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 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.
Claims 1-11 are 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.
In regard to claim 1, it is noted that paragraphs [0039]-[0040] of the instant specification discuss the process of impregnating the activated carbon and teaches that in “some embodiments, the additive is present in its elemental form.” Thus, the specification is disclosing that additives can be further reacted to form their elemental form in the filter. It is noted that [0085], which is the only specific teaching regarding the use of silver nitrate being added to activated carbon, discloses “silver nitrate was added to activated carbon followed by heat treatment” to produce “an activated carbon impregnated with silver.” Thus, it is unclear whether the instant claims 1 and 3 are reciting the composition of the first filter in its final form or whether the word “impregnated” implies a product-by-process limitation. For the purpose of examination, the Examiner will interpret the limitation using the broadest reasonable interpretation which includes wherein the impregnating of the additive is a product-by-process limitation.
Claims 2-11 are rejected as being dependent upon claim 1.
Response to Arguments
Applicant's arguments filed 21 January 2026 have been fully considered but they are not persuasive.
Applicant argues that Saha merely discloses the use of an activated carbon embedded with nano-silver and fails to disclose the use of one of the recited chemicals. The Examiner has fully considered the argument but has not found it to be persuasive. It is noted in the above rejection of claim 1 under §112(b) that the instant claims are unclear if the additive is present in the recited form or if the additive is recited as an intermediate chemical which is then reacted to the elemental form. As such, it is held that the filter of Saha comprising activated carbon embedded with nano-silver is the same as or obvious from a first filter formed by impregnating activated carbon with silver nitrate to be reacted to form elemental silver as the limitation of the activated carbon being “impregnated with an additive” is interpreted to be a product-by-process limitation. See MPEP § 2113. Further, it is noted that Saha ‘605 is cited below to disclose that silver nitrate was a known additive used to form the silver embedded activated carbon of Saha.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-4 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Saha (US 10,918,993).
In regard to claims 1, 3-4 and 9, Saha discloses a filtration system (filter structure 102) for filtering viral particles from a gas stream (such as COVID-19; col, 2, line 66 through col. 3, line 2), comprising: a first filter (metallo-organic filter bed 122) comprising granular, as recited in claim 3, activated carbon (activated carbon 141 which has a “granulated structure) impregnated with an additive comprising elemental silver (nano-silver embedded in the activated carbon 141) as recited in claim 4, and a second filter (mechanical filter bed 125) which does not comprise activated carbon as it has a glass wool structure. The glass wool filter is viewed to be equivalent to or comprise fibers, glass, and fiberglass as recited in claim 9. See col. 5, lines 4-33; col. 8, lines 1-14 and Figures 1-2.
Saha does not explicitly disclose wherein the activated carbon is impregnated with one of the recited additives. However, it is further noted in the above rejection of claim 1 under §112(b) that the activated carbon being impregnated with an additive is interpreted as a product-by-process limitation and it is noted that the instant specification teaches that silver nitrate can be used to form a first filter with elemental silver. Therefore, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). As such, Saha anticipates or renders obvious the structure of a first filter comprising activated carbon impregnated by silver nitrate which is further processed to form elemental silver as the filter of Saha comprising activated carbon impregnated with elemental silver is the same as or obvious from the recited first filter.
In regard to claim 10, Saha discloses wherein the filtration system (filter structure 102) is contained within a housing (flow chamber 101). See col. 3, line 27-35 and Figures 1-2.
In regard to claim 11, Saha teaches that the invention 100 “eliminates the one or more viruses.” See col. 3, line 2. Thus, it is held that elimination of the virus would constitute at least a 95% reduction of viral particles in the gas flow. Nonetheless, Saha discloses structure which is substantially identical to that of claim 1. 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.).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Saha.
In regard to claims 5-8, Saha is silent in regard to the relative weight percentages of the activated carbon and the additive. It is noted that the instant specification does not disclose the criticality of the disclosed relative weight percentages of the activated carbon and the additive. Therefore, it would have been within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to have determined an optimum or workable range of the relative weights of the activated carbon and additive to effectively filter viral particles through routine experimentation and without creating any new or unexpected results. “[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.).
Claims 1 and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Saha as applied above and further in view of Saha (US 10,059,605; hereinafter ”Saha ‘605”).
In regard to claims 1 and 3-11, Saha is applied in the same manner as above. This rejection is included in case it is viewed that Saha does not anticipate or render obvious the claimed invention. It is noted that Saha teaches in col. 5, lines 26-32 that the previous patent of US 10,059,605 discloses the formation of the nano-silver embedded activated carbon, but the patent is not explicitly incorporated by reference.
Saha ‘605 discloses that silver nitrate can be used to form the embedded nano-silver in the activated carbon through bio-reduction. See at least paragraph 6, lines 27-65.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the filter of Saha using the method disclosed by Saha ‘605 as it would have been within the ambit of one of ordinary skill to look to the prior art to learn how to make the embedded activated carbon as recited and as Saha explicitly referenced the Saha ‘605 patent to teach the formation of the nan-silver embedded activated carbon.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Saha, or optionally Saha in view of Saha ‘605, in view of Jagtoyen et al. (US 2003/0089237; hereinafter “Jagtoyen”).
In regard to claim 2, Saha is silent in regard to the material used to form the activated carbon.
Jagtoyen discloses an activated carbon filter with impregnated metal additives, such as copper, cobalt, nickel, silver or iron, can be used to filter virus particles from a gas flow. The activated carbon can be made from cellulose fiber, petroleum pitch, coal, coal tar or other fibrous carbon surfaces. See [0017], [0021], [0023], [0025]-[0027] and [0052].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the activated carbon in the filter of Saha, or the combination of Saha in view of Saha ‘605, from one of the sources disclosed by Jagtoyen as one of ordinary skill would look to the prior art to determine an appropriate source material for forming the activated carbon.
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 TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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/TIMOTHY C CLEVELAND/ Primary Examiner, Art Unit 1774