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 .
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 12, 13, 15–20, 27 and 29–31 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., US 2021/0352914 A1 in view of Coombs et al., US 5,840,245.
Regarding claims 12 and 15, Chen teaches a filter for an HVAC system, which reads on the claimed “filter element.” See Chen [0030]. Note that the preamble limitation requiring that the filter element is “for an air conditioning unit” fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the filter element. See MPEP 2111.02, subsection II.
The filter comprises a substrate that may be woven or non-woven. See Chen [0029]. The substrate reads on the “textile substrate selected from woven and nonwoven fabric.”
The filter further comprises graphene particles disposed in the substrate, which reads on the “composition comprising graphene.” See Chen [0006]. The graphene comprises platelets having a lateral dimension of 100 to 2,000 nm and a thickness of 1 to 200 nm. See Chen [0015]. These ranges overlap with the claimed ranges of “at least ninety percent (90%) have a lateral dimension from 500 nm to 50000 nm and a thickness from 0.34 to 50 nm,” establishing a prima facie case of obviousness. See MPEP 2144.05, subsection I. The graphene particles can be “free from antibacterial or antiviral agents comprising metal elements or metal compounds,” as claimed, because the graphene particles are loaded with a viral or anti-microbial component that can be exclusively curcumin and/or hypericin, neither of which contain metal. See Chen [0011]–[0012].
The graphene is applied on the substrate and inside the substrate, as claimed, because the substrate can be saturated with an ink comprising the graphene particles. See Chen [0008], [0132].
Chen differs from claims 12 and 15 because it is silent as to the weight of the graphene per square meter of the substrate. Therefore, the reference fails to provide enough information to teach that the graphene is present in an amount from 2 to 20 g of graphene per square meter of textile material (claim 12) or an amount from 4 to 15 g of graphene per square meter of textile material (claim 15).
But the graphene particles are applied to the substrate such that the graphene particles function as an antimicrobial component for the filter material. See Chen [0006]–[0007].
With this in mind, Coombs teaches that the mass of an antimicrobial component applied to a filter material is result effective because the antimicrobial component must be supplied in a sufficient amount to ensure that it is antimicrobially effective. See Coombs col. 4, ll. 49–54. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use routine experimentation to determine the optimal amount of graphene per square meter of the substrate in Chen to ensure that there is a sufficient amount of graphene to be antimicrobially effective. See MPEP 2144.05, subsection II (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).
Regarding claim 13, Chen teaches that the graphene is uniformly applied on all the textile substrate. See Chen [0008].
Regarding claim 16, the filter of Chen in view of Coombs would be expected to exhibit the property of an increase in pressure drop for the textile substrate treated with the graphene, with respect to a pressure drop shown by textile substrate not treated with graphene, is lower than 60% as measured with standard UNI EN 14683: 2019 because the filter of Chen in view of Coombs has substantially the same structure as claimed. See MPEP 2112.01 (when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent).
Regarding claims 17–20, the filter of Chen in view of Coombs would be expected to exhibit the claimed antibacterial and anti-viral properties because the filter of Chen in view of Coombs has substantially the same structure as claimed. See MPEP 2112.01.
Regarding claims 27 and 29, Chen teaches a filter for an HVAC system. See Chen [0030]. The HVAC system utilizing the filter reads on the claimed “air conditioning unit” and the filter reads on the “filter element.”
The filter comprises a substrate that may be woven or non-woven. See Chen [0029]. The substrate reads on the “textile substrate selected from woven and nonwoven fabric.”
The filter further comprises graphene particles disposed in the substrate, which reads on the “composition comprising graphene.” See Chen [0006]. The graphene comprises platelets having a lateral dimension of 100 to 2,000 nm and a thickness of 1 to 200 nm. See Chen [0015]. These ranges overlap with the claimed ranges of “at least ninety percent (90%) have a lateral dimension from 500 nm to 50000 nm and a thickness from 0.34 to 50 nm,” establishing a prima facie case of obviousness. See MPEP 2144.05, subsection I. The graphene particles can be “free from antibacterial or antiviral agents comprising metal elements or metal compounds,” as claimed, because the graphene particles are loaded with a viral or anti-microbial component that can be exclusively curcumin and/or hypericin, neither of which contain metal. See Chen [0011]–[0012].
