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 1, 2, 4–8, 10, 12–14 and 17–20 are rejected under 35 U.S.C. 103 as being unpatentable over Zinn et al., WO 2021/158726 A1.
Regarding claim 1, Zinn teaches a filtration medium comprising a porous construct made of a non-woven material, which is a material comprising fibers. See Zinn [0024], [0076]. The filtration medium reads on the “nonwoven material.”
The porous construct reads on the “substrate comprising fibers.” See Zinn [0024], [0074]. The porous construct has at least two opposing surfaces because the filtration medium is interpreted as a substantially flat piece of material, with the reference describing the filtration media having “surfaces.” Id. at [0018]. One of the surfaces reads on the “first surface” and the opposing surface reads on the “opposing second surface.”
The filtration medium also comprises metal oxide nanoparticles, made from oxides such as ZnO, TiO2, NiO, or oxides of copper, disposed within the porous construct between the two surfaces. See Zinn [0017]–[0018], [0034], [0069]. The nanoparticles read on the claimed “nanoparticles.” See Zinn [0018]. The nanoparticles are 250 nm or less in size, which reads on “the nanoparticles have at least one dimension less than 1 micron.” Id. at [0021].
As noted, the metal oxide nanoparticles can be made of ZnO, TiO2, NiO, or oxides of copper. See Zinn [0017], [0034], [0069]. ZnO, TiO2, NiO, or oxides of copper are ceramic materials. See Oh et al., US 2020/0152907 A1 [0064], (“a ceramic material, for example TiO2 or ZnO”); Jin et al., US 5,725,938 col. 3, ll. 48–54 (ceramic powder includes copper oxides and NiO). This reads on “the nanoparticles comprise a material selected from…ceramic materials.”
The limitations of—“an area density of the nanoparticles decreases from the first surface towards the second surface and wherein the nanoparticles are disposed within the substrate from the first surface to at least a midpoint between the first surface and the second surface”—are now addressed.
Zinn teaches that the nanoparticles can be loaded into the filtration medium such that they are distributed in a gradient fashion near one or more surfaces of the porous construct. See Zinn [0018]. The gradient distribution means that an area density of the nanoparticles decreases from the first surface towards the second surface. Zinn also teaches that the nanoparticles can be loaded substantially uniformly throughout the air filtration medium (as opposed to the nanoparticles being localized at an outer surface, e.g., within the top 3–4 fabric layers). Id. at [0078]. The uniform loading means that the nanoparticles extend through the thickness of the filter medium from the first surface through the midpoint to the second surface. While Zinn is silent as to an example where the nanoparticles are both distributed in a gradient and with the gradient extending from the first surface through the midpoint to the second surface, it would have been obvious to combine the loading techniques such that the nanoparticles are distributed in a gradient fashion from the first surface through the midpoint to the second surface because Zinn teaches that the nanoparticles can be distributed in a gradient and can be extend from the first surface to the second surface. This reads on—“an area density of the nanoparticles decreases from the first surface towards the second surface and wherein the nanoparticles are disposed within the substrate from the first surface to at least a midpoint between the first surface and the second surface.”
Regarding claim 2, Zinn teaches that the nanoparticles disposed adjacent to, or near, the first surface are greater in number than the nanoparticles disposed adjacent to, or near the second surface because the nanoparticles are distributed in a gradient fashion near one or more surfaces of the porous construct. See Zinn [0018].
Regarding claim 4, Zinn as modified teaches that the nanoparticles are disposed within the substrate from the first surface to the second surface, as claimed, because with the uniform loading, the nanoparticles extend through the thickness of the filter medium from the first surface through the midpoint to the second surface. See Zinn [0078].
Regarding claims 5 and 6, Zinn as modified teaches the limitations of claims 1 and 2, as explained above.
Zinn differs from claim 5 because it is silent as to the area density of the metal nanoparticles at the midpoint being about 25% of the density of the nanoparticles at the first surface. Zinn differs from claim 6 because it is silent as to the area density of the metal nanoparticles at the second surface being about 50% of the density of the nanoparticles at the first surface.
