atom, an alkyl, or a substituted alkyl;
n is an integer of 1, 2 or 3; and
M is a metal ion with a valency of n, wherein the web is an electret web, and wherein the web optionally consists of at least one additional additive selected from pigments, light stabilizers, primary and secondary antioxidants, metal deactivators, hindered amines, hindered phenols, fatty acid metal salts, and combinations thereof. Emphasis added.
8. An electret filter medium consisting of:
a web comprising:
a blend comprising:
a thermoplastic resin; and
a charge-enhancing additive comprising substituted-aromatic carboxylic acids or substituted-aromatic carboxylate salts, wherein the substituted-aromatic carboxylic acids are of Formula 1:
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where the R1, R2, R3, and R4 independently are a hydrogen atom, an alkyl, an aryl, a substituted alkyl, or R2 and R3 together comprise linkages to a fused aromatic ring; and X is an -OH or -NR5R6 group, wherein R5 and R6 independently are a hydrogen atom, an alkyl, or a substituted alkyl; and
wherein the substituted-aromatic carboxylate salts are of Formula 2:
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where the R1, R2, R3, and R4 independently are a hydrogen atom, an alkyl, an aryl, a substituted alkyl, or R2 and R3 together comprise linkages to a fused aromatic ring;
X is an -OH or -NR5R6 group, wherein R5 and R6 independently are a hydrogen atom, an alkyl, or a substituted alkyl;
n is an integer of 1, 2 or 3; and
M is a metal ion with a valency of n, wherein the web is an electret web, and wherein the web optionally consists of at least one additional additive selected from pigments, light stabilizers, primary and secondary antioxidants, metal deactivators, hindered amines, hindered phenols, fatty acid metal salts, and combinations thereof. Emphasis added.
Claims 1 and 8 are indefinite because the preamble of each claim uses the closed transitional phrase “consisting of,” which excludes any element or ingredient not specified in the claim. But each claim then uses the open-ended transitional phrase “comprising” or “comprise” to set forth specific elements of each claim (“comprising” does not exclude additional, unrecited elements). Therefore, each claim is indefinite because it is unclear whether it is intended to be closed or open-ended. For instance, for the limitation “a blend comprising: a thermoplastic resin; and a charge-enhancing additive” it is unclear whether the blend can contain elements other than the thermoplastic resin and charge-enhancing additive (due to the open transitional phrase “comprising”) or whether the blend is limited to the thermoplastic resin and charge-enhancing additive (due to the closed transitional phrase “consisting of” in the preamble).
Claims 2–4, 6, 9, 11 and 13–15 are indefinite because they depend from claims 1 or 8.
Also, claims 2–4, 6, 9, 11 and 13–15 are indefinite because they each use the open-ended transitional phrase “comprises” (or an equivalent), making it unclear whether each claim is open-ended or closed (due to the closed transitional phrase “consisting of” in independent claims 1 and 8).
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, 2, 4, 6, 8, 9, 11 and 13–15 are rejected under 35 U.S.C. 103 as being unpatentable over Mathis et al., US 2007/0044801 A1 in view of Gaynor et al., US 2004/0000313 A1.
Regarding claim 1, Mathis teaches a face mask 10 comprising an outermost layer 36 made of a nonwoven web comprising a thermoplastic resin, such as polypropylene. See Mathis Fig. 4, [0004], [0024]–[0025]. The outermost layer reads on the claimed “electret web” (as explained in more detail below).
The outermost layer 36 comprises fibers, which can be made by compounding a thermoplastic resin with an internal melt additive (a biocide) to produce a concentrate which is then dry blended with the virgin resin and co-extruded to produce the fibers. See Mathis Table 1 (footnote), [0048]. The concentrate that is dry blended with the virgin resin reads on the claimed “blend.” The thermoplastic resin reads on the “thermoplastic resin.” The internal melt additive can either be one of the three biocides with asterisks (*) listed in Table 1 (Curpron, AlphaSan or Irgaguard B), or the internal melt additive can be “other active ingredients” listed in Table 1. Id. at Table 1 (footnote). 2-hydroxybenzoic acid is one of the active ingredients listed in Table 1. Id. at Table 1. Also, Mathis teaches that it is beneficial for the biocide to be melt-incorporated with the polymer-based fibers to maintain a level of protection over an extended period of time. Id. at [0052]. Therefore, it would have been obvious for the internal melt additive to be 2-hydroxybenzoic acid1 because the footnote says that the other active ingredients in Table 1 can be used as the internal melt additive (with 2-hydroxybenzoic acid being one of the active ingredients listed in the table), while melt-incorporating 2-hydroxybenzoic acid into the fiber would allow the fiber to maintain a level of protection over an extended period of time.
