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 with traverse of claims 1-3 in the reply filed on 08/18/2026 is acknowledged. The traversal is on the ground(s) that:
“These three Groups of claims are inexorably linked. No additional search burden would be present during examination. Any art relevant to the ceramic filter (Group I claims) would be relevant to the process for producing it (Group III claims) and to the process of cleaning it (Group II claims)”. This is not found to be persuasive because the restriction indicated lack of unity a posteriori. Smith establishes that the special technical feature is known, there is lack of unity a posteriori, since the special technical feature is not a technical feature that defines a contribution over prior art.
“the Office asserts that these claims lack the same or corresponding special technical feature because the composite material of porosity between 0.1 μm and 10 μm is allegedly known and described in Smith et al. (US20150274547Al). Applicant respectfully disagrees with this assertion, at least in part claim 1 recites a porosity lower bound of 0.1 μm, whereas Smith et al. discloses a lower bound of 1 μm. The sub-range of 0.1-1 μm is not disclosed or suggested by Smith. This difference, an order of magnitude, qualifies as a special technical feature conferring unity across all groups. This is not found persuasive because the argument is not commensurate in scope with the claim. The limitation “the composite material has a porosity comprised between 0.1 μm and 10 μm” claims a porosity within the range of 0.1 μm and 10 μm. 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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/18/2026.
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 1-3 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.
Regarding claim 1, the limitation “the composite material has a porosity comprised between 0.1 μm and 10 μm” renders the claim indefinite because it is unclear whether the claim is reciting “porosity” or “pore size”. Porosity is a measure of fraction of volume of pores in a material over total volume of material. The claim recites a unit of “μm” which suggest a pore size. Instant specification (page 3 – lines 18-20) discloses “Preferably, the porosity value of the composite material (Fig. 2) is obtained by measuring the dimensions of the pores visible by virtue of the images obtained with the aid of a stereomicroscope”, which suggest that the term “porosity” is intended to be “pore size”. A clarification is requested.
Regarding claim 3, the limitation “wherein the colloidal silver is in a concentration comprised between 30 ppm and 50 ppm” renders the claim indefinite because it unclear whether the limitation is referring to colloidal concentration while making of the ceramic filter or concentration of the colloidal silver in the final product. Instant specification page 6 recites “Preferably, an aqueous suspension of colloidal silver is prepared at a concentration of 40
ppm. Advantageously, the suspension is absorbed by the ceramic filter by capillary action
and the silver nanoparticles are deposited in the space of the pores” which indicates concentration of colloidal silver in a solution that was passed through the ceramic filter and does not recite a final concentration of colloidal silver in the ceramic filter. It is also unclear how one would measure concentration of colloidal silver in ppm in a ceramic filter.
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 (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 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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2015/0274547A1).
Regarding claim 1, the limitation “porosity comprised between 0.1 μm and 10 μm” is interpreted as pore size comprised between 0.1 μm and 10 μm. Support for the interpretation is provided in the specification. Instant specification (page 3 – lines 18-20) discloses “Preferably, the porosity value of the composite material (Fig. 2) is obtained by measuring the dimensions of the pores visible by virtue of the images obtained with the aid of a stereomicroscope”, which suggest that the term “porosity” is intended to be “pore size”
Smith teaches a ceramic filter comprising a composite material (refer abstract, [0006]) wherein the composite material has a pore size between 0.1 μm and 10 μm (refer [0043] disclosing “the material comprises a porous structure having pore sizes of about 1 μm to about 100 μm, such as about 1 μm to about 30 μm, about 1 μm to about 20 μm, or about 1 μm to about 10 μm”). 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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2015/0274547A1), in view of Petrik et al. "Silver/zeolite nano composite-based clay filters for water disinfection." Water Res Commission, WRC report (KV 297/12). ISSN: 9781431203062 (2012).
Regarding claim 2, Smith teaches limitations of claim 1 as set forth above. Smith teaches that the composite material includes a clay component, a pore forming agent and a metal ion-containing component (Refer [0006]). Smith discloses that “Ceramic materials of interest include those derived from a clay, including but not limited to, a halloysite, a kaolinite, an illite, a montmorillonite, a vermiculite, a talc, a palygorskite or a pyrophyllite. In one aspect, two or more clays are used. In some embodiments, porous ceramic material includes a clay ceramic such as an alumino-silicate” (refer [0046]). Selecting one or more clays to be semi-refractory clay would have been an obvious matter of choice to one of ordinary skill in the art since Smith discloses use of mixture of clays.
Smith further discloses that the metal nanoparticles comprise silver (refer [0037]). Smith also teaches (refer [0070]) “Pore-forming agents of interest include, but are not limited to, an inorganic salt, a polymeric bead, an organic material such as sawdust, wood, paper, grain, rice husks, corn husks, cardboard, a carbohydrate, sugar, coffee grounds, any convenient cellulose material, a protein foaming agent (e.g., egg white protein), organic or polymeric beads, flour, etc.”.
Smith does not disclose that the ceramic filter comprises colloidal silver and Clinoptilolite, however, ceramic filter comprising colloidal silver loaded Clinoptilolite is disclosed by Petrik (refer “Executive Summary”) for providing biocidal property. It would have been obvious to one of ordinary skill in the art to include Clinoptilolite and colloidal silver in the ceramic filter of Smith to provide biocidal property.
Regarding claim 3, modified Smith teaches limitations of claim 2 as set forth above. Petrik further teaches that wet impregnation procedure was employed to load a greater amount of silver nanoparticles on the ceramic filter, and that the concentration of silver ions applied to the clinoptilolite include 53.935 mg/L (refer “Executive Summary”). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
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/PRANAV N PATEL/ Primary Examiner, Art Unit 1779
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