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 of claims 1, 2, 4-6, 8, 9, 12, 17, 19, 21, 23-27, 31, 36 and 37; and the following species in the reply filed on 7/24/2026, is acknowledged. Claim 3 has been withdrawn from consideration as being directed to a non-elected invention. Claims 7, 10, 11, 13-16, 18, 20, 22, 28-30, 32-35, and 38-43 have been cancelled.
Species A(i): a composition wherein a binderless ceramic material does not substantially change a mean pore diameter of the substrate.
Species B(iii): a porous substrate comprising a textile material comprising natural fibers, synthetic fibers, metal mesh or metal cloth.
Species C(iii): a ceramic material comprising a metal hydroxide.
Species D(iii): a functional layer comprising a molecule with a head group and a tail group.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
(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 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.
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.
Claims 1, 2, 5, 6, 8, 9, 17, 19, 21, 23-27, 31, 36 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0294002 to Thompson et al. (hereinafter “Thompson”).
Thompson discloses a protective cover comprising a substrate and a top coating of a nanoceramic material provided on the substrate to increase the durability and resistance to abrasion and wear while resisting environmental conditions including exposure to solar radiation, temperature and humidity (abstract).
The substrate comprises a first and second textile layer and an expanded polytetrafluoroethylene (ePTFE) membrane disposed between the two textile layers (abstract).
The protective cover has an air permeability of 0.15 cfm and a moisture vapor transmission rate of at least 4000 g/m2/day or more (paragraph 18). The protective cover enables the air to get to equilibrium faster, thereby reducing or eliminating the condensation under the cover (paragraph 42). The ePTFE membrane has open pores to enhance air permeability and water vapor transmission rate (paragraph 37).
The nanoceramic material comprises silicon dioxide, titanium dioxide, boron oxide and each of which being applied over the substrate as a gas plasma coating (paragraphs 61 and 62). The top coating is thus a binderless ceramic coating.
As to claim 2, the ePTFE membrane has pores with an average pore size of 0.03 microns (paragraph 78). The nanoceramic coating is provided on the surface of the outer textile layer which is adjacent to the ePTFE membrane; therefore, the nanoceramic coating does not change the mean pore size of the ePTFE membrane.
As to claims 5, 6, 8, 9, and 23-25, the protective cover includes a top coating of a ceramic material to increase the durability and resistance to abrasion and wear while providing excellent flame-retardant property, and great protection against microbes (abstract, paragraphs 74 and 82). The nanoceramic material comprises silicon dioxide, titanium dioxide, boron oxide, iron oxide, calcium oxide and each of which being applied over the substrate as a gas plasma coating (paragraphs 61 and 62).
As to claims 17 and 19, the textile layer is made of nylon, polyester (paragraph 36).
As to claim 21, the protective cover comprises an aluminum reflective coating applied to the inner layer of fabric layer for reflecting heat and/or for its electrostatic dissipating properties (paragraph 56).
As to claims 26 and 27, a fire-retardant coating is further applied over the top coating of the nanoceramic material (paragraph 71). The fire-retardant coating would inherently impart flame retardancy that is of greater magnitude than the same fire retardancy imparted by an identical fire-retardant coating deposited directly on a textile surface that does not comprise the nanoceramic top coating as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 31, the top coating further includes an acrylic polymer, silicon polymer or polyurethane, and each of which corresponding to the claimed functional layer comprising a plastic material.
As to claim 36, the top coating of titania nanoparticles comprises a photocatalysis property. Therefore, it is not seen that the top coating would not be photocatalytically degraded upon light exposure.
As to claim 37, Thompson does not explicitly disclose the protective cover which is more adherent to a durable water repellent substance than an identical substrate that does not comprise the nanoceramic coating.
However, it appears that the protective cover meets all structural limitations and chemistry required by the claims. The protective cover comprises a substrate and a top coating of a ceramic material provided on the substrate (abstract).