But the metal nanoparticles can be evenly distributed throughout the entire thickness of the filtration media, or can be distributed in a gradient fashion upon or near one or more surfaces of the filtration media. See Zinn [0018]. Also, the metal nanoparticles are provided in the filtration media to provide biocidal properties to the filtration media. Id. at [0017]. Zinn further teaches that considerations for determining suitable nanoparticle loading include, for example, the length or number of times the air filtration medium is intended to be used and the overall flux of air passing therethrough over the period of intended use. Id. at [0078]. It would have been obvious to use routine experimentation to determine the optimal area density of the metal nanoparticles at the midpoint or the second surface of the filtration media to optimize the biocidal activity provided to the media, in addition to optimizing the length of use for the filter medium and overall flux of air passing therethrough. 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 7 and 8, Zinn as modified teaches that the substrate has a thickness from the first surface to the second surface. See Zinn [0018]. Zinn as modified also teaches that the nanoparticles are disposed within the air filtration medium in at least 100% of the width from the first surface to the second surface because with the uniform loading, the nanoparticles extend through the thickness of the filter medium from the first surface through the midpoint to the second surface. See Zinn [0078]. This “the nanoparticles are disposed within the substrate in at least 70% of the width from the first surface to the second surface” (claim 7) and “the nanoparticles are disposed within the substrate in at least 90% of the thickness from the first surface to the second surface” (claim 8).
Regarding claim 10, the claim recites the limitations of—“the nanoparticles are isolated within a gas and dispersed through the first surface of the substrate.” This limitation describes the process of manufacturing the filter media instead of its structure. Therefore, the limitations of claim 10 fail to patentability distinguish over the prior art. See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production).
Regarding claim 12, Zinn teaches a filtration medium comprising a porous construct made of a non-woven material, which is a material comprising fibers. See Zinn [0024], [0076]. The filtration medium reads on the “nonwoven material.”
The porous construct reads on the “substrate comprising fibers.” See Zinn [0024], [0074]. While Zinn is silent as to the diameter of the fibers when the porous construct is a non-woven material, Zinn provides an example where the porous construct is a fabric (without specifying whether the fabric is nonwoven) having an average fiber diameter of about 10 microns. Id. at [0136]. Therefore, it would have been obvious for the fibers of the porous construct to have an average fiber diameter of about 10 microns, because the reference suggests that this fiber diameter is suable for the fabric of the porous construct. The prior art range of about 10 microns is within the claimed range of “greater than 1 micron.”
The filtration medium also comprises metal oxide nanoparticles, made from oxides such as ZnO, TiO2, NiO, or oxides of copper, disposed within an internal structure of the porous construct and bonded to the fibers of the porous construct. See Zinn [0017]–[0018], [0034], [0048], [0069]. The nanoparticles read on the claimed “nanoparticles.” See Zinn [0018]. The nanoparticles are 250 nm or less in size, which reads on “the nanoparticles have at least one dimension less than 1 micron.” Id. at [0021].
As noted, the metal oxide nanoparticles can be made of ZnO, TiO2, NiO, or oxides of copper. See Zinn [0017], [0034], [0069]. ZnO, TiO2, NiO, or oxides of copper are ceramic materials. See Oh et al., US 2020/0152907 A1 [0064], (“a ceramic material, for example TiO2 or ZnO”); Jin et al., US 5,725,938 col. 3, ll. 48–54 (ceramic powder includes copper oxides and NiO). This reads on “the nanoparticles comprise a material selected from…ceramic materials.”
The limitations of—“an add-on amount of the nanoparticles decreases from a first surface towards a second surface opposite the first surface and wherein the nanoparticles are disposed within the substrate from the first surface to at least a midpoint between the first surface and the second surface”—are now addressed.
Zinn teaches that the porous construct has at least two opposing surfaces because the filtration medium is interpreted as a substantially flat piece of material, with the reference describing the filtration media having “surfaces.” Id. at [0018]. One of the surfaces reads on the “first surface” and the opposing surface reads on the “opposing second surface.”
Zinn also teaches that the nanoparticles can be loaded into the filtration medium such that they are distributed in a gradient fashion near one or more surfaces of the porous construct. See Zinn [0018]. The gradient distribution means that an area density of the nanoparticles decreases from the first surface towards the second surface. Zinn also teaches that the nanoparticles can be loaded substantially uniformly throughout the air filtration medium (as opposed to the nanoparticles being localized at an outer surface, e.g., within the top 3–4 fabric layers). Id. at [0078]. The uniform loading means that the nanoparticles extend through the thickness of the filter medium from the first surface through the midpoint to the second surface. While Zinn is silent as to an example where the nanoparticles are both distributed in a gradient and with the gradient extending from the first surface through the midpoint to the second surface, it would have been obvious to combine the loading techniques such that the nanoparticles are distributed in a gradient fashion from the first surface through the midpoint to the second surface because Zinn teaches that the nanoparticles can be distributed in a gradient and can be extend from the first surface to the second surface. This reads on—“an add-on amount of the nanoparticles decreases from a first surface towards a second surface opposite the first surface and wherein the nanoparticles are disposed within the substrate from the first surface to at least a midpoint between the first surface and the second surface.”
