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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 57, 58, 105, 111, 114, and 115 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 57 has been amended to add the limitation “wherein the polymeric scrim layer has a basis weight of less than 0.1 ounces per square yard”. New claim 115 includes the same limitation. Applicant argues that paragraph [0130] of the specification supports this limitation. The examiner respectfully disagrees. Paragraph [0130] discloses an example where the PTFE layer has a basis weight of 0.054 oz/yd2. This paragraph notes the basis weight of the substrate or scrim layer is shown in Table 1, which is 1.8 or 2.1 ounces per square yard depending on the example. Paragraph [0041] further discloses ranges for the basis weight of the scrim layer. The scrim is described to have a basis weight of less than 1.5 or 2.0 ounces per square yard. The scrim, however, is also recited to have a basis weight of greater than 0.5 ounces per square yard. Given the ranges recited in paragraph [0041], these limitations are considered to be reciting different end points for the range, such that the basis weight can be between 0.5 and 1.5 or 2.0 ounces per square yard. The broad disclosure of a scrim having a basis weight of less than 1.5 or 2.0 ounces per square yard is not considered to be sufficient to provide support for the limitation requiring a basis weight of less than 0.1 ounces per square yard. Claims 58, 105, 111, and 114 depend from claim 57 and are rejected for the same reason as claim 57.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 6, 7, 22, 24, 25, 28, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over DE 102010014060 to Disson et al. (hereinafter referred to as Disson) in view of US Patent No. 8,986,432 to Wertz et al. (hereinafter referred to as Wertz), and further in view of US Patent Application Publication No. 2020/0030734 to Hara et al. (hereinafter referred to as Hara) and/or US Patent Application Publication No. 2018/0236747 to DeNoia et al. (hereinafter referred to as DeNoia).
In regard to claims 1, 2, and 6, as shown in figures 1 – 3 and 8, Disson discloses a filtration media pack (3). As shown in the figures, the media pack (3) includes a plurality of layers of single facer media that comprise a fluted sheet (6), a facing sheet (5), and a plurality of flutes (7, 8) extending between the fluted sheet (6) and the facing sheet (5), and having a flute length extending from a first face (12) of the filtration media pack to a second face (10) of the filtration media pack. A first portion (8) of the flutes are closed to unfiltered fluid flowing into the first portion, and a second portion (7) of the flutes are closed to unfiltered fluid flowing out of the second portions of the flutes so that fluid passing into one of the first face or the second face of the media pack and out of the other of the first face or second face of the media pack passes through media to provide filtration of the fluid. As shown in figures 3 and 8, the fluted sheet (6) and the facing sheet (5) are formed of multi-layer media having a membrane layer (16) and a scrim layer (17). As discussed in paragraph [0014], the membrane layer can be a PTFE layer. The scrim layer can be a polymeric scrim layer, as discussed in paragraph [0012].
Disson discloses the scrim layer can be made of polyester fiber, as discussed in paragraph [0012]. Disson does not specifically disclose the polymeric scrim having spunbond fibers. Wertz discloses a similar filter media (10) having a scrim layer (12) and a melt-blown layer (16) that can be formed of PTFE, as discussed in column 9 line 30 – column 10 line 27. As discussed in column 9 lines 3 – 8, Wertz discloses using a scrim that is a spunbond polyester nonwoven material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson to form the scrim having spunbond polyester fibers as suggested by Wertz as this is a well-known polyester material for use as a scrim in a filter media.
The combination of Disson and Wertz discloses a spunbond scrim having all of the required features except for the fiber diameter standard deviation, and the minimum and maximum fiber diameter. As discussed in paragraph [0012], Disson discloses a fiber diameter of greater than 10 microns. Hara discloses a filter media (1) with a pre-collection layer (10). As discussed in paragraph [0118], this layer preferably has a fiber diameter standard deviation of 2.5 or less. A large standard deviation is disclosed to increase the proportion of fibers having a low collection efficiency per unit fiber. DeNoia discloses an abrasive wipe having a similar spunbond base layer, or scrim. As discussed in paragraphs [0038], [0043], and [0047], it is known form a spunbond layer with a similar diameter to have a fiber diameter standard deviation of around 1 to 1.3 microns.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson and Wertz to form the scrim with a fiber diameter standard deviation of 1 to 3 microns as suggested by Hara and/or DeNoia as a standard deviation in this range is known for spunbond layers and can achieve better collection efficiency for the layer.
None of the references specifically disclose minimum or maximum diameter for the fibers of the scrim layer. Predictably, fibers that are too large or too small affect the structure of the scrim layer. As discussed above, Hara suggests a large standard deviation increases the proportion of fibers having a low collection efficiency per unit fiber. Thus, one of ordinary skill in the art would reasonably expect that more fibers having a large difference in size from the average size affects the performance of the filter media. At the extreme, if the media is made from micron sized fibers, a centimeter sized fiber would prevent it from functioning properly. Thus, a filter media inherently must have a maximum and minimum fiber size to achieve acceptable performance. It is considered to be within the scope of a skilled artisan to determine a maximum and minimum fiber size, such as through routine experimentation. Further, as discussed in paragraph [0012], Disson discloses a fiber diameter of greater than 10 microns, and particularly greater than 25 microns, and Hara and/or DeNoia suggest a standard deviation 0f 1 to 3 microns. Therefore, the majority of fibers would have a diameter between 8 microns and 40 microns, and these would be considered reasonable values for the maximum and minimum fiber diameter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson, Wertz, and Hara and/or DeNoia to form the scrim having a minimum fiber diameter of 8 microns and a maximum fiber diameter of 40 microns in order to form a sufficiently consistent structure for the scrim layer.
