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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3, 5, & 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3: Claim 3 recites the limitation “room-temperature-vulcanizing, two-part (RTV-2) silicone rubber” in line 2 which fails to comply with the written description requirement.
Applicant is advised that disclosure of Ecoflex provides support for a specific formulation and not all room-temperature-vulcanizing, two-part silicone rubber formulations.
Claims 5 & 6: Claims 5 & 6 fail to comply with the written description requirement because they depend from claim 3 and do not remedy the issues of claim 3.
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 2 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 2: Claim 2 recites the limitation “the filter paper comprises wet filter paper including first deionized water” which renders the claim indefinite because it is unclear if applicant is claiming that the filter paper is wet prior to the coating or if the filter paper is wet at some other point in the process. Additionally, it is unclear what is meant by “first deionized water”.
For the purpose of examination, the limitation is being interpreted to require that the filter paper is contacted with deionized water at some point and thus is wet by deionized water at some point during the process.
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.
Claims 1, 2, & 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Reischl (US Patent 4,137,360; hereafter ‘360) in view of Herrmann et al. (US Patent 5,017,457; hereafter ‘457).
Claim 1: ‘360 discloses a process of manufacturing a microporous-stretchable sheet (title and col. 15, lines 45-55) comprising:
providing an elastomer mixed solution on a filter paper (the paper has a porous structure prior to coating and therefore reads on filter paper; see col. 15, lines 15-45 and claims 1-10); and
providing a water vapor to the filter paper and the elastomer mixed solution to form a porous-stretchable film (col. 15, lines 15-55), wherein the water vapor forms micropores in the porous stretchable film (‘360 teaches pore formation occurs by passing sheet through water vapor to gel the polymer solution and then through a coagulation bath, an irrigation bath and an after-treatment bath, see col. 15, lines 15-55; i.e. ‘360 teaches that water vapor treatment is part of the process for forming the micropores and thus ‘360 reads on the recited language).
‘360 does not teach performing the coating by rotating the filter paper.
However, ‘457, which is also directed towards applying elastomeric coatings on paper (see col. 7, lines 65-68 and col. 10, lines 40-45).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘457 into the process of ’360 and apply the elastomeric coating of ‘360 by spin coating because it is an art recognized method of applying an elastomeric coating to paper and thus would have predictably provided a coating as desired.
Claim 2: The filter paper of ‘360 is wet by a water vapor treatment (col. 15, lines 15-50).
It would have been obvious to one of ordinary skill in the art at the time of filing to use deionized water as the specific water during the process because it is a well-recognized type of water which would not contaminate the process and thus would have predictably produced the desired product.
Claim 8: ‘360 does not teach a temperature for the water vapor treatment.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to choose a temperature within the claimed range because temperature is prima facie obvious to optimize. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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). MPEP 2144.05(II)(A).
Claim 9: ‘360 does not teach that the micropores have the claimed size.
However, ‘360 does teach that the pore size can be adjusted to the desired size by varying the quantity of coagulation regulator (col. 19, lines 60-65).
It would have been obvious to one of ordinary skill in the art at the time of filing to adjust the pore size to the claimed sizes because it is prima facie obvious to change shape and size. See MPEP §2143-5.
Claim 10: The combination does not teach the claimed speed or duration of the spin coating process.
However, the speed and duration used for spin coating are known in the art as a result-effective variable based on the desired coating thickness and it is prima facie obvious to optimize result effective variables. "[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). MPEP 2144.05(II)(A).
Claims 3, 5, & 6 are rejected under 35 U.S.C. 103 as being unpatentable over ‘360 in view of ‘457 as applied above, and further in view of Tilton (US PG Pub 2014/0272352; hereafter ‘352).
Claim 3: ‘360 teaches that the elastomer mixed solution comprises an elastomeric material and a curing agent (the mixture can contain N-methyl-diethanolamine which is a known curing agent, col. 5, lines 45-68).
‘360 does not teach that the elastomeric compound comprises room-temperature-vulcanizing, two-part silicone rubber (the Examiner notes that based on the arguments presented on 12/17/25, Ecoflex reads on an example of room-temperature-vulcanizing, two-part silicone rubber).
However, ‘352, which is directed towards elastomeric coatings on paper (see title, ¶s 73 & 82) teaches that the elastomeric material can comprise Ecoflex (¶ 82).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute Ecoflex for the claimed elastomeric material because it is an art recognized elastomeric coating material recognized for coatings on paper and it is prima facie obvious to use art recognized alternatives.
Claim 5: ‘360 teaches that the elastomer mixed solution further comprises a silicone adhesive (col. 10, lines 15-30, ‘360).
Claim 6: The combination does not teach the claimed concentrations.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to choose a concentration within the claimed range because concentration is prima facie obvious to optimize. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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). MPEP 2144.05(II)(A).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over ‘360 in view of ‘457 as applied above, and further in view of Dunne (US Patent 5,512,083; hereafter ‘083).
Claim 7: ‘360 is silent regarding how the water vapor is generated.
However, ‘083 teaches that water vapor in a chamber can be generated by pumping a chamber down with a vacuum pump and then introducing a charge of pure water vapor to obtain a known concentration of water vapor (see col. 10, lines 15-30).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘083 into the process of ‘360 such that the water vapor treatment is performed by pumping the water vapor into the chamber under vacuum pressure because it is a known means for introducing water vapor into a chamber and would have predictably provided the treatment chamber with water vapor as desired.
Response to Arguments
Applicant's arguments filed 12/17/25 have been fully considered but they are not persuasive.
In regards applicant’s argument that the amendment to claim 2 has overcome the objection; the Office does not find this argument convincing because it has made the claim unclear as noted above and one of ordinary skill in the art would not be able to determine the metes and bounds based on the change in the limitation and the original disclosure.
In regards to applicant’s arguments that the amendments to claims 3, 5, & 6 have overcome the 112(b) rejection of said claims; applicant is advised that the removal of the trademark has overcome the 112(b) but as discussed above the claims are now rejected under 112(a) for lack of written description because the original disclosure does not provide support for all room-temperature-vulcanizing, two-part silicone rubbers.
In regards to applicant’s argument that ‘360 does not teach “the water vapor forms micropores in the porous-stretchable film” but instead teaches that the coagulation regulator creates the pores; the Office does not find this argument convincing because ‘360 teaches that the entire process including the water vapor forms the micropores and thus renders obvious the process as discussed above in combination with ‘457.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759