2-hydroxybenzoic acid has the has the structure:
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As such, 2-hydroxybenzoic acid reads on “a charge-enhancing additive comprising substituted-aromatic carboxylic acids…of Formula 1” where “R1, R2, R3, R4” are hydrogen (as the carbon atoms of the benzoate portion of the molecule are bonded to hydrogen, with the exception of the carbon atoms bonded to the carboxylate group and the hydroxyl group) and where “X” comprises -OH. Note that the phrase indicating that the additive is “charge-enhancing” fails to further limit the scope of the claim, as it describes the intended use rather than the structure of the additive. See MPEP 2112 (something which is old does not become patentable upon the discovery of a new property).
Mathis differs from claim 1 because it is silent as to the outermost layer 36 being an “electret” web.
But, as noted, the outermost layer 36 is the outer layer of the face mask 10. Also, the face mask 10 can have an “SMS” configuration where the outermost layer 36 and an inner layer 34 are made from a spunbond material sandwiching an intermediate layer 32 made of a meltblown material. See Mathis Fig. 4, [0029].
With this in mind, Gaynor teaches a face mask comprising an SMS laminate that is subjected to an electret treatment such that all the layers of the SMS laminate are electrostatically charged. See Gaynor [0048]. The electret treatment is beneficial because it increases filtration efficiency by drawing particles to be filtered towards the fibers of the filter by virtue of their electric charge. Id.
It would have been obvious to subject the SMS material of Mathis to the electret treatment taught in Gaynor such that the layers of the face mask 10 (including the outermost layer 36) are electrostatically charged in order to increase the filtration efficiency of the face mask 10. With this modification, the outermost layer 36 would be an “electret web,” as claimed because it would be subjected to electret treatment.
Regarding claim 2, Mathis teaches that the outermost layer 36 comprises a non-woven fibrous web. See Mathis [0024].
Regarding claim 4, Mathis teaches that the germicidal agent the germicidal agent can be 2-hydroxybenzoic acid. Id. at [0048], Table 1. 2-hydroxybenzoic acid has the structure:
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This reads on the claimed “Formula 1” where “R1, R2, R3, R4” are hydrogen (as the carbon atoms of the benzoate portion of the molecule are bonded to hydrogen, with the exception of the carbon atoms bonded to the carboxylate group and the hydroxyl group) and where “X” comprises -OH. Note that the phrase indicating that the additive is “charge-enhancing” fails to further limit the scope of the claim, as it describes the intended use rather than the structure of the additive.
Regarding claim 6, Mathis teaches that the germicidal agent the germicidal agent can be 2-hydroxybenzoic acid. Id. at [0048], Table 1. 2-hydroxybenzoic acid has the structure of “Formula 1A.”
Regarding claim 8, Mathis teaches a face mask 10 comprising an outermost layer 36 made of a nonwoven web comprising a thermoplastic resin, such as polypropylene. See Mathis Fig. 4, [0004], [0024]–[0025]. The outermost layer 36 reads on the claimed “electret filter medium” (as explained in more detail below).
The outermost layer 36 consists of a web made of fibers. See Mathis [0024]. The fibers can be made by compounding a thermoplastic resin with an internal melt additive (a biocide) to produce a concentrate which is then dry blended with the virgin resin and co-extruded to produce the fibers. Id. at Table 1 (footnote), [0048]. The concentrate that is dry blended with the virgin resin reads on the claimed “blend.” The thermoplastic resin reads on the “thermoplastic resin.” The internal melt additive can either be one of the three biocides with asterisks (*) listed in Table 1 (Curpron, AlphaSan or Irgaguard B), or the internal melt additive can be “other active ingredients” listed in Table 1. Id. at Table 1 (footnote). 2-hydroxybenzoic acid is one of the active ingredients listed in Table 1. Id. at Table 1. Also, Mathis teaches that it is beneficial for the biocide to be melt-incorporated with the polymer-based fibers to maintain a level of protection over an extended period of time. Id. at [0052]. Therefore, it would have been obvious for the internal melt additive to be 2-hydroxybenzoic acid2 because the footnote says that the other active ingredients in Table 1 can be used as the internal melt additive (with 2-hydroxybenzoic acid being one of the active ingredients listed in the table), while melt-incorporating 2-hydroxybenzoic acid into the fiber would allow the fiber to maintain a level of protection over an extended period of time.
2-hydroxybenzoic acid has the has the structure:
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As such, 2-hydroxybenzoic acid reads on “a charge-enhancing additive comprising substituted-aromatic carboxylic acids…of Formula 1” where “R1, R2, R3, R4” are hydrogen (as the carbon atoms of the benzoate portion of the molecule are bonded to hydrogen, with the exception of the carbon atoms bonded to the carboxylate group and the hydroxyl group) and where “X” comprises -OH. Note that the phrase indicating that the additive is “charge-enhancing” fails to further limit the scope of the claim, as it describes the intended use rather than the structure of the additive. See MPEP 2112 (something which is old does not become patentable upon the discovery of a new property).
