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 and 3–8 are rejected under 35 U.S.C. 103 as being unpatentable over Chapman, US 6,056,809 in view of Zinn et al., WO 2021/158726 A11.
Regarding claim 1, Chapman teaches a filter for an air heating and conditioning system, which reads on the claimed “filter for an air handling system.” See Chapman col. 1, ll. 13–18.
The filter comprises a center layer 102 of stiff, high loft polyester of fibers which can be made using a technique for making nonwoven products, such as an air laid process. See Chapman Fig. 9, col. 5, ll. 33–67, col. 4, ll. 37–41, col. 8, ll. 8–32. The center layer 102 reads on the “filter media comprising a nonwoven substrate of fibers.” The fibers have a linear density of 6 and 15 denier, which reads on a “linear density of greater than or equal to about 5 denier.” Id. at Table, col. 5, ll. 48–57.
The filter has a “MERV rating greater than about 10,” as claimed, because it has an efficiency of 88.1% for 5.0/1.0 micron particles, and 83.9% for 3.0/5.0 micron particles, and 73.1% for 2.0/3.0 micron particles with a MERV 10 rating being an efficiency of at least 50% for 1.0–3.0 micron particles and at least 85% for 3.0–10.0 micron particles. See What is a MERV rating, EPA (January 19, 2021).
The filter also has a pressure drop of 0.15 WG (i.e., 0.15 inches of water), which is within the claimed range of less than about 0.5 inches of water. See Chapman col. 7, ll. 34–37.
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Chapman differs from claim 1 because it is silent as to the filter having nanoparticles disposed within the center layer 102, with the nanoparticles having at least one dimension of less than 1 micron, as claimed. But the center layer 102 can comprise an antimicrobial agent. See Chapman Table, col. 5, ll. 48–57.
With this in mind, Zinn teaches a filtration medium comprises biocidal nanoparticles with a size of about 250 nm or less disposed within the porous construct of the filtration medium. See Zinn [0015], [0018], [0021]. The structure and type of air filtration undergoing impregnation with the nanoparticles is not particularly limited, and the filtration medium can be used as an inline filter for an air handler of an air conditioning system. Id. at [0077], [0080]. The nanoparticles are beneficial because they kill or inactivate pathogens thereby limiting the potential for secondary spread of disease. Id. at [0015].
It would have been obvious to impregnate the center layer 102 of Chapman with the nanoparticles of Zinn to kill or inactivate pathogens thereby limiting the potential for secondary spread of disease. With this modification, the nanoparticles have a size of 250 nm, which is within the claimed range of “at least one dimension less than 1 micron.”
Regarding claim 3, Chapman teaches that the fibers have a linear density of 15 denier, which is within the claimed range of “at least 8 denier.” See Chapman Table, col. 5, ll. 48–57.
Regarding claims 4 and 5, Chapman teaches that the center layer 102 (the “nonwoven fiber substrate”) has a thickness from a first surface to a second surface, as claimed, seen in Fig. 9. Also, Zinn teaches that the 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].
Chapman in view of Zinn differs from claim 4 because Zinn is silent as to the dispersion of nanofibers being at least 25% of the thickness from one surface (the “first surface”) to the other surface (the “second surface”). Chapman in view of Zinn differs from claim 5 because it is silent as to the nanoparticles being dispersed within the porous construct from the first surface to the second surface.
But the metal nanoparticles are provided in the filtration medium to provide biocidal properties to the filtration medium, to ensure that pathogens that are trapped within the filtration medium are killed or inactivated. See Zinn [0015], [0017]. Therefore, it would have been obvious for the nanoparticles to be dispersed within the porous construct of the center layer 102 of Chapman such that they extend entirely from the first surface to the second surface (100% of the thickness) to ensure that there is sufficient nanoparticles to kill or inactivate pathogens that are trapped within the center layer 102.
Regarding claim 6, Chapman teaches that the center layer 102 (the “nonwoven fiber substrate”) has a thickness from a first surface to a second surface, as claimed, seen in Fig. 9. Also, Zinn teaches that the nanoparticles can form a gradient within the porous construct, meaning that the density of the nanoparticles will decrease from one surface (the “first surface”) to the other surface (the “second surface”). See Zinn [0018]. Therefore, it would have been obvious for the nanoparticles of Zinn to form a gradient with the center layer 102 of Chapman such that a density of the nanoparticles decreases from the first surface to the second surface because Zinn teaches that the nanoparticles can form a gradient within the porous construct.