The substrate comprises a first and second textile layer and an expanded polytetrafluoroethylene membrane disposed between the two textile layers (abstract). The textile layer is made of nylon, polyester (paragraph 36).
The protective cover has an air permeability of 0.15 cfm and a moisture vapor transmission rate of at least 4000 g/m2/day or more (paragraph 18). The protective cover enables the air to get to equilibrium faster, thereby reducing or eliminating the condensation under the cover (paragraph 42). The ePTFE membrane has open pores to enhance air permeability and a water vapor transmission rate (paragraph 37). The substrate is thus a porous material.
The nanoceramic material comprises silicon dioxide, titanium dioxide, boron oxide and each of which being applied over the substrate as a gas plasma coating (paragraphs 61 and 62). The protective cover has an air permeability of 0.15 cfm (paragraph 18). The air permeability of substrate would be higher than 0.15 cfm in the absence of the ceramic coating. The protective cover includes a top coating of a nanoceramic material to increase the durability and resistance to abrasion and wear while providing excellent flame retardant property, and great protection against microbes (abstract, paragraphs 74 and 82). The nanoceramic material comprises silicon dioxide, titanium dioxide, boron oxide, iron oxide, calcium oxide and each of which being applied over the substrate as a gas plasma coating (paragraphs 61 and 62). The fire-retardant coating is applied over the nanoceramic coating material (paragraph 71).
Therefore, the examiner takes the position that the protective cover would be more adherent to a durable water repellent substance than an identical substrate that does not comprise the nanoceramic coating as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson.
As to claim 4, Thompson discloses that the protective cover has an air permeability of 0.15 cfm (paragraph 18). That is, the air permeability of the substrate would be higher than 0.15 cfm in the absence of the top coating. This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in an air permeability of the textile/ ePTFE membrane will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the air permeability of the textile/ ePTFE membrane is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an air permeability of the textile/ ePTFE membrane in the range instantly claimed motivated by the desire to prevent humidity buildup thereby minimizing oxidation and corrosion of the covered object caused by condensation of any moisture trapped in the air under the protective cover. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 12, Thompson discloses that the top coating is perforated to provide small holes for the protective cover to breathe and to continue to provide air permeability (paragraph 59). The perforation indicates that the top coating is porous. Thompson does not explicitly disclose the top coating having a porosity of 5 to 80%.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the porosity of the top coating will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the porosity of the top coating is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the top coating having a porosity in the range instantly claimed, motivated by the desire to enhance breathability and air permeability of the protective cover. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Thompson as applied to claim 1 above, further in view of US 9,475,263 to Rangan et al. (hereinafter “Rangan”).
Assuming that the claim will be amended to require metal hydroxide as a required ceramic material, the claim is not rendered unobvious in view of the combined disclosures of Thompson and Rangan.
Thompson does not explicitly disclose the nanoceramic material comprising a metal hydroxide.
Rangan, however, discloses a protective fabric comprising a base material and at least one inorganic filler infiltrated into the pores of the base material (abstract, and column 6, lines 10-15). The inorganic filler can be nanoparticles comprising magnesium oxide, magnesium hydroxide, calcium oxide, or calcium hydroxide (column 2, lines 35-40; and column 6, lines 1-5).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute metal hydroxide of Rangan for the metal oxide disclosed in Thompson because the metal hydroxide and metal oxide have been shown in the art to be recognized ceramic materials which function as chemical or biological decontamination agents/ catalysts, hydrophilic materials and improved breathability materials and the selection of these known equivalents to be used as ceramic materials for the protective fabric will be within the level of the ordinary skill in the art.
Claims 26, 27 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson as applied to claim 1 above, further in view of US 2015/0173883 to Ingber et al. (hereinafter “Ingber”).
Assuming that the claim will be amended to require the functional layer comprising a molecule with a head group and a tail group, the claim is not rendered unobvious in view of the combined disclosures of Thompson and Ingber.
