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 .
Status of Claims
Claims 1-7 and 9-18 are currently amended
Claims 19-21 were previously withdrawn from consideration
Claim 8 is currently canceled
Claims 1, 3, 7, 10, 14 and 16-18 are currently amended
Claims 1-7 and 9-18 are currently rejected
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 9-18 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-13 of co-pending Application No. 18/257726 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Independent claim 1 of the current application (18/257725) discloses a filter media comprising a first component and a second component, said first component having a core with an Al2O3 content and a nanoalumina coating. Corresponding dependent claims 2-7 and 9-18 further disclose an SiO2 content, matrix fibres including cellulose fibres, a mass ratio of the first component to the second component, a wet strength, along with additional other details.
Claims 1-13 of co-pending Application No. 18/257726 further disclose a filter media comprising a first component (filtration particle) and a second component (matrix fibres including cellulose fibres), a Al2O3 content, a nanoalumina coating, an SiO2 content, a mass ratio of the first component to the second component, a wet strength, along with additional other details.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-7 and 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over JO et al. (U.S. 2016/0244373 A1) (hereinafter “Jo”) in view of Oishi (U.S. 2004/0140268 A1) (hereinafter “Oishi”) and further in view of Tepper et al. (U.S. 2003/0127393 A1) (hereinafter “Tepper”).
Regarding Claim 1:
Jo teaches a filter media (ceramic filter media) (see paragraphs 1, 12-14, 27-28 and 46-49) comprising a first component (ultrafine fibers) (see paragraphs 13-15 and 27), said first component having a core with a Al2O3 (see paragraphs 14, 27, 31 and 42-43 further discussing metal oxide including gamma-alumina (γ- Al2O3)) and a nanoalumina coating that at least partially coats the core (see paragraphs 14, 27 and 46-49 further discussing nanoalumina coating at least partially the core (fibers)), wherein the core is in a form of a fibre, plate or powder particle (layer of a fibrous porous body) (see paragraphs 12-14, 27-28, 32, 39 and 46-49) and wherein the filter media further comprises matrix fibres as a second component (polymer resin in a form of fibers) (see paragraphs 13-14, 27, 42-44 and 46-49).
Jo does not explicitly teach said first component having a core with an Al2O3 content of at least 10 wt%, wherein the matrix fibres are selected from one or more of cellulose fibres, synthetic fibres, and fibrillated fibres, as recited in amended, independent claim 1.
Oishi further teaches a filter media system and method including fibers with an Al2O3 content of at least 10 wt% (see Oishi paragraph 12).
Tepper further teaches modifying a nano alumina media to further increase strength and reduce shredding of fibrous components by adding cellulose fibers (see Tepper paragraphs 85-92).
Jo and Oishi are analogous inventions in the art of teaching a filter media. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the filter media of Jo to have a core with an Al2O3 content of at least 10 wt%, as taught by Oishi, to effectively and efficiently remove unwanted contaminants, viruses and bacteria from a fluid source (see Oishi paragraphs 1-3 and 8-12).
Jo, Oishi and Tepper are analogous inventions in the art of teaching a filter media. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the filter media of Jo, as modified by Oishi, to add matrix fibres such as cellulose fibres, as taught by Tepper, to further increase strength and reduce shredding of fibrous components (see Tepper paragraphs 85-92).
Regarding Claim 2:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Oishi further teaches the Al2O3 content of the core is at least 20 wt%, or at least 40 wt%, or at least 60 wt%, or at least 80 wt% (see Oishi paragraph 12).
Jo, Oishi and Tepper are analogous inventions in the art of teaching a filter media. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the filter media of Jo, as modified by Tepper, to have a core with an Al2O3 content of at least 10 wt%, as taught by Oishi, to effectively and efficiently remove unwanted contaminants, viruses and bacteria from a fluid source (see Oishi paragraphs 1-3 and 8-12).
Regarding Claim 3:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches comprising an SiO2 within the core (see Jo paragraphs 42 and 46-49), wherein a SiO2 content of the core is less than 60 wt%, or less than 40 wt%, or less than 20 wt% (see Jo paragraphs 42 and 46-49) (Examiner’s note: Examiner is broadly interpreting ‘less than 60 wt%, or less than 40 wt%, or less than 20 wt%’ to include 0 wt%).
Regarding Claim 4:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the core is selected from one or more of aluminum oxide powder, alumina fibres, crystalline aluminosilicates, and non-crystalline aluminosilicates (see Jo paragraphs 14, 27, 31, 42-43 and 46-49).
