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, 2, 5, 7, 8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2008-194584 A1.
Regarding claim 1, Sato teaches a method of producing an air filter medium, which reads on the claimed “method for producing a filter material for an air filter.” See Sato p. 2 (paragraph under “Tech-Solution”).
The method comprises a step of attaching an aqueous solution comprising partially saponified polyvinyl alcohol to a glass fiber filter medium. See Sato ps. 4–5 (bridging paragraph and 1st full paragraph of p. 5). The glass fiber filter medium is “a support, having fluid permeability” because it is a substrate that the partially saponified polyvinyl alcohol is attached to and is fluid permeable because it is a filter medium. Id. at p. 4 (2nd paragraph). This step reads on the claimed “adhering step of getting a polyvinyl alcohol aqueous solution adhering to a support, having fluid permeability, to bring the support into a wet state.”
The method also comprises a wet paper drying method of drying the aqueous solution of partially saponified polyvinyl alcohol adhering to the glass fiber filter medium in a wet state at 140°C or higher. See Sato p. 5 (2nd full paragraph). This reads on the claimed “drying step of drying the polyvinyl alcohol aqueous solution adhering to the support in a wet state at 140°C or higher.”
The aqueous solution of partially saponified polyvinyl alcohol “contains no other binder resins than polyvinyl alcohol,” as claimed, because the aqueous solution of partially saponified polyvinyl alcohol can contain the aqueous solution of partially saponified polyvinyl alcohol alone. See Sato p. 5 (1st full paragraph).
Also, the glass fiber filter medium (the “support”), after the drying method (the “drying step”) has a network of polyvinyl alcohol in a pore serving as a fluid permeation path, by drying the aqueous solution, because the drying step attaches the partially saponified polyvinyl alcohol to the surface of the glass fibers, and each pore is formed by interconnected fibers. See Sato p. 1 (2nd full paragraph), p. 2 (paragraph under “Tech-Solution”), ps. 4–5 (bridging paragraph). The network of polyvinyl alcohol in each pore is “mesh-like,” as claimed, because the polyvinyl alcohol has interconnecting nodes where each fiber of the pore connects. This reads on “the support, after the drying step, has a mesh-like network of polyvinyl alcohol in a pore serving as a fluid permeation path, by drying the polyvinyl alcohol aqueous solution.” Also, because the filter material of Sato is manufactured using substantially the same process as claimed, it would be expected to have a mesh-like network of polyvinyl alcohol in at least one of the pores of the glass fiber filter medium.
Sato differs from claim 1 because it is silent as to the evaporation rate of a solvent of the aqueous solution comprising the partially saponified polyvinyl alcohol. Therefore, the reference fails to provide enough information to teach an evaporation rate of a solvent being 100 g/min or more per 1 m2 of the glass fiber filter medium, as claimed. But the aqueous solution is dried from the glass fiber filter medium (see Sato p. 5, 2nd full paragraph), and the evaporation rate is result effective because it impacts how quickly the solution will be dried. Therefore, it would have been obvious to use routine experimentation to determine the optimal evaporation rate of a solvent of the aqueous solution during the drying step to optimize the amount of time it takes to dry the glass fiber filter medium. See MPEP 2144.05, subsection II.
Regarding claim 2, Sato teaches that the “network” is composed of a nanofiber because the “network” comprises ultrafine glass fibers with their surface covered with saponified polyvinyl alcohol, with the ultrafine glass fibers being nanofibers because they have a diameter of 0.65 µm (650 nm). See Sato p. 4 (1st full paragraph), p. 5 (4th full paragraph).
Regarding claim 5, Sato teaches that the partially saponified polyvinyl alcohol in the aqueous solution has a degree of saponification of 20 to 90%. See Sato p. 3 (last paragraph). The prior art range of 20 to 90% either overlaps with or is close enough to the claimed range of 80 to 98 mol% to establish a prima facie case of obviousness. See MPEP 2144.05, subsection I.
