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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/28/2026 has been entered.
Response to Amendment
The Amendment filed 5/28/2026 has been entered and fully considered.
Claims 1,2,3,4,5,6,7,8,9,10,11,12 are pending and fully considered, of which claim 12 was new.
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, 3, 5, 6, 9, 10, 11,12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-94717 (herein known as SUZUKI).
With regard to claim 1, SUZUKI sufficiently teaches an air filter medium comprising (as follows, and), especially at abstract
a porous polytetratluoroethylenc (PTFE; fluorine resin) membrane, especially at claim 1
a collection layer 30 (pre-filter), especially at cl. 1, Fig. 1-2, par. [0054]-[0062], [0084]
an air-permeable adhesive layer 20, 21, 22, especially at cl. 1, Fig. 1-2, par. [0054]-[0062], [0084]
an air-permeable supporting layer 12 (breathable fiber layer), especially at cl. 1, Fig. 1-2, par. 13,54-62, 84
wherein the collection layer, the air-permeable adhesive layer, the air-permeable supporting layer, and the porous fluorine resin membrane are placed in this order from upstream to downstream of the air filter medium (as shown) capable of allow an air flow to pass through the air filter medium, especially at cl. 1, Fig. 1-2, par. 13,54-62, 84
the collection layer 30 (pre-filter) is formed of a fibrous material having an average fiber diameter within the claimed range, especially at cl. 1, Fig. 1-2, para 54 among others such as par. 13,17,54-62, 84
the air-permeable adhesive layer has a grammage within the claimed range, especially at cl. 1, Fig. 1-2, para 61 among others such as, par. 13,17,54-62, 84
and is formed of a fibrous adhesive, especially at cl. 1, Fig. 1-2, para 41,42 among others such as, par. 13,17,54-62, 84
the air-permeable supporting layer is formed of a fibrous material having an average fiber diameter within the claimed range, especially at Fig. 1-2, cl. 1 among others such as, par. 13,17,54-62, 84
SUZUKI does not specifically teach the air-permeable adhesive layer has a hot-melt adhesive
But, SUZUKI sufficiently teaches an adhesive layer with hot-melt adhesive as an alternative to thermal bonding, especially at cl. 1, Fig. 1-2, para 41,42,50 among others such as, par. 13,17,54-62, 84
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide hot melt adhesive of SUZUKI rather than thermal bonding, because SUZUKI sufficiently teaches these two structures were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found obvious to substitute the thermal bonding for hot melt adhesive
With regard to claim 3, SUZUKI sufficiently teaches
wherein the air-permeable supporting layer has a grammage within the claimed range, especially at para 36 among others such as Fig. 1-2, cl. 1, par. 13,17,54-62, 84
With regard to claim 5, SUZUKI sufficiently teaches
an additional air-permeable supporting layer (second 12, breathable fiber layer) placed on a downstream side in a direction of the air flow with respect to the porous fluorine resin membrane (as shown), especially at cl. 1, Fig. 1-2, par. 13,54-62, 84
With regard to claim 6, SUZUKI sufficiently teaches
wherein the porous fluorine resin membrane is a porous polytetrafluoroethylene (PTFE) membrane, especially at cl. 1, Fig. 1-2, par. [0054]-[0062], [0084]
With regard to claim 9, SUZUKI sufficiently teaches a filter pleat pack comprising an air filter medium folded into pleats, especially at para 9 among others such as Fig. 1-2, cl. 1, par. 13,17,54-62, 84
wherein the air filter medium is the air filter medium according to claim 1 (see discussion of claim 1, and), especially at Fig. 1-2, cl. 1, par. 13,17,54-62, 84
With regard to claim 10, SUZUKI sufficiently teaches an air filter unit comprising an air filter medium, especially at Fig. 1-2, cl. 1, par. 13,17,54-62, 84
wherein the air filter medium is the air filter medium according to claim 1 (see discussion of claim 1, and), especially at Fig. 1-2, cl. 1, par. 13,17,54-62, 84
With regard to claim 11, SUZUKI sufficiently teaches an air filter unit comprising a filter pleat pack, especially at para 9 among others such as Fig. 1-2, cl. 1, par. 13,17,54-62, 84
wherein the filter pleat pack is the filter pleat pack according to claim 9 (see discussion of claim 9, and), especially at Fig. 1-2, cl. 1, par. 13,17,54-62, 84
With regard to claim 12, SUZUKI does not specifically teach wherein a thickness of the airpermeable adhesive layer is in a range of 5.5 μm to 16 μm
But, SUZUKI sufficiently teaches an air permeable adhesive layer has a thickness of 20 μm, especially at claim 3, para 44
