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 Status
The Amendment filed on 31 October 2025 has been entered; claims 1, 2, 4, 5, 8, and 9 remain pending.
Response to Arguments
Applicant’s arguments, see Page 4 of the Remarks, filed 31 October 2025, with respect to the rejections of claims 1, 2, 4, 5, 8, and 9 under 35 USC 112(b) have been fully considered and are persuasive. The rejections of claims 1, 2, 4, 5, 8, and 9 under 35 USC 112(b) have been withdrawn in light of Applicant’s amendments to the claims; however, the amendments also necessitated a rejection under 35 USC 112(a), as discussed below in detail.
Applicant's arguments, see Pages 4-7 of the Remarks, filed 07 August 2025, regarding the rejections of the claims under 35 USC 103 over Parker and secondary references have been fully considered but they are not persuasive. Applicant argues on Page 4-6 that having less glass fibers allows for high efficiency filters that do not damage equipment and also allows for less ash upon incineration; however, the Examiner notes that Parker specifically discloses a glass-free filter media (see Abstract). Additionally, Little and Calceterra were applied in the rejections below to provide a teaching of bicomponent staple fibers and the max pore size, as necessitated by amendment.
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).
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Parker actually teaches a BETA ratio that substantially exceeds what is claimed for slightly larger particles, as Parker alone teaches BETA ratio of greater than 500 for 4 micron particles for several embodiments, and Bahukudumbi teaches a BETA of 1000 for particles which are even smaller (0.3 micron) than the recited 1.5 micron particles. Bahukudumbi teaches the advantages of such a BETA ratio, as the filtration media is able to remove microbiological contaminants. Pike teaches that the disclosed fibers, having a high surface area cross-sectional shape such as multi-lobal shapes that are crimpled/bent, allows for a filter media exhibiting high efficiency, significantly extended service-life, improved capacity and high physical integrity (Pike: Column 3, lines 3-7; Column 9, lines 27-37); therefore, it is submitted that there is a rational underpinning to the combination of references.
Applicant’s remarks pertaining to the Double Patenting rejection are acknowledged; the Double Patenting rejection is maintained below, now in view of Little and Calcaterra, as necessitated by amendment.
Claim Objections
Claim 1 is objected to because of the following informalities: regarding claim 1, the limitations “max pore size of not more than 100” and “permeability of less than 100” both contain values which are missing their units (µm and cfm/sf, respectively: see Paragraphs [0048, 0049] of the published application). Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 2, 4, 5, 8, and 9 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.
With respect to claim 1, the limitations which lack support in Applicant’s Specification are as follows: “a staple fiber, ….; wherein said staple fiber in said primary layer comprises at least 5 weight percent and not more than 70 weight percent of a monocomponent staple fiber”. Paragraphs [0042, 0043] of the Specification provide support for a “staple fiber comprises a monocomponent staple fiber” and “the primary layer comprises at least 5 weight percent and no more than 70 weight percent of at least one staple fiber”.
To overcome this rejection, the Examiner suggests amending as follows: “a staple fiber, comprising at least one bent non-circular fiber having an average effective length that is not more than 75 percent of the actual length; wherein the staple fiber comprises a monocomponent staple fiber; wherein the primary layer comprises at least 5 weight percent and not more than 70 weight percent of the staple fiber”.
Regarding claims 2, 4, 5, 8, and 9, they are rejected for being dependent on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claims 4 and 5, the limitations are already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 4, 5, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Parker et al. (U.S. Patent Publication # 2013/0233789) in view of Pike et al. (U.S. Patent # 5597645), Little et al. (U.S. Patent Publication # 2012/0234748), and Calcaterra et al. (U.S. Patent Publication # 2016/0038864) OR Parker et al. (U.S. Patent Publication # 2013/0233789) in view of Bahukudumbi et al. (U.S. Patent Publication # 2014/0083066) as evidenced by Pall et al. (U.S. Patent # 4594202) and in view of Pike et al. (U.S. Patent # 5597645), Little, and Calcaterra, hereinafter referred to as “Parker”, “Pike”, “Little”, “Calcaterra”, “Bahukudumbi”, and “Pall” in the rejections below.