Regarding claim 7, Sato teaches that the adhesion amount of polyvinyl alcohol to the glass fiber (the “support”) is 0.1% by mass or more, which is within the claimed range of 0.005 to 1.00 mass%. See Sato p. 4 (1st paragraph).
Regarding claim 8, Sato teaches the limitations of claim 1, as explained above.
Sato differs from claim 8 because it is silent as to an amount of the polyvinyl alcohol aqueous solution adhering to the support. Therefore, the reference fails to provide enough information to teach that an amount of the polyvinyl alcohol aqueous solution adhering to the support is 50 g or more per 1 m2 of the support, as claimed.
But the amount of the partially saponified polyvinyl alcohol aqueous solution adhering to the support is result effective because there should be a sufficient amount to cover the surface of the glass fiber to hydrophobized the glass fiber surface. See Sato p. 3 (3rd full paragraph), p. 4 (1st paragraph). Therefore, it would have been obvious to use routine experimentation to determine the optimal amount of partially saponified polyvinyl alcohol aqueous solution adhering to the glass fiber filter medium to ensure that there is a sufficient amount to cover the surface of the glass fiber to hydrophobized the glass fiber surface. See MPEP 2144.05, subsection II.
Regarding claim 13, Sato teaches that the glass fiber filter medium (the “support”) is a nonwoven fabric, for a filter material, containing glass fiber as a main component, as claimed. See Sato p. 1 (2nd full paragraph), p. 2 (“Tech-Solution”).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2008-194584 A in view of Viskari et al., US 2020/0061504 A1.
Regarding claim 3, Sato teaches the limitations of claim 2, as explained above.
Sato differs from claim 3 because it is silent as to the ultrafine glass fibers (the “nanofiber”) having an average fiber diameter of 10 to 500 nm, as claimed. Instead, Sato teaches an example where the ultrafine glass fibers have a diameter of 0.65 µm (650 nm).
But Sato teaches that fiber diameter is result effective because as the fiber diameter becomes smaller, the collection efficiency becomes higher. See Sato p. 4 (2nd paragraph). Also, Viskari teaches a filter medium comprising micro-glass fibers having an average diameter of 0.01 to 5 micrometers (10 to 5,000 nm). See Viskari [0058]. It would have been obvious to use routine experimentation to determine the optimal diameter of the ultrafine glass fibers of Sato to optimize collection efficiency. See MPEP 2144.05, subsection II (where 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). A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of 10 to 500 nm because Viskari teaches a filter medium comprising micro-glass fibers having an average diameter of 10 to 5,000 nm.
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2008-194584 A in view of Kato et al., US 2016/0251466 A1.
Regarding claim 4, Sato teaches the limitations of claim 1, as explained above.
Sato differs from claim 4 because it is silent as to the polymerization degree of the partially saponified polyvinyl alcohol in the aqueous solution. Therefore, the reference fails to provide enough information to teach the partially saponified polyvinyl alcohol having a polymerization degree of 1500 to 6000 as claimed.
But Kato teaches that the degree of polymerization for a partially saponified is result effective because the degree of polymerization affects the thickening property and productivity of the PVA. See Kato [0080], [0121]. The polymerization degree ranges from 500 to 3500. Id. at [0121]. It would have been obvious to use routine experimentation to determine the optimal polymerization degree for the partially saponified polyvinyl alcohol in the aqueous solution Sato to optimize thickening and productivity. See MPEP 2144.05, subsection II. A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of a polymerization degree of 1500 to 6000 because Kato teaches partially saponified PVA with a degree of polymerization ranging from 500 to 3500.
Regarding claim 16, Sato teaches that the partially saponified polyvinyl alcohol in the aqueous solution has a degree of saponification of 20 to 90%. See Sato p. 3 (last paragraph). The prior art range of 20 to 90% either overlaps with or is close enough to the claimed range of 80 to 98 mol% to establish a prima facie case of obviousness. See MPEP 2144.05, subsection I.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2008-194584 A in view of Umetasu et al., US 2018/0298152 A1.
