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, 3–5, 7, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sanders, US 2005/0006303 A1 in view of Fu et al., US 2014/0120322 A1 and in further view of Lee et al., US 2015/0225290 A1.
Regarding claim 1, Sanders teaches a filter media, which reads on the claimed “filter media.” See Sanders [0002].
The filter media comprises a web of thermoplastic fibers, which reads on the claimed “fiber web.” See Sanders [0032]. The web comprises a “plurality of surface cavities” because the fibers are etched using a plasma treatment. See Sanders [0025].
The web comprises thermoplastic fibers (“synthetic fibers”). See Sanders [0032]. The thermoplastic fibers can be air laid staple fibers. Id. at [0041].
The web has a developed interfacial area ratio greater than 0 because the etching process increases the surface area of the web. See Sanders [0026].
The web comprises activated carbon. See Sanders [0026]. While the reference is silent as to the activated carbon being in particulate form, Fu teaches a filter media comprising activated carbon particulates. See Fu [0059]. It would have been obvious for the activated carbon of Sanders to be activated carbon particulates because activated carbon is conventionally in particulate form. The activated carbon particulates of the web reads on “a plurality of adsorbent particles disposed on the fiber web” (claims 1 and 2).
Sanders differs from claim 1 because it is silent as to the length of the thermoplastic fibers (the “synthetic fibers”). Therefore, the reference fails to provide enough information to teach the thermoplastic fibers have an average length of less than or equal to 40 mm.
But, as noted, the thermoplastic fibers can be air laid staple fibers. See Sanders [0041]. With this in mind, Fu teaches a filter media comprising air laid staple fibers having a length of 3 to 52 mm. See Fu [0035]. It would have been obvious for the staple fibers of Sanders to have an average length of 3 to 52 mm because this is a suitable length for air laid staple fibers of a filter media. The prior art range of 3 to 52 mm overlaps with the claimed range of less than or equal to 40 mm, establishing a prima facie case of obviousness.
Sanders also differs from claim 1 because it is silent as to the exact dimensions of the developed interfacial area ratio of the web. Therefore, the reference fails to provide enough information to teach the web has a developed interfacial area ratio of greater than or equal to 0.1.
But the developed interfacial area ratio is a parameter that measures the additional surface area added by texture compared to an ideally flat, smooth plane. Also, a developed interfacial area ratio of greater than 0.1 means that the surface texture adds more than 10% additional surface area compared to an ideally smooth flat plane of the same projected footprint. In Sanders, the web is etched for the purpose of increasing the surface area of the fibers to allow for more area for particle entrapment. See Sanders [0029]. Therefore, it would have been obvious for the developed interfacial area ratio of the web to be at least 0.1 to ensure that the fibers have a sufficiently increased surface to allow for more area for particle entrapment to improve the effectiveness of the filter.
Sanders further differs from claim 1 because it is silent as to the cross-dimensional frequency of the etched cavities on the web. Therefore, the reference fails to provide enough information to teach that the cavities have an average cross-dimensional frequency of greater than or equal to 3,000 surface cavities per meter.
But the etched cavities are produced using a plasma etching process. See Sanders [0025]. Also, the magnified images of the fibers in Figs. 1–12 show that the cavities are not visible. With this in mind, Lee teaches a plasma etching process for the fibers of a filter media where the etching process creates nanopore cavities with the fiber having several cavities per micron, meaning that the frequency is greater than 3,000 cavities per meter along the length of an individual fiber. See Lee Fig. 3b, [0020], [0034].
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It would have been obvious for the etched cavities of Sanders to have a cross-dimensional frequency of greater than 3,000 cavities per meter because the cavities are produced by an etching process, and this type of etching technique conventionally results in more than 3,000 cavities per meter along the length of an etched fiber.
Regarding claim 3, Sanders teaches that the web is non-woven because it is airlaid. See Sanders [0041].
