DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claims 1-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ueki USPA 2011/0138762 A1 in view of Toray JP H0848004 [translation provided by Applicant].
Regarding claims 1-3, Ueki discloses a filter structure comprising: a filter layer having air permeability and configured to filter passing gas to thereby remove contaminants therefrom (figure 1: vent film 3; paragraph 13); an adhesive layer formed on at least a part of one surface of the filter layer by an adhesive (figure 1: adhesive layer 2; paragraph 48); and a sheet layer laminated on a surface of the adhesive layer and configured to be peeled off prior to use (figure 1: release sheet 1; paragraph 40), wherein the sheet layer has a thickness of 12 µm to 25 µm (paragraph 47).
Ueki does not disclose that the sheet layer has a surface arithmetic average roughness Ra, which is arithmetic average roughness according to JIS B0601:2001, of 0.1 to 0.25 µm on a surface in contact with the adhesive layer. Toray discloses the claimed roughness being tied to peel strength and releasability (see Toray paragraphs 69 and 70). Therefore, the exact roughness of the sheet layer is deemed to be a result effective variable with regard to the releasability. It would require routine experimentation to determine the optimum value of a result effective variable, such as roughness, in the absence of a showing of criticality in the claimed filter structure. In re Boesch, 205 USPQ 215 (CCPA 1980), In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). One of ordinary skill in the art would have been motivated by Toray to optimize the releasability by optimizing the roughness of the sheet layer. Furthermore, one having ordinary skill in the art would be motivated to utilize the claimed roughness range since Toray discloses this range being suitable for good releasability.
Regarding claim 4, The filter structure of Ueki could be utilized for some hypothetical metal filter or straightening plate of a range hood, or an intake port of an air conditioner, or an intake port of an air cleaner, or an indoor or outdoor air vent. Claims directed to an apparatus must be distinguished in the prior art in terms of structure rather than function. MPEP 2114.
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.
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/CHRISTOPHER P JONES/Primary Examiner, Art Unit 1776