Regarding Claim 5:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the core has an average size of from 0.1 to 50 µm (see Jo paragraphs 13-15, 27, 31, 33, 35-36 and 45-49).
Regarding Claim 6:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the first component comprises the nanoalumina coating from 10 to 99 wt%, or from 50 to 95 wt%, or from 70 to 90 wt% (see Jo paragraphs 14, 27 and 46-49 further discussing nanoalumina coating at least partially the core (fibers)).
Regarding Claim 7:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the core constitutes from 1 to 90 wt%, or from 5 to 50 wt%, or from 10 to 30 wt% of the first component (see Jo paragraphs 14, 27 and 46-49 further discussing nanoalumina coating at least partially the core (fibers)).
Regarding Claim 9:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the matrix fibres are at least partially coated with nanoalumina (polymer resin in a form of fibers) (see Jo paragraphs 13-14, 27, 42-44 and 46-49).
Regarding Claim 10:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches nanoalumina is in an amount of from 20 to 70 wt%, or from 30 to 60 wt%, or from 40 to 50 wt% based on a total weight of the filter media (see Jo paragraphs 14, 27 and 46-49 further discussing nanoalumina coating at least partially the core (fibers)).
Regarding Claim 11:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the filter media comprises less than 1 wt% glass fibres, or less than 0.1 wt% glass fibres (Examiner’s note: Examiner is broadly interpreting ‘less than 1 wt% glass fibres, or less than 0.1 wt% glass fibres’ to include 0 wt%) (see Jo paragraphs 1, 12-14, 27-28 and 46-49).
Regarding Claim 12:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the filter media has a mass ratio of the first component to the second component of from 4:1 to 1:10 (see Jo paragraphs 13-15, 27, 31, 33, 35-36 and 45-49).
Regarding Claim 13:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the filter media is a non-woven (electrospinning) (see Jo paragraphs 1, 12-14, 27-28 and 46-49).
Regarding Claim 14:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the filter media has a wet burst strength of at least 20 inches of water (in H2O) or at least 30 inches of water (in H2O) (see Jo Examples including paragraphs 53-55).
Regarding Claim 15:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the filter media has a tensile strength of at least 3 lb/in or at least 5 lb/in (see Jo Examples) (see Jo paragraphs 13-15, 27, 31, 33, 35-36 and 45-49).
Regarding Claim 16:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the core constitutes at least 1 wt%, or at least 5 wt%, or 5 to 70 wt% or 5 to 50 wt% based on a total weight of the filter media (see Jo paragraphs 14, 27 and 46-49 further discussing nanoalumina coating at least partially the core (fibers)).
Regarding Claim 17:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Jo further teaches the filter media comprises 5 to 70 wt%, or 20 to 50 wt% of the matrix fibres based on a total weight of the filter media (see Jo paragraphs 14, 27 and 46-49 further discussing nanoalumina coating at least partially the core (fibers)).
Regarding Claim 18:
The combination of Jo, Oishi and Tepper teaches the filter media of claim 1, wherein Tepper further teaches modifying a nano alumina media to further increase strength and reduce shredding of fibrous components by adding cellulose fibers (see Tepper paragraphs 85-92).
Jo, Oishi and Tepper are analogous inventions in the art of teaching a filter media. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the filter media of Jo, as modified by Oishi, to add matrix fibres such as cellulose fibres, as taught by Tepper, wherein the filter media comprises 5 to 70 wt%, or 5 to 50 wt% of the cellulose fibres based on total weight of the filter media to further increase strength and reduce shredding of fibrous components (see Tepper paragraphs 85-92).
Other References Considered
Kaledin et al. (U.S. 2014/0001123 A1) (hereinafter “Kaledin”) teaches an aluminized silicious powder and water purification device.
CAI MINGFANG et al. (CN 111118959 A) (hereinafter “Cai”) (see attached English description) teaches a ceramic fiber paper coated with nanoalumina.
Osterhoudt (U.S. 2010/0326928) (hereinafter “Osterhoudt”) teaches a filtration system.
Response to Arguments
Applicant's arguments filed 03/12/2026 have been fully considered but focus on amended claim limitations, which have been addressed above in the updated rejection (see above).
The previous claim objections have been considered and are now withdrawn as a result of the current claim amendments.
The previous 112(b) claim rejections have been considered and are now withdrawn as a result of the current claim amendments.
The previous provisional double patenting rejection has been reviewed and considered, and is held in abeyance as requested by Applicant.
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 AKASH K VARMA whose telephone number is (571)272-9627. The examiner can normally be reached Monday-Friday 9-5 pm.
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/AKASH K VARMA/Primary Examiner, Art Unit 1773
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