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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11 May 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1 and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Saha (US 10,918,993) in view of Merkl et al. (“Antiviral Activity of Silver, Copper Oxide and Zinc Oxide Nanoparticle Coatings against SARS-CoV-2,” Nanomaterials 2021, 11(5), 1312; hereinafter “Merkl”).
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), and a second filter (mechanical filter bed 125) which does not comprise activated carbon as it has a glass wool structure, as recited in claim 9. 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.
Merkl discloses that nanoparticles of silver, copper oxide (“CuO” which is cupric oxide as recited in claims 1 and 4) and zinc oxide (claims 1 and 4) were investigated for use in porous filter media to reduce airborne transmission of SARS-CoV-2 virus. Merkl found that CuO delivered moderate activity while ZnO did not appear to significantly reduce virus infectivity. See the Abstract and Figure 4.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted CuO or ZnO nanoparticles for the silver nanoparticles in the filter of Saha as it would have been obvious to try the materials investigated by Merkl in the filter of Saha without creating any new or unexpected results. The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
In regard to claims 5-8, Saha and Merkl are 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.).
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. Merkl discloses in Figure 4b wherein the CuO is capable of a large percent reduction as determined by plaque assay. 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 in view of Merkl 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Saha in view of Merkl and further in view of Jagtoyen et al. (US 2003/0089237; hereinafter “Jagtoyen”).
In regard to claim 2, Saha and Merkl are 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 filtration system of Saha and Merkl 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
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
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