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(b)
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 1–29 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.
Claim 1 is indefinite because the term “substantially” is a relative term which renders the claim indefinite. The term "substantially" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. MPEP 2173.05(b)(III)(D). More details regarding this rejection is provided in the Response to Argument section.
Claims 2–29 are indefinite because they depend on claim 1.
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.
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.
The claims are rejected as follows:
Claims 1–3, 5, 9–10, 17–29 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al., US 2021/0092499 A1 (“Fukushima”) in view of Woo et al., US 2019/0255489 A1 (“Woo”).
Regarding claim 1:
Fukushima discloses that a vent assembly (Fukushima’s sound-transmitting member 1, Fukushima Fig. 1A, [0038]) comprising a membrane stack (as shown in Fukushima Fig. 1A),
the membrane stack comprising a plurality of membranes (Fukushima’s membrane 2, support layer 3, joining portion 6, Fukushima Fig. 1A, [0039]) and an air gap (Fukushima’s non-joining region 4, Fukushima Fig. 1A, [0039]) between adjacent membranes in the plurality of membranes (as shown in Fig. 1A of Fukushima),
wherein each membrane in the plurality of membranes comprise a non-fluoropolymer (Fukushima discloses its membrane 2 could be PET, Fukushima [0068], support layer 3 could be metal or polyamide, Fukushima [0055]–[0056], both are “non-fluoropolyemer”) and substantially occlude each other in the membrane stack (as shown in Fig. 1A of Fukushima).
Fukushima does not disclose that a first membrane in the plurality of membranes has an isopropyl alcohol (IPA) rating of at least 30% IPA/water and at least one membrane in the plurality of membranes has a bubble point of at least 2 bar.
However, the published Spec. (hereinafter “Spec.”) uses IPA wetting rating test, Spec. p. 15, ll. 5–15. IPA wetting rating test is a standard test used in the art to measure the resistance of wetting or the degree of contamination resistance and that higher percent IPA solution indicates a higher degree of wetting/contamination resistance. IPA wet rating is therefore a result effective variable because it directly affects degree of wetting/contamination resistance. It would therefore have been obvious for one ordinary skill in the art at the time of filing to modify Fukushima’s membrane to have a higher percent IPA solution, i.e., for example, higher than 30% or even higher than 40% for a higher degree of wetting/contamination resistance. Additionally, Fukushima discloses its membrane is waterproof, Fukushima [0135], which means it is water repellent, and it would have been obvious to have a higher percent IPA solution, i.e., lower water content because of its water repellent property.
For the limitation of “at least one membrane in the plurality of membranes has a bubble point of at least 2 bar as measured using the test method provided herein”, Fukushima as modified does not disclose such limitation.
In the analogous art of polymer membranes, Woo discloses a polyamide filter membrane, with a mean bubble point from 50 psi to 150 psi (equivalent to 3.45 bar to 10.34 bar), Woo [0112]. Woo’s bubble point range falls within the claimed range. Additionally, Woo discloses that its polyamide hollow fiber membrane has high retention for small particles, Woo [0002]. It would therefore have been obvious for one ordinary skill in the art at the time of filing for modified Fukushima’s to use Woo’s polyamide membrane for the benefits of high retention for small particles because Fukushima disclose polyamide is suitable to be its membrane material, Fukushima [0055].
Regarding claim 2:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the first membrane is the first membrane in the membrane stack (as discussed in claim 1, all the membranes are preferred to have high IPA rating for high degree of contamination resistance, including the first membrane, which could be mapped to the first membran3 in the membrane stack shown in Fig. 1a of Fukushima).
Regarding claim 3:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the first membrane comprises a coating and the coating reduces the surface energy of at least an outward facing surface of the first membrane (Fukushima discloses a coting membrane could be formed by immersing polyimide substrate in PTFE dispersion, Fukushima [0138], which means coating is PTFE; Fukushima also discloses polyimide could be of its support layer 3, which is shown as an alternative material of the first membrane 3, Fukushima [0055], Fukushima therefore discloses a coating of PTFE that reduces surface energy because PTFE is known to have extremely low surface energy1).
Regarding claim 5:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the first membrane comprises a hydrophobic non-fluoropolymer (Fukushima discloses its support layer 3, which is the first membrane, could be PP, Fukushima [0055], PP is hydrophobic).
Regarding claim 9:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the non-fluoropolymer comprises polyethylene, polypropylene, polyimide, polyamide, or polyurethane (Fukushima discloses its support layer 3, which is the first membrane, could be PP or polyethylene, Fukushima [0055]).
Regarding claim 10:
Modified Fukushima discloses that the vent assembly of claim 9, wherein the first membrane comprises polyethylene or polyimide (Fukushima [0055]).
