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 .
Response to Amendment
1. Applicant’s amendment and accompanying remarks made After Final have been fully considered and entered. Claims 19-20 have been amended. Claim 6 is canceled. Applicant’s amendment to claim 20 is found sufficient to overcome the 112 2nd paragraph rejection set forth in the Final Action dated 12/23/25. As such, this rejection is hereby withdrawn. However, the Finality of the prior Office Action dated 12/23/25 is withdrawn in view of the newly discovered reference(s). Rejections based on the newly cited reference(s) follow. In addition, upon further consideration the following new ground of 112 2nd paragraph rejection with respect to claim 1 is also set forth below.
Terminal Disclaimer
2. The terminal disclaimer filed on 2/12/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of co-pending Application No. 17622045 has been reviewed and is accepted. The terminal disclaimer has been recorded. As such, the obviousness type double patenting rejections set forth in the Final Action dated 12/23/25 is hereby withdrawn.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-3, 7-18 and 20 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.
With specific regard to claim 1, it is not clear if the electrostatic charge additive is only solid at ambient temperatures in just the sheath or the sheath and the core. It is also unclear if the electrostatic charge additive is only solid at ambient temperatures when the sheath component is made of less than 100 wt. % PMP (e.g., the second polymer). Claims 2-3, 7-18 and 20 are rejected for their dependency on claim 1.
Claim Rejections - 35 USC § 102
5. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claim(s) 1-2, 7-11 and 13-17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shultz et al., US 2022/0372666 A1.
The applied reference has common assignee/inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The published patent application issued to Shultz et al., teach thermoplastic core-sheath fiber comprises: a polymer fiber core having a coextensive sheath layer disposed thereon, and an electrostatic charge enhancing additive. The sheath layer may comprise poly(4-methyl-1-pentene) and the fiber core and the sheath layer have different compositions. At least one of the fiber core or the sheath layer comprises an electret charge. A nonwoven fibrous web comprising the core-sheath fibers and a respirator including the nonwoven fibrous web are also disclosed (abstract). The fiber core may comprise any material, organic or inorganic. For example, the fiber core may comprise ceramic fibers, glass fiber, glass-ceramic fibers, natural fibers, or synthetic fibers. With regard to the core polymer, Shultz et al., teach that the synthetic fibers comprise at least one thermoplastic polymer. Exemplary thermoplastic polymers include styrenic block copolymers (e.g., SIS, SEBS, SBS), thermoplastic polyolefins, elastomeric alloys (e.g., elastomeric thermoplastic acrylate block copolymers such as polymethyl methacrylate-block-poly(butyl acrylate)-block-polymethyl methacrylate commercially available as Kurarity from Kuraray Company, Ltd., Okayama, Japan), thermoplastic polyurethanes (TPUs), thermoplastic polyesters and copolyesters; polyvinyl chloride; polystyrene; polycarbonates; thermoplastic polyesters (e.g., polylactides and polyethylene terephthalate); perfluorinated polymers and copolymers, thermoplastic polyamides, and blends of any of the foregoing (paragraph 0032-0038). The core may also comprise polypropylene and 4-methyl-1-pentene. (paragraph 0038 and 0039). The fiber core may further comprise one or more contain conventional adjuvants such as antioxidants, light stabilizers, plasticizers, acid neutralizers, fillers, antimicrobials, surfactants, antiblocking agents, pigments, primers, dispersants, and other adhesion promoting agents (paragraph 0040). The fiber core may have any average diameter, but preferably is in a range of from 1 to 100 microns, more preferable 5 to 50 microns, and even more preferably 10 to 25 microns (paragraph 0041). With regard to the claimed sheath, Shultz et al., the sheath layer comprises poly(4-methyl-1-pentene). It forms a coextensive sheath layer