Regarding claim 7, Chapman in view of Zinn teaches that the nanoparticles are dispersed throughout a desired portion of the air filtration medium, or may be distributed in a gradient. See Zinn [0018]. The embodiment where the nanoparticles are dispersed throughout a desired portion of the air filtration medium (as opposed to a gradient) is interpreted as “substantially uniformly dispersed through the fibrous material” because the nanoparticles are not provided in a gradient.
Regarding claim 8, the claim recites the limitation—“the nanoparticles are generated within a gas and dispersed through the first surface of the fibrous material.” These limitations describe the process of manufacturing the filter media instead of its structure. Therefore, the limitations of claim 8 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 10, 13, 12, 15–18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chapman, US 6,056,809 in view of Zinn et al., WO 2021/158726 A1 and in further view of Smithies et al., US 2021/0121804 A1.
Regarding claim 10, Chapman in view of Zinn teaches the limitations of claim 1, as explained above.
Chapman in view of Zinn differs from claim 10 because it is silent as to the filter having a MERV rating of about 13 and the pressure drop being less than or equal to 31 inches of water, as claimed. But, as noted, the filter of Chapman for an air conditioning system. See Chapman col. 1, ll. 13–18.
With this in mind, Smithies teaches an HVAC filter media 10 comprising a nanofiber layer 12 that is coated onto a nonwoven layer 16. See Smithies [0019]. The filter media 10 has a MERV rating of at least 9 to at least 17 and a pressure drop of 20 to 80 Pa (0.08 to 0.32 inches of water). Id. at [0045], [0055]. The nanofiber layer 12 largely influences the overall filtration efficiency of the filter media 10, and is beneficial because it increases the efficiency of the filter media 10. Id. at [0022].
It would have been obvious to provide the nanofiber layer 12 of Smithies on the center layer 102 of Chapman to increase the efficiency of the filter of Chapman. With this modification, the filter of Chapman would have a MERV rating of at greater than about 10 (as explained in the rejection of claim 1 above) to at least 17 (see Smithies [0045]), and a pressure drop between 0.15 inches of water (as explained in the rejection of claim 1 above) and 0.32 inches of water (see Smithies [0055]). The prior art range of a MERV or greater than about 10 to 17 overlaps with the claimed value of about 13, establishing a prima facie case of obviousness. The prior art range of 0.15 to 0.32 inches of water overlaps with the claimed range of 0.31 or less inches of water, establishing a prima facie case of obviousness.
Regarding claim 13, Chapman teaches a filter for an air heating and conditioning system, which reads on the claimed “filter for an air handling system.” See Chapman col. 1, ll. 13–18.
The filter comprises a center layer 102 of stiff, high loft polyester of fibers which can be made using a technique for making nonwoven products, such as an air laid process. See Chapman Fig. 9, col. 5, ll. 33–67, col. 4, ll. 37–41, col. 8, ll. 8–32. The center layer 102 reads on the “first layer comprising a nonwoven substrate of fibers.” The fibers have a linear density of 6 and 15 denier, which reads on a “linear density of greater than or equal to about 5 denier.” Id. at Table, col. 5, ll. 48–57.
The filter has a MERV rating greater than about 10, because it has an efficiency of 88.1% for 5.0/1.0 micron particles, and 83.9% for 3.0/5.0 micron particles, and 73.1% for 2.0/3.0 micron particles with a MERV 10 rating being an efficiency of at least 50% for 1.0–3.0 micron particles and at least 85% for 3.0–10.0 micron particles. See What is a MERV rating, EPA (January 19, 2021). The filter also has a pressure drop of 0.15 WG (i.e., 0.15 inches of water). See Chapman col. 7, ll. 34–37.
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Chapman differs from claim 13 because it is silent as to the filter having nanoparticles disposed within the center layer 102, with the nanoparticles having at least one dimension of less than 1 micron, as claimed. But the center layer 102 can comprise an antimicrobial agent. See Chapman Table, col. 5, ll. 48–57.
With this in mind, Zinn teaches a filtration medium comprises biocidal nanoparticles with a size of about 250 nm or less disposed within the porous construct of the filtration medium. See Zinn [0015], [0018], [0021]. The structure and type of air filtration undergoing impregnation with the nanoparticles is not particularly limited, and the filtration medium can be used as an inline filter for an air handler of an air conditioning system. Id. at [0077], [0080]. The nanoparticles are beneficial because they kill or inactivate pathogens thereby limiting the potential for secondary spread of disease. Id. at [0015].
