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 .
Claim Status
The Amendment filed on 21 August 2024 has been entered; claims 1 and 3-20 remain pending.
Claim Objections
Claim 19 is objected to because of the following informalities: regarding claim 19, it is missing a period. Appropriate correction is required.
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.
Claims 1, 3-6, and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wertz et al. (U.S. Patent Publication # 2011/0259813) in view of JP # 2004529753 A, hereinafter “Wertz” and “JP (‘753)”.
With respect to claims 1, 6, 9, 10, 15, 16, and 18-20, Wertz teaches a filter media comprising multiphase layer 20 comprising phase layers 22 and 24 (“third layer” and “first layer”, respectively) and layer 30 (recited “second layer”), wherein layer 30 (“second layer”) is formed from fibers having an average fiber diameter less than 1 micron (see Paragraph [0079]), and an adhesive (intermediate layer 40 or “fifth layer” that is meltblown) (see Paragraphs [0090, 0094-0096]) between the first layer and the second layer, wherein the first layer is bonded to the second layer by the adhesive, wherein a bond (peel) strength between the first and second layers is greater than 1.5 ounces per inch of width or 42.5 g per inch of width (Paragraph [0095]), wherein the adhesive comprises a moisture curable polyurethane (“crosslinked material” crosslinked by water as the agent, “contains water”) (Paragraph [0090]) or a resin comprising a polymer having a glass-transition temperature of less than or equal to 24 °C including polyethylene and polypropylene (see Abstract; Paragraphs [0076-0079, 0090, 0093, 0095]; Fig. 3).
Wertz teaches peel strength in units of ounces (or grams upon conversion)/inch of width, and therefore does not specifically teach a bonding strength in grams per square inch (unit area); however, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
Wertz teaches that layer 20 (comprising the “first layer”) has an average pore size ranging from 3 to about 1,000 micron (Paragraph [0062]), overlapping “greater than or equal to 0.5 microns and less than or equal to 100 microns”.
Wertz and the claims differ in that Wertz does not teach the exact same proportions for the mean flow pore size for the first layer as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in mean pore size taught by Wertz overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Wertz, particularly in view of the fact that; “The normal desire of scientists or artisans to improve
upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Wertz does not specifically teach a stiffness of greater than or equal to 50 mg for the filter media.
JP (‘753) teaches a filter media having a stiffness of 200 to 3500 mgs (Abstract), meeting the limitations “greater than or equal to 50 mg” of claim 1 and “greater than or equal to 200 mg” as recited in claim 20.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the property of stiffness of JP (‘753) to the filter media of Wertz because both references teach gas filtration media that can be pleated (see Abstract of JP (‘753) and Paragraphs [0142, 0148] of Wertz), and because JP (‘753) teaches that the disclosed stiffness is required to form a holdable pleat (Paragraph [0016]).
With respect to claim 3, Wertz in view of JP (‘753) teaches that layer 30 (“second layer”) is formed via liquid electrospinning (“solvent-spun fibers”) (see Wertz: Paragraph [0]).
With respect to claim 4, Wertz in view of JP (‘753) teaches that the fibers of the second layer are formed via liquid electrospinning (see Wertz: Paragraph [0077]).
With respect to claim 5, Wertz in view of JP (‘753) teaches wet laid processes for forming the filter media, including layer 20 which includes “first layer” 24 (see Wertz: Paragraph [0069, 0149]).
With respect to claim 11, Wertz in view of JP (‘753) teaches that the adhesive is present at less than 10 gsm (see Paragraph [0093] of Wertz).
With respect to claims 12-14, Wertz in view of JP (‘753) teaches a scrim (“fourth”) layer, formed by spinning techniques (see Wertz: Paragraphs [0098, 0099]). With regard to “solvent-spun”, “electrospun”, and “centrifugal spun”, Wertz teaches that the scrim is a polymeric layer which is a spunbond or carded nonwoven material, as examples. Since Applicant has not provided any criticality in fibers (i.e., diameter, length, etc.) produced by different methods for the recited fourth layer, and Wertz teaches that the scrim layer is a polymeric non-woven layer (i.e., encompassing all methods of production), the limitations of claims 13 and 14 are considered to be rendered obvious.
Regarding claim 17, Wertz in view of JP (‘753) renders the filter material of claim 1 obvious, as discussed above; therefore, the recited gamma value is considered be met as an inherent property. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Wertz et al. (U.S. Patent Publication # 2011/0259813) in view of JP # 2004529753 A as applied to claim 1, and further in view of Sanders et al. (U.S. Patent Publication # 2016/0256806), hereinafter “Wertz”, “JP (‘753)”, and “Sanders”.