The graphene is applied on the substrate and inside the substrate, as claimed, because the substrate can be saturated with an ink comprising the graphene particles. See Chen [0008], [0132].
Chen differs from claims 27 and 29 because it is silent as to the weight of the graphene per square meter of the substrate. Therefore, the reference fails to provide enough information to teach that the graphene is present in an amount from 2 to 20 g of graphene per square meter of textile material (claim 27) or an amount from 4 to 15 g of graphene per square meter of textile material (claim 29).
But the graphene particles are applied to the substrate such that the graphene particles function as an antimicrobial component for the filter material. See Chen [0006]–[0007].
With this in mind, Coombs teaches that the mass of an antimicrobial component applied to a filter material is result effective because the antimicrobial component must be supplied in a sufficient amount to ensure that it is antimicrobially effective. See Coombs col. 4, ll. 49–54. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use routine experimentation to determine the optimal amount of graphene per square meter of the substrate in Chen to ensure that there is a sufficient amount of graphene to be antimicrobially effective. See MPEP 2144.05, subsection II (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).
Regarding claims 30 and 31, the filter of Chen in view of Coombs would be expected to exhibit the claimed antibacterial and anti-viral properties because the filter of Chen in view of Coombs has substantially the same structure as claimed. See MPEP 2112.01.
Claims 14, 22–26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., US 2021/0352914 A1 in view of Coombs et al., US 5,840,245 and in further view of Cesareo et al., WO 2015/193267 A11.
Regarding claims 14 and 28, Chen in view of Coombs teaches the limitations of claims 12 and 27, as explained above.
Chen in view of Coombs differs from claims 14 and 28 because Chen is silent as to the carbon-oxygen (C/O) ratio of the graphene. Therefore, the reference is silent as to the C/O ratio being ≥ 100:1 as claimed.
But Cesareo teaches graphene nanoplatelets with a lateral size of 50 to 50,000 and a thickness of 0.34 to 30 nm, which are similar dimensions to the graphene platelets in Chen, and wherein the nanoplatelets have a C/O ratio ≥ 100:1. See Cesareo p. 5. It would have been obvious to use the graphene nanoplatelets of Cesareo as the graphene platelets of Chen because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Regarding claims 22 and 24, Chen teaches a method of manufacturing a filter that can be used in an HVAC system, which reads on the claimed “method for manufacturing a filter element for an air conditioning unit.” See Chen [0030], [0050].
The method comprises impregnating a substrate in a bath comprising water and graphene particles, which reads on “impregnation of a textile substrate in an aqueous bath containing graphene.” Id. at [0046], [0050]. [0132]. The substrate may be woven or non-woven, which reads on “the textile substrate is selected from woven and nonwoven fabric.” Id. at [0029]. The graphene comprises platelets having a lateral dimension of 100 to 2,000 nm and a thickness of 5 to 200 nm. Id. at [0015]. These ranges overlap with the claimed ranges of “at least ninety percent (90%) have a lateral dimension from 500 nm to 50000 nm and a thickness from 0.34 to 50 nm,” establishing a prima facie case of obviousness. See MPEP 2144.05(I). The bath (the “impregnation bath”) is an aqueous bath in which the graphene nano-platelets are dispersed. Id. at [0046].
The process applies the graphene on the substrate and inside the substrate because the substrate is saturated with the water bath and is dried to provide a uniform and even coating across the fabric. See Chen [0132].