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to modify air permeable adhesive layer thickness of SUZUKI within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (MPEP 2144.05 PART II-A)
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-94717 (herein known as SUZUKI)
With regard to claim 2, SUZUKI sufficiently teaches wherein the fibrous material includes a glass fiber, especially at para 2
SUZUKI does not specifically teach wherein the fibrous material of the collection layer includes a glass fiber;
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide the collection layer of SUZUKI with the fibrous material includes a glass fiber of SUZUKI for the benefit of fulfill the material need of the collection layer; otherwise, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (MPEP 2144.07); otherwise, it is prima facie obvious to combine two or more materials disclosed by the prior art to form a third material that is to be used for the same purpose (MPEP 2144.06 PART I); otherwise, because the substitution of one type of filter material for another that are both used for the same purpose (i.e. air filter) would be well within the scope of the skilled artisan. (See MPEP 2141 III,B)
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over
JP 2013-94717 (herein known as SUZUKI) in view of US 20140165517 (herein known as HARA)
With regard to claim 4, SUZUKI does not specifically teach wherein the porous fluorine resin membrane has an average fiber diameter of 0.2 µm or less.
But, HARA sufficiently teaches wherein the porous fluorine resin membrane has an average fiber diameter within the claimed range, especially at para 47
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide SUZUKI with wherein the porous fluorine resin membrane has an average fiber diameter within the claimed range of HARA for the benefit of an average fiber diameter for the benefit of high dust collection efficiency, as sufficiently taught by HARA, especially at abstract, para 2,47
Claim(s) 7, 8 is/are rejected under 35 U.S.C. 103 as obvious over JP 2013-94717 (herein known as SUZUKI).
With regard to instant claim(s) 7, SUZUKI does not specifically state a property of
wherein when polyalphaolefin particles are allowed to pass through the air filter medium at a concentration of 0.2 to 0.5 g/m3 and
a linear velocity of 5.3 cm/sec and
a variation of a pressure drop of the air filter medium is measured,
an amount of the polyalphaolefin particles having been collected by the air filter medium is 60 g/m2 or more at a moment when the pressure drop reaches 500 Pa,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm.
But, SUZUKI teaches the air filter medium according to claim 1 (as already discussed herein, respectively) which as the claimed property.
Thus, the claimed property of ‘the air filter medium,’ is taken to be necessarily present in the air filter medium of SUZUKI, since products of identical or substantially identical chemical structure or composition cannot have mutually exclusive properties. (See MPEP 2112.01 Parts I-II)
MPEP 2112.01 Part I states…
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
MPEP 2112.01 PART II states…
“Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
In an alternative, assuming that it was determined that SUZUKI does not sufficiently teach a property of
wherein when polyalphaolefin particles are allowed to pass through the air filter medium at a concentration of 0.2 to 0.5 g/m3 and
a linear velocity of 5.3 cm/sec and
a variation of a pressure drop of the air filter medium is measured,
an amount of the polyalphaolefin particles having been collected by the air filter medium is 60 g/m2 or more at a moment when the pressure drop reaches 500 Pa,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the air filter medium of SUZUKI, such that it had the property of
wherein when polyalphaolefin particles are allowed to pass through the air filter medium at a concentration of 0.2 to 0.5 g/m3 and
a linear velocity of 5.3 cm/sec and
a variation of a pressure drop of the air filter medium is measured,
an amount of the polyalphaolefin particles having been collected by the air filter medium is 60 g/m2 or more at a moment when the pressure drop reaches 500 Pa,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm,
since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established
With regard to instant claim(s) 8, SUZUKI does not specifically state a property of
wherein a collection efficiency measured using polyalphaolefin particles under conditions where an evaluation target particle size is 0.1 to 0.2 µm and a permeate flow rate is 5.3 cm/sec is 85% or more,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm.
