Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 09/11/2025 has been entered. Claims 9 – 15 remain pending. Claim 13 remains withdrawn. Claims 9 – 12 and 14 – 15 are under examination.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 14 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jones (US 1,127,771)
Regarding claim 14, Jones teaches a filter (meeting the claim) for a pipe [Title]. Jones teaches that the filter is made of a metal wool [Page 1, line 15 – 20], meeting the claimed limitation of a metal porous body with a three-dimensional mesh-like skeleton. Jones states that the shape of filter can made into whatever shape is desired/suitable [Page 1, line 42 – 45].
While Jones does not explicitly teach the size in mm of the metal porous body or its shape, changes to size/proportion and shape are a matter of choice to an ordinarily skilled artisan and are prima facie obviousness in view of the prior art (MPEP 2144.04 IV A and B), absent evidence of criticality or unexpected results.
Regarding claim 15, Jones teaches a filter (meeting the claim limitation) for a pipe [Title]. Jones teaches that the filter is made of a metal wool [Page 1, line 15 – 20], meeting the claimed limitation of a metal porous body with a three-dimensional mesh-like skeleton. Jones states that the shape of filter can made into whatever shape is desired/suitable [Page 1, line 42 – 45].
Jones explicitly shows that the filter can be formed into a shape with a circular bottom that arches/curves to an apex point [Fig 2, 3, and 4], meeting the claimed shape.
While Jones does not explicitly teach the size in mm of the metal wool filter, changes to size/proportion are a matter of choice to an ordinarily skilled artisan and are prima facie obviousness in view of the prior art (MPEP 2144.04 IV A and B), absent evidence of criticality or unexpected results.
Claims 14 – 15 and 9 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over Okuno (US2017/069918)
Regarding claims 14 – 15 and 9 – 10, Okuno teaches a metal porous body with a three-dimensional mesh-like structure [0007, 0008], meeting the claimed limitation of a metal porous body with a three-dimensional mesh-like skeleton. Okuno teaches that the metal porous body has a composition of a majority nickel with the inclusion of at least tin and chromium [0078], meeting the claimed limitation/composition of claims 9 – 10.
Okuno states that the metal porous body can be used in filters [0135], meeting claim 14 and 15.
While Okuno does not explicitly teach the size in mm of the metal porous body or its shape (as claimed in claims 7 and 8), changes to size/proportion and shape are a matter of choice to an ordinarily skilled artisan and are prima facie obviousness in view of the prior art (MPEP 2144.04 IV A and B), absent evidence of criticality or unexpected results.
Regarding claims 11 – 12, Okuno teaches the invention as applied in claims 14 – 15. Okuno teaches an example in which the metal porous body has an average pore size of 400 – 600 µm [0026], which falls within the claimed range.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that the claimed size and shape are critical and cites Table 1. The data provided in Table 1 has been fully considered but is not persuasive. In particular, the claimed invention does not appear commensurate in scope with the data and the data does not provide evidence that the specific size and shape of the metal body is critical to producing unexpected/superior results.
First, the data provided shows that the inventive examples produce a collection rate similar to a collection rate of a different/comparative filter while minimizing pressure drop. However, the comparative example appears to be a filter that is designed differently, thus the data presented shows that a filter that uses random/loose [Fig 8] packing as opposed to laminated bodies [Fig 10] produces better results vis-à-vis collection rate and pressure drop. Therefore, the data in Table 1 does not provide evidence that the specific shape and size of the metal porous body used provides superior or unexpected results. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)(MPEP 716.02(d)). In this case, the data provided in Table 1 does not provide a comparison with, for example, a filter using loose/random packing as in Fig 8., but with bodies that are different in size and/or shape from what is claimed to show that the specifically claimed size and/or shape are critical.
Moreover, the claimed filter(s) do not appear commensurate with the inventive examples described in the instant invention wherein the inventive examples appear to contain a plurality of metal porous bodies. Additionally, the inventive examples provided possess a side length of 4 mm or diameter of 2.5 mm and height of 2 mm or 4 mm, which is narrower than the claimed ranges.
As such, the data presented does not provide evidence of criticality of the specific shape and/or size and the data presented is not commensurate with the claimed invention. As such, applicant’s arguments are not found persuasive.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP2005169249 – Filter containing a plurality of dome/hemispherical shaped plugs that can be made of metal and reduces pressure loss
JP2011200835 – Filter containing sealing material in a hemispherical, conical, or other shape
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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