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 Objections
Claim 14 recites:
14. A ventilation and/or air conditioning apparatus comprising the air filter according to claims 1 for filtering air passing through the apparatus. Emphasis added.
Claim 14 should read:
14. A ventilation and/or air conditioning apparatus comprising the air filter according to claim 1 for filtering air passing through the apparatus.
Appropriate action is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1–16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites:
1. An air filter for preventing transmission of infections, comprising:
an air-permeable filter body;
an active ingredient comprising a plurality of particles having a core of metallic copper with an electrically conductive coating, as a film enclosing the core, comprising silver; and
a binder for binding the active ingredient to the air-permeable filter body;
wherein the core of metallic copper has a diameter of at least 5 micrometers. Underlining from Applicant; Emphasis added.
The specification fails to provide written description support for the entire claimed range of a diameter of at least 5 micrometers. This range includes diameters well above 5 micrometers, such as 200 micrometers. But the specification says that the core may have a diameter of 1 to 100 micrometers, or 5 to 50 micrometers, without including sizes above 100 micrometers. See Spec. p. 7, ll. 3–17. Therefore, the limitation of—“wherein the core of metallic copper has a diameter of at least 5 micrometers”—fails the written description requirement of 35 U.S.C. 112(a). To overcome this rejection, claim 1 could be amended to read:
1. An air filter for preventing transmission of infections, comprising:
an air-permeable filter body;
an active ingredient comprising a plurality of particles having a core of metallic copper with an electrically conductive coating, as a film enclosing the core, comprising silver; and
a binder for binding the active ingredient to the air-permeable filter body;
wherein the core of metallic copper has a diameter of to 100 micrometers.
Claims 2–16 are rejected under 35 U.S.C. 112(a) for lacking written description because they depend from claim 1.
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 1–8 and 12–14 are rejected under 35 U.S.C. 103 as being unpatentable over Skiba et al., US 2021/0321696 A1 in view of Ida et al., US 2017/0252801 A1.
Regarding claim 1, Skiba teaches an air filter comprising a fabric material. See Skiba [0002], [0010]. The air filter reads on the claimed “air filter.”
The fabric material reads on the “air-permeable filter body.” See Skiba [0010].
The fabric material comprises copper particles. See Skiba [0017]. The copper particles read on the “active ingredient.”
The air filter also comprises a binder (the “binder”) for binding metal particles (i.e., the copper particles) to the fabric. See Skiba [0042].
Skiba differs from claim 1 because it is silent as to the copper particles having a core of metallic copper with an electrically conductive coating, as a film enclosing the core, comprising silver, where the core has a diameter of at least 5 micrometers, as claimed.
But the copper particles are provided to act as a barrier for airborne pathogens and viruses. See Skiba [0011].
With this in mind, Ida teaches metallic copper particles, where each copper particle comprises a large diameter metallic copper particle (the “core of metallic copper”) with the surface coated with silver (the “film enclosing the core, comprising silver”. See Ida [0069], [0070]. The large diameter metallic copper particle has an average diameter of 0.1 to 100 micrometers. Id. at [0072]. The metallic copper particles can be used as a material for giving antibacterial properties. Id. at [0220]. The metallic copper particles are beneficial because they are relatively easy to produce. Id. at [0010].
It would have been obvious to use the metallic copper particles of Ida as the copper particles of Skiba to use particles that are relatively easy to produce. It also would have been obvious to use the metallic copper particles of Ida as the copper particles of Skiba because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
With this modification, the diameter of the large diameter metallic copper particle of 0.1 to 100 micrometers overlaps with the claimed range of at least 5 micrometers, establishing a prima facie case of obviousness.
Regarding claim 2, Skiba as modified teaches that the fabric (the “filter body”) comprises a threaded mesh, as claimed, because it can be a fibrous mesh. See Skiba [0041].
Regarding claim 3, Skiba as modified teaches that the “active ingredient” comprises 100 percent by weight of the copper particles (as the copper particles are the “active ingredient”), which reads on “at least 90% by weight of the plurality of particles,” as claimed. See Skiba [0011].
Regarding claim 4, Skiba as modified teaches that the copper particles (the “active ingredient”) comprises additional metal particles, which are silver and/or gold particles. See Ida [0149].
Regarding claim 5, Skiba as modified teaches the limitations of claim 4, as explained above.
Skiba as modified differs from claim 5 because Ida is silent as to the weight percentage of gold or silver particles (the “additional particles”). But gold and silver are relatively expensive, and therefore, it would have been obvious for the silver or gold particles to comprise 1 to 10 percent by weight of the copper particles to control costs. See MPEP 2144.05, subsection II (where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation).
Regarding claim 6, Skiba as modified teaches that the plurality of particles are microparticles, as claimed, because they have an average particle diameter of 0.1 to 100 micrometers. See Ida [0072].
Regarding claim 7, Skiba as modified teaches the limitations of claim 1, as explained above.