But, SUZUKI teaches the air filter medium according to claim 1 (as already discussed herein, respectively) which as the claimed property.
Thus, the claimed property of ‘the air filter medium,’ is taken to be necessarily present in the air filter medium of SUZUKI, since products of identical or substantially identical chemical structure or composition cannot have mutually exclusive properties. (See MPEP 2112.01 Parts I-II)
MPEP 2112.01 Part I states…
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
MPEP 2112.01 PART II states…
“Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
In an alternative, assuming that it was determined that SUZUKI does not sufficiently teach a property of
wherein a collection efficiency measured using polyalphaolefin particles under conditions where an evaluation target particle size is 0.1 to 0.2 µm and a permeate flow rate is 5.3 cm/sec is 85% or more,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the air filter medium of SUZUKI, such that it had the property of
wherein a collection efficiency measured using polyalphaolefin particles under conditions where an evaluation target particle size is 0.1 to 0.2 µm and a permeate flow rate is 5.3 cm/sec is 85% or more,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm,
since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established
In an alternative, Claim(s) 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-94717 (herein known as SUZUKI) in view of JP 2019-58903 (see US 20200230536 for translation; herein known as HORIE)
With regard to claim 7, SUZUKI does not specifically teach a property of (later referred to herein ‘polyalphaolefin particles property’ of claim 7)
wherein when polyalphaolefin particles are allowed to pass through the air filter medium at a concentration of 0.2 to 0.5 g/m3 and
a linear velocity of 5.3 cm/sec and
a variation of a pressure drop of the air filter medium is measured,
an amount of the polyalphaolefin particles having been collected by the air filter medium is 60 g/m2 or more at a moment when the pressure drop reaches 500 Pa,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm.
But, HORIE sufficiently teaches an air filter medium with the property polyalphaolefin particles are allowed to pass through the air filter medium at a concentration of "4 x 108 particles/L or more" , especially at para 47 among para 43-47; and para 26 of the instant specification admits that "4 x 108 particles/L or more" is within the claimed "a concentration of 0.2 to 0.5 g/m3"
HORIE sufficiently teaches a flow rate (linear velocity) of 5.3 cm/sec , especially at para 43 a flow rate (linear velocity) of 5.3 cm/sec
HORIE sufficiently teaches a variation of a pressure loss (drop) of the air filter medium is measured , especially at para 44, among such as para 43 a variation of a pressure loss (drop) of the air filter medium is measured
HORIE sufficiently teaches a collection efficiency of the polyalphaolefin particles having been collected by the air filter medium is 90% or more at pressure drop of 400 Pa , especially at para 43-46; and instant claim 8 admits "wherein a collection efficiency measured using polyalphaolefin particles under conditions where an evaluation target particle size is 0.1 to 0.2 µm and a permeate flow rate is 5.3 cm/sec is 85% or more" is within the claimed range of "an amount of the polyalphaolefin particles having been collected by the air filter medium is 60 g/m2 or more at a moment when the pressure drop reaches 500 Pa" a collection efficiencyt of the polyalphaolefin particles having been collected by the air filter medium is 90% or more at pressure drop of 400 Pa
HORIE sufficiently teaches the polyalphaolefin particles being polydisperse particles having range of 0.1 to 0.2 µm (is taken within the range of a peak in number in a particle size range of 0.1 to 0.2 µm) , especially at para 43-46 the polyalphaolefin particles being polydisperse particles having range of 0.1 to 0.2 µm (is taken within the range of a peak in number in a particle size range of 0.1 to 0.2 µm)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to optimize air filter of SUZUKI with polyalphaolefin particles property of HORIE within the claimed range, for the benefit of sufficient collection efficiency; in an alternative, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (MPEP 2144.05 PART II-A)
With regard to claim 8, SUZUKI does not specifically teach a property of (later referred to herein ‘polyalphaolefin particles property’ of claim 8) wherein a collection efficiency measured using polyalphaolefin particles under conditions where an evaluation target particle size is 0.1 to 0.2 µm and a permeate flow rate is 5.3 cm/sec is 85% or more,
the polyalphaolefin particles being polydisperse particles having a peak in number in a particle size range of 0.1 to 0.2 µm.
