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
Applicant’s election of Group I, reading on claims 1-11, in the reply filed on 10/5/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/5/2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 1-2, 4, and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fabriciation of bead-on-string polyacrylonitrile nanofibrous air filters with superior filtration efficiency and ultralow pressure drop by Liao et al. (Liao) as evidenced by Polysulfone by Wikipedia (https://en.wikipedia.org/wiki/Polysulfone).
Regarding limitations recited in the claims which are directed to a manner of operating disclosed fibrous mat, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). This applies to the following limitations: “the aromatic polymer is capable of binding a volatile organic specie (VOC)” (claim 2); “wherein said binding is by adsorption; wherein the VOC is a non-polar small molecule” (claim 3); “wherein the VOC comprises an alcohol…thereof” (claim 4); “wherein the self-supporting membrane is configured for sampling said VOC” (claim 7); “wherein the self-supporting membrane is configured to support gas flow at a flow velocity of at most 5m/sec” (claim 8); and “wherein the self-supporting membrane is capable of adsorbing the VOC so as to obtain a w/w ratio between adsorbed VOC and the self-supporting membrane between 1:1,000,000 and 1:10” (claim 10).
In regard to claim 1, Liao teaches a fibrous mat comprising a plurality of fibers (pg. 5-7). Liao teaches each of the plurality of fibers is a porous polymeric fiber comprising an aromatic polymer (pg. 5-7). Liao teaches an average cross-section of the fibers is between 0.5 and 30 um (pg. 5-7).
Liao does not explicitly teach the aromatic polymer is stable at a temperature of at least 200 °C. However, Wikipedia provides evidence that polysulfone is stable up to a temperature of 230 °C (Properties). Further, Liao teaches these materials are utilized due to excellent chemical and thermal stabilities (pg. 5). It would be obvious to one of ordinary skill in the art to tune the thermal stability in order to create a material sufficient for the parameters of operation.
Liao does not teach air permeability coefficient of at least 10-13 m2. However, Liao teaches these materials are utilized due to excellent chemical and thermal stabilities (pg. 5). Liao further teaches pressure drop and retention time correlate to airflow rate (pg. 23). Liao teaches airflow rate is related to nanofiber diameter (pg. 23).
As the fibrous mat pressure drop, retention time, and fiber diameter are variables that can be modified, among others, by adjusting said air permeability coefficient, the precise coating air permeability coefficient would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed air permeability coefficient cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the air permeability coefficient of the material of Liao to obtain the desired balance between the pressure drop, retention time, and fiber diameter (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 7, Liao does not teach the fibrous mat is in the form of a self-supporting membrane characterized by a thickness of between 50 and 200 um. Liao teaches membrane thickness is related to filtration efficiency, diffusion, and capture abilities (pg. 22-23).
As the fibrous mat filtration efficiency, diffusion, and capture abilities are variables that can be modified, among others, by adjusting said thickness, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the material of Liao to obtain the desired balance between the filtration efficiency, diffusion, and capture abilities (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 9, Liao teaches the self-supporting membrane is in a form of a non-woven uniform layer (pg. 7). Liao teaches the self-supporting membrane is characterized by a tensile strength of at least 0.4 MPa (pg. 29).
In regard to claim 11, Wikipedia provides evidence that the Tg of the aromatic polymer is about 223 °C (Wikipedia). It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Claims 3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fabriciation of bead-on-string polyacrylonitrile nanofibrous air filters with superior filtration efficiency and ultralow pressure drop by Liao et al. (Liao) as evidenced by Polysulfone by Wikipedia (https://en.wikipedia.org/wiki/Polysulfone), as noted above, further in view of Evaluation of Tenax TA thin films as adsorbent material for micro preconcentration applications by Alfeeli et al. (Alfeeli).
In regard to claim 3, modified Liao teaches the limitations as noted above. Liao does not teach the aromatic polymer is poly-2,6-diphenyl-p-penylen oxide. Alfeeli teaches a fibrous mat comprising a porous polymeric film comprising an aromatic polymer (abstract). Alfeeli further teaches the aromatic polymer is poly-2,6-diphenyl-p-penylen oxide (abstract). Alfeeli teaches adsorption of VOC samples (abstract).
It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to incorporate poly-2,6-diphenyl-p-penylen oxide, as taught by Alfeeli, in the fibrous mat of Liao as the porous polymeric fiber as it is a known polymer for adsorption of VOCs.
In regard to claim 5, modified Liao teaches the limitations as noted above. Liao does not teach said fibrous mat is characterized by a density of between 0.05 and 0.1 gr/cm3, a porosity of between 70 and 90%, a BET surface area of about 70 m2/g. Liao does not teach the plurality of fibers is devoid of hollow-shape fibers and is characterized by an average pore size of between 10 and 300 nm. Liao teaches packing density affects pressure drop through the filter and efficiency of removal (abstract; pg. 10; pg. 15-16; pg. 22-23; pg. 25). Liao teaches packing density can be tuned for superior capture efficiency (pg. 15-16).
As the pressure drop and removal efficiency are variables that can be modified, among others, by adjusting said density of fibrous mat, the precise density of fibrous mat would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed density of fibrous mat cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the density of the fibrous mat in the material of modified Liao to obtain the desired balance between the pressure drop and removal efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Alfeeli teaches a porosity of between 70 and 90% (pg. 261). Alfeeli teaches the plurality of fibers is devoid of hollow-shape fibers and is characterized by an average pore size of between 10 and 300 nm (pg. 261). Alfeeli further teaches surface area varies with the solution concentration (abstract). Alfeeli teaches surface area plays a critical role in adsorption performance (pg. 262-263).
It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to tune the porosity, BET surface area, and pore size, according to Alfeeli, in the fibrous mat of Liao as the porous polymeric fiber as it is a known polymer for adsorption of VOCs to achieve desired filtration efficiency and material properties.
In regard to claim 6, modified Liao teaches the limitations as noted above. Liao does not teach said fibrous mat is characterized by at least one of an average pore size of between 5 and 50 um, an elongation to break of between 5 and 10%, a Young’s modulus between 5 and 20 MPa, and thermal stability at a temperature up to 500 C°. Regarding limitations recited in claims which are directed to specific properties of fibrous mat recited in said claim, it is noted that once a fibrous mat is disclosed to comprise a material comprising a plurality of fibers, comprising a porous polymeric fiber comprising an aromatic polymer with an average cross section of the fibers between 0.5 and 30 um, and poly02,6-diphenyl-p-phenylene oxide, and therefore is the same as the fibrous mat of claims, it will, inherently, display recited thermal stability properties. See MPEP 2112.
Conclusion
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/KARA M PEO/Primary Examiner, Art Unit 1777