DETAILED ACTION
This action is in response to an application filed with the US on 06/19/2024 and having an Effective Filing Date of 05/13/2021, in which claims 1-17 are pending and ready for examination.
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 18 JANUARY 2024, 24 JUNE 2025 is/are in compliance with the provisions of 37 CFR 1.97 and has/have been considered. An initialed copy of Form 1449 is enclosed herewith.
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 3-10 and 13-17 are rejected under 35 U.S.C. 112(b) 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.
Claim 4 recites in line 3 the limitation “silver nanoparticles”. This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles”
Claim 5 recites in line 3 “silver nanoparticles”. This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles”
Claim 6 recites in line 3 “silver nanoparticles”. This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles”
Claim 7 recites “the silver nanoparticles obtained from tannic acid” and “the silver nanoparticles obtain from sodium citrate”
Claim 8 recites in line 3 “silver nanoparticles”. This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles””
Claim 9 recites in line 3 “silver nanoparticles”. This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles”
Claim 9 recites “wherein silver nanoparticles obtained from tannic acid have an average size obtained by transmission electron microscopy (TEM) ranging between 10 and 30 nm; and the silver nanoparticles obtained from sodium citrate have an average size obtained by transmission electron microscopy (TEM) ranging between 30 and 50 nm”, however Claim 9 depends from claim 5, which recites “silver nanoparticles obtained by reducing agents chosen from tannic acid and/or sodium citrate”, thus it is not clear if claim 9 requires both “silver nanoparticles obtained from tannic acid” and “silver nanoparticles obtained from sodium citrate”, or if one is still optional is in claim 5. Correction is required. Either will be used for interpretation.
Claim 10 recites in line 3 “silver nanoparticles” This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles”
Claim 14 recites “the surface”. This term lacks antecedent basis and should be corrected to “
Claim 14 recites “highly”. The term “highly” is a relative term which renders the claim indefinite. The term “highly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 15 recites “a method for a heat a moisture exchange filter”. It appears “preparing” was accidently deleted and should be corrected to “a method for preparing a heat a moisture exchange filter”.
Claim 15 recites “wherein it comprises”. It is not clear what “it” is meant to be and should be corrected to “wherein the filter comprises”.
Claim 15 recites “silver nanoparticles” in steps a) and b). This conflicts with the earlier use of the same term in claim 1. Correction is required.
Claim 15 recites “it is”. This appears to be a typo and should be deleted.
Claim 16 recites “preparing a the heat and moisture”. This should be corrected to “preparing
Claim 16 recites “step (d)”. This conflicts with the earlier use of the same term and should be corrected to should be “the step (d)”
Claim 17 recites in the last line “silver nanoparticles” This conflicts with the earlier use of the same term and should be corrected to “the silver nanoparticles”
Claim 17 is rejected for being indefinite because it claims a method of using silver nanoparticles with biocidal activity in a heat and moisture exchange filter defined in claim 1, but does not recite any specific methods steps. While it is claimed that “the polymeric cellulose fibers that form the heat and moisture exchange filter are impregnated with silver nanoparticles with biocidal activity” this is not clearly a method step, as “impregnated” is seen as a structural limitation, not a process step. See MPEP 2173.05(q).
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20210331107 A1 (hereinafter “Holler”).
Regarding Claim 1 Holler discloses a filtration article for personal protective equipment with biocidal activity, comprising polymeric cellulose fibers (fiber may be cotton or bamboo [0068]) impregnated with silver nanoparticles (AgNPs); Abstract, [0037], [0075]-[0077].
Note: With regard to the filter being “a heat and moisture exchange filter”, this is a functional limitation which attempt to define this apparatus claim’s structure in terms of its functional abilities. Thus the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations, see MPEP 2114. These functional limitations do not further define over the prior art because the structure disclosed by Holler would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed.
Regarding Claim 3 Holler discloses the heat and moisture exchange filter with biocidal activity according to claim 1, wherein the polymeric cellulose fibers are in the form of a partitioned double layer (i.e. because it has three layers, the middle layer thus partitioning the outer layers; [0052]-[0067], Fig. 1.
Regarding Claim 13 Holler discloses the heat and moisture exchange filter with biocidal activity according to claim 1, characterized-in that wherein the silver nanoparticles are on the surface or immersed in the polymeric cellulose fibers, because they are put there by spraying or dipping the fibers/fabric; [0051].
Regarding Claim 17 Holler discloses a method of using silver nanoparticles with biocidal activity in a heat and moisture exchange filter defined in claim 1,
wherein the polymeric cellulose fibers that form the heat and moisture exchange filter are impregnated with silver nanoparticles with biocidal activity; Abstract, [0037], [0075]-[0077].
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 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Holler in view of Rzhevtseva, Y.I., Zaitseva, L.A. Determination of conditions for depositing crystalline calcium chloride hydrate on the heat and moisture exchanging layer of breathing filters. Fibre Chem 43, 320–326 (2011). (hereinafter “Rzhevtseva”).