It would have been obvious to impregnate the center layer 102 of Chapman with the nanoparticles of Zinn to kill or inactivate pathogens thereby limiting the potential for secondary spread of disease. With this modification, the nanoparticles have a size of 250 nm, which is within the claimed range of “at least one dimension less than 1 micron.”
Chapman also differs from claim 13 because it is silent as to the filter comprising a second layer comprising a nonwoven substrate of fibers bonded to the first layer, with the filter having a MERV rating of at least 13 and a pressure drop of 0.31 or less.
But Smithies teaches an HVAC filter media 10 comprising a nanofiber layer 12 that is coated onto a nonwoven layer 16. See Smithies [0019]. The nanofiber layer is a nonwoven substrate because it is an electrospun material. Id. The filter media 10 has a MERV rating of at least 9 to at least 17 and a pressure drop of 20 to 80 Pa (0.08 to 0.32 inches of water). Id. at [0045], [0055]. The nanofiber layer 12 largely influences the overall filtration efficiency of the filter media 10, and is beneficial because it increases the efficiency of the filter media 10. Id. at [0022].
It would have been obvious to provide the nanofiber layer 12 of Smithies on the center layer 102 of Chapman to increase the efficiency of the filter of Chapman.
With this modification, the nanofiber layer 12 of Smithies reads on the “second layer comprising a nonwoven substrate of fibers bonded to the first layer.” The filter would have a MERV rating of greater than about 10 (as explained above) to at least 17 (see Smithies [0045]), and a pressure drop between 0.15 inches of water (as explained above) and 0.32 inches of water (see Smithies [0055]). The prior art range of a MERV of greater than about 10 to 17 overlaps with the claimed value of about 13, establishing a prima facie case of obviousness. The prior art range of 0.15 to 0.32 inches of water overlaps with the claimed range of 0.31 or less inches of water, establishing a prima facie case of obviousness.
Regarding claim 12, Chapman in view of Zinn and Smithies teaches that the filter has a MERV rating of greater than about 10 (as explained in the rejection of claim 13 above) to at least 17 (see Smithies [0045]), which overlaps with the claimed range of at least 13, establishing a prima facie case of obviousness. The filter also has a pressure drop between 0.15 inches of water (as explained in the rejection of claim 13 above) and 0.32 inches of water (see Smithies [0055]), which overlaps with the claimed range of 0.24 or less inches of water, establishing a prima facie case of obviousness.
Regarding claim 15, Chapman teaches that the fibers have a linear density of 6 and 15 denier, which is within the claimed range of “at least 6 denier.” See Chapman Table, col. 5, ll. 48–57.
Regarding claim 16, Chapman teaches that the fibers have a linear density of 15 denier, which is within the claimed range of “at least 8 denier.” See Chapman Table, col. 5, ll. 48–57.
Regarding claim 17, Chapman as modified teaches that the fibers in the nanofiber layer 12 of Smithies (the “fibers in the second layer”) have a diameter of 1 to 750 nm. See Chapman [0024]. A fiber is considered a microfiber if it is 1 denier or less. See Brownstein et al., US 2011/0030557 A1, [0011]. Because the nanofibers of Smithies are smaller than microfibers (as they are nanofibers), the nanofibers are less than 1 denier, which is within the claimed range of “a linear density of 3 denier or less.”
Regarding claim 18, Chapman teaches that the fibers of the center layer 102 (the “fibers in the first layer”) have a linear density of 6 denier, which reads on “a linear density of about 7 Denier” (emphasis added). See Chapman Table, col. 5, ll. 48–57.
Also, while Chapman illustrates the filter as having a single center layer 102, it would have been obvious for the filter 102 to include two center layers 102 bonded to each other to increase filtration performance, with this modification merely representing obvious duplication of parts. See MPEP 2144.04, subsection VI, B. With this modification, the additional center layer 102 reads on the “second layer comprising a nonwoven substrate of fibers bonded to the first layer.” The fibers of the additional center layer 102 have a linear density of 6 denier, which reads on “a linear density of about 7 Denier” (emphasis added). See Chapman Table, col. 5, ll. 48–57.
Regarding claim 20, Chapman as modified teaches the limitations of claim 13, as explained above.
Chapman as modified differs from claim 20 because it is silent as to the nanofiber layer 12 of Smithies (the “second layer”) having nanoparticles with a dimension less than 1 micron disposed within the nanofiber layer 12.