Regarding claim 17:
Modified Fukushima does not disclose that the vent assembly of claim 1, wherein the vent assembly has a failure pressure of at least 70 psi as measured in a water entry pressure (WEP) test.
However, the claimed limitation is directed to a property rather than a physical structure of the claimed apparatus. Such limitations are only given patentable weight if it affects the actual structure of the claimed invention. Since modified Fukushima discloses the claimed structure, the examiner is interpreting that modified Fukushima’s membrane assembly is capable of having the claimed failure pressure because it possesses the claimed structure.
Additionally, the instant disclosure does not teach the claimed failure pressure is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 18:
Modified Fukushima does not disclose that the vent assembly of claim 1, wherein the vent assembly has a reduction in airflow of less than 80% after a contamination test.
However, the claimed limitation is directed to a property rather than a physical structure of the claimed apparatus. Such limitations are only given patentable weight if it affects the actual structure of the claimed invention. Since modified Fukushima discloses the claimed structure, the examiner is interpreting that modified Fukushima’s membrane assembly is capable of claimed reduction in airflow property after a contamination test because it possesses the claimed structure.
Additionally, the instant disclosure does not teach the claimed failure pressure is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 19:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the membrane stack comprises an adhesive layer between adjacent membranes in the membrane stack (Fukushima’s joining portion 6 is an adhesive layer, Fukushima Fig. 1A, [0088]).
Regarding claim 20:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the adhesive layer define an adhesive layer aperture and each membrane in the plurality of membranes occlude the adhesive layer aperture (Fukushima’s joining portion 6 is an adhesive layer, and it comprises an aperture as shown in Fukushima’s alternative embodiment of Fig. 4, and such aperture is occluded from the plurality of other membranes, Fukushima Fig. 4, [0093]).
Regarding claim 21:
Modified Fukushima discloses that the vent assembly of claim 20, wherein the adhesive layer comprise a heat activated film (HAF) or a pressure sensitive adhesive (PSA) (Fukushima discloses its adhesive 6 is a pressure-sensitive adhesive layer, Fukushima [0088]).
Regarding claim 22:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the at least one membrane in the plurality of membranes has a bubble point of from 2 bar to 15 bar, because modified Fukushima comprising Woo’s polyamide filter membrane, with a mean bubble point from 50 psi to 150 psi (equivalent to 3.45 bar to 10.34 bar), Woo [0112]. Such range falls within the claimed range.
Additionally, the instant disclosure does not teach the claimed bubble point is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 23:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the at least one membrane in the plurality of membranes has a bubble point of from 6 bar to 11 bar because modified Fukushima comprising Woo’s polyamide filter membrane, with a mean bubble point from 50 psi to 150 psi (equivalent to 3.45 bar to 10.34 bar), Woo [0112]. Such range overlaps with the claimed range support a prima facie case of obviousness. MPEP 2144.05(I).
Additionally, the instant disclosure does not teach the claimed bubble point is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 24:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the air gap between adjacent membranes is at least 20 µm (Fukushima discloses its non-joining region is 150 µm or less, Fukushima, [0040], such range overlapping with the claimed range, and support a prima facie case of obviousness. MPEP 2144.05(I)).
Additionally, the instant disclosure does not teach the claimed range is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 25:
Modified Fukushima discloses that the vent assembly of claim 1, wherein the air gap between adjacent membranes is from 20 µm to 100 µm because Fukushima discloses its non-joining region is 150 µm or less, Fukushima, [0040]. Such range overlapping with the claimed range, and support a prima facie case of obviousness. MPEP 2144.05(I)).
Additionally, the instant disclosure does not teach the claimed range is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A).
Regarding claim 26:
Modified Fukushima discloses that a device comprising a housing (Fukushima’s housing 15, Fukushima Fig. 2, [0041]) defining an aperture (Fukushima’s external transmitting port 16, Fukushima Fig. 2, [0041]) and a vent assembly according to claim 1 positioned over the aperture (Fukushima’s vent assembly 1 is positioned over the aperture 16 of Fukushima, Fukushima Fig. 2, [0041]),
the housing have an interior (below Fukushima’s housing 15) and an exterior (above Fukushima’s housing 15, Fukushima Fig. 2, [0041]),
wherein the first membrane of the membrane stack of the vent assembly faces the exterior of the housing (the entire membrane stack, including the first membrane of Fukushima facing exterior of the housing, Fukushima Fig. 2, [0041]).
Regarding claim 27:
Modified Fukushima discloses that the device of claim 26, wherein the device is an electronic device (Fukushima discloses its housing 15 is of an electronic device, Fukushima Fig. 2, [0041]).