But, HORIE sufficiently teaches wherein a collection efficiency measured using polyalphaolefin particles under conditions where an evaluation target particle size is 0.1 to 0.2 µm and a permeate flow rate is 5.3 cm/sec is within the claimed range , especially at para 38, 43-46
HORIE sufficiently teaches the polyalphaolefin particles being polydisperse particles having range of 0.1 to 0.2 µm (is taken within the range of a peak in number in a particle size range of 0.1 to 0.2 µm) , especially at para 43-46 the polyalphaolefin particles being polydisperse particles having range of 0.1 to 0.2 µm (is taken within the range of a peak in number in a particle size range of 0.1 to 0.2 µm)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to optimize air filter of SUZUKI with polyalphaolefin particles property of HORIE within the claimed range, for the benefit of sufficient collection efficiency; in an alternative, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (MPEP 2144.05 PART II-A)
Response to Arguments
Applicant's arguments filed 5/28/2026 have been fully considered but they are not persuasive.
Applicant argues at page(s) 5, particularly “By the present amendment, new dependent claim 12 is added. Claims 1-12 are currently pending. Applicant respectfully requests reconsideration of the rejections, and allowance of the pending claims in the present application."
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to following argument(s), which the Applicant is invited to see following rebuttal(s), respectively.
Applicant argues at page(s) 5, particularly “Applicant respectfully traverses the rejections."
page(s) 5, particularly “1 This appears to be an inadvertent carryover from the previously Office Action. That is, since claim 1 is rejected under 35 U.S.C. 103, claims 7 and 8, which depend on claim 1, cannot possibly be anticipated by SUZUKI. It is presumed that the Official Action intends here to reject claims 7 and 8 as obvious over SUZUKI alone.
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to following argument(s), which the Applicant is invited to see following rebuttal(s), respectively.
Applicant argues at page(s) 6, particularly “Applicant respectfully disagrees. Present claim 1 requires an air-permeable adhesive layer made of a fibrous hot-melt adhesive."
page(s) 6, particularly “have resulted in an air filter material that was prone to clogging during use". See para. [0079].
page(s) 7, particularly “Emphasis Added.