But, as noted, Zinn teaches a filtration medium comprises biocidal nanoparticles with a size of about 250 nm or less disposed within the porous construct of the filtration medium. See Zinn [0015], [0018], [0021]. The structure and type of air filtration undergoing impregnation with the nanoparticles is not particularly limited, and the filtration medium can be used as an inline filter for an air handler of an air conditioning system. Id. at [0077], [0080]. The nanoparticles are beneficial because they kill or inactivate pathogens thereby limiting the potential for secondary spread of disease. Id. at [0015].
It would have been obvious to impregnate the nanofiber layer 12 of Chapman modified by Smithies with the nanoparticles of Zinn to kill or inactivate pathogens thereby limiting the potential for secondary spread of disease. With this modification, the nanoparticles have a size of 250 nm, which is within the claimed range of “at least one dimension less than 1 micron.”
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chapman, US 6,056,809 in view of Zinn et al., WO 2021/158726 A1 and in further view of Barrows et al., US 2014/0196423 A1.
Regarding claim 11, Chapman as modified teaches the limitations of claim 1, as explained above.
Chapman as modified differs from claim 11 because it is silent as to the fibers of the center layer 102 comprising glass. But the center layer 102 comprises polyester fibers. See Chapman Table, col. 5, ll. 47–58.
With this in mind, Barrows teaches an air filter media for an HVAC system comprising a combination of polyester and glass fibers. See Barrows [0048]. The glass fibers are beneficial because they reduce the cost of manufacturing the air filter media. Id. at [0006]. It would have been obvious for the center layer 102 of Chapman to include glass fibers to reduce the cost of manufacturing the center layer 102.
Response to Arguments
Double Patenting
The Examiner withdraws the previous double patenting rejections.
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections.
35 U.S.C. 103 Rejections
Claim 1
The Applicant argues that claim 1 is non-obvious over Chapman in view of Zinn, asserting that the antimicrobial agent of Chapman is incorporated into an acrylic resin binder, with the antimicrobial having an undisclosed particle size and morphology, and with Chapman failing to disclose nanoparticles distributed within the fiber matrix. See Applicant Rem. dated February 16, 2026 (“Applicant Rem.”) 6. It is argued that Chapman is completely silent as to nanoparticles, nanoscale dimensions, or impregnation of high-loft nonwoven fibers with particulate matter. Id.
The Examiner respectfully disagrees with the Applicant’s analysis. It is improper to argue non-obviousness by attacking references individually where the rejection is based on a combination of references. See MPEP 2145, subsection IV. Instead, the test for obviousness is what the combined teachings of the references would have suggested to a person of ordinary skill in the art. Id.
Here, claim 1 is rejected over the combination of Chapman in view of Zinn, and it is the Zinn reference that describes the nanoparticles. Therefore, the Applicant’s arguments are unpersuasive because they fail explain why it would have been non-obvious to include the nanoparticles of Zinn with the filter of Chapman.
The Applicant also argues that the disclosure of Zinn is focused exclusively on biocidal activity, and asserts that the reference does not solve for the performance constraints of claim 1. See Applicant Rem. 6.
The Examiner respectfully disagrees. The Applicant’s analysis is unpersuasive because it argues against the Zinn reference individually, instead of the combination of Chapman in view of Zinn.
The Applicant further argues that there is no motivation to use the nanoparticles of Zinn with Chapman, asserting that Chapman already discloses a functionally sufficient antimicrobial agent. See Applicant Rem. 7. It also argued that Chapman provides no guidance suggesting replacement of the antimicrobial agent with nanoscale particles or impregnation of the fiber matrix. Id.
The Examiner respectfully disagrees. Chapman provides little detail about its antimicrobial agent other than suggesting that the acrylic resin binder can contain an antimicrobial agent (see Chapman col. 2, ll. 33–35), with an example of the antimicrobial being Ages or Equiliuent (id. at col. 5, l. 56–57). But Zinn provides a detailed explanation of its antimicrobial nanoparticles, while explaining their benefit in killing or inactivating pathogens (see Zinn [0015]). Zinn also provides detail about how to incorporate the nanoparticles into a filter material (see Zinn [0020]). It would have been obvious to use the nanoparticles of Zinn with the filter of Chapman to kill or inactivate pathogens.
The Applicant further argues that although Zinn broadly states that its filtration medium may be used in HVAC systems, it fails to teach use in high-loft polyester media, use in filters optimized for low pressure drops or methods to incorporate nanoparticles without degrading airflow. See Applicant Rem. 7. The Examiner respectfully disagrees with the Applicant’s arguments because they focus on Zinn alone, instead of the combination of Chapman in view of Zinn. It is noted that the fact that Zinn mentions that its nanoparticles can be incorporated into an HVAC filter supports the obviousness rejection because it is evidence that there would have been a reasonable expectation of success in incorporating the nanoparticles of Zinn with the filter of Chapman (which can also be used in HVAC filtration).
