DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/605,322 application filed 14 March 2024, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-16 are pending and have been fully considered.
Claim Objections
Claim 10 is objected to because of the following informalities: said claim recites “…the acitve molecular filter” in lines 2-3. Instead, the claim should recite “…the active molecular filter.” Appropriate correction is required.
Claim Interpretation
Applicant is reminded that “[u]nder a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms.” Phillips v. AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327. In the instant case, activating has been interpreted as “heating…up to 1200° C. till calcination but without melting to increase the surface area of the substrate” [paragraph 0016 of the published application] and functionalization has been interpreted as “any of the techniques such as electrolysis, electroless deposition by oxidation-reduction reaction, extrusion techniques and combinations” [paragraph 0020 of the published application].
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 1-16 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.
With respect to claim 1, the preamble of said claim recites “[a] method of making an active molecular filter, the method comprising:…” However, none of the steps in the method result in the production of a molecular filter, let alone, an active molecular filter. Instead, the method prepares a molecular filter media. Therefore, the metes and bounds of the claimed invention cannot be determined because it is not clear if the method includes the actual making of an active molecular filter or not. See, also, claim 13 which recites “[t]he filter of claim 12…,” where claim 12 depends from claim 1 and claim 12 is concerned with a binder but does not appear to actually produce a filter.
The term “high” in claim 2 is a relative term which renders the claim indefinite. The term “high” 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. High means situated or passing above the normal level, surface, base of measurement, or elevation. It is unclear what the normal level, surface, base of measurement, or elevation is; therefore, the metes and bounds of the claimed invention cannot be determined.
Claim 13 recites a melt flow rate. Melt flow rate is a measurement used to assess the flowability or melt viscosity of a resin or polymer. It provides an indication of how easily a resin or polymer can be processed through different processes. It is defined as the weight of the resin or polymer in grams flowing in 10 min through a die of specific diameter and length by a pressure applied by a given weight at a given temperature. In the instant case, it is unclear what pressure and temperature corresponds to the recited melt flow rate. Thus, it may be the case that any resin or polymer may meet the required melt flow rate depending on the pressure and temperature applied.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation “inorganic molecule,” and the claim also recites “a metal,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 recites “…the impregnate functionalizes the porous substrate…” It is not clear how an impregnate may electrolyze, electrolessly deposit by oxidation-reduction reaction, or extrude a substrate on its own, without anything else taken into consideration. Therefore, the metes and bounds of the claimed invention cannot be determined.
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.
Claim(s) 1-3, 5-9, and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis et al (US 5,685,898).
Examiner’s note: Applicant is reminded that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” In re Burhans, 154 F.2d 690, 69 USPQ 330. Indeed, the instant application discloses “[t]he invention discloses a process, for making metal-impregnated block filter, comprising the steps of contacting the substrate let us say the ceramic powders with salts or elements of silver, zinc, and/or copper optionally in the presence of reducing agents, to form an aqueous mix, followed by mixing the said mix with a binder, having melt flow rate between 2-5 g/10 min to form a bonded mixture. Further, the bonded mixture is added to a mold and the mold with the bonded mixture is heated to a temperature in the range of 150 to 950o C. in order to obtain a block filter in the mold” [paragraph 0045 of the published application]. Clearly, in the preceding disclosure heating (i.e., activating) occurs after functionalizing by mixing with an impregnate, in this particular case, “salts or elements of silver, zinc, and/or copper optionally in the presence of reducing agents.”
With respect to claims 1, 3, 5-6, 8-9 and 14, Dupuis et al discloses “Tested substrates:
Ceramics, A2O3 [i.e., Al2O3—Examiner’s insertion—A2O3 is clearly a misprint as evidenced by the tested substrates in column 6, line 33-34] and plastics (epoxy, polycarbonate, polyimide, PVC).
Application of the resin:
The resin is coated onto the substrate by means of a brush. The whole is dried with a thermoventilator. The drawing is then metallized with a copper or nickel deposition by immersing the sample in an autocatalytic copper or nickel bath.
It will be noted that in case of direct metallizations, an activation of the resin after having coated it onto the substrate is recommended for copper deposition, this activation may be thermal (250o C.)…or chemical (steeping the substrate with the resin in a 20% by weight sodium hypophosphite solution heated to 80o C.)” [column 6, line 60 to column 7, line 7]. Obviously, the Al2O3 corresponds to the recited substrate of the instant application; the copper or nickel corresponds to the impregnate; the hypophosphite corresponds to the reducing agent; and the direct metallization in an autocatalytic bath corresponds to an electroless deposition-type of functionalization. Since hypophosphite is well known in the art for reducing metal salts in electroless deposition (or plating) processes, its use in thermal activation at 250o C would also have been obvious.
With respect to claim 2, the teaching of a ceramic substrate renders obvious the silica molecular sieve.
With respect to claim 7, the teaching of a copper or nickel bath suggests the presence of a solvent.
With respect to claim 12, the aforementioned resin corresponds to the recited binder.
With respect to claim 13, it appears said claim is a product-by-process claim. Applicant is reminded that “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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. Additionally, “[t]he structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.” See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223. In the instant case, the recited melt flow rate does not appear to affect the structure or impart distinctive structural characteristics to the claimed filter. Consequently, the product of Dupuis et al appears to be the same or similar to the filter of the instant claim.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cumberland (US 2005/0242041).
Cumberland discloses “Silver Impregnated, Alumina Coated Materials And Filtration Systems Implementing Same” [title], wherein “the substrate material is activated carbon (e.g., granular activated carbon (GAC), powdered activated carbon, bound carbon, composites, agglomerates, etc.), the cationic polymer being adhered to the activated carbon” [paragraph 0023] and “[a]fter draining and drying the modified substrate with polymer, the modified substrate with polymer are washed with a silver nitrate (AgNO3) solution followed by filtration and drying, resulting in a cationically charged material that has an Al-Cl-Ag complex in proximity to its outer surface. The resultant material is a cationically charged material having an overall positive (cationic) surface charge. The cationically charged material can then be used as is in pour-through filtration applications. The cationically charged material can also be ground, mixed with a binder, and heated to form a porous filter block for pressurized filtration systems…A preferred method of making a block-type filter is by mixing, heating, and compressing particles of cationically charged material (e.g., modified activated carbon) and particles of binder in a mold of the desired shape to encourage binding and to adjust the pore size.” [paragraphs 0051-0052 & 0055]. The heating corresponds to the baking of instant claim 13.
With respect to the limitation “wherein the impregnate functionalizes the porous substrate,” said limitation appears to be a process limitation by which the filter is made. Applicant is reminded that “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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. So, while Cumberland may not explicitly teach any of electrolysis, electroless deposition by oxidation-reduction reaction, or extrusion, it is the position of the Office that the product of the reference is materially the same as the filter of the instant application and such would have been obvious to one of ordinary skill in the art, absent evidence to the contrary.
Allowable Subject Matter
Claims 4 and 10-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to claim 4, a temperature of 250o C is not sufficient to increase the surface area of ceramics including alumina; with respect to claims 10 and 11, Dupuis et al does not reach the required extrusion and electrolysis, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Klaerner et al (US 2020/0306209), which discloses “the ceramic material comprises a silica molecular sieve” [paragraph 0887].
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
11 July 2026
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