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, 4, 7, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zinn et al., WO 2021/158726 A11.
Regarding claim 1, Zinn teaches an air filtration media, which reads on the claimed “filter media.” See Zinn [0013].
The filtration media comprises a “fiber substrate” made of a plurality of fibers. See Zinn [0017]. The substrate has at least two opposing surfaces because the filter media 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 media also comprises metal nanoparticles disposed within the substrate between the two surfaces. See Zinn [0018]. The nanoparticles read on the claimed “nanoparticles.” See Zinn [0018].
Zinn teaches that the nanoparticles can be disposed within the substrate from the first surface to the second surface, as claimed, because the nanoparticles can be loaded “substantially uniform throughout” the air filtration medium (as opposed to being localized at or on the outer surface, e.g., within the top 3–4 layers). See Zinn [0078].
Zinn also teaches that an area density of the nanoparticles can decrease from the first surface towards the second surface, as claimed, because the nanoparticles can be distributed in a gradient fashion. See Zinn [0018].
Zinn further teaches that nanoparticles have a coverage density within the filtration media 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 overlaps with the claimed range of “an add-on amount of the nanoparticles within the fiber substrate between the first surface and the second surface is about 2.0 grams/m2 (gsm) to about 20 grams/m2 (gsm),” establishing a prima facie case of obviousness.
It is noted that 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. But 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 “nanoparticles disposed within the fiber substrate from the first surface to the second surface, wherein an area density of the nanoparticles decreases from the first surface towards the second surface.”
Regarding claim 4, Zinn teaches that the metal nanoparticles are disposed adjacent to or near one of the surfaces (the “first surface”) in a greater number than the nanoparticles disposed adjacent to or near the other surface (“the “second surface”) because the nanoparticles are distributed in a gradient fashion near one of the surfaces. See Zinn [0018].
Regarding claims 7 and 8, Zinn teaches the limitations of claim 1, as explained above.
Zinn differs from claim 7 because it is silent as to the area density of the metal nanoparticles at the midpoint being about 25% of the area density of the nanoparticles at the first surface. Zinn differs from claim 8 because it is silent as to the area density of the metal nanoparticles at the second surface being about 50% of the area 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]. 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 in order to optimize the biocidal activity provided to the media (claims 7 and 8). 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 10, the claim recites the limitations of—“the nanoparticles are entrained within a gas, individualized, and dispersed through the first surface of the fibrous 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).
Claims 9, 12–14, 16 and 17 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 the limitations of claim 1, as explained above.
Zinn differs from claim 9 because it is silent as to the substrate comprising fibers having a linear density of 3 denier or greater.
But Zinn teaches that the filtration media can be a face mask and can comprise polyester fibers. See Zinn [0136]. Zinn also teaches that the filtration media can be any porous construct through which air or gas may traverse, with the filtration media being loaded with nanoparticles. Id. at [0024].
With this in mind, Braun teaches a facemask comprising a nonwoven web of polymeric microfiber (referenced in Braun as the “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 can be loaded with solid particles capable of interacting with the fluid being exposed (id. at col. 9, ll. 26–30) and the web is beneficial because it provides good filtration performance when incorporated into a filter, such as a facemask (id. at abstract). It would have been obvious to use the nonwoven web of Braun as the air filtration medium of Zinn to provide a filtration material usable in a facemask that provides good filtration performance. It also would have been obvious to use the nonwoven web of Braun as the air filtration medium of Zinn because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. This is because Zinn requires that the filtration media can be any porous construct through which air or gas may traverse that can be loaded with nanoparticles, while the nonwoven web of Braun is a porous material that gas can traverse and that can be loaded with solid particles. With this modification, the 6 denier polyester staple fibers reads on the “fibers having a linear density of 3 denier or greater.”
Regarding claims 12, 16 and 17, Zinn teaches a mask comprising air filtration media. See Zinn [0013]. The mask reads on the claimed “filter” and the air filtration media reads on the “filter media.”
The filtration media comprises a “substrate” made of a plurality of fibers having a diameter of about 10 microns, which reads on fibers having a diameter of greater than 1 micron. See Zinn [0017], [0136]. The substrate has at least two opposing surfaces because the filter media 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 media also comprises metal nanoparticles disposed within an internal structure of the substrate. See Zinn [0018]. The metal nanoparticles read on the claimed “nanoparticles.” The nanoparticles are distributed in a gradient fashion within the substrate. Id. at [0018]. This reads on “an add-on amount of the nanoparticles decreases from the first surface towards the second surface.”
The substrate has a “first area density in grams/m2, which is the basis weight of the filtration medium (not disclosed).
