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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/US2021/046256, filed 08/17/2021; which has PRO 63/067,053, filed 08/18/2020) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08 June 2026 has been entered.
Response to Amendments
Applicant’s amendments filed 08 June 2026 have been entered. Claims 6, 10, 13-15, 18-21, 30, 33, and 35-37 were previously canceled; Claims 23-25, 27-29, 31, 32, and 34 were previously withdrawn. Claims 1 and 23 are amended. Claims 1-5, 7-9, 11, 12, 16, 17, 22-29, 31, 32, and 34 are pending.
Regarding the rejections of Claim(s) 1-5, 7-9, 11, 12, 14, 16, 17, and 22 under 35 U.S.C. 103 as being unpatentable over KUWANA et al. (US 2018/0361326 A1) in view of SAVU et al. (EP 1,311,637 B1), Applicant’s amendments are unpersuasive.
Response to Arguments
Applicant’s arguments filed 08 June 2026 have been fully considered. Two main arguments are submitted.
First, Applicant argues that each feature of Claim 1 as amended is taught or suggested by KUWANA or SAVU (pg. 6-10), specifically that “the cited documents do not teach or suggest at least the air permeable porous filtration medium having an air permeability of at least 3.7 cm/min at 124.5 Pa” (pg. 6, bottom).
Applicant states that the prior Advisory Action dated 19 May 2026 identified an overlap between polymer materials listed for KUWANA’s alignment film and the claimed polymer materials for the air permeable porous filtration medium; however, Applicant argues “The asserted material overlap concerns materials identified for different components having different described roles, namely Kuwana' s alignment film and the air permeable porous filtration medium recited in amended claim 1. Material overlap does not establish measured air permeability” (pg. 7, par. 2) and further that “the material correspondence asserted in the Advisory Action does not establish that Kuwana's alignment film, which the Advisory Action treats as corresponding to the claimed porous filtration medium, teaches or suggests the newly recited air permeability of at least 3.7 cm/min at 124.5 Pa differential pressure” (pg. 8, top) because KUWANA recognizes that compact and porous characteristics are not determined by material identity alone but depend on layer configuration and processing, i.e., physical structure and processing affects whether a layer is compact or porous (pg. 7, bottom), much like the pending application characterizing “the porous filtration medium by porous structure and definable performance characteristics, including pore size and Frazier air permeability. See Specification as filed at page 6, lines 24-31” (pg. 8, top).
Applicant further disagrees with the Advisory Action invoking In re Crish: “the principle cited from In re Crish does not resolve the issue presented by amended claim 1. Amended claim 1 recites an air permeable porous filtration medium having a measured air permeability of at least 3.7 cm/min at 124.5 Pa differential pressure. The cited material overlap for Kuwana's alignment film does not establish the recited measured air permeability, particularly in view of the disclosure of Kuwana recognizing that compact and porous characteristics depend on layer configuration and processing” (pg. 8, par. 1).
Applicant further argues “the pending application further confirms that the recited air-permeability feature concerns porous structure, not polymer identity alone” highlighting disclosures from the instant Specification (pg. 8, par. 2), i.e., “the pending application therefore characterizes the porous filtration medium as a porous structure having definable performance characteristics” (pg. 9, top).
Finally, Applicant further argues that “any air permeability of Kuwana's gas-permeable substrate does not establish that Kuwana 's alignment film has the air permeability recited in amended claim 1. The cited disclosures of Kuwana do not teach or suggest that Kuwana' s alignment film has an air permeability of at least 3. 7 cm/min at 124.5 Pa differential pressure” (pg. 9, par. 2).
Second, Applicant argues that the recited oleophobicity feature is not product-by-process language (pg. 10-13), specifically that “characterizing the oleophobicity feature as product-by-process language is erroneous” and that “[t]he recited feature identifies as a property of the treated porous filtration medium. The recited feature does not describe any process by which the article is made” (pg. 11, par. 1).
Applicant further argues that “the burden-shifting analysis in the Advisory Action is unsupported” (pg. 12, par. 1) stating that “the cited documents must teach or suggest the feature, or the record must support that the feature is necessarily present in the article alleged to be taught or suggested” (pg. 12, par. 2). Applicant continues stating that “[t]he Examiner has not shown that the cited disclosures establish the alleged article structure necessarily has an oleophobicity” as claimed (pg. 12, par. 2).
Regarding the first argument, the Examiner respectfully disagrees.
