DETAILED ACTION
This action is in response to the amendments and remarks filed 08/27/2025, in which claim 1 has been amended and claims 1-15 are pending and ready for examination.
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 7-9 and 12-14 are rejected under 35 U.S.C. 112(b) 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 7 recites the limitation “where the second layer is a wet laid nonwoven comprising up to 20 % by weight glass microfibers”. “a wet laid nonwoven” conflicts with the wetlaid nonwoven of claim 1. It is suggested that it be corrected to “where the second layer comprises up to 20 % by weight glass microfibers”.
Claim 8 recites the limitation “a resin”, this conflicts with the “a resin” of claim 1. It is suggested that it be corrected to “the resin”
Claim 12 recites the limitation “wherein the nonwoven substrate of the second layer comprises cellulose, synthetic fibers, or a mixture thereof.” It is unclear if the synthetic fibers are in additional to the cellulose fibers are required by claim 1.
Claim 14 recites the limitation “a resin”, this conflicts with the “a resin” of claim 1. It is suggested that it be corrected to “the resin”
Claims 8-9, 13 are rejected for depending from an indefinite claim.
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 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.
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.
Claims 1-4 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over S.Sh. Homaeigohar, K. Buhr, K. Ebert, Polyethersulfone electrospun nanofibrous composite membrane for liquid filtration, Journal of Membrane Science, Volume 365, Issues 1–2, 2010, Pages 68-77 (hereinafter “Homaeigohar”) in view of US 2012/0061332 Al (hereinafter “Kas”) and US 2011/0079553 A1 (hereinafter “Thompson”).
Regarding Claim 1 and 7 Homaeigohar discloses a filter element (Fig. 2) comprising a filtration media for use in fluid filtration applications, wherein the filtration media comprises:
a first layer on an upstream side of the self-cleaning filtration media, the first layer comprising polyethersulfone nanofibers having a diameter of 260±110 nm (i.e. 150-370 nm); and
a second layer (which is a supporting layer, see Sec. 3.2. and 4) on a downstream side of the self-cleaning filtration media, the second layer comprising a PET nonwoven substrate; and
wherein the first layer is coated onto the second layer (electrospun directly onto), and an upstream surface of the filter element is a surface of the first layer; Abstract, Introduction, Sec. 2.2., Table 2.
With specific regard to the PES nanofiber first layer being on the upstream side of the second supporting layer, it is disclosed that the PET nonwoven is disclosed as a “sub-layer” and the particles when filtered accumulate on the surface of the nanofibers as the uppermost layer (see Fig. 13 and 3.3.3. Retention tests with particle suspensions ), and therefore the nanofiber layer must be the upstream layer and/or would have been obvious to make the upstream layer.
Homaeigohar does not disclose the second layer consisting of a wet laid nonwoven substrate consisting of cellulose fibers in the range of 80 to 100% by weight of the total weight of the second layer, 0-20% by weight of glass fibers by weight of the total weight of the second layer and optionally a resin in the range of 10-25% by weight of the supporting laver wherein the total weight percent of the cellulose fibers, the glass fibers, and the optional resin totals 100 weight percent of the total weight of the second layer.
However, with regard to the supporting layer, it is disclosed that the nanofibers are spun directly onto a stronger more rigid support in order to reduce problems with handling the nanofiber mats due to electrostatic charges during the electrospinning and uses a PET nonwoven, but does not disclose as specific reason for choosing the PET nonwoven, or the details of said PET nonwoven and therefore it is seen as obvious to substitute other nonwovens as there is no criticality to the PET nonwoven chosen (1. Introduction),
Further Kas discloses a similar composite nanofiber layer filter medium (Abstract), wherein the nanofibers may be made of polyether sulfone [0054]-[0055], and the porous supporting substrate may be made of various materials including nonwovens or paper [0061], wherein the nanofibers and the substrate are bonded to each other via heated means [0062]-[0068]. Thus the nanofibers would be expected to bond to paper in the heat treatment, such as disclosed by Homaeigohar.
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Homaeigohar by substituting for the supporting layer a porous paper substrate as disclosed by Kas because this involves the simple substitution of known porous supporting layers for a PES nanofiber layer to obtain the predictable result of forming a successful supported PES nanofiber layer filtration media.