page(s) 6, particularly “SUZUKI explains that "[i]n Comparative Example 1, the pre-filter layer and the filter
page(s) 6, particularly “layer were integrated using a hot-melt adhesive instead of an adhesive layer, which is thought to
In response, respectfully, the Examiner does not find the argument persuasive. With regard to claim 1, SUZUKI sufficiently teaches an air filter medium comprising (as follows, and), especially at abstract
a porous polytetratluoroethylenc (PTFE; fluorine resin) membrane, especially at claim 1
a collection layer 30 (pre-filter), especially at cl. 1, Fig. 1-2, par. [0054]-[0062], [0084]
an air-permeable adhesive layer 20, 21, 22, especially at cl. 1, Fig. 1-2, par. [0054]-[0062], [0084]
an air-permeable supporting layer 12 (breathable fiber layer), especially at cl. 1, Fig. 1-2, par. 13,54-62, 84
wherein the collection layer, the air-permeable adhesive layer, the air-permeable supporting layer, and the porous fluorine resin membrane are placed in this order from upstream to downstream of the air filter medium (as shown) capable of allow an air flow to pass through the air filter medium, especially at cl. 1, Fig. 1-2, par. 13,54-62, 84
the collection layer 30 (pre-filter) is formed of a fibrous material having an average fiber diameter within the claimed range, especially at cl. 1, Fig. 1-2, para 54 among others such as par. 13,17,54-62, 84
the air-permeable adhesive layer has a grammage within the claimed range, especially at cl. 1, Fig. 1-2, para 61 among others such as, par. 13,17,54-62, 84
and is formed of a fibrous adhesive, especially at cl. 1, Fig. 1-2, para 41,42 among others such as, par. 13,17,54-62, 84
the air-permeable supporting layer is formed of a fibrous material having an average fiber diameter within the claimed range, especially at Fig. 1-2, cl. 1 among others such as, par. 13,17,54-62, 84
SUZUKI does not specifically teach the air-permeable adhesive layer has a hot-melt adhesive
But, SUZUKI sufficiently teaches an adhesive layer with hot-melt adhesive as an alternative to thermal bonding, especially at cl. 1, Fig. 1-2, para 41,42,50 among others such as, par. 13,17,54-62, 84
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide hot melt adhesive of SUZUKI rather than thermal bonding, because SUZUKI sufficiently teaches these two structures were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found obvious to substitute the thermal bonding for hot melt adhesive
Applicant argues at page(s) 7, particularly “Moreover, SUZUKI explains that "[t]ypically, methods for integrating two layers include overlapping them so that they are in contact with each other and then melting the surfaces of"
page(s) 7, particularly “integrated via an adhesive layer 20 which is a fiber layer with a basis weight of 5 to 10
page(s) 7, particularly “pre-filter layer 30". See paras. [0042] and [0043]. Emphasis Added.
page(s) 7, particularly “further that "[i]n contrast, in this embodiment, the filter layer 10 and the pre-filter layer 30 are
page(s) 7, particularly “adhesive, the adhesive being a hot-melt adhesive, as encompassed by claim 1, is improper and should be withdrawn.
page(s) 7, particularly “both layers with heat, or applying an adhesive such as hot melt between the two layers" and
page(s) 7, particularly “In other words, SUZUKI discloses a fibrous adhesive used in place of a conventional hot-melt adhesive. SUZUKI in no way suggests that the fibrous adhesive could be modified with a hot-melt adhesive. Therefore, the assertion that SUZUKI renders obvious the feature of the air-permeable adhesive layer, having a grammage of 5.5 g/m2 or more and formed of a fibrous
page(s) 7, particularly “g/m<sup>2</sup>, making it less likely for clogging to occur between the filter layer 10 and the
In response, respectfully, the Examiner does not find the argument persuasive. MPEP 2123 I, A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Also, the Applicant has not shown a “lack of a reasonable expectation of success.” MPEP 2145
Applicant argues at page(s) 7, particularly “Furthermore, the remaining references do not disclose anything that can reasonably be considered to supply this deficiency in SUZUKI."
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
Applicant argues at page(s) 7, particularly “Moreover, it should be appreciated that the present claimed features are advantageous at least because "an air filter medium suitable for reducing a pressure drop increase even in an"
page(s) 7, particularly “environment including liquid particles such as oil mist" is obtained. See the abstract of the
page(s) 7, particularly “present disclosure.
In response, respectfully, the Examiner does not find the argument persuasive. Prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art. (MPEP 2145 PART II)
Something which is old does not become patentable upon the dis-covery of a new property (MPEP 2112 -I)
Applicant argues at page(s) 7, particularly “Additionally, according to SUZUKI, thermal bonding such as infrared lamination or"
page(s) 7, particularly “thermal roll nipping is required to join the pre-filter layer 30 and the filter layer 10 using the
page(s) 8, particularly “adhesive layer 20 (para. 0051). In contrast, the present claimed air filter medium is advantageous in that the joining of layers using the claimed air-permeable adhesive layer can be performed, for example, by simple press lamination (para. 0114). It should be appreciated that the ability to omit thermal bonding reduces the occurrence of ventilation obstruction caused by thermal melting of materials included in the layers to be joined.