It is agreed that air permeability is a membrane property that is likely dependent not only on filter composition, but also on filter structure, e.g., porosity. While it is appreciated that Applicant has included such details in the specification, Claim 1 only requires an air permeable porous filtration medium—and nothing more. Claim 1 does not identify any specificity as to the composition or makeup of the porous filtration medium (i.e., no “material identity” as argued; it is noted that Claims 2 and 16 do recite composition) and does not claim layer configuration or processing, e.g., pore size as argued. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Because the prior art discloses the alignment film includes the compositions of the porous filtration medium recited in Claims 2 and 16, and further discloses that the formed gas-selective permeable membrane of which the alignment film is a part thereof is gas permeable and its separate components (i.e., including the alignment film) do not detract from this gas permeability (p0270), the prior art has taught or suggested that the alignment film is gas permeable. Therefore, the taught alignment film is considered to have air permeability. While KUWANA is silent on the as-amended air permeability of 3.7 cm/min at 124.5 Pa differential pressure, because KUWANA teaches all claimed composition (i.e., simply an “air permeable porous filtration medium”) and structure (i.e., none), such a claimed air permeability is necessarily present unless shown otherwise by the Applicant. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). If Applicant wishes to differentiate the claimed porous filtration medium from the prior art-disclosed alignment film, then such limitations that define the structure (e.g., porosity) of the porous filtration medium directly affecting the air permeability should be claimed.
Regarding the second argument, the Examiner agrees in part.
It is agreed that the recited oleophobicity feature is not product-by-process language. However, as admitted by Applicant, the cited oleophobicity is a property of the treated porous filtration medium. Because the prior art discloses or makes obvious all elements of the treated porous filtration medium, such a property of oleophobicity is necessarily present even if not explicitly disclosed by the prior art. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
Claim Interpretation
The limitations of Claims 3-5, 7-9, and 11 are wholly directed toward a process by which the claimed article of Claim 1 is produced and thus, are considered product-by-process limitations and are not given patentable weight.
Previously it has been held that product-by-process limitations are not given patentable weight because patentability is based on the product—as opposed to the manner in which the product is made. In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”).
Although these claims are product-by-process claims and are limited by and defined by their processes, the determination of patentability is based on the product itself, not on the method of production. Thus, these process limitations do not further limit the claimed product.
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.
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.
Claim(s) 1-5, 7-9, 11, 12, 14, 16, 17, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over KUWANA et al. (US 2018/0361326 A1) in view of SAVU et al. (EP 1,311,637 B1).
Regarding Claims 1 and 17, KUWANA discloses a gas-selective permeable membrane that has gas permeability and comprises at least one or more polymerizable compounds and a laminate including a gas-permeable substrate (p0023-0025; abstract).
The gas-selective permeable membrane contains a polymerizable monomer (p0246) including 2,2,3,3,4,4,4-heptafluorobutyl (meth)acrylate (i.e., the fluoropolymer comprising poly(2,2,3,3,4,4,4-heptafluorobutyl methacrylate) or poly(2,2,3,3,4,4,4-heptafluorobutyl acrylate) or a combination thereof; p0247). The permeable membrane/laminate comprises the polymerizable monomer laminated on a gas-permeable substrate utilizing an alignment film (i.e., a fluoropolymer… disposed on the porous filtration medium forming a treated porous filtration medium; p0254); said alignment film includes material such as polyamide, polycarbonate, polystyrene, and polyether sulfone (p0248-0249). The alignment film is formed on the underlying gas-permeable substrate and enables the polymerizable composition to be properly secured to the substrate (p0262). The gas-permeable substrate includes polyethylene, polypropylene, nylons, and polystyrenes (p0256).
While KUWANA is deficient in explicitly disclosing the taught alignment film is air permeable as claimed or even that the alignment film has an air permeability of at least 3.7 cm/min at 124.5 Pa differential pressure, it is noted that KUWANA does disclose the produced permeable membrane encompassing the substrate, the laminated polymer compound, the alignment film, and the gas permeable substrate retains its gas permeability and gas selectivity and even further, none of its individual layers (including the alignment film) detracts from this gas permeability and gas selectivity (p0270). Thus, although KUWANA is deficient in explicitly disclosing an air permeable property to the alignment film, the alignment film is considered to be gas permeable and at least have this air permeable property.