with the outer surface of the fiber core, exclusive of the ends of the fiber core which may or may not be coated with the sheath layer. While not a requirement, the sheath layer is preferably substantially uniform and complete. The sheath layer may have any thickness, but is preferably from 1 to 8 microns, more preferably 1 to 5 microns in average thickness. In some preferred embodiments, the sheath layer comprises 1 to 40 percent by weight of the thermoplastic core-sheath fiber; however, other amounts may also be used (paragraph 0042). The Examiner is of the position that it appears that core and the sheath can be made with the same poly(4-methyl-1-pentene) and thus meets claim 13. In other words, it appears that the polymer used to form the sheath and the core can be the same or different. With regard to the claimed charge enhancing additive, Shultz et al., teach at least one of the fiber core and the sheath layer may contain an electrostatic charge enhancing additive. Many charge enhancing additives for making electret-containing fiber webs are known in the art. Exemplary electrostatic charge enhancing additives may include pigments, light stabilizers, primary and secondary antioxidants, metal deactivators, hindered amines, hindered phenols, metal salts, phosphite triesters, phosphoric acid salts, fluorine-containing compounds, and combinations thereof (paragraphs 0043-0044). The charge-enhancing additive(s) can be added in any suitable amount. The charge-enhancing additives of this disclosure may be effective even in relatively small quantities. Typically, the charge-enhancing additive is present in a thermoplastic resin and charge-enhancing additive blend in amounts of up to about 10% by weight, more typically in the range of 0.02 to 5% by weight based upon the total weight of the blend. In some embodiments, the charge-enhancing additive is present in an amount ranging from 0.1 to 3% by weight, 0.1 to 2% by weight, 0.2 to 1.0% by weight, or 0.25 to 0.5% by weight (paragraph 0049-0050). With regard to the limitation of a charge enhancing additive that is solid at ambient temperatures, Shultz et al., teach that the charge enhancing additive is added/mixed into the polymeric resin as a solid (paragraph 0051). As such, the Examiner is of the position that the Shultz et al., meets the limitation of providing a charge enhancing additive that is solid at ambient temperatures. With regard to the size of the fibers, Shultz et a., teach that fibers used in practice of the present disclosure (including core-sheath fibers) may have any average fiber diameter, and may be continuous, random, and/or staple fibers. For example, in some embodiments, the fibers (i.e., individual fibers) may have an average fiber diameter of greater than or equal to 11 microns (e.g., greater than or equal to 12 microns, greater than or equal to 15 microns, greater than or equal to 20 microns) up to 25 microns, up to 26 microns, up to 27 microns, up to 28 microns, up to 29 microns, up to 30 microns, up to 35 microns, up to 40 microns, or even up to 50 microns). In some preferred embodiments, the fiber has an average diameter of, preferably 10-50 microns, more preferably 15-40, more preferably 20 to 30 microns or even 20 to 25 microns) (paragraph 0056). Shultz et al., teach that nonwoven fibrous webs may be made, for example, by conventional air laid, carded, stitch bonded, spunbonded, wet laid, and/or meltblown procedures (paragraph 0062). Shultz et al., teach that the present disclosure provides a respirator comprising a nonwoven fibrous web according to the present disclosure (paragraph 0015).
Claim Rejections - 35 USC § 102/103
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
8. Claim(s) 20 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shultz et al., US 2022/0372666 A1.
Shultz et al., does not expressly the claimed loss property as presently set forth; however the Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claim Rejections - 35 USC § 103
9. 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.
10. Claim(s) 3 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al., US 2022/0372666 A1 in view of Masuda et al., JP 2007211376 A
Schultz et al., does not teach the limitations of claims 3 and 12.