Regarding Claim 2 Holler discloses the heat and moisture exchange filter with biocidal activity according to claim 1, but does not disclose wherein the polymeric cellulose fiber comprises heat storage carrier material chosen from calcium chloride, sodium hydroxide and magnesium chloride.
However Rzhevtseva discloses that calcium chloride is added to filters of breathing material to help the material manage the moisture from breath, making it hygroscopic (Abstract, pgs. 320-321).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter of Holler by treating the fibers of the filter with calcium chloride as disclosed by Rzhevtseva because it helps the material manage the moisture from breath, making it hygroscopic.
Claims 4-10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Holler in view of Neus G. Bastús, Florind Merkoçi, Jordi Piella, Victor Puntes; Synthesis of Highly Monodisperse Citrate-Stabilized Silver Nanoparticles of up to 200 nm: Kinetic Control and Catalytic Properties. Chem. Mater. 13 May 2014; 26 (9): 2836–2846. (hereinafter “Bastús”).
Regarding Claim 4 Holler discloses the heat and moisture exchange filter with biocidal activity according to claim 1, but does not disclose it comprises silver nanoparticles obtained by reducing agents chosen from tannic acid; sodium citrate; chitosan; Ascorbic acid; thiosulfate, polyethylene glycol; mangiferin catechins derived from Camellia sinensis; resveratrol; pomegranate extract, ascorbic acid; Syzygium cumini extract; Annona muricata extract; Plinia cauliflora extract; hydrazine; sodium tetraborohydride; reducers with active metals, such as sodium, magnesium, aluminum and zinc; metal hydrides, such as NaH, CaH2 and LiAlH4; or mixtures thereof.
However Bastús discloses preparing silver nanoparticles using both tannic acid and sodium citrate and the “method produces long-term stable aqueous colloidal dispersions of Ag NPs with narrow size distributions, relatively high concentrations (up to 6 × 1012 NPs/mL), and, more important, readily accessible surfaces”; Abstract, Introduction, Synthesis of Silver seeds, Growth of Silver Nanoparticles.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter of Holler by using the nanoparticles prepared using both tannic acid and sodium citrate as disclosed by Bastús because this a known means of producing silver nanoparticles, and the “method produces long-term stable aqueous colloidal dispersions of Ag NPs with narrow size distributions, relatively high concentrations (up to 6 × 1012 NPs/mL), and, more important, readily accessible surfaces”.
Regarding Claim 5 Holler in view of Bastús discloses the heat and moisture exchange filter with biocidal activity according to claim 4, characterized by comprising silver nanoparticles obtained by reducing agents chosen from tannic acid and/or sodium citrate, (both are used), supra.
Regarding Claim 6 Holler in view of Bastús discloses the heat and moisture exchange filter with biocidal activity according to claim 5, wherein the nanoparticles are obtained from both tannic acid and sodium citrate, supra, there for the nanoparticles are seen to be a mixture of silver nanoparticles obtained from tannic acid and sodium citrate, as claimed.
Regarding Claim 7 Holler in view of Bastús discloses the heat and moisture exchange filter with biocidal activity according to claim 6, but does not disclose wherein the proportion between the silver nanoparticles obtained from tannic acid and the silver nanoparticles obtained from sodium citrate varies between 1:4 to 4:1.
However, this is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113.
Since the nanoparticles are produced using both tannic acid and sodium citrate, the claimed “silver nanoparticles obtained from tannic acid” and “the silver nanoparticles obtained from sodium citrate” are not seen to be structurally different, since both are read on by the nanoparticles of Bastús. Thus the nanoparticles may be considered to structurally have a proportion between the silver nanoparticles obtained from tannic acid and the silver nanoparticles obtained from sodium citrate varies between 1:4 to 4:1.
Regarding Claims 8 and 10 Holler in view of Bastús discloses the heat and moisture exchange filter with biocidal activity according to claim 1, wherein the silver nanoparticles of Holler are disclosed to have an average size of from 1-1000 nm, Holler [0076], and the nanoparticles of Bastús have an average size ranging from 10-200 nm (Title, Abstract). Thus the silver nanoparticles of the combined invention would have an average size ranging from 10-200 nm since it uses Bastús’ nanoparticles. Where the measurement means of determining the nanoparticle size is not disclosed, it would have been obvious to use particles having an average size of 10-200 nm as measured by any means, including TEM or DLS.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 9 Holler in view of Bastús discloses the heat and moisture exchange filter with biocidal activity according to claim 5, wherein the silver nanoparticles of Holler are disclosed to have an average size of from 1-1000 nm, Holler [0076], and the nanoparticles of Bastús have an average size ranging from 10-200 nm (Title, Abstract). Thus the silver nanoparticles of the combined invention are produced using tannic acid and sodium citrate and would have an average size ranging from 10-200 nm, since it uses Bastús’ nanoparticles. Where the measurement means of determining the nanoparticle size is not disclosed, it would have been obvious to use particles having an average size of 10-200 nm as measured by any means, including TEM.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 15 Holler discloses a method for preparing a heat and moisture exchange filter with biocidal activity, wherein the filter is defined in claim 1, wherein it comprises the following steps:
a) preparation of silver nanoparticles (not disclosed, but is necessarily inherent in order to provide a solution of metal nanoparticles); and
d) impregnation of cellulose polymeric fibers with the silver nanoparticles obtained in step (a); (fabrics are treated with a nanoparticle metal solution by spray or wet dip);
e) drying the impregnated cellulose fiber obtained in step (d) (not disclosed, but must necessarily be inherent, and/or would have been obvious, because the final filter is not disclosed to be wet); [0037], [0042], [0056], [0075]-[0077].
