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 .
IDS
The information disclosure statement (IDS) submitted on 03/26/2026 has been considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 12-13 and 15-29 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent of record (US20130030340A1) in view of Calvert of record (Inst. Particle Science, 2009).
Regarding claim 12, Vincent teaches a system for the continuous production of a fibrous material (ABS), the system comprising: a conveyor for advancing a substrate comprising fibrous materials from an upstream end to a downstream end (P0279, conveyor belt); a feeder for feeding groups of nanofibers into a fluid medium (P0126, “sorbent chemically active particulates 130”, P0128 “the sorbent particulates may comprise nanoparticulates” P0212 “The input stream of chemically active particulates may… be augmented by an air nozzle to fluidize the chemically active particulates”); a fiberization device coupled to the feeder and configured to convert the groups of nanofibers into nanoparticles (P0200, fig.3, 210, 210’, 210”), wherein the nanoparticles have at least one dimension less than 1 micron (P0128); and a dispersion device coupled to the fiberization device for dispersing the nanoparticles into the substrate to form a product (Fig.3).
Vincent does teach a fiberization device is configured to propel the groups of nanofibers within the fluid medium at a velocity of 2300 m^3/hr (P0279) but is silent to the specifics of nanofibers having a first dimension being converted to nanoparticles having a second dimension smaller than the first dimension.
Calvert, to solve the same problem, dispersion of nanomaterials, teaches dispersion and particle size reduction through fluidization including impact onto a target (pg.8, section 3, ¶ 1 (2, 3), table 1, g, pg.12, 4.1.7, impact dispenser).
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Section of Table 1, Calvert
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have nanofibers having a first dimension being converted to nanoparticles having a second dimension smaller than the first dimension for the purpose of dispersing particles as taught by Calvert (pg.12, 4.1.7).
"A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Vincent teaches the dispersion device comprises a nozzle configured to disperse the nanoparticles onto a first surface of the substrate (Fig.3, P0212, P0200, 310, 210) and a flow control mechanism (P0279, blower flow rate settings).
Vincent teaches the nanoparticles are dispersed into the substrate at a rate of 420 g/m2 (P0279) but is silent to the nanoparticles are dispersed into the substrate at a rate of about 0.1 grams/m2 to about 10 grams/ m2. It would be obvious to disperse the nanoparticles at a desired rate to achieve the desired resulting density of nanoparticles in the final product. It is well settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 13, Vincent teaches the fiberization device is configured to propel the groups of nanofibers within the fluid medium at a velocity of 2300 m^3/hr (P0279) which is 1354 fpm and is fully within the claimed range of about 500 feet per minute (fpm) to about 10,000 fpm.
Regarding claim 15, Vincent teaches the nanoparticles are dispersed into the substrate at a rate of 420 g/m2 (P0279) but is silent to the nanoparticles are dispersed into the substrate at a rate of at least 2.0 grams/m2.
It would be obvious to disperse the nanoparticles at a desired rate to achieve the desired resulting density of nanoparticles in the final product. It is well settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 16, Vincent teaches the conveyor is configured to advance the substrate at a rate of about 1m/min but is silent to a rate of .05 to 1 meters/second (3m/min- 60m/min). This is close to the claimed rate however.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985).
Further, it would be obvious to set the rate as necessary working with the flow rate of particles to achieved the desired product. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 17, Vincent teaches the dispersion device comprises a nozzle configured to disperse the nanoparticles onto a first surface of the substrate such that the nanoparticles penetrate through at least the first surface of the substrate (Fig.3, P0212, P0200, 310, 210).
Regarding claim 18, Vincent teaches the substrate has a thickness from the first surface to a second surface opposing the first surface, wherein the nozzle disperses the nanoparticles within the substrate in at least 25% of the width from the first surface to the second surface (fig. 4B shows layer T” comprising 50% of the width).
Regarding claim 19, Vincent teaches a separator coupled to the feeder and configured to mechanically separate the macro clusters of nanofibers into the groups of nanofibers (fig.3, spike rollers 222).
Regarding claim 20, Vincent teaches wherein the fiberization device comprises a source of compressed air (gas compressor, P0250); and a pump (P0250), wherein the pump is configured to propel the groups of nanofibers and the compressed air against a surface with a velocity sufficient to break apart at least a portion of the groups of nanofibers into individual nanoparticles (P0212, “ augmented by an air nozzle to fluidize the chemically active particulates”).
Regarding claim 21, Vincent teaches the fiberization device is configured to propel the groups of nanofibers within the fluid medium at a velocity of 2300 m^3/hr (P0279) which is 1354 fpm. This is close to the claimed velocity of about 2,000 fpm to about 6,000 fpm.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 22, Vincent teaches the pump comprises a vacuum force (P0059-60, P0189) which meets the limitation of an eductor configured to generate a negative pressure to draw the groups of nanofibers from the separator as eductors create vacuum force.
Regarding claim 23, Vincent teaches a reactor having an internal chamber fluidly coupled pump, wherein the reactor is configured to separate the individual nanoparticles from the clusters of nanofibers (chamber 220, fig.3, pump, P0250).
Regarding claim 24, Vincent teaches the internal chamber of the reactor comprises one or more inlets coupled to the pump, and wherein the pump is configured to propel the individual fibers and the clusters of nanofibers through the inlets (inlets, fig.3, pump P0250). The recitation that the pump propels the individual fibers and the clusters of nanofibers through the inlets with a velocity vector that creates a vortex within the reactor is intended use. The system of Vincent comprises the parts necessary to configure it for making a vortex and therefore the limitations are met. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself, In re Casey 152 USPQ 235.
Regarding claim 25, Vincent teaches the internal chamber comprises one or more outlets at an opposite end of the internal chamber from the one or more inlets (fig.3, the bottom of the chamber 220 is open to the web conveyor below), the system further applying a negative pressure to the chamber to draw the groups of nanofibers through the outlets (vacuum force, P0213).
While Vincent teaches a pump (P0250), Vincent is silent to a second pump to achieve the negative pressure. However, it would be obvious to use a pump to create a negative pressure as there are a limited number of ways to achieve this. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Further, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 26, Vincent teaches a coating device for dispersing adhesive onto the fibrous material in the substrate (P0227).
Regarding claim 27, Vincent teaches the coating device comprises a spray device (P0227) having an outlet near the feeder and the dispersion device (fig.3, 250).
While Vincent is silent to the spray device having an outlet adjacent an upstream end of the feeder and the dispersion device, it has generally been recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400.
Regarding claim 28, Vincent teaches the conveyer comprises first and second opposing surfaces, wherein the substrate is advanced along the first surface, wherein the system further comprises a source of negative pressure adjacent the second surface (fig.3, P0280, P0020, “vacuum force”).
Regarding claim 29, Vincent teaches a dryer disposed near the conveyor between the fiberization device and the downstream end of the feeder for heating the nanoparticles and the fibers (fig.3, 240, heating unit).
Response to Arguments
Applicant's remarks regarding the rejection of claims 12-29 under 35 USC 103 in view of Vincent of record (US20130030340A1) and Calvert of record (Inst. Particle Science, 2009) are moot as they rely upon amended claim limitations not previously considered.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that Calvert is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Calvert is concerned with the dispersion of nanoparticles (pg.8, section 3, ¶ 1 (2, 3), table 1, g, pg.12, 4.1.7, impact dispenser) and therefore one of ordinary skill in the art would turn to this to solve similar problems with nanoparticle dispersion.
The rejection of amended claims 12-13 and 15-29 is provided above.
Conclusion
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/ERICA HARTSELL FUNK/Examiner, Art Unit 1741