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Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, method of making and method of using, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 16, 2026.
Applicant’s election without traverse of Claims 1-8 and 14-16 in the reply filed on April 16, 2026 is acknowledged.
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, 14 and 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.
Claim 7 contains the limitation “preferably.” It is unclear if this limitation further limits the claimed invention. In efforts to further the prosecution this limitation is interpreted as optional.
Claim 14 contains the limitation “home compostable.” It is unclear as to what is required in order to be compostable in a home setting. In efforts to further the prosecution the limitation will be interpreted as compostable.
Claim 16 contains the limitation “the largest pores have a minimum pore size of from 50 to 120 micrometers.” It is unclear if this requires a minimum for the largest pores, and if so, how many pores are required to meet this threshold, or if it requires a maximum for the largest pores. In efforts to further prosecution and in view of the originally filed claim 3, the limitation will be interpreted as referring to a maximum value.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 5-8, 14 and 15 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over DE 19931402 A1 to Schroft.
Regarding Claims 1, 5-8, 14 and 15
Schroft teaches a compostable filter material for liquids wherein the filter material is a heat sealable thermoplastic-impregnated cellulosic nonwoven having an air permeability according to ISO 9237 of 500 to 3000 L/m2s which overlaps the claimed range of 50 to 1,000 L/m2s (Schroft, abstract, page 6 ,lines 24-26, 29-38, 55-60, claim 5). Schroft teaches that the cellulosic nonwoven comprises cellulose based fibers, and the thermoplastic binder is a compostable binder such as polyurethane (Id., page 5, lines 46-51). Schroft teaches that the cellulose nonwoven comprises a basis weight of between 8 and 40 g/m2 and the thermoplastic binder comprises a basis weight of between 1 and 15 g/m2 resulting in a total basis weight of between 9 and 55 g/m2 which overlaps the claimed range of between 20 and 90 g/m2 (Id., Claims 5 and 6).
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Claim Rejections - 35 USC § 103
Claim(s) 2-3 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schroft as applied to claims 1, 5-8, 14 and 15 above, in view of US Pub No. 2009/0324926 to Luo.
Regarding Claims 2-3 and 16
Schroft does not appear to teach the pore sizes of the filter material. Therefore, it would have been necessary and obvious for one of ordinary skill in the art at the time the invention was made to look to the prior art for exemplary pore sizes used in filtration applications. Luo provides this conventional teaching, showing a cellulosic filter material having a mean diameter of 5 to 30 micrometers which overlaps the claimed range of between 10 and 60 micrometers, a maximum pore diameter of between 20 and 70 micrometers which overlaps the claimed range of between 50 and 120 micrometers (Luo, abstract, paragraphs [0002], [0028], [0034]-[0035]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to form the filter of Schroft, and to use the specific pore sizes, such as within the claimed ranges, as taught by Luo, motivated by the desire to form a conventional filter comprising pore sizes which are known in the art to be predictably suitable for use in biodegradable, high performance air and liquid filtration applications.
Regarding Claim 4
The prior art combination does not appear to teach a minimum pore size. However, it should be noted that the minimum pore size is a result effective variable. As minimum pore size increases, the material exhibits increased liquid flow rate and permeability. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the minimum pore diameter since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the minimum pore diameter in order to achieve the desired filtration flow rate and permeability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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, Jennifer Chriss can be reached at 5712727783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VINCENT TATESURE/Primary Examiner, Art Unit 1786
Prosecution Insights