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 1-8 in the reply filed on 9/22/2026 is acknowledged. The traversal is on the ground(s) that the amendment add limitations that provide a special technical feature. This is not found persuasive because as discussed below, the subject matter claimed is taught or lacks an inventive step thereby still showing that the claims lack a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
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 2-3 and 5-7 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.
Claims 2-3 and 5-7 all recite that the filter medium has a surface tension. It is noted that surface tension by definition is the tension of the surface film of a liquid caused by the attraction of the particles in the surface layer by the bulk of the liquid. As such, it is unclear how the solid material forming the filter mediums can have a property that is exclusive to liquids. It is noted that [0031] of the specification provides some sort of guidance but the results are based on various fluids, processing agents, and films where data is then extrapolated. Therefore, it is still unclear how a parameter defining a surface of a liquid is being used to determine a property of a solid.
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)(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.
Claim(s) 1, 4-5, and 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Agarwal (US 2021/0402326).
Regarding claim 1, Agarwal teaches a filter, comprising a first filter medium and a second filter medium, the first filter medium/first coalescing layer has an average pore diameter of the first filter medium is 0.8 µm or more and 8 µm or less (average pore size of 5 micron) and a basis weight of 150 g/m2 or more and 200 g/m2 or less ([0022]-[0023]). and the second filter medium has an average pore diameter of the second filter medium is 9 µm or more and 100 µm or less (third coalescing layer pore size of 15 micron, or scrim layer pore size of 50 micron, or barrier mesh layer having 10-120 micron size) ([0022]-[0023], [0073], [0100]-[0101]).
Regarding claim 4, Agarwal teaches the second filter medium is a barrier mesh ([0100]-[0101]).
Regarding claim 5, as discussed above, it is unclear how a liquid property is being used to describe a solid filter medium. It is noted that Agarwal teaches the filter mediums being comprised of similar/same chemicals as taught by Applicant and the same filter medium made from the same/similar material would have similar properties even if not explicitly stated.
Regarding claim 8, Agarwal teaches that the filter mediums can be made from polyester and/or polyethylene materials ([0014], [0025], and [0077]).
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.
Claim(s) 2-3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal (US 2021/0402326) in view of Ikeda et al. (JP 2572068 machine translation provided by Examiner).
Regarding claims 2-3, Agarwal teaches the second filter medium having an average pore diameter of 9-50 µm (third coalescing layer pore size of 15 micron, or scrim layer pore size of 50 micron, or barrier mesh layer having 10-120 micron size), average fiber diameter of 3-40µm (third coalescing layer 2-15 µm fiber diameter, release layer/scrim 15-30 µm [0098] claim 19) and a basis weight of 30-350 g/m2 (third coalescing layer 30-70 g/m2, scrim layer 10-30 g/m2 ([0022] and [0073]). In regards to the surface tension, see claim 5 above.
Agarwal fails to teach the porosity being 70- less than 100% as claimed. Ikeda teaches that for similar filter material used for similar purposes, the basis weight of the filter medium can be optimized as too high of porosity (above 90%), the separation accuracy is poor, while too low of a porosity results in too slow of a permeation speed. As such, one skilled would have found it obvious to optimize the porosity as it is known as a results effective variable in the art and one skilled in the art would have found it obvious to choose porosity in the ranges claimed in order to achieve the desired permeation speed while maintaining the desired separation efficiency.
Regarding claims 6-7, Agarwal teaches the first filter medium having an average fiber diameter of 0.7-5 µm and a basis weight of 100-200 g/m2, ([0022]). In regards to the surface tension, see claim 5 above.
Agarwal fails to teach the porosity being 60- less than 100% as claimed. Ikeda teaches that for similar filter material used for similar purposes, the basis weight of the filter medium can be optimized as too high of porosity (above 90%), the separation accuracy is poor, while too low of a porosity results in too slow of a permeation speed. As such, one skilled would have found it obvious to optimize the porosity as it is known as a results effective variable in the art and one skilled in the art would have found it obvious to choose porosity in the ranges claimed in order to achieve the desired permeation speed while maintaining the desired separation efficiency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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 Dieterle can be reached at (571) 270-7872. 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.
/PETER KEYWORTH/ Primary Examiner, Art Unit 1776
Prosecution Insights