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 Objections
Claim 26 is objected to because of the following informalities:
26. The system of claim 25, wherein the nozzle is configured to disperse the two or more nanoparticles through first surface of the substrate such that the two or more nanoparticles are incorporated substantially throughout the substrate to form a composite material. Emphasis added.
Claim 26 is objected to because there is an errant strike mark in “
26. The system of claim 25, wherein the nozzle is configured to disperse the two or more nanoparticles through [[the first surface of the substrate such that the two or more nanoparticles are incorporated substantially throughout the substrate to form a composite material.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13–15, 17, 18, and 21–33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13 recites:
13. A system for manufacturing a product comprising a fibrous material, the system comprising:
a separator configured to receive a first group of nanofibers having a first dimension and to convert the first group of nanofibers into a second group of nanofibers having a second dimension smaller than the first dimension;
a first device coupled to the separator and comprising a housing configured to receive the second group of nanofibers, a pump coupled to the housing and a passage coupled to the pump and having a surface, wherein the pump is configured to propel the second group of fibers into the surface to separate the second group of fibers into two or more nanofibers having a third dimension smaller than the second dimension; and
a second device having a flow passage and an outlet configured to combine the nanofibers with a second group of fibers to form the product. Emphasis added.
The Applicant has not pointed out where the new limitations of the system comprising both “a separator” and “a first device…comprising a housing…and a passage…having a surface…wherein the pump is configured to propel the second group of fibers into eh surface to separate the second group of fibers” is supported. There does not appear to be written description support for these limitations, at least because there is no disclosure of a “housing” of a “first device.” It is noted that Fig. 13 of the disclosure shows the system comprises a separator 210 comprising a housing 212 and passages 244, 252, 254, 264, 262 receiving nanofibers from the separator 210, with pumps 240, 250, 260 being coupled to the passages. The disclosure also teaches that pumps 250, 260 are configured to propel the nanofibers against the surface of passage 252 of the passages to separate the nanofibers. See Spec. Fig. 13, [0179]. But there is no disclosure of a “housing” of a “first device.” Instead, the only housing that is described is the housing of the separator 210.
Claims 14, 15, 17, 18, and 21–33 are rejected as they depend from claim 13.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17, 18, and 21–33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites:
17. The system of claim 14, further comprising a reactor having an internal chamber coupled to the passage, wherein the reactor is configured to separate each of the two or more nanofibers into two or more nanoparticles having a fourth third dimension smaller than the third dimension. Emphasis added.
Claim 17 is indefinite because it is unclear what is meant by “a fourth third dimension.” To overcome this rejection, claim 17 could be amended to read:
17. The system of claim 14, further comprising a reactor having an internal chamber coupled to the passage, wherein the reactor is configured to separate each of the two or more nanofibers into two or more nanoparticles having a fourth
Claims 18, and 21–33 are indefinite because they depend from claim 17.
Claim 26 recites:
26. The system of claim 25, wherein the nozzle is configured to disperse the two or more nanoparticles through the first surface of the substrate such that the two or more nanoparticles are incorporated substantially throughout the substrate to form a composite material. Emphasis added.
Claim 26 is indefinite because it is unclear if “the nozzle” refers to the “first nozzle” or the “second nozzle” of claim 25. To overcome this rejection, claim 26 could be amended to read:
26. The system of claim 25, wherein the first nozzle is configured to disperse the two or more nanoparticles through the first surface of the substrate such that the two or more nanoparticles are incorporated substantially throughout the substrate to form a composite material.
Claims 27–31 are indefinite because they depend from claim 26.
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 13–15, 17–19, 21, 32, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Altan et al., US 2008/0187657 A1 in view of Kwok et al., US 2016/0220927 A1.
Regarding claim 13, Altan teaches a container assembly 10 for depositing nanoparticles onto a substrate 50, which can be a fibrous substrate. See Altan Fig. 1, [0026], [0033]. The container assembly 10 reads on the claimed “system for manufacturing a product comprising a fibrous material.” Note that the “product comprising a fibrous material” is not a positively recited structural element of the claimed “system.” See MPEP 2115 (a claim is only limited by positively recited elements).
