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 .
Election/Restrictions
Applicant's election with traverse of Group I, which include claim 1-4 and newly amended claims 17-20, in the reply filed on May 19, 2026, is acknowledged. The traversal is on the ground(s) that claim 1 (Group I) is amended and now recites a more specific air filter construction and claim 15 (non-elected Group II), directed to a method of manufacturing the same air filter currently recited in amended claim 1. In this case, Applicant’s traversal does not result from an error of the unity of invention analysis. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Applicant is reminded that in the event of rejoinder the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Process claims that are commensurate in scope with an allowable product/apparatus claim will be rejoined. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims, which in this case is applicable with the dependency of claim 15 from currently amended claim 1. See MPEP § 821.04.
Nonetheless, regarding claims 15 and 16, see the following:
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See MPEP 2112.02(I).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
The claims are objected to because the lines are single spaced. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).
Claims 4, 7, 11, and 13 are objected to because of the following informalities:
Claim 4 line 4, “[[the]] a higher cell density…[[the]] a lower cell density”
Claim 7 line 4, “[[a]] the filter holder”
Claim 11 line 1, “the at least one charging improving element”
Claim 13 line 1, “the at least one absorbing element”
Appropriate correction is required.
Claim Interpretation
Claim 7 is interpreted as follows:
The air filter according to claim 1, wherein the at least one insulation element is affixed to a filter holder of the air treatment system or both the foam filter element and the filter holder of the air treatment system (see page 7, par 4; page 10, par 5).
To advance prosecution, the examination on the merits is inclusive for this interpretation and also the claim a initially recited.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: at least one charging-improving element in claims 10 and 14, at least one charging improving element in claim 11, and at least one absorbing element in claims 12 and 13. See page 8 paragraph 1-7, page 9 paragraph 3, and page 12 paragraphs 4-6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1, 2, 4, 9, 10, 14, and 17-20 are 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 1 recites the limitations "at least one insulation element" in line 4, "the insulation element" twice in line 5, and "the at least one insulation element" in line 8. The inconsistency for the use of the limitations makes interpretation unclear—are the limitations distinct or the same? Also see the limitation "the at least one insulation element" claim 9 and the limitation "the insulation element" in claims 17-20.
Claim 2 recites the limitation "the electric field intensity" in line 1. There is insufficient antecedent basis for this limitation in the claim. The limitation "an electric field intensity" was not previously recited. Additionally, claim 2 recites the phrase "is dependent on" in line 2 that does not specify the dependency for interpretation and raises the questions—what feature associated with the electric field intensity is dependent on the speed of the air flow; in what direction, for what range, etc. of dependency? The metes and bounds of the wherein phrase is unclear, and therefore, indefinite. Furthermore, it is unclear how an “air filter comprising at least one foam filter element, wherein the foam filter material is or comprises a material with inherent electrostatic triboelectric charging characteristics” would have an electric field (see claim 1). For examination on the merits the limitation “electric field intensity” is interpreted as “electrostatic intensity” instead.
Claim 4 recites the phrase "and/or that for at least one set of two adjacent layers, a layer with the higher cell density is arranged after a layer with the lower cell density along an air flow direction through the air filter" in lines 3-5. The phrase is drafted in a nonconventional form resulting in the metes and bounds being unclear. Can the phrase be interpreted as follows: wherein the first layer and the further layer comprise at least one set of two adjacent layers and at least one of the two adjacent layers comprises a higher cell density layer arranged downstream of a lower cell density layer along an air flow direction through the air filter? Correction is required to obviate indefiniteness of the claim language.
Claim 10 recites the limitation "at least one charging-improving element" in line 1, claim 11 recites "the at least [one] charging improving element" in line, and claim 14 recites the limitation "the at least one charging-improving element" in line 2. The limitations recited in claims 10, 11, and 14 are imprecise. Amend to include or remove the hyphen consistently in the limitations.
Claim 14 recites the limitation "the charging improving coating" in line 2. There is insufficient antecedent basis for this limitation in the claim. The limitation "at charging-improving coating" was not previously recited. Claim 11 recites the limitation "the at least one charging improving coating."
Claims 2-5, 7, 9-14, and 19-20 are also rejected for depending from claim 1.
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 (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 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.
Claim(s) 1, 2, 7, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scheineson (US 5037455 A).
For claim 1, Scheineson discloses an air filter (col. 2, ll. 58-61; air filter assembly 8) for an air treatment system, the air filter comprising at least one foam filter element, wherein the foam filter material is or comprises a material with inherent electrostatic triboelectric charging characteristics (col. 1, ll. 40-46), the air filter further comprising at least one insulation element (plastic frame 60; col. 5, ll. 8-14; Figs. 4, 5) for preventing a discharge of the electrostatic charge, wherein the insulation element is affixed to the foam filter element (col. 5, ll. 26-27; Figs.4, 5), wherein the insulation element surrounds the foam filter element and covers side surfaces of the foam filter element fully (Fig. 5), wherein a front surface and a rear surface of the foam filter are not covered by the at least one insulation element (Fig. 5).