Regarding claim 28:
Modified Fukushima discloses that the device of claim 27, wherein the vent assembly is positioned adjacent to an acoustic transducer because Fukushima discloses in an alternative embodiment, where Fukushima’s support layer is fixed next to a microphone 81 (the claimed “acoustic transducer”), Fukushima Fig. 12, [0188].
Regarding claim 29:
Modified Fukushima discloses that the device of claim 28, where the acoustic transducer is a speaker or a microphone, Fukushima Fig. 12, [0188].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fukushima in view of Woo, and in further view of Seo, US 2022/0088902 A1 (“Seo”).
Regarding claim 4:
Modified Fukushima does not disclose that the vent assembly of claim 3, wherein the coating comprises silicone, poly(methyl methacrylate) (PMMA), or an acrylate copolymer.
In the analogous art of water proof membranes, Seo discloses a silicon-based coating material could be formed as a water repellent layer on one surface of the porous colored membrane, which is shown as the first membrane is its membrane stack 100, Seo Fig. 2, [0031]. Seo discloses its coating allows the membrane to have smaller pores but maintain porosity, Seo [0031]. It would therefore have been obvious for one ordinary skill in the art at the time of filing for modified Fukushima to use Seo’s silicon coating as the water repellant coat if one is interested in obtaining smaller pore on the surface.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fukushima in view of Woo, and in further view of Ramamoorthy et al., US 2023/0330585 A1 (“Ramamoorthy”).
Regarding claim 6:
Modified Fukushima does not disclose that the vent assembly of claim 5, wherein the first membrane comprises a polysiloxane.
In the analogous art of filter membranes, Ramamoorthy discloses adding poly(siloxane) could be added in its membrane as a water repellent functional group, Ramamoorthy [0232]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to include poly(siloxane) in Fukushima’s membrane (including its first membrane) to enhance the water repellant function.
Claims 7–8, 11–13, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima in view of Woo, and in further view of Boluriaan et al., US 2020/0382858 A1 (“Boluriaan”).
Regarding claim 7:
Modified Fukushima discloses that the vent assembly of claim 1, wherein
the plurality of membranes comprises the first membrane (Fukushima’s support layer 3, Fukushima Fig. 4, [0039]), a second membrane (Fukushima’s joining portion 6, Fukushima Fig. 4, [0039]) and a third membrane (Fukushima’s waterproof sound-transmitting membrane 2, Fukushima Fig. 4, [0039]), wherein the second membrane (6 of Fukushima) is positioned between the first membrane (3 of Fukushima) and the third membrane (2 of Fukushima).
Fukushima discloses the air gap is a first air gap (Fukushima’s alternative embodiment shows a gap located inside its second membrane 2, Fukushima Fig. 4) and a second air gap (Fukushima’s alternative embodiment shows a gap located inside a fixing portion 7A, Fukushima Fig. 4, [0097]).
Fukushima does not show that the first air gap is positioned between the first and second membrane and the second air gap is positioned between the second and third membrane.
In the analogous art of waterproof membranes comprising gaps, Boluriaan discloses a membrane stack comprising a first membrane 602, a second material layer 606 and a third material layer 804, and comprising a first air gap 604 between the first and second membrane 602 and 606 and a second air gap 608 located between the second and third membrane 606 and 804, Boluriaan Fig. 9, [0039]. Boluriaan discloses its configuration reduce signal-to-wind noise, Boluriaan [0039]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to use Boluriaan’s configuration in Fukushima for the benefits of improving signal-to-wind noise.
Regarding claim 8:
Modified Fukushima discloses that the vent assembly of claim 7, wherein the first membrane (with a similar configuration as 602 of Boluriaan, Boluriaan Fig. 9) has a first surface (bottom surface as shown in Fig. 9 of Boluriaan) adjacent to the first air gap (604 of Boluriaan) and a second surface (top surface of Boluriaan) opposed to the first surface.
Modified Fukushima does not disclose that at least the second surface has an IPA rating of at least 30% IPA/water.
However, Fukushima discloses its membrane is waterproof, Fukushima [0039]. As discussed in claim 1, waterproof means the membrane is hydrophobic and it would have been obvious for one ordinary skill in the art at the time of filing to have a higher percent IPA rating, which means a lower water content because of its waterproof property. Additionally, as discussed in claim 1, the published Spec. admits the IPA rating is a result effective variable because it affects contamination resistance, it would therefore have been obvious for one ordinary skill in the art at the time of filing to use routine optimization to ensure modified Fukushima’s membrane has a higher than 30 IPA rating for the benefits of higher contamination resistance.
Regarding claim 11:
Modified Fukushima discloses that the vent assembly of claim 7, wherein the second membrane comprises polyethylene or polyimide (Fukushima discloses its second membrane–joining portion 6 is polyimide, Fukushima [0089]).