The container assembly 10 comprises a “first device” (hopper 26, static mixer 28, and air compressor to provide external pressure to hopper 26 or a vacuum generator) coupled to a source of nanomaterial 56 (the “second group of nanofibers”). See Altan Fig. 1, [0026], [0028], [0031]. The “first device” comprises :
The hopper 26, which reads on the “housing.” The hopper 26 is configured to receive the nanomaterial 56, which can comprise nanofibers. See Altan Fig. 1, [0023], [0032]. The nanomaterial 56 reads on the “second group of nanofibers.”
The air compressor or the vacuum generator, either of which reads on the “pump coupled to the housing.” See Altan [0026], [0031].
The static mixer 28, which reads on the “passage coupled to the pump.” See Altan [0028]. The static mixer 28 has a “surface,” which is the inner surface of the narrow passageway of the static mixer 28. Id. The air compressor is capable of performing the function of propelling the nanomaterial 56 into the inner surface of the narrow passageway to separate the nanomaterial 56 into two or more nanofibers having a “third dimension” dimension smaller than the dimension of the nanomaterial 56 (the “second dimension”), as claimed, because the air compressor pushes the nanomaterial 56 into the static mixer 28 where larger clusters or aggregations of nanomaterial 56 (which can comprise fibers) are broken up. Id. at [0026]–[0028]; MPEP 2114 (functional language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
The container assembly 10 also comprises a “second device” comprising a needle 34 (the “flow passage”) with an orifice 35 (the “outlet”) that is configured for spraying the nanomaterial 56 that is broken up by the static mixer 28 onto a fibrous substrate 50 where the nanomaterial 56 (i.e., nanofibers) is combined with the fibers of the substrate 50 (the “second group of fibers”) to form a product. See Altan Fig. 1, [0027], [0033]–[0034]. This reads on “a second device having a flow passage and an outlet configured to combine the nanofibers with a second group of fibers to form the product.”
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Altan differs from claim 13 because it is silent as to the container assembly 10 comprising a separator configured to receive a first group of nanofibers having a first dimension and convert the first group of nanofibers into the nanomaterial 56 in the hopper 26 (the “second group of nanofibers having a second dimension smaller than the first dimension”).
But the nanomaterial 56 is supplied to the hopper 26 from some (undisclosed) source. See Altan [0026]. The nanomaterial 56 (which can be nanofibers) has aggregates of nanomaterial 56 that are broken up in the static mixer 28 to produce processed nanomaterial that is sprayed onto the fibrous substrate 50. Id. at [0033]–[0034].
With this in mind, Kwok teaches a method for producing nanofibers that are combined with fibers of a filter media. See Kwok [0038]. The method comprises an initial step of griding raw nano-fiber dry clumps, with the ground nano-fiber being further processed to extract individual nanofibers that are then attached to the fibers filter media. Id. The grinding step is beneficial because it reduces the size of nano-fiber clumps before the nano-fibers are further processed. Id.
It would have been obvious to use a grinder to grind the nanomaterial 56 before it is introduced into the hopper 26 to break the aggregates into smaller clumps before the aggregates are further processed in the static mixer 28 to produce the nanomaterial that is applied to the fibrous substrate 50.
With this modification, the grinder reads on the “separator” and the raw nanomaterial supplied to the grinder reads on the “first group of nanofibers having a first dimension.” The grinder is configured to convert the raw nanomaterial into the nanomaterial 56 supplied to the hopper 26 (the “second group of nanofibers having a second dimension smaller than the first dimension”). The “first device” (hopper 26, static mixer 28, and air compressor or vacuum generator) is “coupled to” the grinder, as claimed, because the modified system of Altan (using the grinder) is configured such that ground nanomaterial is supplied from the grinder to the hopper 26.