For claim 2 as interpreted above, Scheineson discloses an electrostatic air filter wherein electrostatic intensity generated by the air filter is dependent on the speed of the air flow passing through the air filter, a cell density of the air filter material and a thickness of the air filter (col. 4, ll. 50-63; claim 15 “means for maintaining said filter layers … permitting slidable frictional movement between said filter layers to create an opposite electrostatic charge on each successive abutting layer so that the fibrous and foam wall portions of the porous chambers have opposite electrostatic charges and form bipolar chambers… and to allow the bipolar dust particles to become electrostatically trapped within the bipolar chambers”).
For claim 7, as interpreted, Scheineson discloses wherein the at least one insulation element is affixed to a filter holder of the air treatment system or affixed to both the foam filter element and the filter holder of the air treatment system (see claim 1; whereas, the at least one insulation element is said frame).
For claim 19, Scheineson discloses an electrostatic air filter and the insulation element. Scheineson further discloses an inner volume opened to two different sides allowing an air flow into and out of the filter element, wherein the foam filter element is fully or at least partially arranged in the inner volume (Fig. 5).
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.
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(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheineson (US 5037455 A) in view of Fottinger (US 4886527 A).
Regarding claim 3, the teaching of the prior art is set forth above. Scheineson discloses the density of a second filter layer (col. 3, ll. 28-36) but does not appear to disclose specifically wherein the foam filter element comprises multiple layers with different cell densities. Fottinger discloses an air filter comprises multiple layers (Fig. 1) with different cell densities (col. 2, ll. 7-35; col. 3, l. 27-col. 4, l. 10) with an unexpected result of increased filtration efficiency. It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention to include the teaching of Fottinger, i.e., an air filter comprising multiple layers with different cell densities, to the layers of the Scheineson air filter to increase filtration efficiency.
Regarding claim 9, the teaching of the prior art is set forth above. Scheineson discloses the at least one insulation element but does not specifically teach wherein the material of the at least one insulation element is polyethylene or a ceramic material or a polyester material. Fottinger does is polyethylene or a ceramic material or a polyester material provided with a high electric insulation resistance (col. 4, ll. 10-20). It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention provide the high electric insulation resistance material of Fottinger in as the insulation element of Scheineson to benefit from the resistant properties.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheineson (US 5037455 A) in view of Stinzendörfer (DE 102015016446 A).
Regarding claims 4 and 5, the teaching of the prior art is set forth above. Scheineson discloses a plurality of filter layers but do not disclose wherein a first layer has a cell density in the range of 10 ppi (inclusive) to 30 ppi (inclusive), wherein a further layer has a cell density equal to or higher than 30 ppi and/or that for at least one set of two adjacent layers, a layer with the higher cell density is arranged after a layer with the lower cell density along an air flow direction through the air filter (claim 4); and wherein a thickness of a layer with a higher cell density is smaller than a thickness of a layer with a lower cell density (claim 5) as claimed. Stinzendörfer does teach these limitations (Figs. 1-2):
An optimal filtering effect, for example, has an embodiment of the present invention in which the protective filter element layer disposed upstream has a pore size of about 30 pores per inch (ppi), the average protective filter element layer has a pore size of about 45 pores per inch (ppi), and the protective filter element layer disposed downstream has a pore size of about 60 pores per inch (ppi).
The protective filter element layer arranged on the inflow side preferably has a wall thickness or air passage length of about 20 m, the mean protective filter element layer preferably has a wall thickness or air passage length of about 15 m and the protective filter element layer arranged downstream preferably has a wall thickness or air passage distance of about 10 m.
It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention include protective the filter layers having porosity and density as disclosed in Stinzendörfer with the air filter of Scheineson to benefit from the optimal filtering effect taught in Stinzendörfer.
Claim(s) 7, 17, 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheineson (US 5037455 A) in view of Dominiak (US 6986804 B2).
Regarding claim 7, as recited initially, Scheineson discloses insulation, i.e., frame (see claim 1) but does not appear to disclose explicitly the insulation is affixed to a filter holder of the air treatment system or affixed to both the foam filter element and the filter holder of the air treatment system. However, Dominiak teaches strips (plastic, foam, or non-woven, i.e., insulation) affixed to the filter and the use of a strip have the advantage to function as a sealing against the housing, i.e., frame, of the filter (col. 9, l. 53-col. 10, l. 20; col. 12, l. 49-col. 13, l. 2; claim 15). It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention to include the foam insulated strips of Dominiak to function against the frame of the air filter of Scheineson since this advantage is disclosed.
