DETAILED ACTION
Status of Claims:
Claims 1-4, 6, 7, 10-13, 15, 16, and 25-29 are pending.
Claims 1-4, 6, 7, 10-13, 15, and 16 are amended.
Claims 25-29 are new.
Claims 5, 8, 9, 14, and 17-24 are canceled.
Claims 27-29 are withdrawn from consideration.
This Action is Made Final.
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
Newly submitted claims 27-29 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 27-29 are directed to a distinct product from the previously elected group. Inventions I and new claims 27-29 are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different design, mode of operation, function and effect, specifically the invention of claims 27-29 is an impact absorber and requires a response to an impact force and requires the device to have a first wall and a second wall, while the invention of group I is a contaminant filter. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 27-29 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 8/03/2026 have been fully considered but they are not persuasive. Regarding Claim 1, the applicant argues that the combination of Sato and De Ruiter does not teach that the biochar is configured to allow oil to flow through the pores therein. This argument is not persuasive because Sato teaches hydrophobicity is not limited to the surface of the material, but also the surface of the pores (see Sato pg. 5 :Industrial applicability). As the internal surfaces of the pores also have improved adsorption performance for hydrophobic substance (oil) the oil flows through the pores.
Regarding Claims 3 and 4, the applicant argues that it would not have been obvious to adjust the amount of plasma activated and fluorinated biochar relative to the mass of the filter because De Ruiter discloses the amount of biochar on a mass concentration basis, not the claimed percentage of the filter by mass. This argument is not persuasive because De Ruiter teaches that the amount of biochar in relation to the filter as a whole is an adjustable value (between 50 and 400 g/l) and that the rejection is based on it being obvious to find a workable range, not an overlap or ranges. Therefore, De Ruiter does not need to disclose the same values as claimed. The applicant further argues that the rejection must show that the “general conditions” of the claims are disclosed. This argument is not persuasive because De Ruiter, as modified, does teach the general conditions, specifically a contaminant filter comprising a plasma activated and fluorinated biochar, in which the amount of biochar relative to the filter can be adjusted. If De Ruiter explicitly disclosed the claimed range, or an overlapping range the routine experimentation motivation would not have been needed. As no significance or unexpected results are disclosed with respect to the claimed range, and the general conditions of the claim (same material with and adjustable amount of biochar) are disclosed in the prior art it would have been obvious to adjust the amount of biochar by mass relative to the filter.
Regarding Claim 11 the applicant argues that the rejection is improper because DeBeuckelaer is cited in the rejection but not referred to in the rejection heading. Specifically, the applicant refers to MPEP section 707.07 (d). This argument is not persuasive, both because DeBeuckelaer is positively stated in the statement of rejection, and because DeBeuckelaer is included as an evidentiary reference and not relied upon for the rejection . The statement of rejection is not limited to the heading, but includes the entire rejection (see MPEP 2163.01(i)). DeBeuckelaer is cited as evidence to support the fact that the polyurethane in De Ruiter is inherently hydrophilic, not to provide motivation to modify the polyurethane in De Ruiter. Therefore, the basis of the rejection is clear. The applicant further argues that claim 11 is allowable for the same reasons as claim 3. This argument is not persuasive for the same reasons as stated above.
The previous 112 rejections are withdrawn in view of the amendments.
Claim Rejections - 35 USC § 112
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 25 and 26 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.
Regarding Claims 25 and 26:
The claims state “the plasma activated and fluorinated biochar has an absorption capacity of at least 45 goil/gpu.” It appears that “gpu” is grams of polyurethane. It is not clear how the adsorption capacity of the biochar is measured based on the amount of polyurethane. Specifically, it is not clear if the claim is intended to limit the adsorption capacity of the filter as a whole or if “gpu” is referring to something else.
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) 1-4, 7, 10 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Ruiter et al (FR 2721323, English machine translation provided) in view of Sato et al (JP 2017160074, English machine translation provided).
Regarding Claim 1:
De Ruiter teaches the contaminant filter comprising activated carbon on a porous polyurethane substrate (polyurethane foam), wherein the activated carbon is configured to absorb a contaminant (“adsorber, e.g. activated carbon”) (see Abstract) and produce a cleaned fluid from a contaminated fluid mixture (filter for harmful substances, therefore cleaned fluid is produced) (see pg. 2m 1st paragraph).
De Ruiter does not teach that the activated carbon is plasma activated and fluorinated biochar.