Regarding claim 14, Altan teaches that the “second device” (needle 34 with orifice 35) comprises a “nozzle” because the needle 34 sprays nanofibers out of the orifice 35. See Altan Fig. 1, [0028]. The needle 34/orifice 35 is capable of performing the function of dispersing the nanofibers onto an exposed surface 52 of fibrous substrate 50 (the “first surface of a substrate”) such that the nanofibers penetrate through at least the exposed surface 52, as claimed, because the needle 34/orifice 35 sprays nanofibers into the inner space 18 of container assembly 10 so that the nanofibers are deposited on the exposed surface 52 and nanofibers could penetrate within the spaces between the fibers of the substrate 50. Id. at [0033]; MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). Note also that the “substrate” is not a positively recited structural element of the claimed system. See MPEP 2115 (a claim is only limited by positively recited elements).
Regarding claim 15, Altan teaches that the “second device” (needle 34 with orifice 35) comprises the orifice 35 that sprays nanofibers into the inner space 18. See Altan Fig. 1, [0026]. The orifice 35 reads on the “feeder.” The orifice 35 is capable of performing the function of forming a first stream of the nanofibers and combining the first stream with one or more streams of the second groups of fibers to form the fibrous material, because nanofibers that are sprayed from the orifice 35 could be combined with another stream of fibers to form a fibrous material. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Regarding claim 17, Altan teaches that the container assembly 10 (the “system”) further comprises a lower end 32 with an interior space coupled to the static mixer 28 (the “passage”). See Altan Fig. 1, [0026]. The lower end 32 reads on the “reactor” and the interior space of the lower end 32 reads on the “internal chamber.” The lower end 32 is capable of performing the function of separating each of the nanofibers from the static mixer 28 into two or more nanoparticles having a third dimension smaller than the dimension of the nanofibers, because the lower end 32 is downstream of the static mixer 28 and the nanomaterial continues to move as it passes through the lower end 32, and therefore clusters of nanomaterial 56 could continue to breakup while moving through the lower end 32. Id. at [0027]; See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Note also that lower end 32 is presumed capable of performing the claimed function of—separating “each of the two or more nanofibers into two or more nanoparticles having a fourth third dimension smaller than the third dimension”—because it has the same structure as the claimed “reactor.” See MPEP 2112.01, subsection I (when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent”). The Applicant bears the burden of rebutting the presumption that the lower end 32 is capable of performing the claimed function. Id. (when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not).
Regarding claim 18, Altan teaches that the interior space of the lower end 32 (the “internal chamber of the reactor”) comprises an inlet at the upper end of the interior space coupled to the static mixer 28 (the “one or more inlets”). See Altan Fig. 1, [0026]. The vacuum generator (the “pump”) is capable of performing the function of propelling the nanofibers through the inlet with a velocity vector that creates a vortex in the lower end 32 because the vacuum generator creates a vortex in the static mixer 28 (as seen by the arrows in Fig. 1), and this vortex could continue in the lower end 32 because it is connected to the static mixer 28 there is no illustration of a vortex breaker in the lower end 32. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function); MPEP 2112.01 (when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not).
Regarding claim 19, the claim requires that for the system of claim 13, “the product comprises a filter media.” The “product” is not a positively recited element of the claimed “system.” Therefore the “product” does not impart patentability to the claims. See MPEP 2115 (a claim is only limited by positively recited elements, thus the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims).