With respect to claim 1, Parker teaches a nonwoven filter media comprising a primary layer (a non-woven filtration media is formed, the media would meet the limitation of a primary layer as claimed; Paragraph [0007]), wherein said primary layer comprises: (a) synthetic microfibers (Paragraph [0007]); (b) fibrillated cellulosic fibers (Paragraph [0007]); and (c) staple fibers (Paragraphs [0007, 0009]). Parker teaches that the filter media/primary layer is free of glass (Paragraph [0007], “comprises less than 1.5 weight percent of a glass fiber and/or a microglass fiber”). Parker further discloses wherein said filtration layer (“primary layer”) comprises at least 0.5 and not more than 50 weight percent of said fibrillated cellulosic fiber (see Parker: Paragraphs [0007, 0010]).
Parker further teaches wherein said primary layer comprises 50-99.5 weight percent monocomponent staple fibers (overlapping “at least 5 and not more than 70 weight percent”) (Paragraphs [0007, 0009]).
Parker and the claims differ in that Parker does not teach the exact same proportions for the staple fibers as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the compositional proportions taught by Parker overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Parker, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Regarding the limitations pertaining to the dirt holding capacity, Parker discloses measuring particle removal via ISO 19438, and reports this value as the apparent capacity in mg/in2 in Table 1. The average apparent capacity is about 20 mg/in2, which is equivalent to 31 g/m2, consistent with “greater than 5 g/m2” as claimed.
Regarding the limitations pertaining to the permeability of less than 100 as measured according to ASTM D737, Parker teaches permeability values expressed at CFM @ 125 Pa (see Tables 2-4), and not in units of cfm/sf (see Paragraph [0048] of the Specification); however, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
Parker teaches 27 embodiments within Example 1 which exhibit a filtration efficiency of 99.5 or greater, which is equivalent to a BETA ratio of 200 or greater, and 15 embodiments which exhibit a filtration efficiency of 99.8 or greater, which is equivalent to a BETA ratio of 500 or greater (see Table 1); however, it is acknowledged that Parker measures filtration efficiency of 4 micron particles and not the recited 1.5 micron particles.
Although Parker does not specifically teach wherein said nonwoven filter media exhibits a BETA ratio equal to or greater than 200 at 1.5 microns, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
The Examiner notes that it is likely that at least some of the filtration media in Table 1 would exhibit a BETA ratio of greater than 200 for 1.5 micron particles, given that 15 different media have BETA ration which are 500 or greater for slightly larger particles than which is claimed. It is submitted that the ordinary artisan would have found it likely that an efficiency of 200 or greater could be obtained by running the same efficiency test with smaller 1.5 micron particles, since the efficiency is well above 200 for many of the disclosed values at 4 microns.
Assuming now that the Examiner is incorrect regarding the recited BETA ratio, the rejection is continued below in view of Bahukudumbi.
Bahukudumbi discloses wherein said nonwoven filter media exhibits a BETA ratio equal to or greater than 200 at 1.5 microns (a filter media exhibits efficiencies of 99.97 percent for particle sizes of 0.3 micrometers (1.5 microns), the high efficiency media would thus exhibit a BETA ratio greater than 200 at 0.3 (1.5) microns; Paragraphs [0025, 0038]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the media of Parker to provide said nonwoven filter media exhibiting a BETA ratio equal to or greater than 200 at 1.5 microns, as taught by Bahukudumbi, in order to provide a filter media exhibiting high efficiency suitable for removing microbiological contaminants (Bahukudumbi, Paragraph [0025]). As evidenced by Pall, an efficiency of 99.9 percent for filtration of 1.5 micron particles equates to a BETA of 1000 (Pall: Figure 8; Column 12, lines 12-29). Additionally, as discussed above, the ordinary artisan would have found it likely and obvious that an efficiency of 200 or greater could be obtained by running the same efficiency test with smaller 1.5 micron particles, since the efficiency is well above 200 for many of the disclosed values at 4 microns.