Regarding claims 13 and 14, Zinn teaches that the nanoparticles can be loaded in an amount of 0.1 to 10 mg/in2, which converts to 0.155 to 15.5 g/m2. See Zinn [0065]. The prior art range of 0.155 to 15.5 g/m2 is within the claimed range “the add-on amount of the nanoparticles within the nonwoven fiber substrate is about 1 grams/m2 (gsm) to about 20 grams/m2 (gsm)” (claim 13) and overlaps with the claimed range of “the add-on amount is 2 grams/m2 (gsm) or greater,” establishing a prima facie case of obviousness (claim 14).
Regarding claim 17, Zinn teaches that the nanoparticles are substantially dispersed throughout the substrate, as claimed, because the loading is throughout the air filtration medium. See Zinn [0078].
Regarding claim 18, the claim recites the limitations of—“the nanoparticles are isolated within a gas, individualized and dispersed through the first surface of the substrate.” This limitation describes the process of manufacturing the filter media instead of its structure. Therefore, the limitations of claim 18 fail to patentability distinguish over the prior art. See MPEP 2113, subsection I (the patentability of a product does not depend on its method of production).
Regarding claim 19, Zinn as modified teaches that the substrate has a width from the first surface to the second surface. See Zinn [0018]. Zinn as modified also teaches that the nanoparticles are disposed within the air filtration medium in at least 100% of the width from the first surface to the second surface because with the uniform loading, the nanoparticles extend through the thickness of the filter medium from the first surface through the midpoint to the second surface. See Zinn [0078]. This “the nanoparticles are disposed within the substrate in at least 70% of the width from the first surface to the second surface.”
Regarding claim 20, Zinn teaches that the filtration medium (the “nonwoven material of claim 12”) can be used in a face mask, which reads on the “air filter product.” See Zinn [0014].
Claims 9, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Zinn et al., WO 2021/158726 A1 in view of Bruan et al., US 5,656,368.
Regarding claim 9, Zinn teaches that the porous construct (the “substrate”) comprises a filter media (as it is a filtration medium) comprising fibers. See Zinn [0024], [0076].
Zinn differs from claim 9 because it is silent as to the fibers of the porous construct having a linear density of 3 denier or greater.
But Zinn teaches that the filtration medium can be used in a face mask and can comprise polyester fibers. See Zinn [0136]. Zinn also teaches that the porous construct can be “any porous construct through which air, a component of air, or a gas may traverse.” Id. at [0024].
With this in mind, Braun teaches a facemask comprising a nonwoven web of polymeric microfiber (NWPM) comprising a mixture of 65 weight percent polypropylene microfibers and 35 weight percent of 6 denier polyester staple fibers polymer microfiber comprising 6 denier polyester fibers. See Braun col. 25, ll. 8–25. The web has good thermal insulating properties. Id. It would have been obvious to use the NWPM of Braun as the substrate of Zinn in order to improve the thermal insulating properties of the mask. With this modification, the 6 denier polyester staple fibers would read on the “fibers having a linear density of 3 denier or greater.”
Regarding claims 15 and 16, Zinn teaches that the porous construct (the “substrate”) has a “first area density in grams per meter squared (gsm)” because it is a piece of material, and therefore has a basis weight. See Zinn [0024]. Also, the nanoparticles have a “second area density in gsm” of 0.1 to 10 mg/in2, which converts to 0.155 to 15.5 g/m2. Id. at [0065].
Zinn differs from claims 15 and 16 because it is silent as to the density of the substrate. Therefore, the reference fails to provide enough information to teach the ratio of the density of the first area density of the substrate to the second area density of the nanoparticles is less than or equal to about 100 (claim 15) or less than or equal to about 33.5 (claim 16), as claimed.
But Zinn teaches that the filtration media can be any porous construct through which air or gas may traverse, with the porous construct preferably comprising fibers. See Zinn [0024]. Also, the filtration media can be part of a facemask. Id. at [0013].
