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 Invention I, claims 1-10. in the reply filed on 18JUN2026 is acknowledged. The traversal is on the ground(s) that the claims have a common inventive concept. This is not found persuasive because the application is a US nonprovisional application subject to a US restriction/election requirement where claims are directed towards distinct or independent claimed inventions (MPEP 806). As previously explained, the method of Invention II does not necessarily provide for the product of Invention I and thus there is a search burden.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 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(s) 1-2,6-10 are rejected under 35 U.S.C. 103 as being unpatentable over SHIMADA (US 20190209765).
Regarding claims 1,8-9, SHIMADA teaches a filter element for blood processing filter (title, Figs.) including a filter material capable of removing white blood cells (e.g. leukocytes; par. [0001]) and albumins comprising:
a polymer nonwoven fabric (abstract; par. [0024]); and
a modifier (e.g. coat layer; par. [0023]), fixed on the polymer nonwoven fabric,
wherein a critical wetting surface tension of the filter material is 70 dyn/cm or larger (par. [0155]), which overlaps the claimed range of between 45 dynes/cm and 115 dynes/cm, and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range;
a zeta potential of the filter material is 0 mV – 150 mV (par. [0054]), which overlaps the claimed range of between -50 mV and +50 mV and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range; and,
it is implied that there is no chemical solvent residue on the filter material as SHIMADA provides no teaching of residue on their filter (which obviously could just be removed anyway).
In considering the disclosure of SHIMADA, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom (MPEP 2144.01).
Note that the limitations “white blood cells”, “white blood cell depletion ratio”, “albumins”, and “albumin depletion ratio” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
Regarding claim 2, SHIMADA teaches the polymer nonwoven fabric comprises e.g. polybutylene terephthalate (PBT; par. [0024]).
Regarding claim 6, SHIMADA teaches:
an average pore diameter of the filter material is between 1.5-7.5 μm; (par. [0126]), which anticipates the claimed range of 1 μm and 50μm; and,
a fiber diameter of the filter material is between 0.3-3.0 μm (par. [0129]), which overlaps the instantly claimed range of 1-10 μm and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
Regarding claim 7, SHIMADA teaches the pore and fiber diameters as above, which provides a ratio of the average pore diameter to the fiber diameter of the filter material is about 0.5-25, which anticipates the claimed range of between 0.1 and 50.
Regarding claim 10, SHIMADA’s membrane inherently has a chemical oxygen demand (COD) of an extraction solution of the filter material after water extraction is less than 500 ppm.
SHIMADA’s membrane has the same structure and function. This includes the property of COD. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over SHIMADA (US 20190209765) in view of BABA (JP H08929).
Regarding claim 3, SHIMADA does not teach the modifier is a surfactant. However, BABA teaches a filtering treatment member (title) including a filtration-treated article, which is a non-woven fabric sheet (abstract) comprising a modifier comprising e.g. a cationic surfactant (par. [0025,0039]), which improves filtration efficiency by lowering the surfactant tension (abstract).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the filter of SHIMADA with a surfactant in order to lower the surface tension and improve the filtration efficiency. The references are combinable, because they are in the same technological environment of filtration. See MPEP 2141 III (A) and (G).
Claim(s) 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over SHIMADA (US 20190209765) in view of SKORUPINSKI (FR 2984176).
Regarding claims 3-5, SHIMADA does not teach the modifier is a surfactant. However, SKORUPINSKI teaches a nonwoven filtration medium that has side with antibacterial activity and/or anti-fungal activity (title, abstract) including an active agent comprising a quaternary ammonium compound including e.g. hexadecyltrimethylammonium chloride (L228).
SKORUPINSKI teaches that the nonwoven filter has positively charged quaternary ammoniums that allow for lowering surface tension, catching both charged and neutral particles as well as providing antibacterial activity and/or anti-fungal activity (L46-48,59,121-122,132-139).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the filter of SHIMADA with a surfactant in order to improve the filtration efficiency by lower the surface tension and providing anti-bacterial and/or anti-fungal activity. The references are combinable, because they are in the same technological environment of filtration. See MPEP 2141 III (A) and (G).
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
OHMIYA (US 20120312731) discloses a material for trapping target substance, filter for trapping target substance (title) including a filter aid comprising a mesoprous silica with a functional group modification (abstract, par. [0074]). A surfactant, e.g. hexadecyltrimethylammonium chloride (C16TMACl; par. [0021]) is used as a pore former in the silica particle and later removed (par. [0122]).
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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, Ben 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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LIAM A. ROYCE
Primary Examiner
Art Unit 1773
/Liam Royce/ Primary Examiner, Art Unit 1773
Prosecution Insights