Regarding claim 6, Sato teaches the limitations of claim 1, as explained above.
Sato differs from claim 6 because it is silent as to a solid content concentration of partially saponified polyvinyl alcohol in the aqueous solution being 0.01 to 0.20 mass%, as claimed.
But Uematsu teaches that the solid content concentration of a liquid applied to a fiber material is result effective because the solid content concentration affects the viscosity of the liquid. See Uematsu [0016]. It would have been obvious to use routine experimentation to optimize the solid content concentration of partially saponified polyvinyl alcohol in the aqueous solution of Sato to optimize the viscosity of the solution.
Claims 10–12 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2008-194584 A in view of Kuwano et al., JP 2010094580 A2.
Regarding claim 10, Sato teaches the limitations of claim 1, as explained above.
Sato differs from claim 10 because it is silent as to the aqueous solution of partially saponified polyvinyl alcohol comprises a cationic surfactant. But Kuwano teaches a method of adhering polyvinyl alcohol to glass fibers where an aqueous binder liquid comprising polyvinyl alcohol and a cationic surfactant is applied to the glass fibers. See Kuwano [0036], [0050]. The cationic surfactant is beneficial because it increases the cohesive force between fibers, thereby creating a uniform fiber arrangement. Id. at [0036]. A purpose of Sato is to make the glass fiber surface of the filter medium more uniform. See Sato p. 3 (2nd full paragraph). Therefore, it would have been obvious to add a cationic surfactant to the aqueous solution of Sato to improve the uniformity of the glass fiber surface.
Regarding claim 11, Kuwano teaches that the amount of cationic surfactant added to the binder liquid is result effective because if it is too low, the effect of improving filter performance will be insufficient, but if it is too high, the strength of the filter medium will be lowered. See Kuwano [0045]. Kuwano also teaches that the content of the cationic surfactant in the binder liquid is preferably between 0.01 to 0.20% by mass. Therefore, it would have been obvious to use routine experimentation to determine the optimal amount of cationic surfactant in the aqueous solution of Sato to optimize the improvement in filtration performance and the strength of the filter medium. A person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed range of the cationic surfactant being added to the aqueous solution in an amount of 1 to 30 parts by mass based on 100 parts by mass of polyvinyl alcohol because Kuwano teaches that the content of the cationic surfactant in the binder liquid is preferably between 0.01 to 0.20% by mass. See MPEP 2144.05, subsection II.
Regarding claim 12, Sato teaches that the adhesion amount of polyvinyl alcohol to the glass fiber (the “support”) is 0.1% by mass or more, which is within the claimed range of 0.005 to 1.00 mass%. See Sato p. 4 (1st paragraph).
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 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/841,842. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 1, claim 5 of the ’842 application teaches a method for producing a filter material for an air filter comprising an adhering step of getting a polyvinyl alcohol aqueous solution adhering to a support having a fluid permeability to bring the support to a wet state, and a drying step of drying the polyvinyl alcohol aqueous solution adhered to the support in a wet state at 140°C or higher, wherein the polyvinyl alcohol aqueous solution contains no other binder resins other than polyvinyl alcohol, and the support after the drying step has a mesh-like network of polyvinyl alcohol, in a pore serving as a fluid permeation path, by drying the polyvinyl alcohol aqueous solution, and wherein in the drying step, an evaporation rate of a solvent of the polyvinyl alcohol aqueous solution adhered to the support in the wet state is 100 g/min or more per square meter of support.
Regarding instant claim 10, claim 5 of the ’842 application teaches that the polyvinyl alcohol aqueous solution further contains a cationic surfactant.