Regarding claim 21, Altan teaches that the interior of the lower end 32 (the “internal chamber”) includes a substantially central tube, which is the tube formed by the interior of the lower end 32. Note that this tube is “substantially central” because it runs through the centers of the inner space 18 of the container assembly 10, as seen in Fig. 1. The apparatus is capable of performing the function of “the velocity vector includes a direction that is transverse to a longitudinal axis” of the tube formed by the interior of the lower end 32, because a velocity vector within the static mixer 28 is transverse to the tube formed by the interior of the lower end 32, and this rotation could continue in the lower end 32 because the reference fails to teach a vortex breaker in the lower end 32. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Regarding claims 32 and 33, the claims requires that for the system of claim 17, the substrate has a thickness from the first surface to a second surface opposing the first surface, wherein the nozzle is configured to disperse the two or more nanoparticles within the substrate in at least 25% of the width from the first surface to the second surface, and wherein the nozzle is configured to disperse the two or more nanoparticles within the substrate in at least 50% of the thickness from the first surface to the second surface. The claims are interpreted such that the “substrate” is not a positively recited element of the claimed system. Therefore, the limitations of the claim fail to impart patentability to the claims. See MPEP 2115 (a claim is only limited by positively recited elements, thus the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims). Note also that the needle 34/orifice 35 (the “nozzle”) is capable of dispersing nanoparticles within the substrate 50 in at least 25% or at least 50% of the width from the exposed surface 52 (the “first surface”) to a second surface, because the needle 34/orifice 35 is provided to spray nanomaterial into the inner space 18 so that it is deposited into or onto the substrate 50, with the substrate 50 being any type, and therefore the nanomaterial could penetrate within the substrate in at least 25% or at least 50% of the width from the first to second surface, depending on the material used for the substrate 50. See Altan [0023]; MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Claims 21–27 are rejected under 35 U.S.C. 103 as being unpatentable over Altan et al., US 2008/0187657 A1 in view of Kwok et al., US 2016/0220927 A1 and in further view of Latta et al., US 2014/0203121 A1.
Regarding claims 21–23, Altan teaches the limitations of claim 18, as explained above.
Altan differs from claims 21–23 because it is silent as to the internal chamber including a substantially central tube with a substantially cylindrical outer surface with an upper opening where the lower part 32 (the “reactor”) is configured to propel the nanofibers around the outer surface of the central tube and wherein the reactor is configured to draw two or more nanoparticles into the upper opening of the central tube, as claimed.
But a purpose of the static mixer 28 and lower part 32 is to break up clusters of nanomaterial 56 into smaller components so that the smaller nanomaterial can be deposited on the substrate 50. See Altan [0028]–[0029]. Larger nanomaterial clusters 58 are not intended to be directed to the substrate 50. Id. at [0035].
With this in mind, atta teaches a classifier 1 for separating coarse particles from fine particles where the classifier 1 comprises a housing 2 with an internal chamber including a hood 9 (the “substantially central tube”), with the classifier 1 being configured so that the incoming particulate matter has a velocity vector transverse to a longitudinal direction of the hood (claim 21). See Latta Figs. 9, 13–14, [0040], [0060]. The hood 9 has a substantially cylindrical outer surface with an upper opening, as seen in Figs. 9 and 13. The classifier 1 is capable of performing the function of individual nanoparticles and clusters of nanofibers being propelled in vortex around the outer surface of the hood 9 because a mixture of relatively large and relatively small particles circulate around the hood 9, as seen in Figs. 13 and 14 (claim 22). Also, the classifier 1 is capable of performing the function of individual nanoparticles being drawn into the upper opening of the hood 9 because the relatively small particles are drawn into the upper opening of the hood 9, as seen in Fig. 13 (claim 23).
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The classifier of Latta is beneficial because it provides a more accurate separation of solid particles compared to conventional separation devices. See Latta [0002]. It would have been obvious to use the classifier 1 of Latta as the lower part 32 of Altman to more accurately separate the large nanomaterial clusters 58 from the relatively small nanomaterial supplied to the substrate 50.
Regarding claim 24, Altan in view of Latta teaches that the “internal chamber” (the interior of the classifier 1 of Latta) comprises an outlet 4 (the “one or more outlets”) at an opposite end from an inlet 3 (the “one or more inlets”), as claimed. See Latta Fig. 9, [0044]. The container assembly 10 of Altan (the “system”) comprises a vacuum generator (the “source of energy”) coupled to the outlet of the lower part 32 (which would be the outlet 4 of Latta) and configured to apply negative pressure to the interior of the lower part 32 (and this the interior chamber of the classifier 1 of Latta) to draw nanomaterial 56 through the outlet of the lower part 32 and into the needle 34. See Altan [0026]. Note that the vacuum generator and the air compressor (the “pump”) could be used in conjunction because Altan requires that a pressure differential is created between the inner space 18 and the hopper 26 to move nanomaterial 56, and this pressure differential could be created with the air compressor supplying positive pressure and the vacuum generator creating negative pressure. Id. at [0026], [0031], [0032].