Skiba as modified differs from claim 7 because Ida is silent as to the thickness of the silver coating on the large diameter metallic copper particles. Therefore, Ida fails to provide enough information to teach the thickness of the coating is less than a micrometer, as claimed. But the silver is described as coating the surface of the metallic copper particles, with the large diameter metallic copper particles having an average diameter of 0.1 to 100 micrometers, and with silver being a relatively expensive material. Therefore, it would have been obvious for the silver coating to be less than a micrometer, as claimed, to control costs and because the large diameter metallic copper particles themselves can be less than a micrometer (meaning the silver coating would also be less than a micrometer). See MPEP 2144.05, subsection II (where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation).
Regarding claim 8, Skiba teaches that the fabric comprises a zinc oxygen battery that produces an electric field within the fabric, which reads on “an electrical connection for directing electric current into the active ingredient.” See Skiba [0035].
Regarding claim 12, Skiba teaches that the copper particles (the “active ingredient”) are provided on one or more outer surfaces of the fabric as a surface application, as claimed, because the metal particles can be printed on the fabric. See Skiba [0040].
Regarding claim 13, Skiba teaches a face mask comprising the air filter according to claim 1 for filtering breathing air. See Skiba Fig. 1, [0032].
Regarding claim 14, Skiba teaches that the air filter can be used in a system comprising an air handler. See Skiba [0052]. The system reads on the “ventilation and/or air conditioning apparatus comprising the air filter” of claim 1 “for filtering air passing through the apparatus.”
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Skiba et al., US 2021/0321696 A1 in view of Ida et al., US 2017/0252801 A1 and in further view of Ahn et al., US 2018/0358144 A1.
Regarding claim 9, Skiba as modified teaches the limitations of claim 1, as explained above.
Skiba as modified differs from claim 9 because it is silent as to the material used as the binder.
But Ahn teaches an adhesive material used to attach metal nanowires to a substrate, where the adhesive is selected from materials such as polymethyl methacrylate (PMMA) and polydopamine. See Ahn [0090]–[0093]. It would have been obvious to use PMMA as the binder of Skiba because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Skiba et al., US 2021/0321696 A1 in view of Ida et al., US 2017/0252801 A1 and in further view of Jaganathan et al., US 2018/0169551 A1.
Regarding claims 10 and 11, Skiba as modified teaches the limitations of claim 1, as explained above.
Skiba as modified differs from claims 10 and 11 because it is silent as to a first air-permeable post-filter positioned against the fabric (the “filter body”) and a second air-permeable post-filter positioned against the fabric, with the fabric being sandwiched between the first and second post-filters.
But Skiba teaches that the air filter can be used as a filter for an air handler. See Skiba [0052]. Also, Jaganathan teaches a filter media 104, useful in HVAC applications, comprising a pre-filter layer 130 on one outer surface of the filter media 104 and an efficiency layer 150 on the other outer surface of the filter media 104, with the pre-filter and efficiency layers 130, 150 sandwiching filter material inside of these two layers. See Jaganathan Fig. 1E, [0110]. The pre-filter layer 130 is beneficial because it provides filtration capabilities before fluid enters the interior of the filter media 104 and the efficiency layer 150 is beneficial because it improves the efficiency of the filter media.
It would have been obvious to sandwich the fabric of Skiba between the pre-filter and efficiency layers of Jaganathan to enhance filtration performance of the air filter of Skiba. With this modification, the pre-filter layer reads on the “first air-permeable post-filter” and the efficiency layer reads on the “second air-permeable post-filter.” With respect to the limitations of the first and second air-permeable post filters being for “mitigating the escape of infection-transmitting micro-organisms from the filter body,” the pre-filter and efficiency filter layers are capable of performing this function because they are layers of filter material enclosing the fabric. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Skiba et al., US 2021/0321696 A1 in view of Ida et al., US 2017/0252801 A1 and in further view of Gopal et al., US 2021/0322908 A1.
Regarding claim 15, Skiba as modified teaches the limitations of claim 1, as explained above.
Skiba as modified differs from claim 15 because it is silent as to a filter roll comprising a plurality of air filters joined together as a chain wherein subsequent air filters are detachable from each other.
But Gopal teaches that the filter material can be produced in bulk in rolls. See Gopal [0031]. It would have been obvious for the fabric of Skiba to be produced in a roll so that is can be manufactured in bulk. With this modification, the roll of fabric comprises a plurality of air filters, because the fabric could be unrolled and then cut (i.e., detached) into sections of filter material. This reads on a “filter roll comprising a plurality of air filters according to claim 1, wherein the plurality of air filters are joined together as a chain where subsequent air filters are detachable from each other.”
Regarding claim 16, Skiba as modified teaches the limitations of claim 15, as explained above.
Skiba as modified differs from claim 16 because it is silent as to the plurality of air filters being HEPA filters. But Skiba teaches that the fabric can be used in a filter useful for an air handling system. See Skiba [0052]. Also, Gopal teaches a filter structure useful as an HVAC filter where the filter structure is HEPA rated. See Gopal [0019]. It would have been obvious for the plurality of air filters in the roll of filter material of Skiba as modified to be HEPA rated to ensure that the air filter has sufficient efficiency when used with an air handler.
Response to Arguments
35 U.S.C. 102(a)(1) and 103 Rejections
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Carredo, US 2021/0154610 A1.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776