For claim 17, the teaching of the prior art is relied upon as indicated above but does not appear to disclose the insulation element arranged on or attached to the frame. Dominiak further teaches the air filter comprises a filter holder being a frame for holding the foam filter element, wherein the insulation element is arranged on or attached to the frame (plastic, foam, or non-woven, i.e., insulation) affixed to the filter and the use of a strip have the advantage to function as a sealing against the housing, i.e., frame, of the filter (col. 9, l. 53-col. 10, l. 20; col. 12, l. 49-col. 13, l. 2; claim 15). It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention to modify the air filter of Scheineson as claimed since Dominiak discloses the advantage of the insulation element arranged on or attached to the frame that functions to seal the air filter.
For claim 18, the combined teaching of the prior art is set forth above and further teaches wherein the insulation element is attached to inner surfaces of the filter holder (col. 9, l. 53-col. 10, l. 20; col. 12, l. 49-col. 13, l. 2).
For claim 20, the teaching of the prior art is relied upon as indicated above but does not appear to disclose explicitly wherein the insulation element is glued to the foam filter element but Dominiak does (col. 9, l. 53-col. 10, l. 20; col. 12, l. 49-col. 13, l. 2). It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention to modify the air filter of Scheineson as claimed to hold the features together since Dominiak discloses glue is used for that purpose. Please note, this is a product-by-process claim.
Claim(s) 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheineson (US 5037455 A) in view of Fu (US 20140120322 A).
For claims 10-14, the teaching of the prior art is set forth above. Scheineson discloses the air filter but does not specifically disclose wherein at least one charging-improving element or at least one charging improving coating (claim 10); wherein the material of the at least charging improving element or the at least one charging improving coating is an antiviral material (claim 11); wherein the air filter comprises at least one absorbing element or at least one absorbing coating (claim 12); wherein the at least absorbing element or the at least one absorbing coating comprises a material that is an organo-phosphorous compound or an inorganic compound (claim 13); and wherein a material of the at least one charging-improving element or the charging improving coating is zeolite or a volcanic rock material (claim 14).
Fu discloses air filters (pars [0008], [0234]) comprising each of these characteristics. Fu teaches sorbent particulates, i.e. at least one charging improving element or at least one charging improving coating, comprising silver particulates (par [0119]) that can remove components from a fluid (i.e., air flow), and which is antimicrobial, i.e., antiviral, (par [0126]) and adsorbent particulates—zeolites (par [0120]) that further enhance gas permeation characteristics for airborne contaminants and odor elimination functions.
It would have been obvious for one of ordinary skill in the art at the effective filing date of the current invention for the air filter to comprise the above features in the teaching of Fu to enhance gas permeation characteristics for airborne contaminants and odor elimination functions in the air filter of Scheineson.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant should consider prior art examples provided below in response to this correspondence. See the following:
US 4758460 A: filter functions as a fire-break; treated with an appropriate fire retardant substance, impregnated with a substance including fire retardant additives which serve to actively extinguish flames, but without closing any of the pores.
US 5437701 A: air filter with foam layers; foam treated with a controlled migration treatment additive which increases its efficiency, moisture resistance and capacity.
DE 102012005630 A1: pore sizes in the air flow direction 44.1 continuously decreases, having a gradient pore size distribution in a foam body 43.1.
US 20030032694 A1: method treats ordinary filters with an electrostatic material that will turn any filter into a passive electrostatic filter.
WO 0230548 A1: air filter comprising foam with the layer of adhesive material was then applied onto the configuration of the flow channel filtration media array and the adsorber particle filtration media so that a frame was created and frame.
US 20030084788 A1: air filter comprising a substrate and a polymeric foam; foam has a density gradient where the lower density upstream portion of the filter can trap larger particles, allowing smaller particles to penetrate into the filter and be trapped by the higher density downstream portion of the filter.
US 20040163540 A1: air filter comprising a density gradient and layers.
US 20050132886 A1: air filter; a reticulated foam substrate having a gel; an electrostatic filter.
US 20060054023 A1: an air-permeable filtration media that includes an air-permeable backing and an adsorbent.
US 3073094 A: dielectric insulators 141 abut and space the filter pad; frame.
US 20060150599 A: fire retardant.
US 20100011531 A1: air filter assembly comprising an electrostatic filter with layers
US 20160303499 A1: passive electrostatic filter (also known as an electret) employs a media (or combination of different media) that through some combination of treatment and/or inherent properties has an electrostatic charge.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONJI TURNER whose telephone number is (571)272-1203. The examiner can normally be reached Monday - Friday, 10:00 am - 2:00 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (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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/SONJI TURNER/Examiner, Art Unit 1776 July 22, 2026
/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
Prosecution Insights