Mathis differs from claim 8 because it is silent as to the outermost layer 36 being an “electret.”
But, as noted, the outermost layer 36 is the outer layer of the face mask 10. Also, the face mask 10 can have an “SMS” configuration where the outermost layer 36 and an inner layer 34 are made from a spunbond material sandwiching an intermediate layer 32 made of a meltblown material. See Mathis Fig. 4, [0029].
With this in mind, Gaynor teaches a face mask comprising an SMS laminate that is subjected to an electret treatment such that all the layers of the SMS laminate are electrostatically charged. See Gaynor [0048]. The electret treatment is beneficial because it increases filtration efficiency by drawing particles to be filtered towards the fibers of the filter by virtue of their electric charge. Id.
It would have been obvious to subject the SMS material of Mathis to the electret treatment taught in Gaynor such that the layers of the face mask 10 (including the outermost layer 36) are electrostatically charged in order to increase the filtration efficiency of the face mask 10. With this modification, the outermost layer 36 would be an “electret filter medium,” as claimed because the layer is usable for filtration and would be subjected to electret treatment.
Regarding claim 9, Mathis teaches that the germicidal agent the germicidal agent can be 2-hydroxybenzoic acid. Id. at [0048], Table 1. 2-hydroxybenzoic acid has the structure:
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This reads on the claimed “Formula 1” where “R1, R2, R3, R4” are hydrogen (as the carbon atoms of the benzoate portion of the molecule are bonded to hydrogen, with the exception of the carbon atoms bonded to the carboxylate group and the hydroxyl group) and where “X” comprises -OH. Note that the phrase indicating that the additive is “charge-enhancing” fails to further limit the scope of the claim, as it describes the intended use rather than the structure of the additive.
Regarding claim 11, Mathis teaches that the germicidal agent the germicidal agent can be 2-hydroxybenzoic acid. Id. at [0048], Table 1. 2-hydroxybenzoic acid has the structure of “Formula 1A.”
Regarding claim 13, Mathis teaches that the thermoplastic resin can be a polyolefin or polyester. See Mathis [0025].
Regarding claim 14, Mathis teaches that the 2-hydroxybenzoic acid (the “charge enhancing additive”) comprises 0.1 to 10 wt% relative to the web. See Mathis Table 1. The prior art range of 0.1 to 10 wt% relative to the web overlaps with the claimed range of 0.02 to 5.0% by weight of the web, establishing a prima facie case of obviousness.
Regarding claim 15, Mathis as modified teaches that the outermost layer 36 (the “filtration medium”) contains an electret charge, as explained in the 35 U.S.C. 103 rejection of claim 8 above. With respect to the limitation requiring that the charge is imparted through corona treatment, hydrocharging or a combination thereof, this limitation fails to patentably distinguish over the prior art because it describes the method of production rather than the structure of the claimed product. See MPEP 2113, subsection I (The patentability of a product does not depend on its method of production).
Response to Arguments
Claim Objections
The Examiner withdraws the previous objections in light of the amendments.
35 U.S.C. 102 & 103 Rejections
Schultz et al., US 2016/0067717 A1
The Examiner withdraws the previous objections over Shultz, in light of the amendments.
Mathis et al., US 2007/0044801 A1
The Applicant argues that the footnote of Table 1 teaches that, when coextrusion is performed, one of 3 processing aids (with the asterisk) is compounded with a thermoplastic resin to form a concentrate, and then the concentrate is blended with more resin and optionally an antimicrobial additive. See Applicant Rem. dated October 23, 2025 (“Applicant Rem.”) 18. Therefore, it is argued that any blends prepared by Mathis will necessarily have one of the three processing aids, which are inorganic metal oxides. Id. The Applicant asserts that the inorganic metal oxides are expressly excluded from the current webs by the “consisting of” language, and therefore there is no way that a person of ordinary skill in the art could arrive at the claimed webs. Id.
The Examiner respectfully disagrees. The Applicant mischaracterizes the coextrusion process of Mathis. The process does not require using one of the three internal melt additives (Cupron, AlphaSan and Iraguard) in addition to a biocide. Instead, the footnote initially describes that one of these 3 internal melt additives are biocides that can be coextruded with the thermoplastic resin to form the fibers. After explaining that one of these 3 internal melt additives can be coextruded, the footnote then says that “other active ingredients” such as PHMB (the first biocide listed in Table 1) can be compounded and coextruded in various other thermoplastic resins. Table 1 lists 2-hydroxybenzoic acid as one of the active ingredients, and 2-hydroxybenzoic acid satisfies the conditions of claimed “Formula 1.” Therefore, it would have been obvious to use 2-hydroxybenzoic acid as the internal melt additive of Mathis (and not one of Cupron, AlphaSan or Iraguard), resulting in the structure of claims 1 and 8.
