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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 19 is objected to because of the following informalities: claim 19 should number as claim 20. Appropriate correction is required.
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.
Claim(s) 1 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Dankovich et al (US 20230135711; hereinafter Dankovich) in view of WO 2020198428 (hereinafter WO ‘428) and further in view of Beplate (WO 2004098753; see English equivalent US 20040178135).
As regarding claim 1, Dankovich discloses the claimed invention for a filter media comprising: a substrate comprising meltblown and spunbond fibers ([0042], [0044] and claim 71) and nanoparticles disposed within the substrate ([0033]).
Dankovich does not disclose wherein the filter media has a MERV rating of at least about 16 and a pressure drop less than about 0.6 inches of water. WO ‘428 discloses wherein the filter media has a MERV rating of at least about 16 (table 1, pg 35) and a pressure drop less than about 0.6 inches of water (pg 34 ln 17-18). Both Dankovich and WO ‘428 are both directed to filtration element. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the filter media has a MERV rating of at least about 16 and a pressure drop less than about 0.6 inches of water as taught by WO ‘428 in order to achieve high-efficiency particulate removal while maintaining low airflow resistance and energy consumption. Examiner notes that high filtration efficiency and low pressure drop can be achieved through optimization of fiber structure, porosity, and distribution of active materials within the media.
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the filter media has a MERV rating of at least about 16 and a pressure drop less than about 0.6 inches of water in order to maintain high filtration performance under high-efficiency standards without imposing excessive pressure loss, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Where patentability is said to be based upon particular chosen pressure drops or upon another variable recited in the claim, the Applicant must show that the chosen pressure drops are critical and unexpected results.
Dankovich as modified does not disclose wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface. Beplate teaches wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface ([0047] and annotated fig. 3).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface as taught by Beplate in order to improve filtration efficiency, and help maintain lower pressure drop by avoiding clogging at single surface layer.
As regarding claim 15, Dankovich as modified discloses all of limitations as set forth above. Dankovich as modified discloses the claimed invention for wherein the nanoparticles are isolated within a fluid and dispersed through a first surface of the substrate ([0033], [0042], [0044] and claim 71).
Claim(s) 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Dankovich et al (US 20230135711; hereinafter Dankovich) in view of WO 2020198428 (hereinafter WO ‘428) and Beplate (WO 2004098753; see English equivalent US 20040178135), as applied supra, and further in view of Chen et al (US 20220274040; hereinafter Chen).
As regarding claim 2, Dankovich as modified discloses all of limitations as set forth above. Dankovich as modified discloses the claimed invention except for wherein the MERV rating of the filter media is at least about 12 after IPA discharge. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the MERV rating of the filter media is at least about 12 after IPA discharge in order to enhance filter media performance, since it was known in the art as shown in Chen ([0140]).
As regarding claim 3, Dankovich as modified discloses all of limitations as set forth above. Dankovich as modified discloses the claimed invention for wherein the pressure drop is less than about 0.45 inches of water (WO ‘428, pg 34-35).
Claim(s) 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Zeng et al (US 20220152592; hereinafter Zeng) in view of Beplate (WO 2004098753; see English equivalent US 20040178135) and WO 2017008171 (hereinafter WO ‘171).
As regarding claim 16, Zeng discloses the claimed invention for a gas filter comprising: a filter media (abstract) comprising a substrate containing one or more glass fibers (title and abstract); nanoparticles ([0016] and fig. 1) disposed within the substrate.
Zeng does not disclose wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface.
Beplate teaches wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface ([0047] and fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface as taught by Beplate in order to enhance filter media performance.
Zeng as modified does not disclose wherein the gas filter has a MERV rating of 10 or greater and a pressure drop from the first surface to the second surface of about 0.31 or less inches of water. WO ‘171 teaches wherein the gas filter has a MERV rating of 10 or greater and a pressure drop from the first surface to the second surface of about 0.31 or less inches of water ([0029], [0074], [0086]-[0087], [0118], and [0209]). Both Zeng and WO ‘171 are directed to a filtration device. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the gas filter has a MERV rating of 10 or greater and a pressure drop from the first surface to the second surface of about 0.31 or less inches of water as taught by WO ‘171 in order to achieve high-efficiency particulate removal.
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the gas filter has a MERV rating of 10 or greater and a pressure drop from the first surface to the second surface of about 0.31 or less inches of water in order to maintain high filtration performance under high-efficiency standards without imposing excessive pressure loss, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Where patentability is said to be based upon particular chosen pressure drops or upon another variable recited in the claim, the Applicant must show that the chosen pressure drops are critical and unexpected results.
As regarding claim 17, Drolet as modified discloses all of limitations as set forth above. Drolet as modified discloses the claimed invention for wherein the gas filter has a MERV rating is 13 or greater after the gas filter has been conditioned with ASHRAE Standard 52.2 (WO ‘171 - [0029]).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Zeng et al (US 20220152592; hereinafter Zeng) in view of Beplate (WO 2004098753; see English equivalent US 20040178135) and WO 2017008171 (hereinafter WO ‘171), as applied supra, and further in view of Drolet et al (US 20180264386; hereinafter Drolet).
