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 .
Election/Restrictions
Applicant's election with traverse of Group II, Claims 20-29 in the reply filed on 2/4/2026 is acknowledged. The traversal is on the ground(s) that the Groups are not independent or distinct. This is not found persuasive because Applicant does not argue that the Examiner was mistaken when they said “the product as claimed can be made by a materially different process” [Office Action dated 12/4/2025, Page 2, Paragraph 2], but rather simply that “claims 1 and 20 include the filter media and are thus connected via at least one of design and operation or effect” [Remarks, Page 10, Paragraph 1]. Applicant presents no arguments that the product of Claim 20 could not have been formed by a method other than Claim 1 and therefore does not address the basis of the restriction requirement.
Furthermore Applicant argues against the assertion that a search burden exists between Group I and II. Applicant argues “the Restriction Requirement is further improper since the Examiner fails to meet the burden required under Section 808.02 of the Manual of Patent Examining Procedure (MPEP). Section 808.02 specifically requires that in order to establish reasons for insisting upon restriction, Examiner must explain why there would be a serious burden on the Examiner if restriction is not required. For instance, the Examiner needs to provide evidence of different field of search necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s), which the Examiner fails to provide in this case.” [Remarks, Page 10, Paragraph 2]. This is false. The Examiner provided evidence that a different field of search was required to examine Groups I and II by demonstrating that these Groups are separately classified. Furthermore it is noted that Group I is explicitly directed to a method of atomic layer deposition while Group II does not require atomic layer deposition to be performed (this was similarly noted in the original requirement for restriction dated 12/4/2025). It is not likely to find art pertinent to methods of atomic layer deposition while searching for materials that do not require atomic layer deposition to be formed. The requirement is still deemed proper and is therefore made FINAL.
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 34-38 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.
Regarding Claim 34 and 35 both claims similarly require “one or more metal oxides”, however it is unclear how the rest of the claims could be performed with one metal oxide. Claim 34 requires “an order of deposition of each of the one or more metal oxides is varied”. It is unclear how the “order” of a single type of metal oxide could be varied. Claim 35 requires “one or more metal oxides is deposited concurrently”. It is unclear how one metal oxide could be deposited concurrently, concurrently with what? This makes it unclear whether the scope of Claims 34 and 35 actually include one or more metal oxides or if they only cover two or more metal oxides. For prior art evaluation purposes, Claims 34 and 35 are being interpreted as referring to one or more metal oxides and a single metal oxide is varied in order and deposited concurrently with itself.
Regarding Claim 36, Claim 36 requires “the activated carbon is selected from the group consisting of … [lists various forms of biomass and fossil fuels and others]”. However none of the examples of that group contain activated carbon. It is therefore unclear if, for example, the coconut used must contain activated carbon or whether the activated carbon was produced from coconut but the final product does not contain coconut.
Claim 36 is additionally rejected 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the phrase “other suitable carbonaceous material”. The specification does not provide any clear guidance as to what carbonaceous material is suitable and what carbonaceous material is unsuitable. It is noted that if the broad interpretation of suitable is used such that a suitable carbonaceous material is any carbonaceous material capable of being transformed into activated carbon Claim 36 would be rejected under 35 U.S.C. 112(d), because Claim 20 already requires activated carbon and because activated carbon is not naturally occurring it must necessarily have come from a carbon containing material that was possible to transform into activated carbon.
Similarly Claims 36 and 37 require “the activated carbon comprises carbonaceous granular bituminous coal [36]/ coconut shell [37]. It is similarly unclear if the scope of these claims is intended to cover a composite material of activated carbon and coal/coconut or activated carbon derived from coal/coconut or both.
Applicant is hereby advised that, as dependent claim 36 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
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 20-42 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210381103 A1 Pepin et al. Claim 20 requires “A filter media for removing gas phase contaminants comprising: a substrate, wherein the substrate comprises an activated carbon”. Pepin et al. discloses “Presently described are porous structures and methods of making the same . Surprisingly and unexpectedly, it was discovered that porous materials, for example, as activated adsorbent materials, such as activated carbon, can serve as substrates for ALD [atomic layer deposition]” [0007].
Claim 20 further requires “and one or more metal oxides”. Pepin et al. discloses “(b) administering or performing at least one atomic layer deposition cycle to deposit a metal species, e.g., a metal oxide” [0009].
