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 .
Drawings
The drawings are objected to because in Figure 7, it appears that “bore size” should be changed to “pore size” (box 92, line 5). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-16 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.
In line 3 of claim 1, it is unclear what is meant by “the porous layer a plurality of layers.” It appears that “comprises” should be inserted after “porous layer.”
In claims 6 and 14, it is unclear how the inner diameter of the hollow fiber can be 0.1-10 mm while the distance between centers of two neighboring fibers is 0.5-2.5 mm. If the inner diameter is 10 mm, the radius will be at least 5 mm and the distance between two neighboring fibers will be greater than 10 mm. Similarly, the greatest distance of 2.5 mm would not allow an inner radius of 10 mm.
Claim 9 is indefinite because it recites “a porous layer” and also an inner wall “covered by molecular sieves.” It is unclear whether or not the molecular sieves and the porous layer are the same thing. For examination they are considered to be the same (paragraph 40 of the instant specification), however this should be clarified in the claim.
Claim 9 is also indefinite because it recites “formed by mixing aluminates, silicon-containing compounds, and bases,” which seems to indicate that more than one of each element (at least two aluminates, silicon-containing compounds, and bases) must be used to form the molecular sieves. For examination it is assumed that the molecular sieve can be formed from one of each element, however this should be clarified.
Claims 2-5, 7, 8, 10-13, 15 and 16 are rejected for depending from an indefinite parent claim.
Claim Objections
Claim 14 is objected to because of the following informalities: In line 3, applicant may wish to delete “(40)” to be consistent with the other claims. Appropriate correction is required.
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, 6-8 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-10, 12, 14, 15, 19 and 20 of U.S. Patent No. 12,140,342. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instant claims are encompassed in the patent claims except that there are multiple stacked layers and preferred hollow fiber dimensions (claim 6). Regarding the stacked layers, a person having ordinary skill art would have known to use multiple layers of a filtration material in order to provide additional strength and filtration effects. Absent a proper showing of criticality or unexpected results, the hollow fiber dimensions are considered to be parameters that would have been routinely optimized by a person having ordinary skill in the art in order to provide an acceptable pressure drop and filtration efficiency.
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.
Claim(s) 9-13 and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tai et al. (US 2016/0175765 A1).
Tai et al. ‘765 teach a hollow fiber adsorbent contactor for removing moisture from air, comprising a bundle (matrix) of cylindrical hollow fibers in a housing (111), each including a central bore (113c), an outer layer (113b), and an inner layer (113a) that comprises stacked layers (see figure 2A). The inner layer structure is formed of interwoven (a lattice) long fibers with higher porosity and includes molecular sieve powders uniformly distributed over the fibers. The molecular sieve can be a 4A or 5A zeolite, which are formed by mixing aluminates, silicon-containing compounds, and bases (see instant specification paragraph 40). Zeolite 4A has the formula and pore size of instant claims 2, 4 and 12, and zeolite 5A has the formula and pore size of instant claims 2, 3 and 11. Gaps between the fibers can be sealed with heat-resisting silicone (paragraph 21) and rows of fibers are offset in adjacent rows (figure 1A) that extend in a thickness direction (vertical in figure 1A) which is perpendicular to a plane that the fibers are arranged in. Regarding method claims 17-20, the prior device has zeolite 4A or 5A, which is inherently “configured to remove substances having a number or carbon atoms less than 5.” Water has fewer than 5 carbon atoms but the prior device is also configured to remove the substances in claim 19.
Claim(s) 1-5, 7 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tai et al. ‘765.
Tai et al. ‘765 disclose a contactor as described in paragraph 15 above. If the inner layer (113a) depicted in figure 2A is not taken to show a “plurality of layers,” it is submitted that it would have been obvious to a person having ordinary skill in the art at the time of the invention modify the inner layer by using a plurality of layers in order to increase the filtration efficiency of the device. It is well known in the filtration art to use additional filter layers to increase the level of contaminant removal as long as a pressure drop is acceptable.
Claim(s) 1-5, 7-13 and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koros (2011/0011803 A1).
Koros ‘803 teaches a hollow fiber adsorbent contactor for removing carbon dioxide from air, comprising a bundle (matrix) of cylindrical hollow fibers in a housing (210), each including a central bore (150), an outer layer (160), and an inner layer (130) that comprises stacked layers (“at least one adsorbent material 120, An adsorbent material 120 can comprise an adsorbent layer…” (paragraph 42)). The inner layer structure is formed of a porous polymer network (matrix) (paragraph 43) including molecular sieve. The molecular sieve can be a 4A or 5A zeolite, which are formed by mixing aluminates, silicon-containing compounds, and bases (see instant specification paragraph 40). Zeolite 4A has the formula and pore size of instant claims 2, 4 and 12, and zeolite 5A has the formula and pore size of instant claims 2, 3 and 11. Gaps between the fibers can be sealed with an epoxy or resin (paragraph 56) and rows of fibers are offset in adjacent rows (figures 2A, 2B when viewed in a diagonal perspective) that extend in a thickness direction which is perpendicular to a plane that the fibers are arranged in. Regarding method claims 17-20, the prior device has zeolite 4A or 5A, which is inherently “configured to remove substances having a number or carbon atoms less than 5.” Water has fewer than 5 carbon atoms but the prior device is also configured to remove the substances in claim 19. The inner diameter of the fiber bores can be at least 50 microns (paragraph 47).
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) 6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over any one of Tai et al. ‘765 or Koros ‘803.
Any one of Tai et al. ‘765 or Koros ‘803 discloses all of the limitations of the claims except that the hollow fibers have a preferred inner diameter and distance between centers of neighboring fibers. Absent a proper showing of criticality or unexpected results, the hollow fiber dimensions are considered to be parameters that would have been routinely optimized by a person having ordinary skill in the art in order to provide an acceptable pressure drop and filtration efficiency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references listed on the attached PTO-892 form disclose gas filter arrangements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK LAWRENCE whose telephone number is (571)272-1161. The examiner can normally be reached Mon-Fri 8:30am-7pm.
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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.
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/FRANK M LAWRENCE JR/Primary Examiner, Art Unit 1776
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