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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (PRO 63/517,656, filed 08/04/2023) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Objections
Claim 3 is objected to because of the following informalities:
“…the fibers comprise polyolefins, polyesters,… PVOH, polyamides and combinations thereof.”
Appropriate correction is required.
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.
Claim 3 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.
Regarding Claim 3, a number of acronyms are recited but are not defined thereby rendering the claim indefinite for distinctly claiming the subject matter which the inventor regards as the invention. In particular, PBT, PET, CoPET, PLA, PA, PHB, and PVOH are undefined.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by BELMONT et al. (US 2020/0054975 A1).
Regarding Claim 1, BELMONT discloses filter media (i.e., a porous membrane) comprising a non-woven web of non-binder fibers and binder particles (i.e., comprising fibers; abstract; FIG. 1B; p0021). The non-woven web has a mean flow pore size of less than or equal to about 10 µm (p0065), which reads on the claimed mean flow pore size of less than about 10 microns. The non-woven web further comprises two different binder particles (p0030), e.g., binder particles and binder fibers (p0024), having different shapes and sizes, e.g., greater than or equal to about 1 nm (i.e., nanoparticles; p0051), and being substantially uniformly distributed across the thickness of the non-woven web (i.e., nanoparticles disposed within the porous membrane; p0024).
Regarding Claim 2, BELMONT discloses the filter media of Claim 1. BELMONT further discloses wet-laid non-woven webs (i.e., the fibers are wet-laid fibers; p0021, p0023, p0025).
Regarding Claim 3, BELMONT discloses the filter media of Claim 1. The non-binder fibers comprise synthetic fibers, including polyesters, polyethylene, polypropylene, polyaramid, polyvinyl alcohol, and nylons (i.e., polyamides; p0105) (i.e., the fibers comprise polyolefins, polyester[s], polyethylene…).
Regarding Claims 4 and 5, BELMONT discloses the filter media of Claim 1. The non-woven web has a mean flow pore size of less than or equal to about 1 µm (p0065), which reads on the claimed mean flow pore size of less than about 5 microns (Claim 4) and less than about 4 microns (Claim 5).
Regarding Claims 6-8, BELMONT discloses the filter media of Claim 1. BELMONT further discloses the non-woven web has a thickness (i.e., the porous membrane has a thickness from a first surface to a second surface; p0066). The binder particles are disclosed to being substantially uniformly distributed across the thickness of the non-woven web (i.e., the nanoparticles are disposed within the porous membrane in at least 25% of the thickness from the first surface to the second surface (Claim 6); the nanoparticles are disposed within the porous membrane in at least 50% of the thickness from the first surface to the second surface (Claim 7); the nanoparticles are substantially uniformly dispersed throughout the porous membrane (Claim 8); p0024).
Regarding Claim 9, BELMONT discloses the filter media of Claim 1. The instant limitation requiring that “the nanoparticles are generated within a gas and dispersed through a first surface of the porous membrane” is directed toward a process by which the claimed filter media is prepared thereby rendering the claim a product-by-process claim. Because the prior art discloses a product that appears to be the same as the product set forth in this product-by-process claim, although produced by a different process, the claim is directly read on by the prior art (see In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); MPEP §2113). Additionally, although the immediate claim is a product-by-process claim and is limited by and defined by its process, the determination of patentability is based on the product itself, not on the method of production. Thus, this instant process limitation does not further limit the claimed product.
Regarding Claim 10, BELMONT discloses the filter media of Claim 1. BELMONT further discloses the binder particles have a size less than or equal to about 20 µm (p0051), which reads on the claimed range of at least one dimension less than about 20 microns.
Regarding Claims 11-14, BELMONT discloses filter media (i.e., a porous membrane) comprising a non-woven web of non-binder fibers and binder particles (i.e., comprising fibers; abstract; FIG. 1B; p0021). The non-woven web has a mean flow pore size of less than or equal to about 10 µm (p0065), which reads on the claimed mean flow pore size of less than about 10 microns.
The limitations requiring that “the filter has a bubble point of about 5 to about 50 microns” (Claim 11), “less than about 20 microns” (Claim 12), “less than about 10 microns” (Claim 13), and “is about 5 microns” (Claim 14), are directed to indirect measurement methods of measuring the largest pore of a filter and are considered to be a function of the pore size of the filter. Thus, because the claimed invention has already defined a pore size of the claimed filter, i.e., “mean flow pore size of less than about 10 microns”, and because the prior art teaches such a limitation, the instant limitations of “bubble point” are inherently anticipated. The discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel (In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368, Fed. Cir. 2004; MPEP §2112 I).
Regarding Claims 15 and 16, BELMONT discloses the liquid filter of Claim 11. The non-woven web has a mean flow pore size of less than or equal to about 1 µm (p0065), which reads on the claimed mean flow pore size of less than about 5 microns (Claim 15) and less than about 4 microns (Claim 16).
Regarding Claim 17, BELMONT discloses the liquid filter of Claim 11. BELMONT further discloses the non-binder fibers comprise synthetic fibers (p0105), e.g., staple fibers (i.e., the fibers comprise staple fibers; p0107). These staple fibers have an average length of greater than or equal to about 2 mm and less than or equal to about 10 mm (p0107), which reads on the claimed range of a length of about 2 to about 10 mm (p0107).
Regarding Claim 18, BELMONT discloses the liquid filter of Claim 17. BELMONT further discloses the non-woven web further comprises binder particles (p0030), e.g., binder particles and binder fibers (p0024), having different shapes and sizes, e.g., greater than or equal to about 1 nm (i.e., nanoparticles; p0051), and having a size less than or equal to about 20 µm (p0051), which reads on the claimed range of at least one dimension less than about 20 microns.
Regarding Claim 19, BELMONT discloses the liquid filter of Claim 18. BELMONT further discloses the binder particles “join fibers and/or other components… within the non-woven web” (i.e., at least some of the nanoparticles are bonded to at least some of the staple fibers; p0025; see also p0047).
Regarding Claim 20, BELMONT discloses the liquid filter of Claim 18. The instant limitation requiring that “the nanoparticles are generated within a gas and dispersed through a first surface of the porous membrane” is directed toward a process by which the claimed filter media is prepared thereby rendering the claim a product-by-process claim. Because the prior art discloses a product that appears to be the same as the product set forth in this product-by-process claim, although produced by a different process, the claim is directly read on by the prior art (see In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); MPEP §2113). Additionally, although the immediate claim is a product-by-process claim and is limited by and defined by its process, the determination of patentability is based on the product itself, not on the method of production. Thus, this instant process limitation does not further limit the claimed product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
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