Claim 20 further requires “wherein the one or more metal oxides is impregnated on the activated carbon comprising the method of: exposing the activated carbon to a pulse of a first precursor compound, wherein the first precursor compound is chemically bonded to the activated carbon through chemical adsorption, applying a purge of inert gas to remove the excess of unreacted first precursor compound, exposing the activated carbon to a second precursor compound, wherein a surface reaction between the first precursor compound applied to the activated carbon surface, and the second precursor compound produces a desired reaction product bonded to the surface of the activated carbon, and applying a purge of inert gas to expel gaseous reaction by-products”. This is identified as product-by-process style claim language. MPEP 2113.I states “product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. In the instant case the process steps of introducing precursor compounds, chemically reacting, purging, and repeating for a second precursor suggest the structure of activated carbon with a layer of material over at least a part of the surface. Pepin et al. discloses atomic layer deposition onto activated carbon (see above) which is understood to produce activated carbon with a layer of material over at least a part of the surface.
In accordance with MPEP 2113.II which states “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.” The burden of showing a difference between the filter media of the instant invention and the product of Pepin et al. has shifted to the Applicant.
Claim 21 requires “the metal oxide is impregnated on the activated carbon in a range of 0-25 % by weight.”. Pepin et al. discloses “The structure can include from about 0.1 to about 50 wt %, or about 0.5 to about 50 wt % of the metal of the metal species, based on the total weight of the structure” [0078].
Claim 22 requires “the one or more metal oxides comprises a Group 4 metal selected from a group consisting of titanium, zirconium, hafnium, rutherfordium, or any combination thereof.”. Pepin et al. discloses “The metal species can include metals such as Li, Be, Mg, Ca, Sr, Ba, Sc, Y, La, Ti, Zr, Hf, Ce, V, Nb, Ta, Pr, Cr, Mo, W, Nd, Mn, Fe, Ru, Sm, Co, Rh, Ir, Ni, Pd, Pt, Gd, Cu, Ag, Zn, Cd, B, Al, Ga, In, Si, Sn, Pb, P, Sb, and Bi; metal oxides, such as titanium oxide, copper oxide, cerium oxide, phosphorous oxide, hafnium oxide, aluminum oxide, zirconium oxide, zinc oxide, silicon oxide, tantalum oxide, tungsten oxide, and vanadium oxide” [0076]. Furthermore Pepin et al. discloses a specific example with TiO2, see Example 1, “The three source lines were connected to the flasks (101, 102, and 103) for reaction precursors: the activated carbon, TiCl4 (Titanium (IV) Chloride 99.9 % from Sigma Aldrich), and oxidant (water)” [0096].
Claim 23 requires “the one or more metal oxides comprises a Group 6 metal selected from a group consisting of chromium, molybdenum, tungsten, seaborgium, or any combination thereof.”. Pepin et al. discloses chromium, molybdenum, and tungsten (see Claim 22). It would have been obvious to one of ordinary skill in the art to have selected one of chromium, molybdenum, and tungsten as the metal to be deposited for at least the reason that Pepin et al. discloses them as effective.
Claim 24 requires “the one or more metal oxides is Molybdenum oxide”. Pepin et al. discloses molybdenum as a metal to be deposited and oxides as the metal species (see Claims 20 and 22-23).
Claim 25 requires “the one or more metal oxides comprises a Group 11 metal selected from a group consisting of copper, silver, gold, roentgenium, or any combination thereof.”. Pepin et al. discloses copper and silver as well as copper oxide specifically (see Claim 22). It would have been obvious to one of ordinary skill in the art to have selected one of copper and silver as the metal to be deposited and oxide as the metal form for at least the reason that Pepin et al. discloses them as effective.
Claim 26 requires “the one or more metal oxides is copper oxide.”. Pepin et al. discloses copper oxide (see Claim 22). It would have been obvious to one of ordinary skill in the art to have selected copper as the metal to be deposited and oxide as the metal form for at least the reason that Pepin et al. discloses it as effective.
Claim 27 requires “one of the one or more metal oxides is silver oxide”. Pepin et al. discloses silver as a metal to be deposited and oxides as the final metal species (see Claims 20 and 22). It would have been obvious to one of ordinary skill in the art to have selected silver as the metal to be deposited and oxide as the metal form for at least the reason that Pepin et al. discloses them as effective.
Claim 28 requires “the one or more metal oxides comprises a Group 12 metal is selected from a group consisting of zinc, cadmium, mercury, copernicium or any combination thereof.”. Pepin et al. discloses zinc and cadmium as the metal to be deposited and oxide as the final metal form (see Claims 20 and 22). It would have been obvious to one of ordinary skill in the art to have selected one of zinc and cadmium as the metal to be deposited and oxide as the metal form for at least the reason that Pepin et al. discloses them as effective.
Claim 29 requires “one of the one or more metal oxides is zinc oxide.”. Pepin et al. discloses zinc oxide (see Claim 22). It would have been obvious to one of ordinary skill in the art to have selected zinc oxide as the metal to be deposited for at least the reason that Pepin et al. discloses it as effective.
Claim 30 requires “one or more metal oxides has a thickness defined as a single atomic layer bonded on the activated carbon.”. Pepin et al. discloses “The structure can include a single layer or multiple layers” [0077].
