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
Claims 17-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/18/2026.
Applicant argues that there is no burden to the Examiner to examine all groups of claims together.
However, the withdrawn claims are a method of making a membrane and a method requiring use of the filter wherein the scope of the claims for patentability are extremely different. The membrane claim itself does not require any process steps and can be found in a variety of art areas that are not specific to the use of the membrane or the method of making the membrane. The methods are different methods that are not related other than requiring a membrane material. The patentability of each group of claims is determined differently. Should the membrane be found allowable, reconsideration of restriction will be given.
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 4 and 10 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 4: it is unclear what “conformally disposed” means. The disclosure was consulted but no further definition or explanation is provided. It is unclear what structure is required to meet this limitation.
Claim 10: it is unclear what the permeability is of, i.e. air, water, etc.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 3, 5, 6, 8, 28, and 29 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhengming et al. (EP3743953).
Claim 1, 4, 5, 6, 8, and 29: Zhengming et al. teach a filter media comprising: a porous substrate (page 32, lines 6-10; fig. 13, 24) comprising a non-reactive base polymer including polypropylene (page 33, lines 4-14); a reactive polymer disposed on at least a portion of the base polymer (page 52, lines 10-25; Fig. , 26), the reactive polymer having a surface energy that is higher than a surface energy of the non-reactive base polymer (PMMA at least has a higher surface energy than PP); and a compound comprising a metal disposed on at least a portion of the reactive polymer (Fig. 13, 28; page 52, titanium dioxide).
Claim 2: The porous substrate may be a fibrous material (page 34, lines 10-13).
Claim 3: the porous substrate comprises a membrane (Claims 5-6)
Claim 16: Zhengming et al. teach a filter media comprising: a porous substrate (page 32, lines 6-10; fig. 13, 24) comprising a non-reactive base polymer including polypropylene (page 33, lines 4-14); a reactive polymer disposed on at least a portion of the base polymer (page 52, lines 10-25; Fig. , 26), the reactive polymer having a surface energy that is higher than a surface energy of the non-reactive base polymer (PMMA at least has a higher surface energy than PP); and a compound comprising a metal disposed on at least a portion of the reactive polymer (Fig. 13, 28; page 52, titanium dioxide). They also teach a housing for housing the separator (page 55, 10-18).
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 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhengming et al. (EP3743953) in view of Lehmann et al. (Chem 8, 1611–1636, June 9, 2022 ª 2022 Elsevier Inc.)
Claims 7 and 15: Zhengming et al. do not teach an oleophobic polymer for the substrate or an expanded non-reactive base polymer.
Lehmann et al. teach that ePTFE (expanded PTFE) is commonly used in fuel cell membranes (page 1631, last paragraph). ePTFE has high heat resistance and improves durability. As such, one of ordinary skill in the art at the time of the invention would have found it obvious to try substituting Zhenming et al.’s base polymer with ePTFE, which is expanded and inherently oleophobic.
Claims 9, 10, 11, 12, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Zhengming et al. (EP3743953).
Claim 9: Zhenming et al. do not teach the amount of metal compound in the filter media as tested by the TGA Test Method.
Zhenming et al. teach that the amount of metal particles is a result effective variable that is optimized based on the amount of binder and the amount of exposure of particle desired (page 15, lines 19-28). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 10: Zhenming et al. do not teach the permeability as recited in Claim 10. The permeability of a separator is well-known to be a result effective variable that is optimized to control the function of the separation. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claims 11 and 12: Fig. 13 shows a thickness of the membrane. The metal compound is within and on 26. While not determined by “elemental analysis” of the cross-section it appears to be the same as claimed.
Claims 13 and 14: Zhengming et al. do not teach a plurality of regions of reactive polymer and the metal compound. However, they teach there may multiple layers (page 32, lines 6-11). As such, the mere duplication of layers to form additional “regions” is envisaged and does not critically change the form of the invention. Providing additional elements is obvious to make the filter larger and have more capacity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773
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