The published JP application issued to Masuda et al., teach forming bicomponent fibers wherein the sheath component comprises a fluorinated compound (title and abstract). Applications include articles such as clothing, leisure goods, household goods, wipers, filters, civil engineering materials, building materials, sanitary goods, and medical goods, which are made using this composite fiber fabric. The conjugate fiber has a sheath-core structure comprising (A) a core comprising a thermoplastic resin and (B) a sheath comprising a thermoplastic resin having a melting point of 225°C and a fluorine-containing compound (see document translation). Examples of the thermoplastic resin used for the core include polyamide resin (for example, nylon 6, nylon 12, nylon 66, aromatic nylon, copolymer nylon), polyester resin (for example, polyethylene terephthalate, polybutylene terephthalate), polyolefin resin ( For example, polyethylene, polypropylene, copolymers of ethylene and propylene, copolymers of ethylene or propylene and C .sub.4 to C .sub.20 α olefins, terpolymers of ethylene, propylene and C .sub.4 to C .sub.20 α olefins, ethylene and vinyl acetate Copolymer, copolymer of propylene and vinyl acetate, copolymer of styrene and α-olefin, polyisobutylene), polyether resin, polyether ester resin, polyacrylate resin, ethylene alkyl Acrylate resins, polydiene resins (e.g., polybutadiene, copolymers of isobutylene and isoprene), and the like polyurethane resins, polyether ether ketone resins, polyether imide resins, polyether sulfone resins, polyphenylene sulfide resins, polycarbonate resins. The melting point of the thermoplastic resin used for the core may be, for example, 80 to 350 ° C. (see document translation). Examples of the thermoplastic resin having a melting point of 225 ° C. or lower, for example, 80 to 180 ° C., used for the sheath are polyamide resin (for example, nylon 6, nylon 12, aromatic nylon, copolymer nylon), polyolefin resin (for example, polyethylene, polypropylene), Ethylene-propylene random copolymer, ethylene-α-olefin copolymer, propylene-α-olefin copolymer, polybutylene, polymethylpentene) and the like (see document translation). Both the core and sheath thermoplastic polymers can be a polyolefin resin. With regard to specific regard to claim 3, the ratio of the claimed sheath and the core is preferably such that the core is 50 to 99% by weight of the composite fiber and the sheath is 1 to 50% by weight of the composite fiber. More preferably, the core is 60 to 98% by weight, the sheath is 2 to 40% by weight, still more preferably the core is 70 to 97% by weight, and the sheath is 3 to 30% by weight (see document translation). Though, the combined references fail to expressly teach the claimed ratio of claim 3, the Examiner is of the position that absent unexpected results, a person of ordinary skill in the art would recognize that the ratio of the polymers used to form the sheath and core of the fiber can be varied as a function of desired properties and end use. It has been held that, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA). The Examiner considers the cited references analogous since they are both considered with forming the types of fibers and end products. It appears that the fluorine comprising compound imparts oil and water repellency to the fibers and fabrics. As such, it is the position of the Examiner that it would have been obvious to a person of ordinary skill in the art to formulate the fibers of Shultz et al., with thermoplastic polyolefins and/or thermoplastic polyolefins further comparing a fluorine compound for the purpose of providing an electrostatic article having water and oil repellency.
11. Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al., US 2022/0372666 A1 as applied to claim 16 above and further in view of Reed et al., EP 0325854
Shultz et al., does do not teach the claimed pleated filter.
However, the cited references both teach forming respiratory filters and articles used in industrial and/or medical applications.
The published EP application issued to Reed et al., also teach forming bicomponent fibers used form non-woven electret filters (abstract and page 4, 1-6). Said filters can be used as respirator filters (abstract). Reed et al., also teach meltblown fibers having a diameter ranging from 1-10 micrometers but not less than 40 micrometers (page 4, 1-20). Reed et al., further teach that the fibers can be further electrostatically charged via corona or pulse charge (page 4, 1-20). Reed et al., teach that polypropylene micro-fibers show enhanced electret filtration (page 3, 1-5). It would have been obvious to a person of ordinary skill in the art at the time the invention was made to form the fibers of Shultz et al., into a non-woven electret filter having enhanced electret filtration as taught by Reed et al.
Reed et al., does not teach that the filter is pleated. The Examiner is of the position that a person of ordinary skill in the art would recognize that the respirator filter can be formed with pleats. It is known that pleats increase surface area and thus would increase the filtering capabilities.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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