Further in regard to claim 7, as discussed above, Disson discloses a fiber diameter of greater than 10 microns. This overlaps with the claimed ranges. The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q. 549; In re Wertheim 191 USPQ 90 (CCPA 1976).
In regard to claim 22, Disson is used as the primary reference and discloses using polyester fibers for the scrim layer, as discussed in paragraph [0012]. Disson does not specifically disclose polyethylene terephthalate (PET) fibers. Polyester is a category of polymers. PET is a commonly known polyester. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson, Wertz, and Hara and/or DeNoia to form the scrim with PET fibers as this is a well-known type of polyester fiber.
In regard to claim 24, Disson is used as the primary reference. Disson also does not disclose the basis weight of the scrim layer. Wertz similarly discloses the basis weight of the scrim can be selected as desired, as discussed in column 9 lines 18 - 24. Wertz also discloses using a scrim layer having a basis weight that can be in the range of 5 to 100 gsm, which overlaps with the claimed range of 1 to 2 ounces per square yard (approximately 33.9 to 67.8 gsm). It would further have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson, Wertz, and Hara and/or DeNoia to form the scrim to have a basis weight of 1 to 2 ounces per square yard as suggested by Wertz as it is known to select this property as desired and a material having a basis weight in the rang is useful as a scrim layer.
In regard to claims 25 and 28, Disson is used as the primary reference. As discussed in paragraph [0012], Disson discloses a scrim layer with a larger thickness of about 0.1 mm to about 2.0 mm (100 to 2000 microns). Disson further describes the thickness of the scrim to depend on the size of the waves that require support. Larger waves require a thicker scrim layer, while smaller waves can be formed with thinner scrim layers. Thus, it would further have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson, Wertz, and Hara and/or DeNoia to choose or optimize the thickness of the scrim layer to be greater than 5 microns and less than 11 microns given this allows for the desired size waves in the fluted sheet to be supported.
In regard to claim 34, Disson is used as the primary reference. Disson also does not disclose the permeability of the scrim. As discussed in column 7 lines 15 - 16, the substrate, or scrim, in Wertz can have any desired permeability. Thus, it would further have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Disson, Wertz, and Hara and/or DeNoia to form the scrim with an air perm of less than 300 cfm/ft2 as suggested by Wertz as it is known to select this property as desired.
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, 2, 6, 7, 24, 41, 42, 44, and 49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 7 – 9, 13, 14, and 16 of U.S. Patent No. 12,383,855. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 7 – 9, 13, 14, and 16 of the ‘855 patent disclose all of the features in claims 1, 2, 6, 7, 24, 41, 42, 44, and 49 of the present application, except for specifically requiring a minimum or maximum fiber diameter. There is no evidence that the values of the minimum and maximum fiber diameter is critical. The filter media inherently has to have a minimum and maximum fiber diameter. Predictably, a fiber size that falls too far from the average diameter will negatively impact the performance of the filter media. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter media in the ‘855 patent to have a minimum fiber diameter of 8 microns and a maximum fiber diameter of 40 microns in order to form a filter media with a sufficiently consistent performance.
Response to Arguments
Applicant's arguments filed June 15, 2026 have been fully considered but they are not persuasive.
In regard to independent claim 1, the examiner agrees that none of the prior art specifically discloses a minimum fiber diameter of 8 microns and a maximum fiber diameter of 40 microns. Applicant argues that the claimed maximum and minimum fiber diameters are strategically selected to optimize filtration performance and are not just obvious variants of the prior art. The examiner respectfully disagrees. There is no evidence the values of 8 microns and 40 microns are critical. A filter media inherently must have a maximum and minimum fiber size. Predictably, a filter media having more uniform fibers will have a more uniform performance. It is considered to be within the scope of a skilled artisan to determine a maximum and minimum fiber size, such as through routine experimentation, that will result in an acceptable filtration performance. There is no indication that chosen maximum and minimum fiber diameters provides an unexpected result. Limiting the fiber size to a relatively narrow range predictably provides better filtration performance.
Likewise, this feature is not considered to overcome the non-statutory double patenting rejection. While the claims of the ‘855 patent do not disclose a maximum or minimum fiber diameter, it is considered to be obvious to one of ordinary skill in the art to select a minimum fiber diameter of 8 microns and a maximum fiber diameter of 40 microns in order form a filter media with a sufficiently consistent performance.
Independent claim 57 is considered to include new matter that is not supported by the original disclosure, see the new rejection under 35 USC 112(a) above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773
Prosecution Insights