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 .
Election/Restrictions
Claims 63-64 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected treatment method for metal fibers, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/2/2026.
Claim Objections
Claim 53 is objected to because of the following informalities: “vol3/4” should be - - vol % - -. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 52 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 52: “in particular as specified in the description” is indefinite as it is unclear if this is attempting to incorporate some language from the specification and what exactly that would be. Claims are read in light of the specification but limitations from the specification are not inserted into the claims.
It is also unclear if Claim 52 further limits Claim 51 as Claim 52 recites a method of measuring the material of Claim 51 but does not provide any further limiting structure.
Claim 57 is indefinite for the phrase “such as” which makes it unclear if the metlas are required or not. It is interpreted that the metals listed are not limiting but are examples of appropriate materials.
Claim 59 is indefinite as it is unclear what is being claimed and if Claim 59 is further limiting to Claim 41 from which it depends. Claim 59 recites the fibers are “obtainable by a melt spinning process” but does not recite that they are made by a melt spinning process. It is therefore interpreted that the claim does not positively recite any additional structure and does not further limit Claim 41 as no additional structure is recited.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 41, 44, 45, 46, 47, 48, 49, 50, 51, 52, 54, 56, and 57 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over McLellan et al. (US Pub. No. 2011/0217220).
Claims 41, 44, and 45: McLellan et al. teach a filter [0070-0071] comprising a plurality of metal fibers having a non-round cross section [0051], with the cross section comprising a large axis and a small axis [0051], wherein a ratio of the small axis to the large axis lies in the range of 0.99 to 0.05. McLellan et al. teach that the shape of the fiber is ellipsoidal. A axis ratio of greater than 0.99, i.e. 1, would be a circle. An axis ratio of 0.05 would be a line. One of ordinary skill in the art would have reasonably concluded that the teaching of ellipsoidal cross-section includes an axis ratio of 0.05 to 0.99.
Claim 46: the length of the fibers are 0.1mm or more [0056].
Claim 47: the cross-section of the fibers include values equal to and less than 100um [0050].
Claim 48: the length of the small axis is 2um or less [0050].
Claim 49: the fibers form an ordered or unordered network [0069-0072](Fig. 1A).
Claim 50: the porosity is 93-99.9% [0061].
Claim 51: the pore size is 10um or less [0063].
Claim 52: the claim is to the material, not the method of measuring or determining of the material. Claim 52 is met by the limitations of Claim 51 from which it depends.
Claim 53: the fiber volume fraction is 0.01 and 30 vol% [0074].
Claim 54: the thickness of the filter is from 0.1 to 100mm [0070].
Claim 56: the fibers are sintered [0099].
Claim 57: the fibers are made of a metal alloy [0045, wherein the metals are listed and can be combinations thereof].
Claim 58: the fibers are sintered [0099].
Claim 59: the fibers are obtainable by melt spinning as metal can be melted.
Claim 61: the cross section comprises rounded edges [0070-0071, ellipsoid], a porosity of 93-99% [0061], and a pore size of from 0.1-300um [0063].
Claim 62: the thickness is from 6 to 49mm [0070].
Claims 42, 43, and 60 are rejected under 35 U.S.C. 103 as being unpatentable over McLellan et al. (US Pub. No. 2011/0217220).
Claims 42 and 43: McLellan et al. teach that the fibers may have a variety of shapes [0070-0071]. They do not teach the specific axis ratios as claimed. “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 60: McLellan et al. do not teach the fiber density of the filter. However, fiber density is a well-known result effective variable that is routinely optimized to control flow rate through the filter material. “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over McLellan et al. (US Pub. No. 2011/0217220) in view of Lundquist (USP 6152978).
Claim 55: McLellan et al. teach that the mat made of the metal fibers is used as a filter media but do not teach a frame holding the fibers.
Lundquist teaches a soot filter comprising a frame holding a filter metal filter media (col. 17, lines 10-28). The fibers are held in a frame so that they can be functional as a filter media in practice. One of ordinary skill in the art at the time of the invention would have found it obvious to include a frame with McLellan et al.’s fibers so that it can be put into use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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