Holler does not disclose a) preparation of silver nanoparticles with tannic acid; b) preparation of silver nanoparticles with sodium citrate; c) mixture of nanoparticles obtained in the steps (a) and (b) in a proportion ranging between 1:4 and 4:1; d) impregnation of cellulose polymeric fibers with the mixture of silver nanoparticles obtained in step (c).
However Bastús discloses preparing silver nanoparticles using both tannic acid and sodium citrate and the “method produces long-term stable aqueous colloidal dispersions of Ag NPs with narrow size distributions, relatively high concentrations (up to 6 × 1012 NPs/mL), and, more important, readily accessible surfaces”; Abstract, Introduction, Synthesis of Silver seeds, Growth of Silver Nanoparticles.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Holler by preparing nanoparticles using both tannic acid and sodium citrate as disclosed by Bastús because this a known means of producing silver nanoparticles, and the “method produces long-term stable aqueous colloidal dispersions of Ag NPs with narrow size distributions, relatively high concentrations (up to 6 × 1012 NPs/mL), and, more important, readily accessible surfaces”.
Holler in view of Bastús do not disclose separate steps of producing the nanoparticles and mixing them (i.e. a) preparation of silver nanoparticles with tannic acid; b) preparation of silver nanoparticles with sodium citrate; c) mixture of nanoparticles obtained in the steps (a) and (b) in a proportion ranging between 1:4 and 4:1).
However, this would involve merely producing the nanoparticles as disclosed in multiple batches, then mixing them together, which would have been obvious to do in order to produce a large amount of nanoparticles from smaller preparation vessels, or as desired based on available lad/process equipment. This results in steps a) preparation of silver nanoparticles with tannic acid; and b) preparation of silver nanoparticles with sodium citrate.
Where it would further have been obvious to produce equal size batches to be combined, and where at least two batches would have been obvious. This thus results in mixture of nanoparticles obtained in the steps (a) and (b) in a proportion ranging between 1:4 and 4:1).
This is because the nanoparticles of Holler in view of Bastús are produced using both tannic acid and sodium citrate, supra, and thus the same preparation process is seen to read on both claimed steps of a) preparation of silver nanoparticles with tannic acid; b) preparation of silver nanoparticles with sodium citrate since they are not claimed to produce structurally different nanoparticles, or require only tannic acid or sodium citrate in their preparation.
Regarding Claim 16 Holler in view of Bastús discloses the method of preparing a heat and moisture exchange filter with biocidal activity according to claim 15, wherein step (d) of impregnating the cellulose polymeric fibers with the mixture of silver nanoparticles occurs by spraying or immersion; Holler discloses the nanoparticles may be applied as a solution of nanoparticles via spraying or dipping the fabric [0051].
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Holler in view of Hongshui Wang, et al., Mechanisms of PVP in the preparation of silver nanoparticles, Materials Chemistry and Physics, Volume 94, Issues 2–3, 2005, Pages 449-453 (hereinafter “Wang”).
Regarding Claim 11 Holler discloses the heat and moisture exchange filter with biocidal activity according to claim 1, but does not disclose (claim 11) wherein the silver nanoparticles further comprise a stabilizing agent chosen from polyvinylpyrrolidone (PVP), polyvinyl alcohol, xanthan gum, arabic gum, guar gum, starch and its derivatives, cellulosic derivatives, starches, agar or mixtures thereof, or (claim 12) wherein the silver nanoparticles comprise polyvinylpyrrolidone (PVP) stabilizing agent.
However Wang discloses it is known to produce silver nanoparticles using PVP as a dispersant, and tht the PVP accelerate the reaction of silver with glucose (the reductant), stabilizes the H+, protected the silver particles from growing and agglomerating (Abstract, Introduction, 2.2.).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter of Holler by using PVP to prepare the silver nanoparticles as disclosed by Wang because the PVP accelerate the reaction of silver with glucose (the reductant), stabilizes the H+, protected the silver particles from growing and agglomerating.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Holler in view of US 2005/0223902 A1 (hereinafter “Lovell”).
Regarding Claim 14 Holler discloses the heat and moisture exchange filter with biocidal activity according to claim 1, but does not disclose wherein the surface of the heat and moisture exchange filter is corrugated.
However Lovell discloses a similar face mask, where it is disclosed that the face mask may be corrugated; Abstract, C3/L44-C4/L19.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter of Holler by corrugating the filter as disclosed by Lovell because similar facemasks are known to use corrugated filer material and because corrugation increases surface area for filtering, and lowers the resistance to breathing in and out.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L 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.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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