The nanoparticles in the substrate between the first and second surfaces have a “second area density in grams/m2” of 0.1 to 10 mg/in2, which converts to 0.155 to 15.5 g/m2. See Zinn [0065]. Note that this is the area density of the nanoparticles “between” the first and second surfaces, as claimed, at least because the nanoparticles extend to a depth of about 3–4 layers within the filtration medium. Id. at [0064].
Zinn differs from claims 12, 16 and 17 because it is silent as to the basis weight of the air filtration medium. Therefore, the reference fails to provide enough information to teach the ratio of “first area density” (of the substrate) to the “second area density” (of the nanoparticles) being less than or equal to about 100, 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, as noted, 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 can be loaded with solid particles capable of interacting with the fluid being exposed. Id. at col. 9, ll. 26–30. The nonwoven web is beneficial because it provides good filtration performance when incorporated into a filter, such as a facemask. Id. at abstract. It would have been obvious to use the nonwoven web of Braun as the air filtration medium of Zinn to provide a filtration material usable in a facemask that provides good filtration performance. It also would have been obvious to use the nonwoven web of Braun as the air filtration medium of Zinn because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. This is because Zinn requires that the filtration media can be any porous construct through which air or gas may traverse that can be loaded with nanoparticles, while the nonwoven web of Braun is a porous material that gas can traverse and that can be loaded with solid particles.
With this modification, the nonwoven web of Braun has a basis weight of 100 g/m2. See Braun, Table 10, Example 11, col. 25, ll. 27–44. This basis weight of the nonwoven web reads on the “first area density” of the “fibers in the substrate.” Also, as noted, the nanoparticles of Zinn can be loaded within the filtration media in an amount of 0.1 to 10 mg/in2, which converts to 0.155 to 15.5 g/m2. See Zinn [0065]. This basis weight of the nanoparticles reads on the “second area density” of the “nanoparticles.” Therefore, the ratio of the density of the nonwoven media (the “first area density”) to the density of the nanoparticles (the “second area density”) ranges from 6 to 645. The range of 6 to 645 overlaps with the claimed ranges of less than or equal to about 100 (claim 12), less than or equal to about 67 (claim 16) and less than or equal to about 33.5 (claim 17), establishing a prima facie case of obviousness.
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 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).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Zinn et al., WO 2021/158726 A1 in view of Smithies et al., US 2021/0121804 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 MERV rating and pressure drop of the filtration media. Therefore, the reference fails to provide enough information to teach the filtration media having a MERV rating of greater than about 10 and a pressure drop of less than about 0.5 inches of water.
But Smithies teaches a filtration media that can be used for various applications, including protective masks. See Smithies [0056]. The filtration media has a MERV rating from 9 to 18 and a pressure drop of 20 to 80 Pa (0.080 to 0.3 inches of water). Id. at [0049], [0055]. The filtration media of Smithies is beneficial because it meets the international test standards of 2018. It would have been obvious to use the filtration media of Smithies as the substrate of Zinn to provide a filter material that meets the international test standards of 2018.
Claims 18–20 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 in view of Smithies et al., US 2021/0121804 A1.
Regarding claims 18–20, Zinn teaches the limitations of claim 12, as explained above.
Zinn differs from claims 18–20 because it is silent as to the MERV rating and pressure drop of the filtration media. Therefore, the reference fails to provide enough information to teach the filtration media having a MERV rating of greater than about 10 and a pressure drop of less than about 0.5 inches of water (claim 18), a MERV rating of about 13 and a pressure drop of less than or equal to about 0.36 inches of water (claim 19) or a MERV rating of about 14 and a pressure drop of less than or equal to about 0.5 inches of water (claim 20).
But Smithies teaches a filtration media that can be used for various applications, including protective masks. See Smithies [0056]. The filtration media has a MERV rating from 9 to 18 and a pressure drop of 20 to 80 Pa (0.080 to 0.3 inches of water). Id. at [0049], [0055]. The filtration media of Smithies is beneficial because it meets the international test standards of 2018. It would have been obvious to use the filtration media of Smithies as the substrate of Zinn to provide a filter material that meets the international test standards of 2018.
Response to Arguments
Double Patenting
The Examiner withdraws the previous double patenting rejection over co-pending U.S. Application No. 18/297,194 because the Terminal Disclaimer filed October 21, 2025 has been approved.
35 U.S.C. 112(d) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(d) rejection of claim 3 because it is cancelled.
35 U.S.C. 102 & 103 Rejections
Claim 1
The Applicant argues that Zinn et al., WO 2021/158726 A1 fails to disclose nanoparticles disposed from the first surface to the second surface of the fiber substrate. See Applicant Rem. filed October 21, 2025 (“Applicant Rem.”) 6. Instead, it is argued that Zinn teaches that the nanoparticles are applied to the surface of the filter media to confer biocidal activity. Id. The Applicant acknowledges that Zinn teaches that the nanoparticles may extend up to a depth of about 3 to 4 layers. Id. (citing Zinn [0064]). But the Applicant argues that this penetration does not constitute nanoparticles disposed from the first surface to the second surface, as in the proposed amendment to claim 1. Id.