Regarding claim 25, Altan in view of Latta teaches that the container assembly 10 (the “system”) comprises the needle 34 and orifice 35 of Altan (collectively the “nozzle is a first nozzle”) which are fluidly coupled to the outlet of lower part 32 (and thus to the hood 9 of Latta). See Altan Fig. 1, [0026]. While Altan in view of Latta is silent as to a “second nozzle” fluidly coupled to the hood 9 of Latta (the “central tube”), it would have been obvious to provide an additional needle 34 and orifice 35 with the Fig. 1 embodiment of Altan because this would merely represent obvious duplication of parts, with Fig. 2 illustrating that the device can comprise two needles and orifices 34a, 34b, 35a, 35b. The additional needle 34 and orifice 35 are capable of performing the function of dispersing two or more nanoparticles onto the fibrous substrate 50 because the orifice 35 sprays broken up nanomaterial into the inner space 18 so that it is deposited on the substrate 50. Id. at [0026], [0033]; MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Regarding claim 26, Altan in view of Latta teaches that the needle 34/orifice 35 (the “nozzle”) is capable of dispersing two or more nanoparticles through the exposed surface 52 of the fibrous substrate 50 (the “first surface of the substrate”) such that the nanoparticles are incorporated substantially throughout the fibrous substrate 50 to form a composite material, because the orifice 35 sprays broken up nanomaterial into the inner space 18 so that the nanomaterial is deposited on the exposed surface 52 and the nanomaterial could be dispersed through the exposed surface because the substrate 50 can be fibrous and therefore contain pores. See Altan [0033]; MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). Note that the “substrate” and “composite material” are not positively recited elements of the claimed “system” and therefore limitations describing the structure of the “substrate” and “composite” fail to further limit the scope of the claim. See MPEP 2115 (a claim is only limited by positively recited elements).
Regarding claim 27, Altan teaches that the container assembly 10 (the “system”) further comprises a “feeder for advancing the substrate adjacent to the nozzle” which is the mechanism for continuously moving the substrate 50 so that it is introduced into the deposition chamber 12. See Altan [0035]. The “feeder” has an “upstream end” that feeds the substrate 50 into the deposition chamber 12 and a “downstream end” that removes the substrate 50 from the deposition chamber 12. Id.
Claims 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Altan et al., US 2008/0187657 A1 in view of Kwok et al., US 2016/0220927 A1 in view of Latta et al., US 2014/0203121 A1 in view of Motomura et al., US 2016/0367924 A1 and in further view of Longo et al., US 2018/0178149 A1.
Regarding claims 28 and 29, Altan as modified teaches the limitations of claim 27, as explained above.
Altan as modified differs from claims 28 and 29 because it is silent as to the container assembly 10 (the “system”) further comprising a coating device for dispersing a binding agent onto the fibers of the substrate, where the coating device comprises a spray device having an outlet adjacent to the upstream end of the mechanism for moving the substrate through the chamber 12 (the “feeder”) and the needle 34/orifice 35 (the “nozzle”).
But the device of Altan is intended to deposit nanomaterial (e.g., nanoparticles) onto or into any substrate. See Altan [0023]. Also, the nanomaterial can be deposited into the substrate 50 using a continuous process where the substrate is continuously moved through the chamber 12. Id. at [0035].
With this in mind, Motomura teaches a manufacturing apparatus 200 for making a nonwoven fabric comprising fibers that can be used for air filtration. See Motomura Fig. 3, [0050]. The apparatus 200 comprises a spraying device 34 for spraying adhesive onto fibers of the nonwoven fabric. Id. at Fig. 3, [0069]. The spraying device 34 comprises a spray 33 for spraying the adhesive. Also, Longo teaches that it is beneficial to incorporate nanoparticles into a filter fabric to improve the capture of particulates from an air stream. See Longo [0027].