The Applicant argues that modifying Chapman to include the nanoparticles of Zinn would undermine the principle of operation of Chapman, asserting that it would occlude pores, thereby increasing pressure drop. See Applicant Rem. 7. The Applicant provides no evidence to support this conclusion other than the opinion of the attorney.
The Examiner respectfully disagrees. Zinn teaches that the nanoparticles can be incorporated into filters, such as HVAC or automobile cabin filters), which require relatively high permeability. See Zinn [0004]. Therefore, a person of ordinary skill in the art would have understood that the nanoparticles of Zinn could be incorporated into the filter without significantly increasing pressure drop.
The Applicant further argues that there would have been no reasonable expectation of success in achieving the claimed MERV rating and pressure drop after incorporating the nanoparticles of Zinn into the Chapman’s. See Applicant Rem. 8.
The Examiner respectfully disagrees. As noted, the filter of Chapman has the claimed MERV rating and pressure drop. The filter of Chapman can be used in an HVAC system. Also, Zinn teaches that the nanoparticles can be incorporated into an HVAC filter. See Zinn [0004]. This means that the nanoparticles would not be expected to significantly degrade the performance of the HVAC filter, because otherwise they would not be suitable for incorporation into this type of filter. Therefore, a person of ordinary skill in the art would have had a reasonable expectation of success in maintaining the pressure drop and MERV rating of the filter of Chapman after incorporating the nanoparticles of Zinn.
The Applicant argues that the rejection relies on impermissible hindsight, asserting that Zinn is directed to biocidal efficacy, not filtration efficiency while Chapman does not disclose or suggest nanoparticles. See Applicant Rem. 8.
The Examiner respectfully disagrees. Chapman teaches a filter that can be used in an HVAC filter that can also include an antimicrobial agent. Zinn teaches antimicrobial nanoparticles that can be included in HVAC filters. Therefore, the combination is not based on impermissible hindsight, but on the state of the art.
The Applicant further argues that claim 1 is non-obvious, asserting that the experimental data in the disclosure demonstrates unexpected results. See Applicant Rem. 9. Specifically, it is argued that Example 3 demonstrates that a high-loft air-through carded nonwoven incorporating nanofibers bonded with conventional starch binder achieves dramatic increases in filtration efficiency with incremental increases in pressure drop. Id. It is noted that in Table 2, MERV ratings increase from 10 to 14 while pressure drop increases from 0.1 to 0.5 inches of water. It is further argued that E3 efficiencies increase from 88% to 100%, with the Applicant arguing would not have been expected from high-loft, air-through carded substrate, without providing evidence to support this conclusion. Id. It is also argued that Example 4 shows that nanoparticles incorporated into either spunbond or meltblown fibers after IPA discharge result in substantial and unexpected gains in filtration efficiency. Id. at 10. Specifically, the Applicant argues that the base spunbond sample has a MERV 9 rating and pressure drop of 0.07 inches, while samples incorporating the nanoparticles have a MERV rating of 12 to 16 with pressure drops of 0.17 to 0.41 inches. Id. It is further argued that the unexpected nature of the claimed invention is further confirmed by the broader data set in Examples 5–11.
The Examiner respectfully disagrees. In Example 3, the MERV rating increases from 10 to 14, but the pressure drop increases significantly from 0.1 to 0.5 inches of water (a 400% increase). In Example 4, the MERV rating increases from 9 to a range from 12 to 16, but the pressure drop also increases from 0.07 to a range of 0.17 to 0.41 inches of water (a 142% to 500% increase). Examples 5–11 show that the MERV rating increases, but the pressure drop increases significantly (Example 5 shows a 933% increase; Example 6 a 150% increase; Example 7 a 966% increase; Example 8 a 2075% increase; Example 9 a 700% increase; Example 10 an 800% increase; and Example 11 a 933% increase). A person of ordinary skill in the art would have expected that incorporating nanoparticles into a filter material would increase both efficiency and pressure drop, because the nanoparticles would decrease pore size, which increases particulate capture ability while restricting airflow. Therefore, because the results are expected, there is no evidence of unexpected results.