The bath comprising water and graphene particles can be “free from antibacterial or antiviral agents comprising metal elements or metal compounds,” as claimed, because the graphene particles are loaded with a viral or anti-microbial component that can be exclusively curcumin and/or hypericin, neither of which contain metal, with there being no other teaching that the bath is required to contain metal. See Chen [0011]–[0012].
Chen differs from claim 22 because it is silent as to the carbon-oxygen (C/O) ratio of the graphene. Therefore, the reference is silent as to the C/O ratio being ≥ 100:1 as claimed.
But Cesareo teaches graphene nanoplatelets with a lateral size of 50 to 50,000 and a thickness of 0.34 to 30 nm, which are similar dimensions to the graphene platelets in Chen, and wherein the nanoplatelets have a C/O ratio ≥ 100:1. See Cesareo p. 5. It would have been obvious to use the graphene nanoplatelets of Cesareo as the graphene platelets of Chen because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Chen differs from claims 22 and 24 because it is silent as to the weight of the graphene per square meter of the substrate. Therefore, the reference fails to provide enough information to teach that the graphene is present in an amount from 2 to 20 g of graphene per square meter of textile material (claim 22) or an amount from 4 to 15 g of graphene per square meter of textile material (claim 24).
But the graphene particles are applied to the substrate such that the graphene particles function as an antimicrobial component for the filter material. See Chen [0006]–[0007].
With this in mind, Coombs teaches that the mass of an antimicrobial component applied to a filter material is result effective because the antimicrobial component must be supplied in a sufficient amount to ensure that it is antimicrobially effective. See Coombs col. 4, ll. 49–54. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use routine experimentation to determine the optimal amount of graphene per square meter of the substrate in Chen to ensure that there is a sufficient amount of graphene to be antimicrobially effective. See MPEP 2144.05, subsection II (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).
Regarding claim 23, Chen teaches that the graphene is uniformly applied on all the textile substrate. See Chen [0008].
Regarding claims 25 and 26, the filter of Chen in view of Coombs would be expected to exhibit the claimed antibacterial and anti-viral properties because the filter of Chen in view of Coombs has substantially the same structure as claimed. See MPEP 2112.01.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,329,214 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 substantially teaches all of the limitations of claims 12–21 of instant application.
Response to Arguments
35 U.S.C. 103 Rejections
The Applicant argues that Chen fails to teach the limitation of graphene which is “free from antibacterial or antiviral agents comprising metal elements or metal compounds.” See Applicant Rem. dated November 5, 2025 (“Applicant Rem.”) 9–10. Instead, it is argued that the antimicrobial effectiveness of the graphene particles is attributed to the presence of additional antimicrobial components, such as metal ions or metal nanoparticles adhered to the graphene particles. Id. The Applicant asserts that, in contrast, claim 12 as amended relies solely on graphene itself as the antimicrobial agent, without any additional metal-containing antimicrobial components. Id.
The Examiner respectfully disagrees. Chen teaches the graphene particles are loaded with a viral active or anti-microbial component. See Chen [0011]. The viral active or anti-microbial component comprises “individually or in combination” metal ions, metal nanoparticles, curcumin and/or hypericin. Id. at [0012]. Curcumin and hypericin are each organic compounds that lack metal. Therefore, graphene particles could be “free from antibacterial or antiviral agents comprising metal elements or metal compounds,” as claimed, when the graphene particles are loaded with curcumin and/or hypericin, without being loaded with metal ions or metal nanoparticles.
The Examiner also respectfully disagrees with the Applicant’s argument that claim 12 as amended relies solely on graphene itself as the antimicrobial agent. Claim 12 says that the composition containing graphene is “free from antibacterial or antiviral agents comprising metal elements or metal compounds”—not that the composition is free from any antibacterial or antiviral agent other than the graphene itself. As noted, the viral active or antimicrobial component of Chen can be solely curcumin or hypericin, each of which are free of metal.
Double Patenting
The Examiner maintains the previous double patenting rejections.
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 T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
1 Cesareo is in the record as the 32-page Foreign Reference filed June 21, 2023.