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It would have been obvious to use the apparatus of Motomura to manufacture the substrate 50 of Altan because Altan requires some, non-specified device for making the substrate and Motomura teaches a process for making a fabric. It also would have been obvious to modify the apparatus of Motomura to incorporate the nanomaterial assembly 24 of Altan to incorporate nanoparticles into the fabric, in view of Longo, which teaches that incorporating nanoparticles into a filter fabric to improve the capture of particulates from an air stream.
With these modifications, the feed reel 12 and collecting reel 62 of Motomura (for moving the fabric through the apparatus) collectively read on the “feeder.” See Motomura Fig. 3, [0061], [0079]. The spraying device 34 of Motomura reads on the “coating device for dispersing a binding agent onto the fibers in the substrate” (claim 28). Id. at Fig. 3, [0069]. The spray 33 of Motomura reads on the “spray device” (claim 29). Id. The spray 33 has an outlet (seen in Fig. 2) that is adjacent to the feed reel 12 (the “upstream end of the feeder), as claimed, because the spray is within the vicinity of the feed reel 12, as seen in Fig. 3 (claim 29). When the nanomaterial assembly 24 of Altman is incorporated into the apparatus 200 of Motomura, the needle 34/orifice 35 of Altman (the “nozzle”) would also be adjacent to the feed reel 12, as claimed, because the needle 34/orifice 35 would be within the vicinity of the feed reel 12 to spray nanoparticles onto the fabric.
Claims 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Altan et al., US 2008/0187657 A1 in view of Kwok et al., US 2016/0220927 A1 in view of Latta et al., US 2014/0203121 A1 in view of Motomura et al., US 2016/0367924 A1 in view of Longo et al., US 2018/0178149 A1 and in further view of Zhang et al., US 2022/0096977 A1.
Regarding claim 30, Altan as modified teaches the limitations of claim 29, as explained above.
Altan as modified differs from claim 30 because it is silent as to “feeder” comprising first and second opposing surfaces being configured to advance the substrate along the first surface, wherein the system further comprises a source of negative pressure adjacent to the second surface, as claimed.
But, similar to Motomura, Zhang teaches an apparatus for making a filter material comprising a collector surface 519 for moving the filter material through the apparatus. See Zhang Fig. 6, [0073]. The collector surface 519 comprises a top surface (the “first surface”) and a bottom surface (the “second surface”). Id. The top surface is configured to advance the filter material (the “substrate”) along the top surface. Id. The apparatus further comprises a vacuum device below the collector surface 519 (the “source of negative pressure adjacent the second surface”). Id. at [0076]. The collector surface 519 and vacuum device are beneficial because the vacuum device assists in deposition of fibers onto the collector surface 519, with the collector surface 519 providing a mechanism to move the filter material through the apparatus. Id.
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It would have been obvious for the “feeder” of Altman as modified to include the collector 519 and vacuum device of Zhang to assist in deposition of fibers onto the collector surface 519, with the collector surface 519 providing a mechanism to move the filter material through the apparatus.
Regarding claim 31, Motomura teaches a heating device 42 (the “dryer”) between a tank for raw material liquid 22 and the collector reel 62 (the “downstream end of the feeder”). While Altman in view of Motomura is silent as to the location of the hopper 26 of Altman (the “housing”), it would have been obvious for the hopper 26 to be located in a similar position as the tank for raw material 22 of Motomura, because the hopper 26 and tank 22 are both used to supply material. With this modification, the heating device 42 would be disposed “between the housing and the downstream end of the feeder,” as claimed. The heater 42 heats the fabric moving through the apparatus, and therefore is capable of performing the function of “heating the nanoparticles and the fibers.”
Response to Arguments
Claim Objections
The Examiner withdraws the previous claim objections because cancelled claims 1–12 are included with the instant claim set.
35 U.S.C. 112(f) Claim Interpretation
The “second device” limitation of claims 13 and 19 no longer invokes 35 U.S.C. 112(f) because the claims are amended to describe the structure of the “second device” as having a flow passage and an outlet.