Claim 13
The Applicant argues that claim 13 is distinguishable over Chapman in view of Zinn and Smithies. Specifically, the Applicant notes that the rejection modifies the filter of Chapman to incorporate the nanofiber layer of Smithies. But it is argued that claim 13 does not recite a nanofiber filtration layer. See Applicant Rem. 11–12.
The Examiner respectfully disagrees. Claim 13 is written with the open-ended transitional phrase “comprising” instead of the closed transitional phrase “consisting of.” Therefore, the filter of Chapman incorporating the nanofiber layer of Smithies can read on the filter of claim 13, even though claim 13 is silent as to the filter including a nanofiber layer, because the open-ended nature of claim 13 means that it does not exclude additional, unrecited elements. See MPEP 2111.03, subsection I.
The Applicant further argues that a layered nanofiber coating is structurally and functionally distinct from nanoparticles dispersed within a coarse-denier nonwoven substrate, and asserts that Smithies fails to disclose substituting one for the other. See Applicant Rem. 12.
The Examiner respectfully disagrees with the Applicant’s analysis. In the rejection, Chapman is modified so that the center layer 102 (which has an antimicrobial) is modified to include the biocidal nanoparticles of Zinn, while the nanofiber layer 16 of Smithies is included as an additional layer in the filter of Chapman (on the center layer 102). Therefore, the combination results in nanoparticles dispersed within a coarse-denier nonwoven substrate, i.e., the center layer 102 of Chapman.
The Applicant further argues that Smithies teaches away from the claimed invention. See Applicant Rem. 12. Specifically, it is argued that Smithies attributes high MERV performance to the presence of a nanofiber layer, and asserts that a person of ordinary skill in the art would be led away from attempting to achieve MERV ≥ 13 using a nonwoven layer with at least 5 denier fibers with dispersed nanoparticles, as required by claim 13. See Applicant Rem. 12.
The Examiner respectfully disagrees. As noted, the rejection modifies the center layer 102 of Chapman to include the nanoparticles of Zinn, and includes the nanofiber layer 16 of Smithies to increase efficiency of the filter of Chapman. Therefore, Smithies does not teach away from the claimed invention, but instead is an improvement on the filter of Chapman.
The Applicant further argues that Smithies fails to establish the claimed performance pairing of claim 13. The Applicant acknowledges that Smithies teaches MERV ratings of 9 to 17, and pressure drop values from 20 to 80 Pa (0.08 to 0.32 inches of water). See Applicant Rem. 12. But it is argued that Smithies provides independent, unlinked ranges, and therefore, there would not have been a reasonable expectation of success in achieving a MERV rating of at least 13 and a pressure drop of 0.31 inches of water. Id.
The Examiner respectfully disagrees. A person of ordinary skill in the art would have had a reasonable expectation of success in achieving a MERV rating of at least 13 and a pressure drop of 0.31 inches of water. This is because the claimed MERV rating of 13 is in about the middle of the range of Smithies (MERV 9 to 17) while the claimed pressure drop of 0.31 inches of water is at about the highest end of the pressure drop range of Smithies (0.08 to 0.32 inches of water).
The Applicant also argues that the reliance on overlapping ranges is misplaced, asserting that this doctrine applies when the prior art disclsoes optimization of the same parameter within the same structure. See Applicant Rem. 13. It is argued that here, the high-loft nonwoven filter of Chapman, the nanoparticles of Zinn, and the nanofiber layer of Smithies do not represent routine optimization of a single variable but incompatible design approaches that rely on different structural elements to achieve filtration efficiency. Id.
The Examiner respectfully disagrees. Smithies teaches that the nanofiber layer 12 largely includes overall filtration efficiency of the filter media 10. See Smithies [0022]. A person of ordinary skill in the art would also understand that the nanofiber layer 12 largely influences the pressure drop of the filter 10 because it is the most restrictive layer in the filter 10 (due to its impact on efficiency). The filter of Chapman has a lower efficiency and can have a lower pressure drop than the nanofiber layer 12 of Smithies. Therefore, when the nanofiber layer 12 of Smithies is incorporated into the filter of Chapman, the filter of Chapman would be expected to have the MERV (efficiency) and pressure drop values of the nanofiber layer 12 of Smithies, because the nanofiber layer 12 largely influences efficiency and pressure drop of the entire filter.
The Applicant argues that claim 13 is nonobviousness, asserting that the experimental data shows an unexpected performance of increase in filtration efficiency while maintaining low pressure drop. See Applicant Rem. 13. The Examiner respectfully disagrees for the reasons stated above.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Zinn is in the record as the 59-page Foreign Reference dated August 15, 2023.
Prosecution Insights