Claim 31 requires “the one or more metal oxides has a thickness defined as multiple atomic layers bonded on the activated carbon.”. Pepin et al. discloses multiple layers (see Claim 30).
Claim 32 requires “the one or more metal oxides is impregnated on a surface area of the activated carbon in a range from a discrete area of coverage having a uniform and controlled thickness to a complete area of coverage having a controlled thickness.”. Pepin et al. discloses “Typically, it is desirable to have sufficient adsorption site density on the surface of the substrate to provide uniform monolayer coverage of the substrate” [0056]. It is understood that a uniform monolayer coverage is a complete area of coverage with the thickness controlled to 1 atom thick.
Claim 33 requires “each of the one or more metal oxides is deposited individually and sequentially to a desired thickness and coverage area.”. Pepin et al. discloses “(b) administering at least one atomic layer deposition (ALD) cycle to deposit a metal species, e.g., a metal oxide, wherein the at least one atomic layer deposition cycle comprises: (i) introducing a first precursor gas into the reactor to provide a metal species precursor; and (ii) introducing a second precursor gas into the reactor to provide the structure .” [0010]. This is understood as introducing the metal species individually and sequentially. Furthermore it is understood that because Pepin et al. discloses a range of number of cycles to be performed that whatever thickness and coverage results was the desired result (otherwise a different range of cycle number would have been disclosed).
Claim 34 requires “the desired thickness of each of the one or more metal oxides is held to a constant and an order of deposition of each of the one or more metal oxides is varied.”. 112b issues notwithstanding it is understood that Claim 34 requires at least one metal oxide. Pepin et al. discloses “(b) administering or performing at least one atomic layer deposition cycle to deposit a metal species, e.g., a metal oxide, … In any aspect or embodiment, step (b) is repeated from 2 to about 10 times.” [0080]. It is understood that because Pepin et al. discloses a range of number of cycles to be performed that whatever thickness results was the desired result (otherwise a different range of cycle number would have been disclosed). Furthermore it is understood that the order of the metal oxide is varied with itself.
Claim 35 requires “each of the one or more metal oxides is deposited concurrently.”. 112b issues notwithstanding it is understood that Claim 35 requires at least one metal oxide. Pepin et al. discloses “(b) administering or performing at least one atomic layer deposition cycle to deposit a metal species, e.g., a metal oxide” [0080]. It is understood that the metal oxide is deposited concurrently with itself.
Claim 36 requires “the activated carbon is selected from the group consisting of wood, peat, coconut, coal, pitch, fruit stones, nut shells, polymers or other suitable carbonaceous material.”. 112(b) issues notwithstanding Pepin et al. discloses Example 2 with activated carbon from coconut “A
thermally activated, coconut-based carbon” [0104].
Claim 37 requires “the activated carbon comprises carbonaceous granular bituminous coal.”. 112(b) issues notwithstanding Pepin et al. discloses “The activated adsorbent material can be derived from an activated adsorbent material precursor. By way of non-limiting example, the activated adsorbent material precursors may be …, coal, … , coal tar pitch, …” [0060]. It would have been obvious to one of ordinary skill in the art to have used bituminous coal as the activated carbon precursor for at least the reason that Pepin et al. discloses it as effective.
Claim 38 requires “the activated carbon comprises carbonaceous granular coconut shell.”. 112(b) issues notwithstanding Pepin et al. discloses an example where the activated carbon was derived from coconut (see Claim 36).
Claim 39 requires “An air purification filter assembly comprising a frame and a filter media of Claim 20 disposed within the frame.”. Pepin et al. discloses “The structure is not limited to any application. Non-limiting examples of applications for the structures disclosed herein include catalytic, filtration, …” [0079]. In the embodiment of the application of the composite of Pepin et al. wherein it is used as a filter including a frame would have been obvious for at least the reason that frames are known in the filtration art and the results are predictable.
Claim 40 requires “the frame is a component of a respirator cartridge.”. It would have been obvious to use the filter of Pepin et al. as a respiratory filter because Pepin et al. does not particularly restrict the filter application and respiratory filters are a known application of filters.
Claim 41 requires “the frame is a component of a central whole building indoor air purifier.”. It would have been obvious to use the filter of Pepin et al. as a central whole building indoor air purifier because Pepin et al. does not particularly restrict the filter application and central whole building indoor air purifiers are a known application of filters.
Claim 42 requires “the frame is a component of a portable air purifier.”. It would have been obvious to use the filter of Pepin et al. as a portable air purifier because Pepin et al. does not particularly restrict the filter application and portable air purifiers are a known application of filters.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA MAXWELL SPEER whose telephone number is (703)756-5471. The examiner can normally be reached M-F 9am-5pm EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736