As regarding claim 20, Zeng as modified discloses all of limitations as set forth above. Zeng as modified discloses the claimed invention except for wherein the nanoparticles are isolated within a fluid and dispersed through a first surface of the substrate. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the nanoparticles are isolated within a fluid and dispersed through a first surface of the substrate as taught by WO ‘171 in order to enhance gas filter performance, since it was known in the art as shown in Drolet ([0264] and [0322]).
Examiner notes that Berrigan et al (US 20100291213; hereinafter Berrigan) appears to teach a gas filter comprising: a filter media comprising a substrate containing one or more glass fibers ([0033], [0035], [0113]); nanoparticles (34, [0082]) disposed within the substrate; wherein the substrate comprises a first surface and a second surface opposite the first surface, wherein the nanoparticles are disposed within the substrate from the first surface throughout the substrate to the second surface (fig. 1C).
Response to Arguments
Applicant's arguments filed 07/09/26 have been fully considered but they are not persuasive.
Applicant’s remark argues that Beplate fails to disclose nanoparticles disposed “from the first surface throughout the substrate to the second surface,” emphasizing that Beplate does not use the term “throughout,” that the first-side/second-side disclosure allegedly relates only to a coating embodiment, and that fig. 3 is merely schematic and therefore does not represent the claimed nanoparticle distribution.
Examiner respectfully disagrees.
Examiner does not rely on the use of the term “throughout,” but on the disclosure of the claimed structure. Moreover, claim 1 does not require a particular “distribution” of the nanoparticles, such as a concentration gradient or uniform distribution; it requires only that the nanoparticles be disposed within the substrate from the first surface throughout the substrate to the opposing second surface. Annotated fig. 3 depicts the nanoparticle-containing material within the substrate and extending between the opposing first and second surfaces, rather than being confined to a surface layer. The use of “impregnated” instead of “throughout” does not negate this disclosure, and the schematic nature of annotated fig. 3 does not preclude it form conveying the illustrated structural relationship. Accordingly, when annotated fig. 3 is considered with the corresponding description, Beplate teaches the claimed disposition of nanoparticles from the first surface through the substrate to the opposing second surface.
Applicant’s remark argues that the motivation to combine is based on impermissible hindsight.
Examiner respectfully disagrees.
The motivation to combine is not based on Applicant’s disclosure, but on the teachings of the prior art and the knowledge of one of ordinary skill I the art before the effective filing date of the invention was made. Beplate needs not expressly disclose MERV rating or pressure drop to provide a reason to employ its disclosed nanoparticle-containing configuration in Dankovich’s filter medium. Dankovich teaches nanoparticles disposed through a substrate between opposing surfaces. Applying Beplate’s known configuration to Dankovich would have been a predictable use of known elements according to their established functions. Applicant has not shown that the references are incompatible, that either reference teaches away from the combination, or that the proposed modification would change Dankovich’s intended operation. Therefore, the proposed combination is not based on impermissible hindsight under In re McLaughlin, but on the teachings and knowledge available to one of ordinary skill before the effective filing date of the invention was made.
Applicant’s remark argues that Beplate’s nanoparticles serve a fundamentally different purpose.
Examiner respectfully disagrees.
The fact that Beplate’s nanoparticles additionally provide a biocidal function does not negate it disclosure of their structural incorporation within a substrate. The proposed combination relies on Beplate for the disclosed through-substrate disposition of nanoparticle-containing meltblown/spunbond filter medium, and Beplate provides a known manner of disposing nanoparticles material through the substrate between opposing surfaces. A person of ordinary skill may consider teachings from references addressing different, but related, objectives when applying known structures to a known filter medium; the references need not address identical problems or provide identical intended uses.
Applicant’s remark argues that the result-effective variable / In re Boesch rejection is improper and that the Specification demonstrates critical and unexpected results.
Examiner respectfully disagrees.
Applicant’s evidence establishes, at most, that certain nanoparticle-containing spunbond/meltblown media can achieve MERV 16 at a pressure drop below 0.6 inches of water; it does not establish that this result is unexpected relative to the combination of Dankovich and Beplate. Dankovich already teaches the relevant spunbond/meltblown substrate and nanoparticles, while Beplate annotated fig. 3 teaches the claimed disposition of nanoparticles throughout the substrate between opposing surfaces. Therefore, Applicant’s Example 9 demonstrates that the structure suggested by the prior art can achieve the claimed performance, but does not establish that such performance is unexpected.
Applicant’s comparison to a MERV 5 unmodified base substrate is not a comparison to the closest prior-art combination and therefore does not establish unexpectedness over the asserted combination. Likewise, Examples 6 and 8 merely demonstrate that nanoparticle-containing meltblown-only or spunbond-only substrates perform differently from the claimed spunbond/meltblown combination, whereas Dankovich already teaches the combination of meltblown and spunbond fibers. Applicant has not provided comparative evidence showing that the through-substrate nanoparticle configuration taught by Beplate produces an unexpected MERV/pressure-drop advantage over the proposed prior-art combination.