Sato teaches plasma activated and fluorinated biochar (treating activated carbon with plasma using a fluoro compound) (see Abstract) as an adsorbent for harmful substances (see Abstract). Sato further teaches that the activated carbon is biochar (any activated carbon raw material…cellulose-based and other organic material) (see pg. 2, 3rd paragraph from bottom), and wherein the contaminant includes oil and the cleaned fluid includes water, and the filter is configured to block water from flowing through pores therein (repels water) (see Sato pg. 5, 2nd paragraph), while the plasma activated and fluorinated biochar is configured to allow the oil to flow through the pores therein (efficiently adsorb hydrophobic substances, increased adsorption applies to the internal surfaces of the pores) (see Sato pg. 2, 3rd paragraph, pg. 5 :Industrial applicability).
De Ruiter and Sato are analogous inventions in the art of activated carbon adsorbents for air filters. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the activated carbon of De Ruiter with the plasma activated fluorinated activated carbon of Sato because it allows the filter to retain absorption abilities in high humidity environments (see Sato, abstract, pg. 2, 2nd paragraph). And it is the simple substation of one known activated carbon material with another activated carbon material, obviously resulting in increased hydrophobicity with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 2:
De Ruiter, as modified, teaches the filter of Claim 1 wherein the substrate is polyurethane foam (see pg. 4, Example 1).
De Ruiter does not explicitly teach the substrate a thermoset polyurethane foam. De Ruiter is silent as to how the foam is prepared. However, the claims are directed to a product (contaminant filter) therefore being “thermoset” is a product by process limitation that only add patentable weight to the extent that the final product must be the same. As the substrate of De Ruiter is a polyurethane foam the final product is the same.
Regarding Claim 3:
De Ruiter, as modified, teaches the filter of claim 1, wherein hydrophobic/oleophilic properties of the Fluorine-activated biochar overwhelms hydrophilic properties of the polyurethane substrate (hydrophobic substances are absorbed, therefore the hydrophobic properties overwhelm the hydrophilic properties) (see Sato pg. 2, 3rd paragraph)
De Ruiter does not explicitly teach wherein the biochar comprises 5-80% of filter, by mass. De Ruiter further teaches that the amount of biochar can be between 50 to 400 g/l (see pg. 4 7th paragraph from bottom). It would have been obvious to one skilled in the art to adjust the amount of biochar (activated carbon) through routine experimentation and use 5-80% by weight. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (see MPEP 2144.05).
Regarding Claim 4:
De Ruiter, as modified, teaches the filter of claim 1.
De Ruiter does not explicitly teach wherein the biochar comprises 20-40% of the filter, by mass. De Ruiter further teaches that the amount of biochar can be between 50 to 400 g/l (see pg. 4 7th paragraph from bottom). It would have been obvious to one skilled in the art to adjust the amount of biochar (activated carbon) through routine experimentation and use 20-40% by weight. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (see MPEP 2144.05).
Regarding Claim 7:
De Ruiter, as modified, teaches the filter of claim 1, wherein the plasma activated and fluorinated biochar is a flocking on an external surface of the substrate (sprayed with activated charcoal), the substrate being a porous foam material (polyurethane foam) (see pg. 5: Example 1).
Regarding Claim 10:
De Ruiter, as modified, teaches the filter of Claim 1, wherein the biochar is a powder (see Sato, Abstract)
The combination does not explicitly teach a particle size of 20-100 microns. Absent a sowing of criticality with respect to the particle size it would have been obvious to one skilled in the art to adjust the particle size through routine experimentation and use a particle size between 20 and 100 microns. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (see MPEP 2144.05).
Regarding Claim 25:
De Ruiter, as modified, teaches the filter of Claim 1, wherein the plasma activated and fluorinated biochar has an absorption capacity of at least 45 goil/gpu. The absorption capacity of the plasma activated and fluorinated biochar is a property of the material. Regarding product and apparatus claims, 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 Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). The plasma activated and fluorinated biochar is substantially identical to the claimed material.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Ruiter et al (FR 2721323, English machine translation provided) in view of Sato et al (JP 2017160074, English machine translation provided) as applied to claim 1 above, and further in view of De Leij et al (US 2016/0339419).
Regarding Claim 6:
De Ruiter, as modified, teaches the filter of claim 1, wherein the substrate being a polymeric, compressible and porous material, with a majority of pores of the substrate being open (Compressible, large-pore polyurethane foam) (see De Ruiter, Abstract).
De Ruiter does not teach the plasma activated biochar is impregnated in the substrate.
De Leij teaches biochar impregnated (embedded) into polyurethane foam (see para. 0094) and using the filter as an air filter (see para. 0052).