With this in mind, Braun teaches a facemask comprising a nonwoven web of polymeric microfiber (referenced in Braun as the “NWPM”). See Braun col. 25, ll. 8–25. The nonwoven web has a basis weight of 100 g/m2. Id. at Table 10, Example 11, col. 25, ll. 27–44. The nonwoven web is beneficial because it has good thermal insulating properties. Id. It would have been obvious to use the nonwoven web of Braun as the substrate of Zinn to improve the thermal insulating properties of the filtration media when it is used as a mask.
With this modification, the “first area density” is 100 g/m2. See Braun Table 10, Example 11, col. 25, ll. 27–44. Also, the “second area density” is 0.155 to 15.5 g/m2. See Zinn [0065]. Therefore, the “ratio of the first area density to the second area density” ranges from 6 to 645. The prior art range of 6 to 645 overlaps with the claimed ranges of less than or equal to about 100 (claim 15) and less than or equal to about 33.5 (claim 16), establishing a prima facie case of obviousness.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Zinn et al., WO 2021/158726 A1 in view of Dhau et al., US 2022/0088536 A1.
Regarding claim 11, Zinn teaches the limitations of claim 1, as explained above.
Zinn differs from claim 11 because it is silent as to the fibers of the porous construct having an electrostatic charge.
But the filtration medium is provided to sequester pathogens so that they can be neutralized. See Zinn [0015].
With this in mind, Dhau teaches an air filter comprising a filter media made of fibers, with the filter media comprising metal nanoparticles, and wherein the filter media is which are electrostatically charged. See Dhau [0026], [0043]. The electrostatic charge is beneficial because it attracts contaminants, such as pathogens, to the filter media. Id. at [0026], [0014].
It would have been obvious for the fibers of the porous construct of Zinn to be electrostatically charged to improve the ability of the filtration medium to attract contaminants.
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.
U.S. Application No. 18/297,198
Claims 1, 2, 4, 7, 8, 10, 12, 17, 18, 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/297,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ’198 application teaches substantially of the limitations of instant claims 1, 2, 4, 7, 8, 10, 12, 17, 18, 19 and 20. Note that the specification of the ’198 application defines “nanoparticle” as a particle having a dimension less than 1 micron in at least one axis or dimension. See ’198 application Spec. [0075]. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/297,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the ’198 application teaches substantially of the limitations of instant claim 5. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/297,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the ’198 application teaches substantially of the limitations of instant claim 6. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/297,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of the ’198 application teaches substantially of the limitations of instant claim 9. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Double Patenting Rejections
The Applicant has not addressed the double patenting rejection over U.S. Application No. 18/297,198. Note that failure to address this rejection may result in a notice of non-compliance for being non-responsive for failing to address every ground of rejection. The Applicant is strongly encouraged to file a terminal disclaimer overcome this rejection and advance prosecution.
The Examiner withdraws the previous double patenting rejection over U.S. Patent No. 12,491,458.
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections of claims 7 and 8 in light of the amendments.
35 U.S.C. 103 Rejections
The Applicant argues that Zinn does not teach nanoparticles comprising a material selected from the claimed group, which includes “ceramic materials.” See Applicant rem. filed April 21, 2026 (“Applicant Rem.”) 6–7. Instead, it is argued that the filtration media of Zinn comprises metal nanoparticles. Id.
The Examiner respectfully disagrees. Zinn teaches that the nanoparticles can be made from metal oxides, including ZnO, TiO2, NiO, or oxides of copper. See Zinn [0017], [0034], [0069]. ZnO, TiO2, NiO, or oxides of copper are ceramic materials. See Oh et al., US 2020/0152907 A1 [0064], (a ceramic material, for example TiO2 or ZnO); Jin et al., US 5,725,938 col. 3, II. 48-54 (ceramic powder includes copper oxides and NiO).
The Applicant further argues that Zinn fails to describe dispersing nanoparticles through the depth of a substrate. See Applicant Rem. 8.
46. The Examiner respectfully disagrees. Zinn teaches that the filter medium can have nanoparticles either distributed throughout the air filtration medium (interpreted as from one surface to another) or the nanoparticles can be localized at or an outer surface of the filter medium. This is because paragraph [0078] says:
“Loading of metal nanoparticle agglomerates may be substantially uniform throughout an air filtration medium, or the metal nanoparticle agglomerates may be localized at or an outer surface of the air filtration medium (e.g., within the top 3-4 layers of a multilayer fabric).”
Therefore, because the nanoparticles can be loaded “throughout an air filtration medium” (and not merely at an outer surface), the Examiner maintains that the nanoparticles can be distributed within the filtration medium from the first surface and the second surface.
Conclusion
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
Prosecution Insights