Finally, while KUWANA is silent on the as-amended air permeability of 3.7 cm/min at 124.5 Pa differential pressure, because KUWANA teaches or suggests all claimed composition (i.e., simply an “air permeable porous filtration medium”) and structure (i.e., none), such a claimed air permeability is necessarily present unless shown otherwise by the Applicant. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
KUWANA is deficient in disclosing that the polymer formed from the polymerizable monomer (i.e., the instantly claimed fluoropolymer) has at least 3 kDa number average molecular weight (Mn).
SAVU discloses methods of polymerizing fluoroalkyl (meth)acrylate coating compositions as barriers and coatings (p0001). In exemplary embodiments, SAVU discloses high molecular weight 2,2,3,3,4,4,4-heptafluorobuyl methacrylate Mn of 10,400 and 6,180 (Fluoropolymers 8 and 9, respectively, p0057-0060), which read upon the claimed range of at least 3 kDa number average molecular weight. Advantageously, such polymerization allows for the production of resultant coatings at lower cost per weight basis (p0008) in addition to improving the adhesion of the coating to various substrates (p0009). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to polymerize the 2,2,3,3,4,4,4-heptafluorobutyl (meth)acrylate monomer in a gas-selective membrane taught by KUWANA to yield a polymer having at least 3 kDa number average molecular weight as taught by SAVU.
The limitations “the treated porous filtration medium having an oleophobicity of at least 1 on at least one major surface, as determined by AATCC test method 118, wherein oleophobicity ratings are rounded to nearest integer value” (Claim 1) and “wherein the treated porous filtration medium has an oleophobicity of 2 or higher on at least one major surface” (Claim 17) are directed toward properties inherent or necessarily present in the claimed treated porous filtration medium. As further admitted by Applicant in the Remarks filed 08 June 2026 on pg. 11, par. 1, the cited oleophobicity is a property of the treated porous filtration medium. Because the prior art discloses or makes obvious all elements of the treated porous filtration medium, such a property of oleophobicity is necessarily present even if not explicitly disclosed by the prior art. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). Additionally, this limitation is not being given patentable weight because the patentability of the instant claim is determined based on the product itself—as opposed to, say, the explicit instruments or equipment by which the product is characterized, e.g., via AATTCC test method 118 (In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); MPEP §2113).
Regarding Claim 2, modified KUWANA makes obvious the article of Claim 1. KUWANA further discloses the alignment film includes material such as polyamide, polycarbonate, polystyrene, and polyether sulfone (i.e., wherein the porous filtration medium comprises expanded polytetrafluoroethylene (ePTFE), polyurethane, polypropylene, polyethylene, polyether sulfone, polyvinylidene fluoride, polycarbonate, polyolefin, polyamide, polyester, polysulfone, polyether, acrylic polymers, methacrylic polymers, polystyrene, a cellulosic polymer, or glass, or a combination thereof; p0248-0249).
Regarding Claims 3-5, 7-9, and 11, modified KUWANA makes obvious the article of Claim 1. The limitations of Claims 3-5, 7-9, and 11 are wholly directed toward a process by which the claimed article of Claim 1 is produced and thus, are considered product-by-process limitations and are not given patentable weight.
Previously it has been held that product-by-process limitations are not given patentable weight because patentability is based on the product—as opposed to the manner in which the product is made. In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”).
Although these claims are product-by-process claims and are limited by and defined by their processes, the determination of patentability is based on the product itself, not on the method of production. Thus, these process limitations do not further limit the claimed product.
Regarding Claim 12, modified KUWANA makes obvious the article of Claim 1. SAVU discloses high molecular weight 2,2,3,3,4,4,4-heptafluorobuyl methacrylate Mn of 10,400 and 6,180 (Fluoropolymers 8 and 9, respectively, p0057-0060), which read upon the claimed range of at least 5 kDa number average molecular weight.
Regarding Claims 14 and 16, modified KUWANA makes obvious the article of Claim 14. KUWANA further discloses the gas-permeable substrate includes polyethylene, polypropylene, nylons, and polystyrenes (i.e., wherein the article further comprises a support layer comprising polymeric material (Claim 14); wherein the polymeric material comprises polypropylene, polyethylene, polyester, or nylon, or a combination thereof (Claim 16); p0256).
Regarding Claim 22¸ modified KUWANA makes obvious the article of Claim 1. The limitation “wherein the article is suitable for use as a biphasic separator” is directed toward an intended use of the claimed article and therefore, holds no patentable weight. If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
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