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 Objections
Claim 9 is objected to because of the following informalities:
The limitation of “the adjacent split sheet layers” should be “the at least two split sheet layers” to be consistent.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 6 is indefinite because the limitation of “each of the at least one planned excised region of the filter layer is provided at a position corresponding to the sensor” is confusing. The way it was written appears that all of the planned excised region of the filter layer are provided at a position corresponding to the sensor when there are multiple planned excised regions. However, based on the published “Spec.” (hereinafter “Spec.”), where it is stated that “According to a sixth aspect of the invention, the filter structure has the configuration of the invention according to the fifth aspect in which the object is a ceiling-embedded air conditioner in which a sensor is provided at least a part of an inside or a periphery of an air inlet, and the planned excised region of the filter layer is provided at a position corresponding to the sensor.” Spec. [0018]. Please clarify. Also noted here that if this is what the applicant intends to claim, such limitation might potentially trigger 35 U.S.C, 112(a), because in the Spec. only some/one excised region is configured for sensor, while other configured to conform to an object shape, Spec. [0016]–[0018].
Claim Rejections - 35 USC § 102(a)(1)
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.
The claims are rejected as follows:
Claims 1–8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakagawa et al., JP 2002085927 A (“Nakagawa”)1.
Regarding claim 1:
Nakagawa discloses that a filter structure (Nakagawa’s filter 15, Nakagawa Fig. 13, [0083]) comprising:
a filter layer (Nakagawa’s nonwoven fabric 31, Nakagawa Fig. 13, [0083]) that has air permeability to filter passing gas (implicit, Nakagawa’s nonwoven fabric 31 is used to filter air, Nakagawa [0046]), and
an adhesive layer formed of adhesive (Nakagawa’s adhesive 61a, 61b, 62a, 62b and grid-like adhesive 64, Nakagawa Fig. 13, [0083]) on at least a part of a surface of the filter layer (31 of Nakagawa, Nakagawa Fig. 5, [0059]), a size of the filter layer being set to be appropriate for a dimension of a first object to which the filter layer is to be attached, in a case of attachment to a second object having a dimension smaller than that of the first object, the filter layer being configured to be cut at a predetermined position (Nakagawa discloses its filter could be applied to objects of various sizes, Nakagawa [0005] and Nakagawa discloses its filter can be cut, Nakagawa [0038], Nakagawa therefore discloses its filter can be cut to be appropriate for various objects, a larger size object would read on the claimed “first object” and a smaller size object would read on the claimed “second object”), wherein
the adhesive layer (61a, 61b, 62a, 62b and grid-like adhesive 64 of Nakagawa) includes
a strip-shaped contour adhesive layer (Nakagawa’s 61a, 61b, 62a, 62b, Nakagawa Fig. 13, [0083]) that is continuous along a contour of the filter layer (Nakagawa’s 61a, 61b, 62a, 62b forms a rectangle that is continuous along a contour of the filter layer 31 as shown in Fig. 13),
a strip-shaped partition adhesive layer that is continuous along at least a part of the strip-shaped contour adhesive layer, the strip-shaped partition adhesive layer being formed of a plurality of first adhesive layers (see annotated Fig. 8 below), each at a predetermined interval from the strip-shaped contour adhesive layer (see annotated Fig. 8 below), and within the strip-shaped contour adhesive layer (see annotated Fig. 8 below) and (note that Nakagawa’s Fig. 13 shows grid-like adhesive 13 in oblique direction, and Nakagawa discloses its grid-like adhesive 13 could be in a vertical and left and right direction, Nakagawa Fig. 13, [0084], the examiner relies on the vertical and left and right direction embodiment for mapping, for ease of mapping, the examiner relies on Fig. 8 to teach the claimed “strip-shaped partition adhesive layer),
a plurality of second adhesive layers (see annotated Fig. 8 below) not constituting the strip-shaped partition adhesive layer, and being located inward of the plurality of first adhesive layers (see annotated Fig. 8 below), an interval between adjacent ones of the plurality of first adhesive layers being smaller than an interval between adjacent ones of the plurality of second adhesive layers (as shown in annotated Fig. 8 below, an interval between first adhesive layer is one-grid width and an interval between second adhesive layer is two-grid width); and
an appropriate cut region is set between the strip-shaped contour adhesive layer and the strip-shaped partition adhesive layer so that the filter layer is cut to have a size appropriate for a size of the second object (Nakagawa disclos es its filter can be cut and used based on pressure-sensitive adhesive, which can be easily identified, Nakagawa [0038], it is therefore concluded that Nakagawa’s appropriate cut region could be set between the strip-shaped contour adhesive layer and the strip-shaped partition adhesive layer as long as there are an edge area that is not covered by the adhesive to easy grasp, Nakagawa [0032]).
