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 .
Election/Restrictions
Applicant’s election without traverse of claims 11-19 and 21-28 in the reply filed on 06/16/2025 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a dispersion device… for” in claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 11, 13 and 26-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipate by US 8,118,170 (Sato).
Regarding claim 11 and 26 the Sato reference discloses a system for isolating individual nanoparticles within a gaseous medium, the system comprising: a housing configured to contain a first group of nanofibers having a first dimension, the first group of nanofibers comprise entangled shortcut nanoparticles (figure 3, object 21); a pump coupled to the housing (figure 3 both “pump”s); and a passage coupled to the pump and having a surface (figure 3, object 28), wherein the pump is configured to propel the first group of nanofibers into the surface at a sufficient velocity to separate the first group of nanofibers into a second group of nanofibers having a second dimension smaller than the first dimension (column 2 lines 20-38 and column 5, lines 40-51). To note the current claim is an apparatus claim. As currently claimed there is no limitations the delineate the claimed structure from the structure of Sato.
For claim 13 the Sato reference discloses a source of compressed air (this is being interpreted as a source that would allow for air flow as this is an apparatus claim, therefore “He” in figure 3 meets this limitation); and a passage coupling the source of compressed air to the pump (figure 3, object 24, 27 and 32).
For claims 27 and 28, the Sato reference discloses the passage comprises a junction and therein the surface is at the junction and the junction is substantially T-shaped junction (see arrows on the below).
PNG
media_image1.png
648
584
media_image1.png
Greyscale
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 (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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato.
For claims 12 and 25, the Sato reference does not disclose the velocity is about 500 feet/minute (fpm) to about 10,000 fpm and the velocity is about 2,000 fpm to about 6,000 fpm. The reference does disclose the velocity is equal to or less than sonic velocity (~67,000 fpm) which overlaps with the claimed range. Sato recognizes that the velocity of which the impactor is a result effective variable as “classification of small nanoparticles becomes easier as the gas velocity increases”. See Sato column 4 lines 31-36).
Therefore it would have been oblivious to one having ordinary skill in the art before the effective filing date to have modified the Sato reference to include the velocity is about 500 feet/minute (fpm) to about 10,000 fpm and the velocity is about 2,000 fpm to about 6,000 fpm (Sato column 4, lines 31-36) so as to easily classify small nano particles. Further the courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato as applied in claim 13 above and further in view of US 2016/0312676 (Youssef et al.).
For 14, the Sato reference discloses a use of low pressure and using a vacuum pump “or the like” to adjust the pressure of the classifying chamber (column 4, lines 20-29 and figure 3 “pump”s). The reference does not disclose the pump comprises an eductor configured to generate a negative pressure to draw the first group of nanofibers from the housing and through the first passage.
The Youssef et al. reference discloses the use of eductors over vacuum pumps to guarantee negative pressure (paragraph [0276]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Sato reference to include the use of eductors over vacuum pumps (Youssef et al. paragraph [0276]) to guarantee negative pressure. When replacing the vacuum pumps of Sato with the eductors of Yousseff et al. this would generate a negative pressure to draw the first gorup of nanofibers from the housing and through the first passage.
Claim(s) 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato and Youssef et al. as applied in claim 14 above and further in view of US 10,201,836 (Jikihara et al.).
For claim 15, the Sato reference does not disclose a reactor having an internal chamber coupled to the passage; wherein the reactor is configured to separate the second group of nanofibers into individual nanoparticles having a third dimension smaller than the second dimension.
The Jikihara et al. reference discloses a reactor having an internal chamber coupled to the passage (figure 1, objects 36 and 18); wherein the reactor is configured to separate individual nanoparticles from a groups of nanofibers (figure 1, object 10 and column 2, lines 21-25).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Sato reference to include a reactor having an internal chamber coupled to the passage (Jikihara et al. figure 1, objects 36 and 18); wherein the reactor is configured to separate individual nanoparticles from a groups of nanofibers (Jikihara et al. figure 1, object 10 and column 2, lines 21-25) to provide additional classifying means with classification accuracy. The combination of Sato and Jikihara would result in a structure which is configured to separate the second group of nanofibers into individual particles having a third dimension smaller than the second dimension.