Regarding claim 4, Sanders is interpreted such that the etched cavities (the “plurality of cavities”) are not uniform in size because they are produced by a plasma etching technique that produces non-uniform cavities within a range (as evidenced by Lee [0034] teaching etched nanopores have a range of 1 to 1,000 nm). The intermediate sized cavities and a large cavities read on the “intermediate and large cavities.” Also, Lee teaches that the etched nanopores have a diameter ranging from 1 to 1,000 nm (see Lee [0034]) and it would have been obvious for the etched cavities of Sanders to also have a diameter ranging from 1 to 1,000 nm because the etched cavities are manufactured using a similar plasma etching technique. With this modification, the “intermediate” cavities of Sanders are interpreted as having an average diameter of 500 nm (0.5 micron) and the “large” cavities of Sanders are interpreted as having an average diameter of 1,000 nm (1 micron). The combined area of these cavities is around 1.77 microns2, which is within the claimed range of an average area of less than or equal to 500 microns2.
Regarding claim 5, Sanders is interpreted such that the etched cavities (the “plurality of cavities”) are not uniform in size because they are produced by a plasma etching technique that produces non-uniform cavities within a range (as evidenced by Lee [0034] teaching etched nanopores have a range of 1 to 1,000 nm). The large cavities read on the “large cavities.” Also, Lee teaches that the etched nanopores have a diameter ranging from 1 to 1,000 nm (see Lee [0034]) and it would have been obvious for the etched cavities of Sanders to also have a diameter ranging from 1 to 1,000 nm because the etched cavities are manufactured using a similar plasma etching technique. With this modification, the “large cavities” of Sanders is interpreted as having a diameter of 1,000 nm (1 micron). The average area of the large cavities is around 0.78 micron2, which is within the claimed range of less than or equal to 1300 micron2.
Regarding claim 7, Sanders as modified teaches that the plurality of adsorbent particles is a plurality of activated carbon particles, as claimed. See Sanders [0026].
Regarding claim 8, Sanders as modified teaches the limitations of claim 1, as explained above.
Sanders as modified differs from claim 8 because it is silent as to the adsorbent particles being at least partially disposed within the cavities of the fibers, as claimed. But Fu teaches a filter material comprising sorbent nanoparticles having a median diameter of less than 1 µm (1,000 nm), and as low as 0.001 µm (1 nm). See Fu [0123]–[0124]. The sorbent nanoparticles are beneficial because they provide high surface area for sorption of contaminants. Id. It would have been obvious to use the sorbent nanoparticles of Fu with the web of Sanders to provide a sorbent material with high surface area for sorption of contaminants. Also, Lee teaches that the etched nanopores have a diameter ranging from 1 to 1,000 nm (see Lee [0034]), and it would have been obvious for the etched pores on the fibers in Sanders to have a diameter ranging from 1 to 1,000 nm because the etched cavities in Sanders are manufactured using a similar plasma etching process of Lee. With this modification, at least some of the nanoparticles would be expected to be at least partially disposed within the etched cavities of Sanders, as claimed, because some of the nanoparticles would have a smaller diameter than the diameter of the cavities.
Regarding claim 15, Sanders teaches that at least some adsorbent particles are disposed within the fiber web, because the activated carbon is internally melted. See Sanders [0026].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sanders, US 2005/0006303 A1 in view of Fu et al., US 2014/0120322 A1 in view of Lee et al., US 2015/0225290 A1 and in further view of Tseng et al., US 2021/0002801 A1.
Regarding claim 6, Sanders teaches that the web is made of thermoplastic fibers, with the thermoplastic material reading on the claimed “matrix polymer.” See Sanders [0032].
Sanders differs from claim 6 because it is silent as to the molecular weight of the thermoplastic polymer. Therefore, the reference fails to provide enough information to teach the thermoplastic polymer having a molecular weight of greater than 3 kDa, as claimed.
But Tseng teaches that the molecular weight of a thermoplastic polymer used to manufacture fibers of a filter material is result effective because molecular weight affects the spinnability of the fiber. See Tseng [0066]. As such, Tseng suggests that the molecular weight of a thermoplastic polymer should range from 5,000 g/mol to 1,000,000 g/mol (5 to 1,000 kDa). Id.
It would have been obvious to use routine experimentation to determine the optimal molecular weight of the thermoplastic material of Sanders to optimize manufacturing of the fibers. A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of greater than 3 kDa, because Tseng teaches a thermoplastic polymer used to make fibers for a filter media having a molecular weight of 5 to 1,000 kDa.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sanders, US 2005/0006303 A1 in view of Fu et al., US 2014/0120322 A1 in view of Lee et al., US 2015/0225290 A1 and in further view of Jasuja et al., WO 2022/009028 A1.