Note also that claims 1 and 8 are not written such that the blend only includes the thermoplastic resin, charge-enhancing additive and optional additives. Instead, each claim describes a blend “comprising” a thermoplastic resin, charge enhancing additive and optional additives, with the open-ended transitional phrase “comprising” indicating that other elements could be included in the blend.
The Applicant also argues that it would not have been obvious to use 2-hydroxybenzoic as the active ingredient (internal melt additive) in the coextrusion process described in the footnote of Table 1, asserting that the example provided in the footnote, PHMB, would decompose under the conditions for extruding thermoplastics, such as PET or some grades of polypropylene. See Applicant Rem. 21–22.
The Applicant’s arguments are unpersuasive because they are with respect to PHMB instead of 2-hydroxybenzoic acid.
But note that a person of ordinary skill in the art would have had a reasonable expectation of success in coextruding 2-hydroxybenzoic acid the thermoplastic resin. This is because the thermoplastic resin of Mathis can be polypropylene, which could be extruded at a temperature of 140 and 180°C because it melts within this range (see Peters et al., US 2017/0225104 A1, [0031]), while 2-hydroxybenzoic acid begins to decompose around 200°C. See Salicylic Acid3.
The Applicant further argues that it would not have been obvious to use 2-hydroxybenzoic acid as the internal melt additive in the coextrusion process, asserting that PHMB is listed as a topical biocide. See Applicant Rem. 23–24. The Applicant also argues that the 3 materials listed that function as both internal melt additives and antimicrobial agent agents are all inorganic materials not organic materials. Id. at 24. As such, it is argued that Mathis provides not teaching of co-extruding benzoic acids or benzoic acid salts as anti-microbial agents. Id.
The Examiner respectfully disagrees. Mathis teaches that organic active agents can be used in the coextrusion process because the footnote says that “PHMB (an organic compound) can be compounded and co-extruded in various other thermoplastic resins.” Also, as noted, 2-hydroxybenzoic acid begins to decompose at a temperature above the melting temperature of polypropylene. Therefore, a person of ordinary skill in the art would have had a reasonable expectation of success in using 2-hydroxybenzoic acid as the internal melt additive in the coextrusion process.
Note also that if the Applicant is correct that organic compounds such as 2-hydroxybenzoic acid cannot be coextruded with thermoplastic resins, then this may raise an issue of whether claims 1 and 8 are enabled by the Applicant’s disclosure.
The Applicant also argues that there is no evidence that 2-hydroxybenzoic acid would act as a “charge-enhancing additive” when coextruded with the thermoplastic resin. See Applicant Rem. 25. Instead, it is argued that 2-hydroxybenzoic acid is only described as being used as an antimicrobial agent. Id.
The Examiner respectfully disagrees. Something which is old does not become patentable on the discovery of a new property, and when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP 2112. When 2-hydroxybenzoic acid is coextruded with the thermoplastic resin of Mathis, the mixture has the same structure as the claimed “blend” because 2-hydroxybenzoic acid meets the requirements of claimed “Formula 1.” As such, the mixture of Mathis (thermoplastic and 2-hydroxybenzoic acid) would be expected to have the same properties as the claimed “blend” (i.e., 2-hydroxybenzoic acid being a charge-enhancing additive).
Conclusion
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.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
1 A person of ordinary skill in the art would have had a reasonable expectation of success in using 2-hydroxybenzoic acid (salicylic acid) as the internal melt additive. This is because 2-hydroxybenzoic acid begins to decompose around 200°C. See Salicylic Acid, www.sciencemadness.org/smwiki/index.pho/Salicylic_acid. But a thermoplastic resin, such as polypropylene, usable to make spunbond fibers melts between 140 to 180°C. See Peters et al., US 2017/0225104 A1, [0031].
2 A person of ordinary skill in the art would have had a reasonable expectation of success in using 2-hydroxybenzoic acid (salicylic acid) as the internal melt additive. This is because 2-hydroxybenzoic acid begins to decompose around 200°C. See Salicylic Acid, www.sciencemadness.org/smwiki/index.pho/Salicylic_acid. But a thermoplastic resin, such as polypropylene, usable to make spunbond fibers melts between 140 to 180°C. See Peters et al., US 2017/0225104 A1, [0031].
3 www.sciencemadness.org/smwiki/index.pho/Salicylic_acid