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
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/101/2026.
Applicant argues that the claims are not independent because they are classified in the same search area and alleged “misidentification of the presently claimed invention”.
Search areas are merely one way to distinguish inventions but are not the only way. The US search classification areas are large and include a variety of types of references. The claims themselves as presented have mutually exclusive features between the claims which make it clear separate and distinct search and analysis is required for each set of claims. This results in a serious burden for the Examiner as each claim requires significantly different considerations.
Applicant argues that these claim differences are “merely limitations of elements which are disclosed in the other invention (i.e., “trilobal” fiber vs. “non-circular cross-section” and “plurality of layers” vs. “four-layered” filter media).” However, these different limitations result in different breadths of claims which require different consideration. If they are not different, then Applicant can amend the claims to include the exact same language.
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.
Claim 10 is 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.
Claim 10 recites an “efficiency of greater than 99% after one hour”. It is unclear with respect to what type of particles and testing conditions. Without this distinction, it is impossible to know what structure the claim requires.
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.
Claims 1-3 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub. No. 2013/0263738) evidenced by Tabor et al. (2019).
Wang et al. teach a filtration media for air filtration [0002] comprising a support substrate (300), the support substrate [0009]. The substrate comprises a staple fiber and a bi-component fiber mixture [0025]. The bi-component fibers may be multi-lobal or non-circular in shape [0025]. While Wang et al. do not teach the amounts by percentage of each type of fiber present, it is well-known in the art that the amount of fiber in a filtration material is a result effective variable that is routinely optimized based on the intended use and function of the material. The claimed percentages do not appear to have any unexpected or superior results associated with them. “[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.).
The material has a melting temperatures of 250 or more [0026] which is about 230 degrees. They also recite greater than 400 degrees which includes about 400 degrees. While they do not stipulate which fibers have which melting temperatures, it is well-known in the art that bicomponent fibers have a lower melting temperature than the structure or ‘other’ monofilament fibers as the bicomponent fibers are intended to function as a binder and have the outer sheath melt while keeping the structure part intact. As such, one would expect that the bicomponent fiber would be at the lower temperature range and the staple fiber at the higher temperature range. Neither of the claimed temperatures appear to be associated with unexpected or superior 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.).
Wang et al. do not teach the bicomponent fiber size. It is well-known in the art that bicomponent fibers typically have sizes in the range off from 5-50 microns (see EP1827649, 0031) microns in diameter. As such, one of ordinary skill in the art at the time of the invention would have found it obvious that the disclosure of bicomponent fibers included a broad fiber range overlapping significantly with the claimed range. Further, the claimed range does not appear to have any unexpected of superior results associated with it. Fiber diameter is well-recognized in the art as a result effective variable routinely optimized based on filtration performance and properties. “[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.).
The length of the staple fibers is not stipulated.
Tabor et al. teach that “Fiber length is a key raw material characteristic of nonwoven fabrics. Selection of fiber length may go on to affect nonwoven properties such as strength, solidity, and air permeability as well as ease of manufacturing.” They further teach that “Fibers of length 3.80, 4.80, and 5.10 cm are commonly used in carded products, with 5.10 cm (2 in) being considered the optimal fiber length for processing and achieving required performance in terms of strength.” They further teach, “air permeability of the samples did show significant change with fiber length.” (abstract)
Staple fiber length is well-recognized in the art as a result effective variable routinely optimized based on filtration performance and properties. “[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.).
The thickness of the entire filter media is from 0.2-10mm [0010]. This includes the adhesive layer which is a minimal 0.2-0.6 mil [0015]. As such, the thickness of the fibrous layer including the mixed fibers is still approximately 0.2-10mm [0010].
Wang et al. do not teach the specific pore size of the bicomponent/staple fiber mixture layer.
They teach “The randomness of the fiber orientation allows one to achieve a very uniform mean pore size and the amount of mass in the nonwoven can be built up until you achieve a wide range of desired mean pore sizes.” [0020] This clearly teaches that the pore size is a routinely optimized result effective variable. The pore size is chosen based on the desired end use [0021]. In an example, particles of 0.3 um are filtered out at a 99% efficiency which means that any particles that pass will be less than 0.3 um. “[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.).
Claim 2: Wang et al. teach that the fibers are multi-lobal [0025] wherein one of ordinary skill in the art would have recognized that multi-lobal included trilobal.
Claim 3: The filter has thickness of from 0.2-10mm ( 0.008-0.394 inches) [0010] which overlaps with the claimed range of 0.25-1 inches. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 7-10 are related to functionality and properties of the filter material. 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.). Regarding material claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. in view of Thangadurai et al. (2014).
Claims 4-6 recite specific deniers of the fibers. Wang et al. do not teach the specific deniers of fibers as claimed.
Thangadurai et al. teach that fiber denier is well-recognized in the art as a result effective variable that effects the tensile strength, bursting strength, and air dust filtration efficiency (abstract). There does not appear to be any unexpected or superior results associated with the claimed fiber deniers. “[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.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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