Parker or Parker in view of Bahukudumbi as evidenced by Pall does not specifically teach wherein said staple fiber comprises at least one bent non-circular fiber having an average effective length that is not more than 75 percent of the actual length.
Pike discloses staple fibers comprising at least one a bent lobe-shaped (non-circular) fiber having an average effective length that is not more than 75 percent of the actual length (staple fibers, the fibers may have a high surface area cross-sectional shape such as multi-lobal shapes (“non-circular”), and the staple fibers may be crimped (bent) with between 2 and 50 crimps per extended inch, although not explicitly disclosed, it is submitted that one of ordinary skill in the art would have recognized that the fiber having up to 50 crimps per inch would exhibit an average effective length not more than 75 percent of the actual length (Column 3, lines 1-2; Column 4, lines 62-67; Column 9, lines 27-37).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the media of Parker to provide staple fibers comprising a bent lobed-shaped (“non-circular”) fiber having an average effective length that is not more than 75 percent of the actual length as taught by Pike, in order to provide a filter media exhibiting high efficiency, significantly extended service-life, improved capacity and high physical integrity (Pike: Column 3, lines 3-7; Column 9, lines 27-37).
Parker or Parker in view of Bahukudumbi as evidenced by Pall does not specifically teach wherein said staple fiber in said primary layer comprises at least 5 weight percent and not more than 70 weight percent of a monocomponent staple fiber.
Little teaches a nonwoven web comprising bicomponent fibers (see Paragraph [0039]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the media of Parker to include the bicomponent staple fibers of Little in order to gain the advantage of a functional filter layer that is operable at elevated temperatures (see Little: Paragraph [0039]), as consistent with the fuel filter applications disclosed by both Little and Parker (see Paragraph [0043], and see Parker: Paragraph [0001]). Although Little does not specifically teach an amount of bicomponent staple fibers to add to the (monocomponent) staple fibers of Parker in order to obtain “at least 5 weight percent and not more than 70 weight percent of a monocomponent staple fiber” (the balance to 100 being the added bicomponent staple fibers), there is no evidence indicating that the recited content of monocomponent staple fibers within the total staple fibers is critical. 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Parker or Parker in view of Bahukudumbi as evidenced by Pall does not specifically teach a max pore size of less than 100 micron.
Calcaterra teaches a nonwoven web comprising a max pore size of 16-20 micron (“less than 100 (micron)”) (see Paragraph [0039]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the media of Parker with the max pore size of Calcaterra in order to optimize pore for particle removal from fuel (see Calcaterra: Paragraph [0039]), as consistent with the fuel filter applications disclosed by both Calcaterra and Parker (see Paragraph [0039], and see Parker: Paragraph [0001]).
Regarding the transitional phrase “consisting essentially of” recited in claim 1, it is submitting that “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. MPEP 2111.03 [R-3], In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). Since any additional media layers disclosed by Parker, Bahukudumbi, and Pike would not interfere with the filtering operation of the primary layer (see, for example, the additional filtering layers or support layers disclosed by Parker in Paragraph [0050]), it is submitted that the limitations “nonwoven filter media consisting essentially of…” are met. The Examiner further notes that Pike teaches that the disclosed crimped fiber filter media are described as a single-layer media (see Column 10, lines 7-8).
With respect to claim 2, Parker in view of Pike or Parker in view of Bahukudumbi as evidenced by Pall in view of Pike renders obvious the nonwoven filter media of claim 1, and Parker further teaches wherein said primary layer comprises less than 5 weight percent of an inorganic fiber (the reference does not disclose the addition of any inorganic fibers to the filtration media (primary layer), as such the layer would meet the limitation of comprising less than 5 weight percent of inorganic fiber (see Parker: Paragraphs [0009, 0010, 0012]).
With respect to claim 4, Parker in view of Pike or Parker in view of Bahukudumbi as evidenced by Pall in view of Pike renders obvious the nonwoven filter media of claim 3, but does not specifically teach wherein said staple fiber comprises said bent lobed-shaped fiber.