De Ruiter, as modified, and De Leij are analogous inventions in the art of biochar and polyurethane composite air filters. It would have been obvious to embed the biochar of De Ruiter, as modified by Sato, in the polyurethane foam, as disclosed by De Leij because through routine experimentation one skilled in the art would have found appropriate means of attaching the biochar with the polyurethane and impregnating (embedding) is a known means of attachment. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP §
2143, D.).
Claim(s) 11-13, 15, 16, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Ruiter et al (FR 2721323, English machine translation provided) in view of Sato et al (JP 2017160074, English machine translation provided) and of De Leij et al (US 2016/0339419).
Regarding Claim 11:
De Ruiter teaches the contaminant filter comprising: a polyurethane foam; activated biochar combined with the foam (see Abstract) and the polyurethane foam being hydrophilic (polyurethane is hydrophilic unless treated to be hydrophobic) (see DeBeuckelaer et al, USPN 4,279,757: Preparing the Foam Material provided as an evidentiary reference).
De Ruiter does not teach that the biochar is plasma activated the biochar being hydrophobic/oleophilic; the biochar being embedded in the foam; or the biochar comprising 20-40% of the filter, by mass. De Ruiter further teaches that the amount of biochar can be between 50 to 400 g/l (see pg. 4 7th paragraph from bottom). It would have been obvious to one skilled in the art to adjust the amount of biochar (activated carbon) through routine experimentation and use 20-40% by weight. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (see MPEP 2144.05).
Sato teaches plasma activated and fluorinated biochar (treating activated carbon with plasma using a fluoro compound) (see Abstract) as an adsorbent for harmful substances (see Abstract). Sato further teaches that the activated carbon is biochar (any activated carbon raw material…cellulose-based and other organic material) (see pg. 2, 3rd paragraph from bottom).
De Ruiter and Sato are analogous inventions in the art of activated carbon adsorbents for air filters. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the activated carbon of De Ruiter with the plasma activated fluorinated activated carbon of Sato because it allows the filter to retain absorption abilities in high humidity environments (see Sato, abstract, pg. 2, 2nd paragraph). And it is the simple substation of one known activated carbon material with another activated carbon material, obviously resulting in increased hydrophobicity with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
De Leij teaches biochar embedded into polyurethane foam (see para. 0094) and using the filter as an air filter (see para. 0052).
De Ruiter, as modified, and De Leij are analogous inventions in the art of biochar and polyurethane composite air filters. It would have been obvious to embed the biochar of De Ruiter, as modified by Sato, in the polyurethane foam, as disclosed by De Leij because through routine experimentation one skilled in the art would have found appropriate means of attaching the biochar with the polyurethane and embedding is a known means of attachment. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Regarding Claim 12:
De Ruiter, as modified, teaches the filter of claim 11, wherein the polyurethane foam and the plasma activated biochar are configured to block water from flowing through pores therein (repels water) (see Sato pg. 5, 2nd paragraph), while the biochar is configured to allow the oil to flow through the pores therein (efficiently adsorb hydrophobic substances) (see Sato pg. 2, 3rd paragraph).
Regarding Claim 13:
De Ruiter, as modified, teaches the filter of Claim 11, wherein the biochar is configured to trap an airborne contaminant in pores of the biochar while allowing cleaned air to flow through the pores in the biochar (filter harmful substances) (see De Ruiter pg. 2, 1st paragraph).
Regarding Claim 15:
De Ruiter, as modified, teaches filter of Claim 11, wherein the polyurethane foam and the plasma activated biochar are compressible between filter uses to remove at least some contaminants trapped in the biochar, and the filter is reusable (the filter is compressible) (see De Ruiter, Abstract). Removing contaminates and being reusable are the intended use of the device which only adds patentable weight to a device claim to the extent that the prior art device must be capable of the same function. In the instant case, as the foam is compressible it can be compressed between uses to remove contaminants and it can be reused.
Regarding Claim 16:
De Ruiter, as modified, teaches the filter of Claim 11, wherein the plasma activated biochar includes Fluorine activated biochar (see Sato, Abstract), the biochar is hydrophobic and oleophilic, and the polyurethane foam is porous and compressible (see De Ruiter, Abstract).
Regarding Claim 26:
De Ruiter, as modified, teaches the filter of Claim 11, wherein the plasma activated and fluorinated biochar has an absorption capacity of at least 45 goil/gpu. The absorption capacity of the plasma activated and fluorinated biochar is a property of the material. Regarding product and apparatus claims, 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 Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). The plasma activated and fluorinated biochar is substantially identical to the claimed material.
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 CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 9/14/2026
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