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.
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 (i.e., an air permeable porous filtration medium; 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).
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 in the claimed treated porous filtration medium. The discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel (In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368, Fed. Cir. 2004; MPEP §2112 I). Even further, such a limitation is directed toward a product-by-process limitation; the manner by which the oleophobicity of the treated porous filtration medium is measured is considered to be product-by-process language: e.g., because it describes how said oleophobicity is measured. 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 (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).
Response to Amendments/Arguments
Applicant’s amendments filed 29 October 2025 have been fully considered.
Regarding the rejection of Claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form, Applicant’s amendments are persuasive; this rejection has been withdrawn.
Regarding the rejections of Claim(s) 1-5, 7-9, 11, 14, 17, and 22 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by LALGUDI et al. (US 2019/0271110 A1), Applicant’s amendments are persuasive; these rejections have been withdrawn. However, upon further consideration and search, new grounds of rejection have been made for 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 arguments filed 29 October 2025 have been fully considered.
Regarding the rejection of Claim 1 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by LALGUDI et al. (US 2019/0271110 A1), Applicant argues: “Applicant respectfully asserts that Lalgudi does not teach an air permeable porous filtration medium” (pg. 7, bottom); and “Lalgudi provides no teaching or suggestion for selecting the claimed fluoropolymers” (pg. 9-12). Regarding the rejection of Claim 12 under 35 U.S.C. 103 as being obvious over LALGUDI, Applicant argues “Lalgudi provides no teaching regarding molecular weight of the fluoropolymer. Lalgudi does not disclose any molecular weight values, does not identify molecular weight as a relevant parameter, and does not suggest any particular molecular weight range” (pg. 12). Regarding the rejection of Claim 16 under 35 U.S.C. 103 as being obvious over LALGUDI, Applicant argues “Applicant respectfully traverses this official notice and asserts that even if some clothing contains polyester or nylon, this does not establish that Lalgudi teaches or suggests using these materials for air permeable porous filtration mediums” (pg. 14). For these reasons, Applicant requests withdrawal of all rejections.
Applicant’s arguments have been considered but are not persuasive because they are directed to grounds of rejection that have been withdrawn. Therefore, the arguments are not commensurate in scope with the presently pending claims.
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 RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ryan B Huang/Primary Examiner, Art Unit 1777