Pike discloses said staple fiber comprises said bent lobed-shaped fiber (a nonwoven filter media comprises staple fibers, the fibers may have a high surface area cross-sectional shape such as multilobal shapes (lobed-shaped), the fibers may further be crimped (bent), as such the staple fibers may be bent lobed-shaped fibers as claimed; Column 3, lines 1-2; Column 4, lines 51-67; Column 9, lines 27-37).
With respect to claim 5, Parker in view of Pike or Parker in view of Bahukudumbi as evidenced by Pall in view of Pike renders obvious the nonwoven filter media of claim 1, and Parker further teaches wherein said primary layer comprises 50-99.5 weight percent (overlapping “at least 5 weight percent and not more than 80 weight percent of said synthetic microfiber” (see Parker: Paragraphs [0007, 0009]).
Parker or Parker in view of Bahukudumbi as evidenced by Pall and the claims differ in that Parker does not teach the exact same proportions for the synthetic microfibers as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the compositional proportions taught by Parker overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Parker, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 8, Parker in view of Pike or Parker in view of Bahukudumbi as evidenced by Pall in view of Pike renders obvious the nonwoven filter media of claim 1, and Parker further teaches wherein said primary layer is a wet-laid nonwoven (the filtration media (primary layer) is formed by a wet-laid process, as such the media is a wet-laid nonwoven (Paragraph [0014]).
With respect to claim 9, Parker in view of Pike or Parker in view of Bahukudumbi as evidenced by Pall in view of Pike teaches a fuel filter comprising the disclosed filtration media (see Parker: Paragraph [0001]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 5, 8, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,547,963 in view of Little and Calcaterra. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of instant claim 1 encompasses the scope of claim 1 of Patent (‘963).
With respect to instant claim 1, claim 1 of Patent (‘963) teaches a nonwoven filter media comprising a primary layer, wherein said primary layer comprises:
(a) a synthetic microfiber, wherein said primary layer comprises at least 5 weight percent and not more than 80 weight percent of said synthetic microfiber;
(b) a fibrillated cellulosic fiber, wherein said primary layer comprises at least 0.5 weight percent and not more than 50 weight percent of said fibrillated cellulosic fiber; and
(c) a staple fiber comprising at least one bent non-circular fiber having an average effective length that is not more than 75 percent of the actual length; wherein said primary layer comprises at least 5 weight percent and not more than 70 weight percent of said staple fiber,
wherein said nonwoven filter media exhibits a BETA ratio equal to or greater than 200 at 1.5 microns;
wherein said primary layer comprises less than 1.5 weight percent of a glass fiber and/or a microglass fiber; and
dirt holding capacity of at least 5 g/m2 as measured by ISO 19438, and comprises less than 1.5 weight percent of a glass fiber and/or a glass microfiber.
Claim 1 of Patent (‘963) does not specifically teach wherein said staple fiber in said primary layer comprises at least 5 weight percent and not more than 70 weight percent of a monocomponent staple fiber.
Little teaches a nonwoven web comprising bicomponent fibers (see Paragraph [0039]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the media of Patent (‘963) to include the bicomponent staple fibers of Little in order to gain the advantage of a functional filter layer that is operable at elevated temperatures (see Little: Paragraph [0039]). Although Little does not specifically teach an amount of bicomponent staple fibers to add to the (monocomponent) staple fibers of Parker in order to obtain “at least 5 weight percent and not more than 70 weight percent of a monocomponent staple fiber” (the balance to 100 being the added bicomponent staple fibers), there is no evidence indicating that the recited content of monocomponent staple fibers within the total staple fibers is critical. 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 1 of Patent (‘963) does not specifically teach a max pore size of less than 100 micron.
Calcaterra teaches a nonwoven web comprising a max pore size of 16-20 micron (“less than 100 (micron)”) (see Paragraph [0039]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the media of claim of Patent (‘963) with the max pore size of Calcaterra in order to optimize pore for particle removal from fuel (see Calcaterra: Paragraph [0039]).
Regarding the recited permeability, the examiner submits that this is considered to be an inherent property of the media of claim 1 of Patent (’963) in view of Little and Calcaterra, since all limitations of the media are rendered obvious including the max pore size and types and amounts of fibers are recited in claim 1 of Patent (‘963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bob Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 16 January 2026