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 claims 1-4 in the reply filed on 3/24/2026 is acknowledged. The traversal is on the ground(s) that International Searching Authority found unity of invention and the results of Group A would also applicable to the filter of Group B. This is not found persuasive because the International Searching Authority is not required to issue a restriction based on lack of unity when lack of unity is present. The Authority can choose to examine different groups of invention even when lack of unity is present. Examiner has provided sufficient rational and basis to show that no special technical feature exists between the groups of invention and restriction is proper. In regards to the arguments directed to burden and overlap of search results, such arguments are not germane to PCT restrictions based on lack unity of invention and a common special technical feature but are instead relevant to US restriction practice. It is noted that Applicant has amended the claims and assert unity based on the amended language. As can be seen in the rejection below, no special technical feature exists between the groups of invention even with the inclusion of the amended language.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102/103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tamada et al. (JP 2008/229586 machine translation provided by Examiner).
Regarding claim 1, Tamada teaches a material comprising a polyethylene porous base material having a basis weight of 30-200 g/m2 (pages 5-6), graft chains fixed to the base material having a functional group and derived from a reactive monomer glycidyl methacrylate having a vinyl group (pages 5 and 8), the graft chains having a graft rate of around 100% (pages 3 and 12), and the functional group being iminodiacetic acid (pages 5 and 7-8).
Tamada teaches the basis weight of the of the base material being 30-200 g/m2 and is silent on the basis weight of the total material. One skilled in the art would either consider Tamada to have a similar basis weight of the material as claimed given the overlapping ranges, or it would have been obvious to optimize the grafting percentage and other factors in order to achieve the claimed basis weight with a reasonable expectation of success as it is merely optimizing concentrations/components with a reasonable expectation of success given the overlapping of the taught basis weight for the base material and the basis weight of the material as a whole. This is further supported by claim 3 of the present invention, which details overlapping basis weight for the polyethylene porous material to Tamada, the same reactive monomer (glycidyl methacrylate having a vinyl group), the same functional group (iminodiacetic acid), and the same grafting rate, which would result in similar basis weights due to all materials being the same.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamada et al. (JP 2008/229586 machine translation provided by Examiner) in view of Kelly et al. (CN 1395498 machine translation provided by Examiner).
Regarding claim 2, Tamada teaches that the polyethylene porous base material is nonwoven but fails to teach the base material being a porous film. Kelly teaches that known polyethylene base material for filters include nonwoven material and porous films and that such filter material can further be grafted (pages 5-6). As such, one skilled in the art would have found it obvious to provide the polyethylene base material as either a nonwoven material or a porous film as the prior art recognizes that both are known and used equivalent filter material and one skilled in the art would have a reasonable expectation of success in doing so.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamada et al. (JP 2008/229586 machine translation provided by Examiner) in view of Tamada et al. (JP 2009/091707 in IDS hereinafter `707).
Regarding claim 3, Tamada teaches a method of forming the material of claim 1 above comprising polymerizing the reactive monomer of glycidyl methacrylate having a vinyl group in a polyethylene porous base material, the base material having a basis weight as low as 30 g/m2 by radiation resulting in a graft rate of around 100% wherein a functional group of iminodiacetic acid is grafted into the graft chains (pages 3, 5-8, and 12).
Tamada is silent on the void rate being 70% or more. `707 teaches that for similar grafted filter material, the free space/void rate is optimized as a too small porosity/void volume would lead to lack of penetration during the grafting step and too large a porosity/void would result in fuzzy and reduced strength filter material. As such, it would have been obvious to optimize the void rate/porosity variable in order to provide the desired grafting reaction with a filter material that has enough strength (The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.).
It is also noted that in `707, porosity percentage is the term used to denote void rate (Porosity (%) = 100−Fiber filling rate (%)). `707 further teaches that the preferable range of the fiber filling rate is 10-40%, which would equate to 60-90% porosity percentage/void rate, which encompasses the void rate claimed.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamada et al. (JP 2008/229586 machine translation provided by Examiner) in view of Tamada et al. (JP 2009/091707 in IDS hereinafter `707), and further in view of Kelly et al. (CN 1395498 machine translation provided by Examiner).
Regarding claim 4, Tamada teaches that the polyethylene porous base material is nonwoven but fails to teach the base material being a porous film. Kelly teaches that known polyethylene base material for filters include nonwoven material and porous films and that such filter material can further be grafted (pages 5-6). As such, one skilled in the art would have found it obvious to provide the polyethylene base material as either a nonwoven material or a porous film as the prior art recognizes that both are known and used equivalent filter material and one skilled in the art would have a reasonable expectation of success in doing so.
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777
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