DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Group I in the reply filed on 06/30/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 9-12 are objected to because of the following informalities: the claims recite ‘the Composition Test Method’/”Composition Test Method”. The term for this test method should be unified across the claims, i.e., amended to ‘the Composition Analysis Test Method’ as found in the instant specification. Further, the claims refer to such a test method without ever setting forth said method in the claim. Appropriate correction is required. For purposes of examination, the term will be interpreted as simply referring to a composition as claimed.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 7, 9-12 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US6207251B1, hereinafter ‘Balsimo’.
Regarding Claim 1, Balsimo discloses a porous substrate comprising: a composition disposed thereon; the composition comprising a matrix, the matrix comprising: a plurality of PTFE fibrils; and a plurality of active particles (Col 1, line 66 – Col 2, line 3: the present invention provides a composite article, preferably a separation science medium, comprising a fibrillated polytetrafluoroethylene (PTFE) web having particulate entrapped therein and, at least partially embedded in the web, means for reinforcing the web; Col 2, lines 36-39: The reinforcing means used in the composite article of the present invention is at least somewhat porous, preferably very porous. The reinforcing means meets the claimed porous substrate, disposed thereon a plurality of PTFE fibrils; and a plurality of active particles).
Regarding Claim 2, Balsimo discloses the plurality of PTFE fibrils comprise short-strand PTFE fibrils and long-strand PTFE fibrils (as established in the instant published specification at [0006], the terms “short-strand PTFE fibril” and “long-strand PTFE fibril” are used relative to one another. A short-strand PTFE fibril has a length that is shorter than a long-strand PTFE fibril as measure per the Dimensional Analysis Test Method. A plurality of short-strand PTFE fibrils has an average length that is shorter than the average length of a plurality of long-strand PTFE fibrils as measure per the Dimensional Analysis Test Method. Further, absent evidence to the contrary, the fibrils of the composition of Balsimo are not considered to be perfectly uniform in length, and therefore may be considered to comprise some fibrils that are smaller than other fibrils, and these fibrils then reasonably meet short and long strand fibrils as required by the claim).
Regarding Claim 3, Balsimo discloses the porous substrate comprises a major surface and a plurality of macro pores coupled to the major surface; wherein a first portion of the composition is disposed on at least a portion of the major surface; and wherein at least a portion of the plurality of macro pores are impregnated with a second portion of the composition (Fig. 1: a screen, i.e., a porous substrate, is provided as a reinforcement surface for the composition. The screen comprises large openings, considered macro pores according to the definition of this term provided in the published specification of the instant application ([0106]). The macro pores are penetrated by the composition, and the composition is embedded within the macro pores. This configuration meets the instant claim).
Regarding Claim 4, Balsimo discloses the porous substrate further comprises a third portion of the composition embedded within the porous substrate (Col 2, line 66 – Col 3, line 1: the PTFE web is disclosed as partially embedded within the screen).
Regarding Claim 7, Balsimo discloses the plurality of particles comprises a catalyst, an adsorbent, a growth seed, a metal-organic framework (MOF), a bioactive material, an electroactive material, or any combinations thereof (Col 3, lines 9-12: Particularly useful particulate materials include activated carbon – this is considered to read upon an adsorbent as claimed).
Regarding Claim 8, Balsimo discloses that the reinforcing means may be a scrim, which can be made of metal (Col 2, lines 17-19) – a scrim is defined as a non-woven web the fibers of which are not in a regular geometric pattern, which is considered reticulated, or “arranged or having a pattern like a net of lines and squares, or a structure of pipes and wires” (Cambridge Dictionary).
Regarding Claim 9-10, Balsimo discloses active particulate in an amount of at least 80 wt% (Col 5, lines 42-44).
Regarding Claims 11-12, Balsimo discloses the porous substrate comprises 50 wt-% or greater of the composition based on the weight of the porous substrate and the composition disposed thereon (Example 8/Table 1: the unreinforced web basis weight is 323.7 g/m2, and sample 6 utilizes Naltex filtration webbing with a basis weight of 166.3 g/m2 – this corresponds to a wt of the composition based on the weight of the porous substrate and the composition disposed thereon of 66.1%, which meets the instant claimed ranges).
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.
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) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US6207251B1, hereinafter ‘Balsimo’, in view of US4668258A, hereinafter ‘Steer’.
Regarding Claims 5-6, Balsimo discloses that the particle-loaded fibrillated PTFE web of the disclosure benefits from a porous reinforcing substrate, i.e, a non-woven net, that preserves permeability while improving strength and permeability (Col 2, lines 28-44). Further, Balsimo discloses the disclosed substrate to be capable of removing one or more solutes from a fluid, i.e., either a liquid or a gaseous fluid stream (Claim 1).
However, Balsimo does not disclose that the composition further comprises free active particles, free PTFE fibrils, or both.
Steer discloses a filter comprising a reticulated foam which has been impregnated with a deodorizing agent, e.g., activated carbon (Col 1, lines 48-58). A person of ordinary skill in the art would have recognized Steer as analogous to Balsimo, as both references are drawn to the same field of endeavor as the claimed invention, polymer-based separation mediums comprising entrapped active particles of, e.g., a sorbent - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Steer discloses a reticulated foam material layered with a microporous membrane for use in a gas separation filter for an ostomy bag. The filter of the invention is disclosed as comprising a pad of reticulated polyurethane foam carrying particles of a deodorizing agent, particularly activated carbon, wherein said pad allows entry of gas to be deodorized, i.e., a portion of the entering gas is exposed to the activated carbon sorbent. This configuration is described as having pores in the membrane are not blocked against gas flow (Col 1, lines 48-66). Further, reticulated foams such as those of Steer are analogous to the non-woven nets used as the reinforcing member of Balsimo, as reticulated foams are those which are “arranged or having a pattern like a net of lines and squares, or a structure of pipes and wires.” Therefore, Steer shows that it was known in the art before the filing date of the claimed invention to impregnate the support member of a reticulated separation medium with a sorbent for gas capture.
It would have therefore been obvious to one of ordinary skill in the art before the filing date of the claimed invention to impregnate the porous reinforcing member of Balsimo with activated carbon, as taught by Steer. Such impregnation has been shown to result in a material which may provide a sorbent effect on gases subjected to separation therewith, and given that the fibrils of the separation medium of Balsimo also contains activated carbon, the addition of activated carbon to the reinforcing member would provide a higher sorbent loading and thereby a higher sorbent capacity, enhancing the separation performance of the modified separation medium.
Regarding Claim 6, Balsimo as modified above discloses the porous substrate comprises at least one free PTFE fibril of the free PTFE fibrils, at least one free active particle of the free active particles, at least a portion of the matrix, or any combination thereof embedded within the porous substrate (as discussed above, Balsimo as modified above makes obvious the use of a reinforcing member impregnated with free active carbon particles as the porous substrate).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 7, 9-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, and 8 of copending Application No. 18527018 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
regarding Claim 1, both applications claim a matrix as described in the instant claim 1 (Claim 1 of the reference application);
regarding Claim 2, both applications claim a matrix comprising short and long strand fibrils of PTFE (Claim 1 of the reference application);
regarding Claim 7, both applications claim the same definition of active particles (Claim 3 of the reference application);
regarding Claim 9-10, both applications require greater than 60 wt% active particles (Claim 8).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 9:30-5:30 PST.
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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