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 Status
Claims 1-11 and 18-20 are withdrawn.
Claims 12-17 are rejected.
Election/Restrictions
Applicant's election with traverse of Group II, claims 12-17, and Species A, as shown in Fig. 1, in the reply filed on July 13, 2026, is acknowledged. The traversal is on the ground(s) that there are no sufficient grounds to require restriction. This is not found persuasive because the inventions are independent or distinct for the reasons stated in the restriction requirement. Furthermore, claims may be rejoined if a generic claim is found allowable.
Accordingly, claims 1-11 and 18-20 are withdrawn from further consideration because they are drawn to non-elected inventions.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 12-13 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Eaton et al. (US 2010/0282682) [hereinafter Eaton].
With respect to claim 12, Eaton discloses a stacked fluid filtration article 28, as shown in Fig. 3, having: a housing 29 having an inlet 23 and an outlet 25, as shown in Fig. 3; a filtration element 24 (filtration assembly) disposed in the housing 29 between the inlet 23 and the outlet 25, as shown in Fig. 3, the filtration assembly 24 comprising: a first layer 20 (spacer), as shown in Fig. 3; and a second layer 10’ (membrane) upstream or downstream of the spacer 20, as shown in Fig. 3; wherein the spacer 20 comprises: a cyclic polyolefin (see paragraphs 0098, 0108); and a plurality of through-holes for filtering particles (see paragraph 0017, element is porous).
Eaton lacks the intended use of the spacer, i.e., for filtering particles having an average particle size of greater than 50 μm. However, this limitation has been considered to be a recitation of the intended use of the claimed invention which must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Eaton teaches all the claim structure and therefore, it is inherent and/or obvious that it is capable of performing the intended use. Furthermore, Eaton teaches that the fibrous web may include a plurality of particulates that are physically entrained or trapped in the fiber matrix and have a median diameter of at least 50 µm, more preferably at least 75 µm, still more preferably at least 100 µm (see paragraph 0114). These particulates may be absorbent and/or adsorbent particulates (see paragraph 0005). Since the fibrous web have particulates having a size of 50 µm or more entrapped therein, it is inherent and/or obvious that it is capable of filtering particles having a particle size or greater that 50 µm, as claimed by applicant.
With respect to claim 13, Eaton discloses wherein the cyclic polyolefin comprises at least one of a cyclic olefin copolymer, a cyclic block copolymer, a cyclic olefin polymer, or any combination thereof (see paragraphs 0098, 0108).
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.
Claim(s) 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Eaton (US 2010/0282682).
With respect to claim 14, Eaton discloses wherein the spacer 20 comprises particles that may be metal (metal impurity) (see paragraph 0121-0122). Eaton lacks the specific amount of the metal impurity, i.e., 2 μg or less of a metal impurity per gram of the spacer. However, this would have been obvious to one of ordinary skill in the art since one of ordinary skill would recognize to choose a desired amount of metal particles/impurity according to a desired application. Furthermore, a metal impurity may be the contaminant filtered by the element, and an amount would be obvious based on the filtering capabilities of the element.
With respect to claim 15, Eaton discloses wherein the metal impurity comprises at least one of sodium, magnesium, aluminum, potassium, calcium, iron, zinc, or any combination thereof (see paragraph 0121).
With respect to claim 16, Eaton lacks wherein the spacer comprises less than 5% by weight of a polymeric impurity based on a total weight of the spacer. However, Eaton teaches particulates 16 that may be polymeric (see paragraphs 0118-0119) and may be considered impurities. It would have been obvious to one of ordinary skill in the art to provide the particulates/impurities disclosed by Eaton with less than 5% by weight of a polymeric impurity based on a total weight of the spacer, as claimed by applicant, since one of ordinary skill would recognize to choose a desired amount of particulates/impurities according to a desired application.
With respect to claim 17, Eaton lacks wherein the polymeric impurity has a weight average molecular weight of 2000 g/mol or less. However, this would have been obvious to one of ordinary skill in the art since one of ordinary skill would recognize to choose a desired weight of the impurity according to a desired application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Puglia (US 2019/028964) teaches related filter having a membrane and spacer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE GONZALEZ whose telephone number is (571)272-5502. The examiner can normally be reached M-F 9-5:30.
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, Benjamin Lebron can be reached at 571-272-0475. 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.
/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
Prosecution Insights