Applicant’s remark argues that additional unexpected results: performance after IPA discharge (claim 2).
Examiner respectfully disagrees.
Example 4 demonstrates that certain samples maintained MERV 12 or higher after IPA discharge, but Applicant has not established that this result is unexpected relative to the prior-art combination. The cited results merely demonstrate that the tested filter media retain filtration performance after discharge; they do not establish that the claimed nanoparticle-containing structure produces an unexpected result over Dankovich and Beplate. Applicant also has not provide comparative evidence showing that the claimed media perform unexpectedly better after IPA discharge than the corresponding prior-art media.
Applicant’s remark argues that Examiner has failed to meet the threshold burden for invoking routine optimization.
Examiner respectfully disagrees.
The rejection does not require that the prior art expressly identify the preces claimed combination of nanoparticle disposition, MERV rating, and pressure drop as a single result-effective variable. Dankovich teaches nanoparticles in a meltblown/spunbond filter substrate, Beplate teaches the nanoparticles disposed through the substrate between opposing surfaces, and WO ‘428 teaches the relevant high-efficiency/low-pressure-drop filter performance. These teachings provide a person of ordinary skill in the art with recognized filter variables and objectives for optimization. Examiner therefore has established a sufficient factual basis for the proposed optimization; the absence of an express statement that the particular combination produces exactly the claimed numerical values does not preclude a finding of obviousness. Applicant’s reliance on In re Antonie and E.I. du Pont is distinguishable because those cases do not require an express prior-art statement of the precise claimed parameter combination where the prior art otherwise provides the relevant structure, properties, and reason to optimize.
Applicant’s remark argues regarding the rejections of claims 2-3 that Examiner does not explain what Chen teaches about maintaining a MERV rating of at least 12 after IPA discharge, or why a person of ordinary skill in the art would have been motivated to achieve this specific performance characteristic in the context of the Dankovich/WO ‘428/Beplate combination.
Regarding claim 2, Chen [0140] provides evidence that maintaining filtration performance after IPA discharge was a known consideration in the art. In view of Chen’s teaching, it would have been obvious to one of ordinary skill to evaluate and optimize the filter media of the proposed Dankovich/Beplate/WO ‘428 combination to maintain the desired filtration efficiency after discharge, particularly where the prior art recognizes the effect of discharge on filter performance. A motivation to combine or optimize need not be expressly stated in the same terms as the claim, but may be based on the known properties and intended use of the filter media.
Applicant’s remark of unexpected results is likewise unpersuasive for the reasons discussed above. Applicant has not provided comparative evidence demonstrating that the claimed media maintain MERV at least 12 after IPA discharge is an unexpected manner relative to the prior-art filter media. Nor has Applicant established that the alleged mechanical-filtration effect is attributable specifically to the claimed through-substrate nanoparticle configuration rather than to other characteristics of the tested samples.
Applicant’s remark argues regarding the rejection of claims 16-19 on pages 13-14.
Examiner respectfully disagrees.
As to the nanoparticle disposition, Beplate annotated fig. 3, considered with its accompanying description, depicts nanoparticle-containing material extending through the substrate between opposing surfaces. Claim 16 does not require a particular nanoparticle concentration or distribution profile, but only that nanoparticles be disposed within the substrate from the first surface throughout the substrate to the second surface.
Zeng teaches a gas filter having a glass-fiber substate, while Beplate teaches incorporation of nanoparticle material throughout a substrate. Applying Beplate’s known configuration to Zeng’s filter medium would have been a predictable use of known elements according to their established functions to enhance the filter medium. The references need not address identical purposes, and Applicant has not shown that Beplate’s biocidal function is incompatible with Zeng’s glass-filber filter or that the proposed modification would change Zeng’s intended operation.
Example 11 demonstrates, at most, that certain nanoparticle-containing glass-fiber substrates can achieve MERV 10-13 at pressure drops of 0.15-0.31 inches of water. It does not a comparison to the closest prior-art combination, and Applicant has not provided evidence demonstrating that the claimed nanoparticle configuration produces an unexpected MERV/pressure-drop advantage over the proposed combination. Moreover, the cited data demonstrates operability of the claimed structure, not necessarily unexpectedness.
Finally, Applicant’s remark regarding claim 19 is unpersuasive for the same reasons. Annotated fig. 3 of Beplate supports the Examiner’s finding that at least some nanoparticle-containing material is disposed through the substrate between opposing surfaces.
The rejection of claim 20 is intended to rely on Droplet for the limitations requiring the nanoparticles to be isolated within a fluid and dispersed through a first surface of the nonwoven fiber substrate. The rejection is therefore clarified and maintained on this basis. This correction does not later the underlying combination of references or the grounds of rejection, but merely identifies the proper claim limitation and corresponding prior-art disclosure.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