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Regarding claim 2:
Nakagawa discloses that the filter structure according to claim 1, wherein the plurality of first adhesive layers have different intervals from the strip-shaped contour adhesive layer (as shown in Nakagawa’s annotated Fig. 8 above, the two first adhesive layers have different intervals from the strip-shaped contour layer, Nakagawa annotated Fig. 8).
Regarding claim 3:
Nakagawa discloses that the filter structure according to claim 1, the filter structure according to claim 1, wherein the strip-shaped partition adhesive layer is formed to be continuous along a part of the strip-shaped contour adhesive layer and be connected (see annotated Fig. 8 in claim 1), at an end of the strip-shaped partition adhesive layer, to another part of the strip-shaped contour adhesive layer (see annotated Fig. 8 in claim 1).
Regarding claim 4:
Nakagawa discloses that the filter structure according to claim 1, wherein the appropriate cut region set between the strip-shaped contour adhesive layer and the strip-shaped partition adhesive layer is so configured that the filter layer before cutting and the filter layer after cutting are similar to each other (Nakagawa discloses its cut position can be guide by the easily identified pressure-sensitive adhesive, and the adhesive is in vertical grid shape, which would give similar shape of filter layer before and after each cut if one follows the adhesive filter layer, Nakagawa Fig 8, [0038]).
Regarding claim 5:
Nakagawa discloses that the filter structure according to claim 1, wherein in the filter layer (31 of Nakagawa), at least one planned excised region for excising a part of the filter layer is set (Nakagawa discloses its filter can be cut and fit to objects of various sizes, Nakagawa Abstract, and there would necessary have at least one planned excised region for excising a part of the filter layer),
the adhesive layer further includes a boundary adhesive layer that is formed on a non- excised side of the filter layer to be continuous along a contour of each of the at least one planned excised region (adhesive layer that is proximate the edge after cutting would be the claimed ‘boundary adhesive layer on the non-excised side, and it would be continuous same way as Nakagawa’s 61, 62 as that shown in Fig. 11 of Nakagawa if the filter is rectangular and cut to be a smaller rectangular, Nakagawa Fig. 3, 11), and
the boundary adhesive layer is continuous with the strip-shaped contour adhesive layer (such boundary adhesive layer would be continuous to the strip-shaped contour adhesive layer because Nakagawa’s grid-like adhesive structure are interconnected to each other, Nakagawa annotated Fig. 8).
Regarding claim 6:
Nakagawa discloses that the filter structure according to claim 5, wherein each of the first object and the second object is a ceiling-embedded air conditioner (Nakagawa discloses as air conditioner 15, Nakagawa Fig. 1, [0046], while Nakagawa is silent about its air conditioner 15 being a ceiling-embedded air conditioner, such limitation is intended use, and Nakagawa’s air conditioner 15 could be ceiling-embedded to save ground space) in which a sensor (Nakagawa disclsoes as temperature sensor 24, Nakagawa Fig. 1, [0046]) is provided at least at an inside or a periphery of an air inlet (Nakagawa’s air intake port 22, Nakagawa Fig. 1, [0046], and sensor 24 is provided at a periphery of the air inlet 22, Nakagawa Fig. 1), and each of the at least one planned excised region of the filter layer is provided at a position corresponding to the sensor (Nakagawa’s cutout 33 is configured to accommodate sensor 33, and thus read on the “at least one planned excised region”, Nakagawa Fig. 1).
Regarding claim 7:
Nakagawa discloses that the filter structure according to claim 5, wherein the filter layer has a rectangular shape or a square shape (see Nakagawa’s Fig. 1, filter 15 is rectangular shaped), and at least one of the at least one planned excised region is set in one of four corners of the filter layer (see Nakagawa’s Fig. 1, cutout 33 is set in one of four corners of the filter layers).
Regarding claim 8:
Nakagawa discloses that the filter structure according to claim 1, further comprising a sheet layer (Nakagawa’s release paper 37, Nakagawa Fig. 4, [0057]) that is laminated on a surface of the adhesive layer (32 of Nakagawa) and is peelable (Nakagawa discloses peeling off its release paper 37, Nakagawa Fig.4, [0057]).
Regarding claim 10:
Nakagawa discloses that the filter structure according to claim 1, further comprising:
at least one design adhesive layer (Nakagawa’s letter-like adhesive agent 60, Nakagawa Fig. 10, [0072]) formed inward of the strip-shaped partition adhesive layer (Nakagawa’s letter-like adhesive agent 60 is shown in a center of filter, which is inward of the strip-shaped partition adhesive layer, Nakagawa Figs. 8, 10 and 13), each design adhesive layer having a visually recognizable form that is not of a strip shape (as clearly shown in Nakagawa’s Fig. 10), wherein the appropriate cut region and the at least one design adhesive layer are mutually exclusive of each other (Nakagawa’s letter like adhesive agent 60 is configured to use as a measurement of replacement of the filter 15, and therefore necessarily have to located outside of cut region to properly performing an indication function, Nakagawa [0072]).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
The claims are rejected as follows:
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa in view of Adachi et al., WO 2018/043522 A1 (“Adachi”)2.