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections of claims 18 and 21–31, in light of the amendments.
35 U.S.C. 102(a)(1) Rejections
Applicant’s arguments with respect to claim 13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in theargument.
35 U.S.C. 103 Rejections
Claims 17 and 18
The Applicant argues that the lower end 32 cannot read on the claimed “reactor,” asserting that Altan fails to describe the lower end 32 as performing the claimed function of separating “each of the two or more nanofibers into two or more nanoparticles having a fourth third dimension smaller than the third dimension.” See Applicant Rem. filed February 9, 2026 (“Applicant Rem.”) 13–14. It is argued that the lower end 32 does not read on the claimed “reactor” even though the Examiner provides an explanation for why the lower end could perform the claimed function. Id. Instead, it is argued that a prior art structure does not anticipate a claimed structure simply because material movement might incidentally cause some further breakup under undefined conditions. Id. Rather, it is argued that Altan is silent as to nanofibers being further separated into nanoparticles downstream of static mixer 28, with the lower end 32 being configured to perform such separation. Id. It is argued that Altan repeatedly teaches that the static mixer 28 is the component that performs de-agglomeration, after which the nanomaterial is deposited. Id.
The Examiner respectfully disagrees. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP 2111.01, subsection I. Also, when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. Id.
Here, the lower end 32 of Altan has the same structure as the claimed “reactor” because the lower end 32 has an “inner chamber” (the inside of the lower end) coupled to the narrow passageway of the static mixer 28 (the “passage”). See Altan Fig. 1, [0026]. The Examiner has also provided reasoning for why the lower end 32 is capable of performing the claimed function of—separating “each of the two or more nanofibers into two or more nanoparticles having a fourth third dimension smaller than the third dimension”—as explained in more detail above. The Applicant has failed to provide any evidence that the lower end 32 is incapable of performing the claimed function. Therefore, the Examiner maintains that the lower end 32 reads on the claimed “reactor” because it has the same structure as the “reactor” with there being an explanation for why it is able to perform the claimed functional limitations.
The Applicant further argues that claim 17 requires two distinct separation steps: separation into nanofibers, and subsequent separation of those nanofibers into nanoparticles within a reactor. See Applicant Rem. 14. It is argued that if any downstream flow path could be deemed to inherently perform further separation simply because material continues to move, then no structural distinction between stages would ever matter, rendering the dependent claim meaningless. Id.
The Examiner respectfully disagrees. Claim 17 is an apparatus claim—not a method claim. Therefore, claim 17 does not require “two distinct separation steps” as asserted by the Applicant. An apparatus claim “covers what a device is, not what a device does.” MPEP 2114, subsection II. As such, claim 17 is not meaningless because it describes the structure of the “reactor” as comprising an “internal chamber coupled to the passage.” The functional language of claim 17 of the reactor being—“configured to separate each of the two or more nanofibers into two or more nanoparticles having a fourth third dimension smaller than the third dimension”—fails to patentably distinguish over Altan because these limitations describe what the device does, rather than what it is. If the Applicant wanted claim 17 to be limited to the “two distinct separation steps,” the Applicant could have written claim 17 as a method claim, instead of as an apparatus claim.
With respect to claim 18, the Applicant argues that it is speculative for the Examiner to assert that a vortex created in the static mixer 28 could continue in the lower end 32 due to the fact that no vortex breaker is shown. See Applicant Rem. 14. Instead, it is argued that Altan fails to describe a vortex in the lower end 32, does not describe vortex-induced processing downstream of the static mixer 28, and does not disclose any inlet geometry or flow arrangement configured to generate a vortex in a reactor chamber. Id. It is further argued that claim 18 does not merely require turbulent flow, but instead requires propulsion through one or more inlets, a velocity vector selected to create a vortex formation within the reactor to effect further separation. Id. at 15.