With respect to claims 7 and 8, Wertz in view of JP (‘753) does not specifically teach that layer 20 (wherein sublayer 22 is the “third layer”) is meltblown.
Sanders teachers a charged meltblown prefilter layer which filters particulates from fluid upstream from a nanofiber web (Abstract; Paragraph [0065]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace or modify one of the sublayers of layer 20 of Wertz in view of JP (‘753) with the charged meltblown layer of Sanders in order to gain the advantage of removing larger particulates prior to the nanoweb layer, a feature that Sanders shares with Wertz (layer 30 of Wertz).
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 and 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 10898838, claims 1-22 of U.S. Patent No. 11484821, and claims 1-20 of U.S. Patent No. 12017169 in view of Wertz. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 encompasses the scope of claim 1 of Patent (‘838).
With respect to instant claim 1, claim 1 of Patent (‘838) teaches a filter media, comprising: a first layer; a second layer, wherein the second layer is formed of fibers having an average fiber diameter of less than 1 micron; an adhesive between the first layer and the second layer, wherein the first layer is bonded to the second layer by the adhesive, wherein the filter media has a stiffness of greater than or equal to 200 mg, wherein a bond strength between the first and second layers is greater than or equal to 150 g/in2.
Patent (‘838) does not specifically claim a mean flow pore size as recited in instant claim 1; however, Wertz teaches an average pore size ranging from 3 to about 1,000 micron (Paragraph [0062]), overlapping “greater than or equal to 0.5 microns and less than or equal to 100 microns”.
Patent (‘838) in view of Wertz and the claims differ in that Wertz does not teach the exact same proportions for the mean flow pore size for the first layer as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in mean pore size taught by Wertz overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Wertz, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003). It would have been obvious to the ordinary artisan to modify the first layer of Patent (‘838) with the pore sizes taught by Wertz in order to achieve high dust particle capture (see Abstract).
Claims 1 and 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11484821 in view of Wertz. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 encompasses the scope of claim 1 of Patent (‘821).
With respect to instant claim 1, claim 1 of Patent (‘821) teaches a filter media, comprising: a first layer; a second layer, wherein the second layer is formed of fibers having an average fiber diameter of less than 1 micron; an adhesive between the first layer and the second layer, wherein the filter media has a stiffness of greater than or equal to 200 mg, wherein a bond strength between the first and second layers is greater than or equal to 150 g/in2.
Patent (‘821) does not specifically claim a mean flow pore size as recited in instant claim 1; however, Wertz teaches an average pore size ranging from 3 to about 1,000 micron (Paragraph [0062]), overlapping “greater than or equal to 0.5 microns and less than or equal to 100 microns”.
Patent (‘821) in view of Wertz and the claims differ in that Wertz does not teach the exact same proportions for the mean flow pore size for the first layer as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in mean pore size taught by Wertz overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Wertz, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003). It would have been obvious to the ordinary artisan to modify the first layer of Patent (‘838) with the pore sizes taught by Wertz in order to achieve high dust particle capture (see Abstract).
Claims 1, and 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12017169 in view of Wertz and JP (‘753). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 encompasses the scope of claim 1 of Patent (‘169).
With respect to instant claim 1, claim 20 of Patent (‘169) teaches a filter media, comprising: a first layer; a second layer, wherein the second layer is formed of fibers having an average fiber diameter of less than 1 micron, and wherein the second layer comprises synthetic fibers; and an adhesive between the first layer and the second layer, wherein the first layer is bonded to the second layer by the adhesive, wherein the filter media has a stiffness of greater than or equal to 200 mg.
Patent (‘169) does not specifically claim a mean flow pore size as recited in instant claim 1; however, Wertz teaches an average pore size ranging from 3 to about 1,000 micron (Paragraph [0062]), overlapping “greater than or equal to 0.5 microns and less than or equal to 100 microns”.
Patent (‘169) in view of Wertz and the claims differ in that Wertz does not teach the exact same proportions for the mean flow pore size for the first layer as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in mean pore size taught by Wertz overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Wertz, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003). It would have been obvious to the ordinary artisan to modify the first layer of Patent (‘838) with the pore sizes taught by Wertz in order to achieve high dust particle capture (see Abstract).
Patent (‘169) does not specifically teach wherein a bond strength between the first and second layers is greater than or equal to 150 g/in2.
JP (‘753) teaches a filter media having a stiffness of 200 to 3500 mgs (Abstract), meeting the limitations “greater than or equal to 50 mg” of claim 1 and “greater than or equal to 200 mg” as recited in claim 20.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the property of stiffness of JP (‘753) to the filter media of Patent (‘169)/Wertz in order for the filtration media to have desirable strength during use (Paragraph [0016] of JP (‘753)).
Conclusion
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 17 July 2026
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