Kas is silent to the composition of the paper.
However, Thomson discloses a nonwoven filtration media which may include a mixture of microglass fibers with synthetic fibers, where the synthetic fibers may be “at least about 50 wt%” to and including 100% of the mixture [0055] with the reminder microglass and wherein the synthetic fibers including regenerated cellulose [0056], and may additionally include wood pulp cellulose [0058], and which may include a binder resin in the nonwoven filter media in an amount of less than about 10 wt% binder [0059]-[0060] and wherein the nonwoven may be formed by wetlaid processes , [0089],[0096]. Thus the media may comprise a wetlaid non-woven of 100 wt% cellulose fibers.
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Homaeigohar in view of Kas by substituting for the paper supporting layer the cellulose wet laid nonwoven media as disclosed by Thomson because this involves the simple substitution of known porous paper filtration material for another to obtain the predictable result of successful paper supported filtration media formation.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Note: With regard to the filtration media being “self-cleaning” or “for use in hydrocarbon fluid filtration applications” this is a functional limitation which is not limiting because the structure disclosed by Homaeigohar in view of Kas and Thomson would be capable of “self-cleaning” or “for use in hydrocarbon fluid filtration applications”; Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114).
Regarding Claims 2-3 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the polyethersulfone nanofibers have a diameter of 260±110 nm (i.e. 150-370 nm); Table 2.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 4 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the polyethersulfone nanofibers of the first layer are electrospun onto the second layer, Introduction, Sec. 2.2.
Regarding Claim 8 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the wet laid nonwoven may further comprise a binder resin a binder resin in an amount of less than about 10 wt% of the nonwoven Thomson [0059]-[0060]. The range of “less than about 10 wt%” is seen to overlap with the range claimed that stars at 10 wt% because “about 10 wt%” is seen to include values slightly over 10 wt%.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 9 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the second layer may comprise 0 to 50 wt% glass microfibers; Thomson [0055].
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 10 Homaeigohar discloses the filter element of claim 1, which is inherently chemically resistant to gasoline, petroleum, alcohols, engine oil, and transmission oil due to the PES and cellulose materials inherent properties; see MPEP 2112.02.
Regarding Claim 11 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the nonwoven substrate of the second layer may be 100 wt% synthetic/cellulose fibers Thomson [0055], and thus no glass fibers.
Regarding Claim 12 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the nonwoven substrate of the second layer comprises cellulose, supra.
Regarding Claim 13 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the nonwoven substrate of the second layer is that disclosed by Thomson which is disclosed to have a basis weight of from 20-200 gsm, [0064].
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 14 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the wet laid nonwoven may further comprise a binder resin a binder resin in an amount of less than about 10 wt% of the nonwoven Thomson [0059]-[0060]. The range of “less than about 10 wt%” is seen to overlap with the range claimed that stars at 10 wt% because “about 10 wt%” is seen to include values slightly over 10 wt%.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Homaeigohar in view of Kas and Thomson further in view of WO 2012/088205 A1 (hereinafter “Guckert”).
Regarding Claim 5 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, but does not disclose (claim 5) wherein the polyethersulfone nanofibers comprise an electrospun blend of polyethersulfone and an adhesive. Or (claim 6) wherein the adhesive is blended with the polyethersulfone in an amount of 1 % to 5 % prior to electrospinning the first layer.
However Guckert discloses a similar filter media comprising a first, nanoweb layer comprising polyethersulfone nanofibers (P2/L1-15); disposed on a second, substrate/scrim layer, the second layer comprising a nonwoven substrate (P5/L27-29; P8/L7-14); wherein the nanofibers comprise an electrospun blend of polyether sulfone and a further polymer i.e. which may be considered an adhesive, in an amount including 1-5% (P6/L11-21) and as the fibers may be of blended composition it must necessarily occur before electrospinning of the layer.
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Homaeigohar in view of Kas and Thomson by substituting for the nanofiber layer one as disclosed by Guckert having an electrospun blend of polyether sulfone and a further polymer because this involves the simple substitution of known PES nanofiber layers disposed on a support for another to obtain the predictable result of successful supported filtration media formation.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Homaeigohar in view of Kas and Thomson further in view of US 2004/0203306 A1 (hereinafter “Grafe”).