For claim 16, the Jikihara et al. reference discloses the internal chamber of the reactor comprises one or more inlets coupled to the passage (figure 1, object 36), and wherein the pump (suction blower column 7, lines 13-15) is configured to propel the second group of nanofibers through the inlets with a velocity vector that creates a vortex within the reactor (column 7, lines 13-46).
For claim 17, the Jikihara et al. reference discloses the internal chamber includes a substantially central tube and the velocity vector includes a direction that it transverse to a longitudinal axis of the tube and wherein the central tube comprises a substantially cylindrical outer surface with an upper opening (figure 1, object 20), wherein the second group of nanofibers are propelled in the vortex around the outer surface of the central tube (column 7, lines 13-46).
For claim 18, the Jikihara et al. reference discloses the internal chamber comprises one or more outlets at an opposite end of the internal chamber from the one or more inlets (figure 1, object 39), the system further comprising a source of energy coupled to the outlets and configured to apply a negative pressure to the chamber to draw the groups of nanofibers through the outlets (Suction blower column 76, lines 13-15, figure 1, objects 39 and 20).
For claim 19, a dispersion device fluidly coupled to an outlet of the central tube for dispersing the individual nanoparticles (Figure 1, object 30 which is fluidly connected to the outlet of the central tube 20).
Claim(s) 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato as applied in claim 11 above and further in view of US 2003/0047076 (Liu).
For claims 21-23, the Sato reference does not disclose the housing comprises a separator configured to mechanically separate macro clusters of nanofibers into the first group of nanofibers.
The Liu reference discloses a separator configured to mechanically separate macro clusters of nanofibers into the first group of nanofibers (figure 2 Stages 16 and 18), comprising a hopper for feeding the macro clusters of nanofibers into the separator at a specified rate (figure 2, object 22), wherein the separator comprises a housing and a plurality of blades rotatably mounted within the housing, wherein the blades are configured to mechanically separate the macro clusters of nanofibers into the smaller clusters of nanoparticles (figure 2 objects 16, 18, 40 and 70).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Sato reference to include a separator configured to mechanically separate macro clusters of nanofibers into the groups of nanofibers (Liu figure 2 Stages 16 and 18), comprising a hopper for feeding the macro clusters of nanoparticles into the separator at a specified rate (Liu figure 2, object 22), wherein the separator comprises a housing and a plurality of blades rotatably mounted within the housing, wherein the blades are configured to mechanically separate the macro clusters of nanoparticles into the smaller clusters of nanoparticles (Liu figure 2 objects 16, 18, 40 and 70).
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: while it is known within the prior art that blades have pitch and camber, the prior art does not demonstrate a first blade having a different pitch and camber than the second blade and reasoning to combine with the other claim limitations.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 and 23-27 of copending Application No. 18/297,247 (‘247). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 11 of the instant application corresponds to claim 21 (‘247).
Claim 12 of the instant application corresponds to claim 23 (‘247).
Claim 13 of the instant application corresponds to claim 24 (‘247).
Claim 14 of the instant application corresponds to claim 25 (‘247).
Claim 15 of the instant application corresponds to claim 26 (‘247).
Claim 16 of the instant application corresponds to claim 27 (‘247).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
The applicant contends that Sato does not disclose or suggest any mechanism for reducing the size of nanoparticles, specification stating that “the present claims recite a process of actively reducing the dimension of nanofibers to generate smaller nanoparticles, a feature wholly absent from Sato”.
It is noted that the claimed subject matter is directed towards an apparatus and not a process. Therefore the applicant is arguing that which is note claimed. As shown in the rejection above, the apparatus as claimed is anticipated by Sato. Further it is noted that Sato does in fact disclose classification of particulates by size (column 3, lines 25-38).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AMBER ROSE ORLANDO whose telephone number is (571)270-3149. The examiner can normally be reached Monday-Thursday 6:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
AMBER ROSE ORLANDO
Primary Examiner
Art Unit 1731
/AMBER R ORLANDO/ Primary Examiner, Art Unit 1731
Prosecution Insights