In response, respectfully, the Examiner does not find the argument persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Also, the Applicant has not shown a “lack of a reasonable expectation of success.” MPEP 2145
Applicant argues at page(s) 8, particularly “Therefore, Applicant submits that SUZUKI, alone or in any properly reasoned combination, fails to disclose an air filter medium comprising a porous fluorine resin membrane, the air filter medium further comprising: a collection layer; an air-permeable adhesive layer; and an air-permeable supporting layer, wherein the collection layer, the air-permeable adhesive layer, the air-permeable supporting layer, and the porous fluorine resin membrane are placed in this order from upstream to downstream of the air filter medium configured to allow an air flow to pass through the air filter medium, the collection layer is formed of a fibrous material having an average fiber diameter of 5 µm or less, the air-permeable adhesive layer has a grammage of 5.5 g/m2 or more and is formed of a fibrous adhesive, wherein the adhesive is a hot-melt adhesive, and the air-permeable supporting layer is formed of a fibrous material having an average fiber diameter of more than 5 µm, as recited in claim 1."
page(s) 8, particularly “Accordingly, for at least the reasons discussed supra, Applicant submits that the rejections under 35 U.S.C. 103 are improper and should be withdrawn.
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
Applicant argues at page(s) 8, particularly “The air filter medium according to claim 1, wherein a thickness of the air-permeable adhesive layer is in a range of 5.5 µm to 16 µm."
page(s) 9, particularly “In contrast, SUZUKI discloses that "[t]he thickness of the adhesive layer 20 is, for example, 30 to 70 µm". See para. [0044]. In this regard, the thickness of the alleged air-permeable adhesive layer in SUZUKI is much larger than that of the present claimed disclosure.
In response, respectfully, the Examiner does not find the argument persuasive. With regard to claim 12, SUZUKI does not specifically teach wherein a thickness of the airpermeable adhesive layer is in a range of 5.5 μm to 16 μm
But, SUZUKI sufficiently teaches an air permeable adhesive layer has a thickness of 20 μm, especially at claim 3, para 44
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to modify air permeable adhesive layer thickness of SUZUKI within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (MPEP 2144.05 PART II-A)
Applicant argues at page(s) 9, particularly “As discussed supra, among other things, it should be appreciated that the present claimed features are advantageous at least because an air filter medium suitable for reducing a pressure drop increase even in an environment including liquid particles such as oil mist is obtained."
page(s) 9, particularly “Accordingly, Applicant submits that claim 12 is also patentable over the applied references.
In response, respectfully, the Examiner does not find the argument persuasive. MPEP 2123 I, A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Also, the Applicant has not shown a “lack of a reasonable expectation of success.” MPEP 2145
Applicant argues at page(s) 9, particularly “In view of the amendments and remarks herein, Applicant submits that independent claim 1 is in condition for allowance, for reasons discussed supra. Regarding dependent claims 2-12, Applicant submits that these claims are allowable on their own merit, as well as because of their dependency from claim 1, which is allowable for reasons discussed supra."
page(s) 9, particularly “Thus, it is respectfully submitted that the claims in the present application are clearly patentable over the reference(s) cited by the Examiner, either alone or in combination, and an indication to such effect is respectfully requested, in due course.
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
Applicant argues at page(s) 10, particularly “Applicant submits that the present application is in condition for allowance, and respectfully requests an indication to that effect. Applicant has demonstrated the allowability of the claims. Accordingly, reconsideration of the outstanding Official Action and allowance of the present application and the claims therein are respectfully requested and is now believed to be appropriate."
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY R SHUMATE whose telephone number is (571)270-5546. The examiner can normally be reached on M,T,Th,F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached on (571)272-0475. 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.
/ANTHONY SHUMATE/
Primary Examiner, Art Unit 1776
Prosecution Insights