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.
The Applicant also argues that the “coverage density” of Zinn is not equivalent to the claimed “add-on amount.” See Applicant Rem. 6. Rather, it is argued that “coverage density” refers to a surface loading per unit area, whereas “add-on amount” reflects the mass of nanoparticles incorporated within the volume of the substrate. Id. The Applicant argues that even if some nanoparticle penetrate the fiber layers of Zinn, the parameter remains a surface coverage density not an add-on amount. Id.
The Examiner respectfully disagrees. The Applicant is incorrect in arguing that the claimed “add-on” amount reflects a mass of nanoparticles incorporated within the volume of the substrate. Instead, the claimed “add-on amount” is described in units of mass per unit area (not volume) of “grams/m2.” The claim requires that the filter media has “an add-on amount of the nanoparticles within the fiber substrate between the first and the second surface” of about 2.0 to 20 grams/m2 (emphasis added). This means that the nanoparticles have a basis weight of 2.0 to 20 gsm at some point within the fiber substrate. In Zinn, the coverage density of the nanoparticles ranges from 0.1 to 10 mg/in2 (which converts to 0.155 to 15.5 gsm) and the nanoparticles can be loaded throughout the air filtration medium (meaning the nanoparticles can be within the filter medium). See Zinn [0065], [0078]. Therefore, Zinn teaches an add-on amount of nanoparticles within the filter medium between the first and second surface in an amount of 0.155 to 15.5 gsm, which overlaps with the claimed range of 2.0 to 20 gsm.
The Applicant argues that claim 1 requires that the nanoparticles extend from the first surface to the second surface with their area density decreasing from the first surface toward the second surface. See Applicant Rem. 6. The Applicant argues that Zinn does not describe a through-thickness gradient, but instead it is argued that Zinn describes nanoparticles primarily at the upstream surface. Id.
The Examiner respectfully disagrees. Zinn teaches that the nanoparticles can be through the entire thickness of the filter medium, instead of merely at the surface (see Zinn [0078]) and that the nanoparticles can be distributed in a gradient (id. at [0018]).
The Applicant argues that Zinn does not teach nanoparticles disposed from the first surface to the second surface, asserting that Zinn consistently emphasizes deposition upon surfaces and optionally within a depth of 3–4 layers. See Applicant Rem. 7.
The Examiner respectfully disagrees. Zinn clearly teaches that the nanoparticles can be distributed through the entire thickness of the filtration medium because it teaches that the nanoparticles can either be loaded “substantially uniform throughout the air filtration medium” or can be localized at an outer surface of the filtration medium (e.g., within the top 3–4 fabric layers). See Zinn [0078].
Claims 7 and 8
The Applicant argues that the claimed density ratios are not mere design choices but define a specific gradient profile across the full thickness of the substrate. See Applicant Rem. 9. It is argued (without citation) that the profile ensures controlled nanoparticle distribution and predictable filtration performance, such as maintaining porosity, mechanical integrity, and uniform antimicrobial effectiveness. Id. The Applicant argues that Zinn does not provide any teaching, suggestion or motivation to target such ratios, but instead describes that the nanoparticles can be predominantly on one outer surface or extending 3 to 4 layers. Id. The Applicant also argues that it would not have been obvious to use routine experimentation to optimize the area density of the nanoparticles at the midpoint or second surface of the filtration media. Id. Instead, it is argued that Zinn does not recognize relative area density at the midpoint or opposing surface as a variable of significance or suggest that adjusting the ratios would optimize biocidal performance. Id. at 10.
The Examiner respectfully disagrees. Zinn teaches that the nanoparticles are added to the filtration media to impart biocidal activity, with it being possible to provide the nanoparticles in a gradient across the thickness of the filtration media. See Zinn [0017], [0018]. Therefore, selecting the desired amount of nanoparticles within filtration media would have been obvious through routine experimentation to provide the desired biocidal activity. The burden has shifted to the Applicant to demonstrate that the particular claimed ranges are non-obvious by providing evidence that the particular ranges are critical. But the Applicant has failed to rebut the rejection, because there is no evidence that the claimed ranges yield unexpected results. See MPEP 2144.05, subsection III, A (applicant can rebut a prima facie case of obviousness by showing the criticality of the range, generally by showing that the claimed range achieves some unexpected results relative to the prior art).
