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 Status
Claims 1-8 are pending:
Claims 1-8 are rejected.
Response to Amendments
Amendments filed 04/21/2026 have been entered. Amendments to the claims overcome §102 rejections as previously set forth in non-final Office Action mailed 01/28/2026.
Amendments have necessitated new grounds of rejection.
Response to Arguments
Arguments filed 04/21/2026 have been entered. Arguments were fully considered.
On pgs. 5-7 of Applicant’s arguments, Applicant argues that:
2) Rejection of the Claims Under 35 U.S.C. & 102
Rejection of Claims 1-7 under 35 U.S.C. § 102 over Hirozawa
Claims 1-7 are rejected under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent Application Publication No. US 2017/0361280 (hereafter "Hirozawa").
Applicant respectfully traverses the foregoing rejection to the extent it is applied to claims 1- 7.
To anticipate a claim, the reference must teach every element of the claim. See MPEP 2131. In particular, "[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
Claim 1 and claims 2-7-each of which depends from claim 1, directly and indirectly, and which includes every limitation of claim 1 pursuant to 35 U.S.C. § 112, fourth paragraph-each requires at least: A filter comprising a filter element in which a filter medium is
cylindrically disposed on an outer side of a porous tube, wherein the filter medium has embossed portions formed on a surface thereof, wherein said filter has a compression area of more than 0% and less than 44%, and wherein said filter is used for the filtration of liquids.
Hirozawa does not disclose all the limtiations of independent claim 1. For example, Hirozawa does not teach a filter wherein said filter has a compression area of more than 0% and less than 44%, as recited by independent claim 1. Instead, Hirozawa discloses a separation membrane with a fused sheet wherein the sheet is fused by methods such as laser irradiation, hot roll treatment, or calendaring, wherein the hot roll treatment is preferably embossing. See e.g., Hirozawa, paras. [0036] and [0107]. However, Hirozawa does not teach a compression area of the fused filter.
The present application discloses that the compression area is the proportion of the total area of the embossed portion per unit area. See e.g., the present application, para. [0067]. The filter's removing performance is altered based on the compression area of said filter. For example, when the compression area is at 0% or above 44%, the filter has a lower removing performance. See e.g., the present application, Figure 14 and para. [0072]. The compression area of the claimed filter is therefore an important characteristic to achieve improved filtering performance. In contrast, Hirozawa is entirely silent about the compression area of the disclosed filter. Therefore, Hirozawa does not disclose all the limitations of independent claim 1. Thus, claim 1, and claims 2-7, which depend from claim 1 are patentable over Hirozawa.
Accordingly, Applicant respectfully requests withdrawal of the foregoing rejection.
This argument is moot because amendments have necessitated new grounds of rejection.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hirozawa (US 2017/0361280).
Regarding claims 1 and 8, Hirozawa teaches a filter (separation membrane element, see ABS) comprising a filter element (Figs. 10-12, separation membrane elements 100A-C) having a filter member with a tubular shape disposed on an outer side of a porous tube (Figs. 10-12, water collection tube 6) (see ¶81), wherein the filter member has an embossed portion formed on a surface of the filter member (the separation membrane can include one which is embossed, see ¶36 and ¶107-¶112); and wherein said filter is used for the filtration of liquids (the device of Hirozawa is capable of performing the intended function, see ¶254).
Hirozawa does not explicitly teach that said filter has a compression area of more than 0% and less than 44% and that said filter has a compression are of at least 2%.
Hirozawa discloses that the separation membrane may be embossed and height differences are imparted to the sheet by the embossing (see ¶36 and ¶107 of Hirozawa). The instant specification defines a compression area as proportion of the total area of the emobossed portion per unit area (see ¶67 of the instant specification). Therefore, the embossed portions of of Hirozawa have an area that overlaps with the claimed compression area because the emobossed portions neccesarily occupy a non-zero portion of the membrane surface and would have a compression area of at least 2%.
The examiner takes note of the fact that the prior art range overlaps the claimed ranges of 0-44% and 2-44%. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 2, Hirozawa teaches the filter according to claim 1, wherein the filter member is a sheet-like member, and is wound around the porous tube (see Figs. 8 and 10-12 wherein sheets around surrounding water collection tube 6).
Regarding claim 3, Hirozawa teaches the filter according to claim 2, wherein the filter element includes a wound laminated sheet of the filter member and a net-like substrate (the laminate including the porous supporting layer, see ¶71; a member such as a net, see ¶139).
Regarding claim 4, Hirozawa teaches the filter according to claim 2, wherein in the filter element, the filter member is continuously laminated (the separation membrane is continuously formed, see ¶70; the laminate including the porous supporting layer, see ¶71) in a radial direction (see Figs. 8 and 10-12 wherein the separation membrane has a circular or cylindrical membrane which defines a radius extends in a radial direction).
Regarding claim 5, Hirozawa teaches the filter according to claim 2,wherein, in the filter element, a plurality of the filter members having different ventilation resistances are laminated in the radial direction and wound (see ¶41).
Regarding claim 6, Hirozawa teaches the filter according to claim 2, wherein the filter member has pores (the porous sheet having pores, see ¶78).
Regarding claim 7, Hirozawa teaches the filter according to claim 1, wherein the filter member is disposed on the outer side of the porous tube (see Figs. 8 and 10-12 wherein sheets around surrounding water collection tube 6), the filter member being folded into a pleated shape (the separation functional layer has a pleated structure, see ¶43).
Claims 1-2, 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over
Barger (USPN 6,632,357).
Regarding claim 1, Barger teaches a filter (permeable membrane system, see ABS) comprising a filter element (Figs. 1-6, permeable membrane system 10) having a filter member with a tubular shape disposed on an outer side of a porous tube (Figs. 1-6, product tube 30; the product tube 30 receives a plurality of laminated compositions forming a porous structure), wherein the filter member has an embossed portion (Figs. 1-6, projections 24 on outside surfaces 20, 22 defined by a plurality of embossed islands) formed on a surface of the filter member); and wherein said filter is used for the filtration of liquids (the device of Barger is capable of performing the intended function, see C2/L19-35).
Barger does not explicitly teach that said filter has a compression area of more than 0% and less than 44% and that said filter has a compression are of at least 2%.
Barger discloses wherein projections 24 are defined by a plurality of embossed islands formed on the outside surface of the laminated composition (see C2/L34-46 and claim 6 of Barger). The instant specification defines a compression area as proportion of the total area of the embossed portion per unit area (see ¶67 of the instant specification) and further equates embossed portion with compression portions (see ¶43-44 of the instant specification). Thus, the embossed islands of Barger have an area that overlaps with the claimed compression area because as shown in Figs. 1-2 of Barger, the plurality of embossed islands occupy a portion of the membrane surface sufficient to provide a compression area of at least 2%.
The examiner takes note of the fact that the prior art range overlaps the claimed ranges of 0-44% and 2-44%. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 2, Barger teaches the filter according to claim 1, wherein the filter member is a sheet-like member (sheets 14, 16), and is wound around the porous tube (see Figs. 3 and 6 of wound configuration).
Regarding claim 4, Barger teaches the filter according to claim 2, wherein in the filter element, the filter member is continuously laminated in a radial direction (i.e. laminated compositions) (see Figs. 3 and 5 wherein the separation membrane has a circular or cylindrical membrane which defines a radius extends in a radial direction).
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 EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773
Prosecution Insights