Regarding Claim 15 Homaeigohar in view of Kas and Thomson discloses the filter element of claim 1, wherein the self-cleaning filtration media has a stiffness of at least 7,000 mg when measured according to TAPPI T489 om-92.
However Grafe discloses that typical stiffness values for filter media are about 350-12,000 mg according to TAPPI T-543 om-00; [0062], [0065].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of Homaeigohar in view of Kas and Thomson by forming the media to have a stiffness of from 350-12,000 mg according to TAPPI T-543 om-00 as disclosed by Thomson because this is a stiffness known to make functional filtration media.
While the testing standard is “TAPPI T-543 om-00” and not the “TAPPI T489 om-92”, they are similar test for the same stiffness values and are thus seen to be equivalent and/or close enough that the range disclosed would still overlap the range claimed. Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,023,610 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US‘610 anticipate the instant claims 1-12 and 14 as they contain all of the noted limitations.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,023,610 B2 in view of Thompson.
Claims 13 additionally recites wherein the nonwoven substrate of the second layer has a basis weight in a range of between 75 gsm and 200, which is not disclosed by the claims of US’610.
However Thomson discloses it is known to uses a basis weight of from 20-200 gsm [0064] in nonwoven filters, i.e. which may be used to support.
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of US’610 by using a basis weight of from 20-200 gsm as disclosed by Thomson because this involves the use of known functional basis weight for a nonwoven filter to obtain the predictable result of a functional filter.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,023,610 B2 in view of Grafe.
Claim 15 wherein the self-cleaning filtration media has a stiffness of at least 7,000 mg when measured according to TAPPI T489 om-92, which is not disclosed by the claims of US’610.
However Grafe discloses that typical stiffness values for filter media are about 350-12,000 mg according to TAPPI T-543 om-00; [0062], [0065].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the filter media of US’610 by forming the media to have a stiffness of from 350-12,000 mg according to TAPPI T-543 om-00 as disclosed by Thomson because this is a stiffness known to make functional filtration media.
Response to Arguments
Applicant's arguments filed 08/27/2025 have been fully considered and they are persuasive with regard to the previous 102 rejections, but they are not persuasive with regard to the combination of Homaeigohar and Thompson.
In response to Applicants’ argument that substitution of the cellulose filter of Thompson for the PET supporting layer in the composite membrane of Homaeigohar would change the principle of operation of Homaeigohar’s membrane and is therefore not obvious; the Examiner disagrees. Applicants argue that Homaeigohar requires the use of PET in order for the heat treatment of the nanofibers and the supporting layer to be successful in bonding the two layers together, arguing that “there is no expectation that the PES would bond to cellulose or glass in the absence of Homaeigohar' s PET”. However, with regard to the heat treatment, Homaeigohar discloses that the heat treatment is directed toward the PES nanofibers, and makes no mention of the criticality of PET other than as a surface for the nanofibers to attach to, and is silent to the PET itself being changed by the heat treatment, specifically disclosing“[t]he selected temperature is above the boiling point of the solvent (TB(DMF) = 153 ◦C) and below the glass transition temperature of PES (225 ◦C)” (Sec. 2.4.), “a heat treatment approach was adopted to enhance the interfacial stability of the ENMs” , which causes “diffusion of the solvent to the surface of the nanofibers” such that “local re-dissolution of the PES occurs” (sec. 3.2.). Thus the PET is not disclosed to be critical to achieving the bond, no specific requirement or consideration of the substrate is disclosed by Homaeigohar. As further evidence that one of skill in the art would expect heat treatment to bond the PES nanofibers to a cellulose substrate, Kas discloses a similar composite nanofiber layer membrane, wherein the nanofibers may be made of polyether sulfone, the substrate may be made of paper, and they are bonded to each other via heated means. Thus one of skill in the art would expect that the heat treatment of Homaeigohar would still provide bonding and the other benefits of the heat treatment when substituting the cellulose substrate of Thompson, and it would therefore not change the principle of operation, and the combination is seen as proper.
The claims remain rejected under Double Patenting because the Terminal Disclaimer filed was disapproved.
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The person who signed the terminal disclaimer is not the applicant, patentee or an attorney or agent of record. See the Terminal Disclaimer Review Decision date 09/10/2025.
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.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773