Regarding claim 9, Sanders teaches that the web is a “first layer of the filter media,” as claimed because the web is a layer of the filter media. See Sanders [0002].
Sanders differs from claim 9 because it is silent as to the adsorbent particles forming a second layer disposed on top of the first layer.
But Sanders teaches that the web can comprise additives, including activated carbon. See Sanders [0026].
With this in mind, Jasuja teaches an air filter comprising a filtration layer with an additional layer of sorbent particles (e.g., activated carbon) disposed on the filtration layer. See Jasuja p. 12, ll. 17–22. The layer of sorbent particles is beneficial because it is able to remove gases, vapors, odors and the like. Id.
It would have been obvious to provide an additional layer of sorbent particles on the web of Sanders to provide a layer capable of removing gases, vapors, odors and the like. This modification reads on “the adsorbent particles form a second layer disposed on top of the first layer.”
Claims 12–14 are rejected under 35 U.S.C. 103 as being unpatentable over Sanders, US 2005/0006303 A1 in view of Fu et al., US 2014/0120322 A1 in view of Lee et al., US 2015/0225290 A1 and in further view of Jaganathan et al., US 2018/0169551 A1.
Regarding claims 12–14, Sanders as modified teaches the limitations of claim 1, as explained above.
Sanders as modified differs from claims 12–14 because it is silent as to the filter media comprising an additional layer at least partially disposed on the web, wherein the additional layer comprises a fiber web comprising a plurality of glass fibers.
But Jaganathan teaches a filter media comprising a third layer comprising a web of glass fibers, with the third layer acting as a support layer for the filter media. See Jaganathan [0107], [0128]. It would have been obvious for the filter media of Sanders to include a support layer comprising glass fibers to provide structural support for the filter media.
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.
U.S. Application No. 18/320,109
Claims 1, 7, 9 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/320,109 in view of Jasuja et al., WO 2022/009028 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claims 1, 7, 9 and 12, claim 1 of the ’109 application teaches all of the limitations of instant claims 1, 2, 7, 9 and 12 except that claim 1 of the ’109 application is silent as to the filter media comprising a plurality of adsorbent particles disposed on the fiber web.
Jasuja teaches an air filter comprising a filtration layer with an additional layer of sorbent particles (e.g., activated carbon) disposed on the filtration layer. See Jasuja p. 12, ll. 17–22. The layer of sorbent particles is beneficial because it is able to remove gases, vapors, odors and the like. Id.
It would have been obvious to provide an additional layer of sorbent particles on the web of claim 1 of the ’109 application to provide a layer capable of removing gases, vapors and odors.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/320,109 in view of Jasuja et al., WO 2022/009028 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 3, claim 7 of the ’109 application as modified teaches all of the limitations of instant claim 3.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/320,109 in view of Jasuja et al., WO 2022/009028 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 4, claim 8 of the ’109 application as modified teaches all of the limitations of instant claim 4.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/320,109 in view of Jasuja et al., WO 2022/009028 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 5, claim 9 of the ’109 application as modified teaches all of the limitations of instant claim 5.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/320,109 in view of Jasuja et al., WO 2022/009028 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 6, claim 13 of the ’109 application as modified teaches all of the limitations of instant claim 6.
Claims 12–14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/320,109 in view of Jasuja et al., WO 2022/009028 A1 and in further view of Jaganathan et al., US 2018/0169551 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claims 12–14, claim 1 of the ’109 application as modified teaches the limitations of claims 12–14 except it is silent as to the filter media comprising an additional layer at least partially disposed on the web, wherein the additional layer comprises a fiber web comprising a plurality of glass fibers.
But Jaganathan teaches a filter media comprising a third layer comprising a web of glass fibers, with the third layer acting as a support layer for the filter media. See Jaganathan [0107], [0128]. It would have been obvious for the filter media of claim 1 of the ’109 application to include a support layer comprising glass fibers to provide structural support for the filter media.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/320,109 in view of Fu et al., US 2014/0120322 A1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 15, claim 1 of the ’109 application teaches all of the limitations of instant claim 15 except for the limitations requiring a plurality of adsorbent particles disposed on the fiber web wherein some of the adsorbent particles are disposed within the fiber web.