Response to Arguments
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 Applicant argues that it would not have been obvious to use routine experimentation to optimize the evaporation rate of the drying step in Sato. See Applicant Rem. filed March 27, 2026 (“Applicant Rem.”) 6. Instead, the Applicant argues that the claimed evaporation rate is a critical parameter that determines whether the characteristic PVA network structure is formed. Id. Specifically, the Applicant cites to paragraphs [0017] and [0062] of the specification, which teach that rapid drying of the PVA solution allows the network to be more reliable formed, while an evaporation rate of less than 100 g/min, prevents the mesh-like network from forming. Id. The Applicant also cites to Comparative Example 11B where network formation does not occur with an evaporation rate of 86 g/m2/min. Id. The Applicant further cites to paragraph [0097] of the specification and asserts that it is not only the speed of drying but the manner in which drying occurs that governs the behavior of PVA. Id. As such, it is argued that when evaporation rate falls below the claimed threshold, the PVA structure does not gradually degrade but instead undergoes a qualitative structural transition from a network structure to a film-like laminated structure. Id. It is argued that such a structural transition cannot be explained by simple parameter optimization, but demonstrates that the claimed evaporation-rate limitation represents a critical structural boundary, rather than a parameter subject to routine optimization. Id. As such, the Applicant argues that the result of the claimed invention is not drying efficiency but the realization of a network of PVA in a pore serving as a fluid permeation path of the support. The Applicant argues that the data demonstrates that when the evaporation rate is below 100 g/m2/min, the network structure cannot be formed, demonstrating criticality of the claimed range. Id.
The Examiner respectfully disagrees. A prima facie case of obviousness can be rebutted by showing the criticality of a numerical range, generally by showing that the claimed range achieves unexpected results relative to the prior art. See MPEP 2144.05, subsection III. Objective evidence of unexpected results must be commensurate with the scope of the claimed invention, and must demonstrate that the unexpected results occur over the entire claimed range. See MPEP 716.02(d).
Here, the specification fails to provide evidence of criticality over the entire claimed range. Specifically, the claimed range of an evaporation rate of “100 g/min or more per 1 m2 of the support” has a lower limit of 100 g/min per m2 and no upper limit. Specifically, none of the Examples in Table 1 where PVA nanofibers are formed have an evaporation rate of 100 g/min per m2. See Spec. Table 1, ps. 30–32. Instead, the lowest evaporation rate reported where PVA nanofibers form is 121 g/min per m2. Also, the specification indicates that there is an upper limit for evaporation rate at which a PVA network will form by saying that the upper limit of the evaporation rate is, for example 300 g/min per m2. Id. at [0062]. The requirement of an upper limit is demonstrated in Table 1 where the highest reported evaporation rate where PVA nanofibers are formed is 278 g/min per m2. Id. at Table 1, ps. 30–32. Therefore, there is insufficient evidence that the result of PVA network formation occurs over the entire claimed range of an evaporation rate of “100 g/min or more per 1 m2” and as such, the Applicant has failed to demonstrate that the claimed range is non-obvious for being critical.
Also, the evidence in the specification fails to demonstrate that it is the claimed evaporation rate, and not some other factor, that affects whether PVA network formation occurs. This is because in Comparative Example 3A, the evaporation rate is 171 g/min per m2 but PVA nanofibers do not form, with the failure resulting from air being directly applied to the inside of the filter material. See Spec. Table 1, ps. 30–32, [0097]. In claim 1, the claimed method is non-specific about the particular method that the drying step is performed. Therefore, the claimed range of an evaporation rate of 100 g/min per m2 or more is not critical because the claimed method could be performed with a drying step where air is directly applied to the inside of the filter material at an evaporation rate within the claimed range, with the method failing to produce the claimed network of polyvinyl alcohol.
Also, it is noted that there is insufficient evidence to demonstrate that PVA nanofibers are unable to form at an evaporation rate under the lower limit of 100 g/min per m2. Instead, Comparative Example 2A is the only example provided where the evaporation rate is below 100 g/min per m2 with the evaporation rate of Comparative Example 2A being at 87 g/min per m2 (instead of closer to the lower limit of 100 g/min per m2).
Double Patenting
The double patenting rejections are maintained.
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 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
1 A translation of Sato is provided with this communication and is cited in the rejection.
2 A translation and an original, untranslated copy of Kuwano is in the record as the 39-page Foreign Reference dated September 22, 2023.
Prosecution Insights