Claim 12
The Applicant argues that the coverage density of Zinn is different from the add-on amount of claim 12. See Applicant Rem. 10. The Examiner respectfully disagrees for the reasons stated in the arguments for claim 1 above.
The Applicant also argues that it would not have been obvious to use the filtration medium of Braun as the filtration medium of Zinn, asserting that there is no recognition that the fiber area density of Braun would interact with the nanoparticle loading to define a meaningful design ratio. See Applicant Rem. 11. The Applicant argues that the combination extracts unrelated numbers from distinct references with hindsight, without any articulated reasoning. Id.
The Examiner respectfully disagrees. 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]. The filtration media is loaded with nanoparticles and can be part of a facemask. Id. at [0013]. Likewise, 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 can be loaded with solid particles capable of interacting with the fluid being exposed. Id. at col. 9, ll. 26–30. The nonwoven web is beneficial because it provides good filtration performance when incorporated into a filter, such as a facemask. Id. at abstract. Therefore, it would have been obvious to use the nonwoven web (NWPM) of Braun as the filtration medium of Zinn to provide a filtration material usable in a facemask that provides good filtration performance. It also would have been obvious to use the nonwoven web of Braun as the air filtration medium of Zinn because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
The Applicant further argues that that the claimed ratio of the first area density of the substrate to the second area density of the nanoparticles being less than or equal to about 100 is not an arbitrary number, but was selected to optimize performance. See Applicant Rem. 12. Specifically, it is argued that ratios above 100 result in insufficient nanoparticle distribution leading to reduced antimicrobial efficacy whereas ratios below 100 ensure enough nanoparticles are distributed within the substrate volume to achieve robust biocidal performance and acceptable pressure drop. Id.
The Applicant’s comments are insufficient to overcome the prima facie case of obviousness of the prior art teaching an overlapping ratio of 6 to 645. To rebut a prima facie case of obviousness with respect to an overlapping numerical range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See MPEP 2144.05, subsection III, A. The showing of unexpected results requires evidence that the results are in fact unexpected (instead of expected). The evidence should be objective, and not merely the arguments of the applicant. See MPEP 2145, subsection I (argument does not replace evidence where evidence is necessary).
Here, the Applicant has failed to rebut that the claimed ratio of less than or equal to about 100 is prima facie obvious over prior art ratio of 6 to 645, because there is no objective evidence that the claimed range is critical. Instead, the Applicant merely argues that the claimed range was selected to optimize performance without providing any objective evidence to back up this assertion. It is also noted that the benefits described by the Applicant of the claimed ratio being less than 100—robust biocidal performance and acceptable pressure drop—appear to be expected (rather than unexpected). This is because it would be expected that biocidal performance would increase with an increased concentration of antimicrobial nanoparticles, but that too much nanoparticle loading would clog the pores of the substrate resulting in pressure loss.
The Applicant also argues that paragraphs [0042] and [0095] of the disclosure show that increasing nanoparticle add-on amounts systematically increases filtration efficiency (MERV rating). See Applicant Rem. 13. Therefore, it is argued that the specification states that the specific add-on amount can be selected based on the desired filtration efficiency, with the ratio and add-on amount representing an engineering choice to balance filtration performance and pressure drop. Id.
The Examiner respectfully disagrees. The teachings of paragraph [0042] and [0095] fail to demonstrate that the claimed ratio of the first area density (of the fibers in the substrate) to the second area density (of the nanoparticles) of less than or equal to 100 is non-obvious for being critical. Instead, it would be expected that the efficiency of a filtration material would increase with increasing nanoparticle load because the pores of a filter material become smaller as more and more particles become trapped within the material, leading to increased efficiency. See e.g., Claeson et al., US 2010/0140164 A1, [0003] (during the life cycle of fluid cleaning filters, the filter base materials load with particle over time, and their particle collection efficiency typically increases).
The Applicant further argues that Examples 1–11 illustrate that the claimed ratio of less than or equal to 100 is non-obvious for being critical. See Applicant Rem. 13. Specifically, it is argued that the examples illustrate that in Example 2, increasing add-on from 0.82 to 2.46 g/m2 increased the MERV rating from 10 to 12, while in Example 4 the samples incorporating nanoparticles achieved a MERV rating of 12–16 with a “modest increase in pressure drop.” Id.
This is not evidence that the claimed entire claimed range of less than or equal to about 100 is critical, at least because the evidence does not provide enough data points across the entire claimed range to demonstrate unexpected results. Also, the “modest increase” in pressure drop appears to actually be a significant increase in pressure drop because the pressure drop more than doubles by increasing from 0.07 inches of water to 0.17 to 0.41 inches of water. See Spec., Example 4, [0246].
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
1 Zinn is in the record as the 59-page Foreign Reference filed August 15, 2023.