But Fu teaches a filter media comprising a fiber web having adsorbent particles disposed within the fiber web, with the adsorbent particles being beneficial for allowing the web to adsorb gases. See Fu [0120]. It would have been obvious for the fiber web of claim 1 of the ’109 application to comprise adsorbent particles disposed within the fiber web to allow it to adsorb gases.
Response to Arguments
35 U.S.C. 112(d) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(d) rejection of claim 2 because this claim is cancelled.
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections in light of the amendments.
35 U.S.C. 103 Rejections
The limitation at issue for claim 1 is:
“the fiber web has a developed interfacial area ratio greater than or equal to 0.1”
The Applicant argues that the developed interfacial area ratio is a specific parameter that “may be determined with the aid of a scanning optical microscope, such as a Keyence VR 5000.” See Applicant Rem. dated June 15, 2026 (“Applicant Rem.”) 6 (citing Spec. p. 12, ll. 8–24) (emphasis added). The Applicant further notes that the scanning optical microscope is employed to measure the surface topography of a 24.1 mm x 18.1 mm sample and that the surface topography “‘may be measured in a manner yielding pixels having an edge length of 11.7 microns.’” Id. at 7 (quoting Spec. p. 12, ll. 8–24) (emphasis added). It is argued that this resolution limit characterizes the interfacial area ration—meaning that surface texture changes occurring at a scale smaller than this pixel resolution would be unresolved and would not contribute to the measured developed interfacial area ratio. Id.
As such, the Applicant argues that Sanders works with fibers having diameters on the order of 1 micron. See Applicant Rem. 7. It is argued that the plasma etching process of Sanders creates surface texture changes on fibers that are already at micron scale. Id. Therefore, the Applicant asserts that any surface changes would occur at the sub-micron scale, and asserts that this scale is below the 11.7 micron pixel resolution measurement used to determine the developed interfacial area ratio. Id. It is argued that because the surface texture changes from the plasma etching process of Sanders would be unresolvable at the pixel resolution used to measure the developed interfacial area ratio—the etching technique of Sanders fails to provide a means of changing the developed interfacial area ratio as “defined and measured in the specification.” Id. The Applicant asserts that since a person of ordinary skill in the art would have recognized that the etching process would not have increased the interfacial area ratio, the statement in Sanders that the web is etched for the purpose of increasing the surface area of the fibers fails to provide motivation to modify Sanders. Id.
The Examiner respectfully disagrees. The claim does not specify the technique used to measure “interfacial area ratio.” Instead, the claim merely says that the fiber web has “a developed interfacial ratio greater than or equal to 0.1.” Also, the specification fails to provide a special definition for “interfacial area ratio” by explicitly stating that the developed interfacial area ratio is measured using the pixilation as described by the Applicant. See MPEP 2111.01, subsection IV (to act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning). Instead, the portion of the specification cited by the Applicant merely provides an example of a technique used to measure developed interfacial area ratio. This is because the disclosure says that the developed interfacial area ratio “may be determined with the aid of a scanning optical microscope, such as a Keyence VR 500.” See Spec. p. 12, ll. 8–9 (emphasis added). The disclosure further states that “[f]or example, the scanning optical microscope may be employed to measure the surface topography of a 24.1 mm x 18.1 mm sample” and that the surface topography “may be measured in a manner yielding pixels having an edge length of 11.7 microns.” Id. at p. 12, ll. 9–16 (emphasis added).
Because claim 1 is non-specific about the technique used to measure “developed interfacial area ratio”—any technique used to measure developed interfacial area ratio reads on the claim. As noted in the rejection of claim 1, developed interfacial area ratio is a parameter that measures the additional surface area added by texture compared to an ideally flat, smooth plane. A developed interfacial ratio of greater than 0.1 means that the surface texture adds more than 10% additional surface area compared to an ideally smooth flat plane of the same projected footprint. Because the web of Sanders is etched for the purpose of increasing the surface area of the fibers, it would have been obvious for the developed interfacial area ratio of the web to be at least 0.1 to ensure that the fibers have a sufficiently increased surface to allow for more area for particle entrapment. While the fibers are at the micron level, and the etching is at the submicron level—the technique used to measure the surface area added by the etching technique could use pixilation at the sub-micron level for determining the surface texture that is added by the etching technique.
Double Patenting
The Examiner maintains the previous double patenting rejections for the reasons stated above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