Thompson does not explicitly disclose the protective cover further being modified by a functional layer comprising a molecule with a head group and a tail group.
Ingber, however, discloses an article comprising a substrate and an anchoring layer on the substrate to render liquid repellent (paragraph 88). The substrate is a textile (paragraph 74). The anchoring layer comprises a molecule having a head group that covalently attaches to the substrate and a tail group for providing liquid repellency. The head group includes a hydroxyl group, a thiol group, or an alcohol group while the tail group includes fluorocarbon group(paragraphs 90 and 91).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further include an anchoring layer from Ingber on the top coating of nanoceramic material of Thompson, motivated by the desire to provide the protective cover with liquid repellency.
The combined disclosures of Thompson and Ingber result in a protective cover comprising a porous textile, a binderless ceramic layer on the porous textile, and an anchoring layer on the binderless ceramic layer. The anchoring layer comprises a molecule having a head group that covalently attaches to the substrate and a tail group for providing liquid repellency. The head group includes a hydroxyl group, a thiol group, or an alcohol group while the tail group includes fluorocarbon group.
Therefore, the examiner takes the position that the anchoring layer would inherently impart one or more functional property that is of greater magnitude than the same functional property imparted by an identical anchoring layer deposited directly on an identical textile surface that does not comprise the ceramic material.
Claims 1, 2, 5, 6, 8, 9, 12, 17, 19, 23-25, 36 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2008/0164214 to Lerner et al. (hereinafter “Lerner”).
Lerner discloses a filter material comprising a base of nonwoven polymeric fabric and aluminum hydroxide particles fixed on the surface and inside the fabric (paragraphs 21-24). The aluminum hydroxide particles have a particle size of 0.2 to 5 microns, specific surface area ranging from 100 to 250 m2/g and a porosity of 50 to 95% (paragraph 23). The aluminum hydroxide particles read on the claimed binderless ceramic material.
As to claim 2, the aluminum hydroxide particles are positioned at the points of contacts of fabric fibers and do not reduce the filtration rate of the filter material (paragraph 48). This is a clear indication that the aluminum hydroxide does not change the mean pore diameter of the fabric in view of non-reduction in the filtration rate.
As to claims 5, 6, 8 and 9, the aluminum hydroxide particles have a particle size of 0.2 to 5 microns, specific surface area ranging from 100 to 250 m2/g and a porosity of 50 to 95% (paragraph 23).
As to claim 12, the aluminum hydroxide particles have a porosity of 80% (paragraph 60).
As to claims 17 and 19, the base is a nonwoven polysulfone fabric (paragraph 60).
As to claims 23-25, the aluminum hydroxide particles have high sorption properties including the capacity of retaining microorganisms while providing great mechanical strength. Additionally, the aluminum hydroxide particles would inherently comprise a photocatalytic property as like material has like property.
As to claim 36, it appears that Lerner uses the same aluminum hydroxide particles as a ceramic material disclosed in the Applicant’s disclosure; therefore, the examiner takes the position that the aluminum hydroxide particles will inherently comprise a photocatalytic property, and wherein the aluminum hydroxide particles that adhere to the surface are photocatalytically degraded on exposure to light.
As to claim 37, it appears that Lerner uses the same aluminum hydroxide particles as a ceramic material disclosed in the Applicant’s disclosure; therefore, the examiner takes the position that the composition will inherently be more adherent to a durable water repellent substance than an identical substrate that does not comprise the ceramic material.
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, 4-6, 8, 9, 12, 17, 19, 21, 23-27, 31, 36 and 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,145,350. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,145,350 disclose each and every limitation of the claim of the present invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takeuchi et al. (US 2020/0313133) discloses a separator comprising a porous substrate and a layered double hydroxide in the pores of the porous substrate (abstract).
Kuhn et al. (US 6,764,969) discloses a coated textile comprising a textile substrate and a film comprising iron oxide hydroxide and aluminum oxide hydroxide on the textile substrate (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights