DETAILED ACTION
Election/Restrictions
Claims 18, 19-22, 26 and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/01/2025.
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) 1-4, 7, 9-11, 13, 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neumann et al. US 2004/0050773 in view of Theile US 5,766,288.
For claim 1, the Neumann et al. reference discloses a porous membrane comprising: a first layer comprising a combination of sintered inorganic particles comprising: coarse particles having a particle size of at least 10 microns and a coarse particle sintering point (paragraph [0031] “coarse porous supporting body 4 with a medium grain size in a range of 86-234 micrometers), and a second layer comprising a combination of sintered inorganic particles comprising: second fine particles having a particle size of at least 1 micron and a second fine particle sintering point below the coarse particle sintering point, and nanoparticles having a particle size below 1 micron and a nanoparticle sintering point above the first fine particle sintering point and above the second fine particle sintering point (paragraph [0031], the powder particles of layer 2 (i.e. stainless steel with a medium grain size of 0.45 micrometers penetrating layer three with medium gran size of less than 20). The reference does not disclose the first fine particles penetrating the coarse porous supporting body to form a transition between the layers and therefore a layer of including both coarse particles and fine particles, those first fine particles having a particles size of at least 1 micron and a first fine particle sintering point below the coarse particle sintering point.
The Thiele et al. reference discloses coarse and fine filter layers partially penetrate one another so as to not affect the permeability of the multilayered filter material (claim 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Neumann et al. reference to include coarse and fine filter layers partially penetrate one another (Thiele claim 3) so as to not affect the permeability of the multilayered filter material. This modification between the first layer 2 and second layer 3 would result in a transitional layer (i.e. the claimed first layer) that would include coarse particles as shown above as well as a layer of including both coarse particles and fine particles, those first fine particles having a particles size of at least 1 micron and a first fine particle sintering point below the coarse particle sintering point. To note sintering temperature is an inherent property based on size and composition. As the claimed composition and size are the same as that of Neumann et al., one would expect the sintering temperatures also to be the same.
It is noted that the Neumann et al. reference does not disclose the exact claimed range of the particle sizes. The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
For claim 2-4, the Neumann et al. reference discloses the coarse particles have a particle size in a range from 10 to 200 microns, the first fine particles have a particle size in a range from 1 to 10 microns, and the second fine particles have a particle size in a range from 1 to 10 microns and the nanoparticles have a size in a range from 0.001 to 0.5 micron (paragraph [0031]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
For claim 7, the Neumann et al. reference discloses the first fine particles comprise stainless steel, the second fine particles comprise stainless steel, the coarse particles comprise stainless steel, and the nanoparticles comprise titanium, titanium alloy, alumina, or zirconia (paragraph [0031]).
For claims 9 -11, both the Neumann et al. and the Thiele references clearly establish that the amount of each of the particles should have a distribution throughout each “transition layer” so as to establish a desired permeability throughout the filter (as shown above). This is affected by the amount of each of the particles within the layers as well as the amount of each layer (i.e. thickness of each layer) within the filter (for instance see paragraph [0011] of Neumann which clearly states that the thickness of the layers affects the permeability). Therefore it would have been obvious to one having ordinary skill in the art to have modified the weight percentages within the first layer and the second layer of each of the particles as well as the weight percentages between the first and second layer themselves so as to obtain the claimed weight percentages so as result in a desired permeability through the filter. The courts have 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. In re Aller, 105 USPQ 233.
For claims 13 and 17, the Neumann et al. reference discloses the membrane comprises a tube and a filter assembly comprising a filter housing that contains a filter membrane of claim 1 (paragraph [0028).
For claim 16, the Neumann et al. and Thiele et al. reference discloses the physical structure of claim 1.
The bubble point of a membrane (i.e. the minimum gas pressure needed to force a liquid out of the membrane) is an inherent property of the membrane. Membranes with the same physical and chemical properties will exhibit the same bubble point. As Neumann et al. and Thiele et al. disclose a membrane with the same physical and chemical properties of claim 1 they to would be expected to have a bubble point of at least 25 pounds per square inch as measured by ASTM E 128-99 (2019), measured by using 60/40 isopropyl alcohol (IPA)/water. The courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neumann et al. US 2004/0050773 and Theile US 5,766,288 as applied in claim 1 above and further in view of Zeller et al.(2) US 2008/0149571.
For claim 5, the Neumann et al. reference discloses the first fine particles comprise nickel or a nickel alloy (paragraph [0010]), the second fine particles comprise nickel or a nickel alloy (paragraph [0010]), the coarse particles comprise nickel or a nickel alloy (Claim 1 states that the third layer comprises a metallic material and paragraph [0010] states that the metallic materials can include nickel or nickel alloys). The reference does not disclose the nanoparticles comprise stainless steel.
The Zeller et al.(2) reference discloses the nanoparticles comprise stainless steel (claim 31).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Neumann et al. reference to include the nanoparticles comprise stainless steel (Zeller et al.(2) claim 31) as the courts have held it 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. In re Leshin, 125 USPQ 416.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neumann et al. US 2004/0050773 and Theile US 5,766,288 as applied in claim 1 above and further in view of Snow et al. US 5,456,740.
For claim 12, the Neumann et al. reference appears to disclose the first fine particles are dendritic, and the second fine particles are dendritic (see figure 1 which shows branching particles).
The Snow et al reference discloses the use of dendritic particles in filtration layers so as to attain a high pore area (column 5, lines 38-44).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Neumann et al. reference to include the use of dendritic particles for both the first fine particles and the second fine particles (Snow et al. column 5, lines 38-44) so as to attain a high pore area.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER ROSE ORLANDO whose telephone number is (571)270-3149. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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AMBER ROSE ORLANDO
Primary Examiner
Art Unit 1731
/AMBER R ORLANDO/Primary Examiner, Art Unit 1731