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
Applicant’s election of Group 1, directed to Claims 1-11, in the reply filed on 8 June 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Examiner’s Comments
The following comments are provided to enhance the clarity of the record. They may encompass situations in which meaning is clear, but there are suggested edits to the claims which may help enhance clarity. Or interpretations of the claims which are relevant to the 35 USC § 102 or 103 rejections included below.
Clarity:
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 3, 6, 8, 10 and 11 recite a broader range or clause and then a narrower range within the same claim. These claims are currently not considered indefinite as the applicant is using the term “optionally” rather than “preferred”. As such, it is clear that the narrower range is considered to be merely exemplary of the remainder of the claim, and therefore not required for a complete understanding of the metes and bounds of the claim interpretation.
In the case of Claim 8, the number and complexity of the “optionally” statements do rise to a point of indefinite as detailed below.
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.
Claim 8 is 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 8 requires a series of “optionally” and “and/or” clauses as well as a “further optionally clause” it is unclear whether the clause after “further optionally” is an option in place of one of the preceding clauses, or if it is an optional modification of one of the previous clauses.
Claim Rejections - 35 USC § 102/103
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 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.
(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.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yu et al. (US 2014/0224727).
With regards to Claim 1 Yu teaches:
A filter media comprising cellulose fibers and fibrillated thermoplastic fibers. (See Yu Paragraph 63, 64-73 cellulose fibers and percentages and 43-54 fibrillated thermoplastic fibers and percentages)
With regards to Claim 2 Yu teaches:
The cellulose fibers comprise hardwood fibers, softwood fibers, fibrillated cellulose fibers or any combination thereof. (See Yu Paragraphs 63-73)
With regards to Claim 3 Yu teaches:
The fibrillated thermoplastic fibers comprise fibrillate polyolefin fibers including polyethylene and polypropylene. (See Yu Paragraph 43)
With regards to Claim 4 and 5 Yu teaches:
The filter media comprises a cationic polymer, specifically polyacrylamide. (See Yu Paragraph 113)
With regards to Claim 6 Yu teaches:
The media comprises 0 to 98% hardwood fibers. (See Yu Paragraphs 63 and 67-70)
Example 4 teaches “The second, bottom layer was made from HPZ, softwood kraft pulp and eucalyptus fibers in the weight ratio of 0.34:0.15:0.52 “ or 52% hardwood pulp, and 15% softwood pulp. (See Paragraphs 191-193)
Yu discloses the filter media comprises a range of 0 to 98% by weight of hardwood fibers and discloses Example 4 with a hardwood percentage of 52% which anticipates applicant’s claimed range of 40 to 70 wt% hardwood. In the alternative Yu renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Yu as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
Softwood fibers comprise 0 to 98 wt % of the fiber web. (See Yu Paragraphs 63 and 71-73)
Example 4 teaches “The second, bottom layer was made from HPZ, softwood kraft pulp and eucalyptus fibers in the weight ratio of 0.34:0.15:0.52 “ or 52% hardwood pulp, and 15% softwood pulp. (See Paragraphs 191-193)
Yu discloses the filter media comprises a range of 0 to 98% by weight of softwood fibers and discloses Example 4 with a softwood percentage of 15% which anticipates applicant’s claimed range of 0 to 30 wt% softwood. In the alternative Yu renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Yu as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
Fibrillated fibers comprise thermoplastic fibers, including polyethylene, and comprise 1 wt% and 100 wt % of the fiber mat. (See Yu Paragraphs 43 and 54)
“Robur Flash (cellulose) fibers: HP-11 fibers: PET (0.6 d.times.5 mm) fibers in the ratio 1:1:0.46 by weight” or roughly 18.6 wt % of PET fibers. (See Yu Paragraphs 188 and 189)
Yu discloses the filter media comprises a range of 1 to 100% by weight of fibrillated thermoplastic fibers and discloses Example 1 with a softwood percentage of 18.6% which is considered close enough and anticipates applicant’s claimed range of 0.5 to 15 wt% fibrillated thermoplastic fibers. In the alternative Yu renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Yu as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
Yu teaches that the hardwood and softwood fibers can be fibrillated, not fibrillated, or a mixture of both. (See Yu Paragraph 63)
Yu discloses the filter media comprises a range of 0 to 98% by weight of cellulose fibers which can be a fibrillated, not fibrillated, or a mixture of both which anticipates applicant’s claimed range of 0 to 30 wt% fibrillated cellulose fibers. In the alternative Yu renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Yu as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
A binder which comprises polyacrylamide comprises less than 5% by weight of the fiber web. (See Yu paragraph 113)
Yu discloses the filter media comprises a range of 0 to 5% by weight of polyacrylamide binder which anticipates applicant’s claimed range of 0.5 to 1.5 parts of cationic polymer per every 100 parts of fiber (approximately 0.5 to 1.5 wt %). In the alternative Yu renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Yu as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
With regards to Claim 7 Yu teaches:
The hardwood and/or softwood fibers comprise refined fibers. (See Yu Paragraph 63)
With regards to Claim 8 Yu teaches:
A binder which comprises polyacrylamide comprises less than 5% by weight of the fiber web. (See Yu paragraph 113)
With regards to Claim 9 and 10 Yu teaches:
The fibrous web is a wet-laid non-woven mat. (See Yu Paragraph 168 and 169)
With regards to Claim 11 Yu teaches:
The fiber web is electrically charged which reads on applicant's claimed electret. (See Yu Paragraph 176)
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIT E ANBACHT whose telephone number is (571)272-9876. The examiner can normally be reached on M, T, R, F 11 am - 4 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9876.
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/BRIT E. ANBACHT/Examiner, Art Unit 1776
BRIT E. ANBACHT
Examiner
Art Unit 1776
Prosecution Insights