The Examiner respectfully disagrees. Claim 18 is an apparatus claim, and therefore the claim covers what it is, not what it does. See MPEP 2114, subsection II. The structure of claim 18 is that the internal chamber of the reactor comprises one or more inlets coupled to the passage. Altan teaches this structure because the lower end 32 (the “reactor”) has an inlet at the upper end of the interior space coupled to the static mixer. The Examiner has also provided a sound basis for why the lower end 32 is capable of performing the function of the vacuum generator (the “pump”) being configured to “propel the two or more nanofibers through the one or more inlets with a velocity vector that creates a vortex within” the lower end 32—because the vortex in the static mixer 28 could continue into the lower end 32 with there being no discussion of structure to break the vortex. The Applicant has failed to rebut this, and therefore has failed to overcome the rejection. See MPEP 2112.01, subsection I (when the PTO has a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not).
Claims 21–23
The Applicant argues that the classifier of Latta cannot read on the claimed “reactor” asserting that the classifier is a device for sorting particle by size, not a reactor that is configured to further break down nanofibers into nanoparticles. See Applicant Rem. 15–16.
The Examiner respectfully disagrees. The claims do not require that the reactor “breaks down” nanofibers into nanoparticles. Instead, the claims require that the reactor is “configured to separate each of the two or more nanofibers into two or more nanoparticles” (claim 17). The classifier of Latta is capable of performing this function because it is a device that separates coarse particles from fine particles.
The Applicant further argues that the hood 9 of Latta is not a processing surface. See Applicant Rem. 16.
The Examiner respectfully disagrees with the Applicant’s analysis because claims 21–23 fail to require a “processing surface.”
The Applicant further argues that the functional language of claims 21–23 patentably distinguishes over the prior art, asserting that speculative possibility is not a possibility for teaching or suggestion. See Applicant Rem. 16.
The Examiner respectfully disagrees. Claims 21–23 are apparatus claims. Therefore, the claims cover what the apparatus is, rather than what it does. The rejections of claims 21–23 explain why the prior art has the same structural components as claimed. The rejections also explain why the prior art structure is capable of performing the claimed functions, and the Applicant has failed to provide evidence that the prior art is incapable of performing the functions. Therefore, the Examiner maintains the rejections. MPEP 2112.01, subsection I (when the PTO has a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not).
Claims 24–27
The Applicant argues that the outlet 4 of Latta merely removes already-classified fine particles, and is not part of a reactor performing size reduction and is not disclosed in combination of the system of Altan to extract newly created nanoparticles from broken-down nanofibers. See Applicant Rem. 17.
The Examiner respectfully disagrees. Claim 24 recites:
24. The system of claim 23, wherein the internal chamber comprises one or more outlets at an opposite end of the internal chamber from the one or more inlets, the system further comprising a source of energy coupled to the one or more outlets and configured to apply a negative pressure to the internal chamber to draw the two or more nanoparticles through the one or more outlets.
The classifier of Latta has one or more outlets (outlet 4) at an opposite end from the one or more inlets (inlet 3). When the classifier is used with the system of Altan, the vacuum generator of Altan (the “source of energy”) would be coupled to the outlet 4 and would be capable of applying negative pressure to the internal chamber of the classifier to drawn nanoparticles through the outlet 4.
With respect to claims 25–27, the Applicant argues that Latta discloses no nozzles at all for substate deposition. See Applicant Rem. 17.
The Examiner respectfully disagrees in view of the new interpretation of the prior art explained above.
With respect to claim 26, the Applicant argues that it is merely speculative to argue that nanoparticles could penetrate pores of the fibrous substrate 50 of Altan, asserting that the reference is silent as to through-thickness penetration or composite formation. See Applicant Rem. 17.
The Examiner respectfully disagrees. The prior art is capable of performing the claimed functions of claim 26, as explained in the rejection above. Note also that the “two or more nanoparticles” and the “substrate” are not positively recited elements of the claimed system, because the nanoparticles and substrate are material worked upon by the system (i.e., the claim never says that the system comprises the substrate and nanoparticles). Therefore the limitations describing the extent to which the nanoparticles ae incorporated in the substrate fail to patentably distinguish over the prior art. See MPEP 2115 (a claim is only limited by positively recited elements).
Conclusion
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
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