Regarding claim 9:
Nakagawa does not disclose that the filter structure according to claim 8, wherein the sheet layer includes at least two split sheet layers that are separated at least at an intermediate position or near the intermediate position on the filter layer,
the adhesive layer further includes at least two strip-shaped reinforcing adhesive layers that are formed along adjacent contours of the adjacent split sheet layers, and
a width dimension of one of the at least two strip-shaped reinforcing adhesive layers is set to be larger than a width dimension of the strip-shaped contour adhesive layer and/or the strip-shaped partition adhesive layer.
Similar to Nakagawa, Adachi discloses a filter that are configured to cut to fit a target object. Adachi Fig. 13, [0008]. Adachi discloses a release sheet 40 that is attached to the filter to protect the adhesive portion 20, Adachi Fig. 4, [0058]. Adachi discloses a configuration of Fig. 12, where the sheet layer includes at least two split sheet layers (Adachi’s left and right layers separated at separation line 41, Adachi Fig. 12, [0072]) that are separated at least at an intermediate position or near the intermediate position on the filter layer (10 of Adachi, Adachi Fig. 12, [0064]), the adhesive layer further includes at least two strip-shaped reinforcing adhesive layers (Adachi’s third and fourth strip 23, 24, Adachi Fig. 12, [0065]) that are formed along adjacent contours of the adjacent split sheet layers (see Adachi Fig. 12), and a width dimension of the reinforcing adhesive layer (23, 24 of Adachi) is set to be larger than a width dimension of the contour adhesive layer (21 or 22 of Adachi) and/or the partition adhesive layer. Adachi discloses its design allows accommodation for air intake surfaces of various manufactures and model sizes, Adachi [0003]. It would therefore have been obvious for one ordinary skill in the art at the time of filing for Reeves to have a design similar to that shown in Adachi to accommodate for air intakes of various manufacture and models sizes.
Response to Arguments
Claim Objections
The examiner withdraws the current objection because the applicant has tendered an amendment to overcome the current objections.
Claim Rejections - 35 USC § 112(b)
The examiner withdraws the current rejection because the applicant has tendered an amendment to overcome the current rejections. However, new grounds of rejection are made in view of the amendment, details are provided above.
Claim Rejections - 35 USC §§ 102 and 103
Applicant’s arguments mainly focus on Reeves, Applicant Rem. dated Apr. 30, 2026 (“Applicant Rem.”) ps. 7–9.
The examiner points out that the current amendment changes the scope of the invention, and the examiner relies on a different primary reference Nakagawa. Nakagawa’s arguments concerning Reeves are therefore moot.
Additionally, regarding applicant’s arguments regarding Nakagawa merely discloses a structure in which adhesive layers are formed in a simple vertical and horizontal grid and does not involve cutting, Applicant Rem. p. 9.
The examiner does not agree, Nakagawa clearly states its filter is cut and used, Nakagawa [0038].
Regarding applicant’s argument that Adachi does not each a plurality of “second adhesive layer” that are intended not to be cut, Applicant Rem. p. 9, the examiner points out that none of the instant claim requires such limitation and such argument is therefore not commensurate with the scope of the invention.
Regarding applicant’s newly added claim 10, the applicant argues that Nakagawa’s character type adhesive 60 is formed across the cutting locations and therefore has a risk to be cut off, Applicant Rem. p. 10.
The examiner does not agree. As stated in the rejection section, as well as supported by Nakagawa, where Nakagawa discloses “Referring to FIG. 1, in this embodiment, a pressure-sensitive adhesive which displays "exchange" is formed on the back surface of the filter 15 as a letter-like adhesive agent 60 in the space between each of the striped adhesive 58 formed in the longitudinal direction. When the filter 15 is used, a gas does not pass through the striped adhesive 58 and the character adhesive 60. On the other hand, the nonwoven fabric 31 around those which are passed through by use will gradually discolor by absorbing dirt or the like. Thus, the striped adhesive 58 and the letter-like adhesive 60 float due to the discoloration of the surroundings. In this way, the letter-like adhesive 60 can be used as a measure of replacement of the filter 15, thereby improving usability.” Nakagawa [0072]. Nakagawa’s letter-like adhesive agent 60 therefore has to stay with the non-excised portion of the filter to serve as a measure of replacement of filter.
Applicant’s arguments are therefore not persuasive.
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 QIANPING HE whose telephone number is (571)272-8385. The examiner can normally be reached on 7:30-5:00 M-F.
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, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Qianping He/Examiner, Art Unit 1776
1 Nakagawa is the 29-page FOR dated Dec. 15, 2023. The examiner relies on the machine translation provided for the text and original document provided for the figure.
2 Adachi is the 87-page FOR dated Dec. 15, 2023. The examiner relies on the machine translation provided for the text and original document provided for the figure.
Prosecution Insights