Regarding claim 12:
Modified Fukushima discloses that the vent assembly of claim 7, wherein the third membrane comprises polyethylene (Fukushima discloses its third membrane 3 could be polyethylene, Fukushima Fig. 4, [0068].
Regarding claim 13:
Modified Fukushima does not disclose that the vent assembly of claim 7, wherein the second membrane has an IPA rating of at least 30% IPA/water.
However, Fukushima discloses its membrane is waterproof, Fukushima [0039]. As discussed in claim 1, waterproof means the membrane is water repellent and it would have been obvious for one ordinary skill in the art at the time of filing to have a higher percent IPA rating, which means a lower water content because of its waterproof property. Additionally, as discussed in claim 1, the published Spec. admits the IPA rating is a result effective variable because it affects wetting/contamination resistance, it would therefore have been obvious for one ordinary skill in the art at the time of filing to use routine optimization to ensure modified Fukushima’s membrane has a higher than 30 IPA rating for the benefits of higher contamination resistance.
Regarding claim 16:
Modified Fukushima discloses that the vent assembly of claim 7, wherein the third membrane does not comprise a coating (Fukushima does not disclose its third membrane 2 comprise a coating, Fukushima entire document).
Claims 14–15 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima in view of Woo, Boluriaan and in further view of Seo.
Regarding claim 14:
Modified Fukushima does not explicitly disclose that the vent assembly of claim 13, wherein the second membrane (6 of Fukushima) comprises a coating.
However, Fukushima discloses its membrane is waterproof, Fukushima [0039].
Additionally, Seo discloses that silicon-based coating material could be formed as a water repellent layer on a surface of the membrane to give the membrane waterproof properties, Seo Fig. 2, [0031]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to include Seo’s silicon-based coating in Fukushima’s membrane to provide the waterproof properties.
Regarding claim 15:
Modified Fukushima discloses that the vent assembly of claim 14, wherein the coating comprises silicone, poly(methyl methacrylate) (PMMA), or an acrylate copolymer (as modified in claim 14, the coating comprises silicone, Seo Fig. 2, [0031]).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. US 12,621,940 B2. This is a statutory double patenting rejection.
In this case, claim 1 of the instant application recites all the limitation of claim 1 of the U.S. patent, and they share an overlapped bubble point range.
Response to Arguments
Claim Rejections - 35 USC § 112(b)
The applicant argues that the term “substantially” in the claim is provided with sufficient guidance to determine the degree of occlusion needed to practice the claimed invention, Applicant Rem. dated Jul 07, 2026 (hereinafter “Applicant Rem.”) p. 7. The applicant states: “a person of ordinary skill in the art would have no difficult determining what was the substantial occlusion needed so as to produce the cited membrane stack, which has a first membrane with an IPA rating of at least 30% IPA/water and at least one membrane with a bubble point of 2 bar, Id. at p. 7.
This is not found persuasive. The term “occlude” by dictionary definition is “stop/close up or obstruct an opening, orifice or passage”. The claimed limitation of “substantially occlude” is therefore interpreted as related to a degree of opening of passages in the membrane. A person of ordinary skill in the art would not be able to deduct a degree of opening of those passages from the claimed IPA rating and bubble point. On the other hand, if the applicant believes the term “substantially occlude” is the same as claiming the recited IPA rating and bubble point, then this limitation would be a mere repeat of the limitation claiming IPA rating and bubble point. If the applicant could confirm in written that the two limitations in the instant application are meant to be the same thing, the examiner is happy to drop the rejection. In which case, the applicant is reminded that the claim could potentially be objected for redundancy.
Claim Rejections - 35 USC § 103
The applicant argues that Fukushima’s joining portion is not a membrane, Applicant Rem. p. 8. The applicant states Fukushima’s joining portion 6 is an adhesive layer, not a membrane, Id. at p. 9. The applicant states Fukushima’s joining portion 6 cannot be modified to be membrane because it is utilized to join the waterproof sound transmitting membrane 2 and to the support layer 3, Id. Additionally, the applicant argues that there lacks an air gap between adjacent membranes and Woo does not cure such deficiency, Id.
Noted here that the applicant does not have a specific definition for the term “membrane”, the term is therefore interpreted under BRI. Under BRI, Fukushima’s joining portion 6 is a membrane because it has a similar thickness and shape compared to Fukushima’s membrane 3 and 2. Additionally, it is not relevant what Fukushima’s adhesive film is used for under the scope of claim 1. Noted here that air gap is mapped to Fukushima’s non-joining region 4, which is between adjacent membranes 3 and 2 of Fukushima. Note here that the instant Spec. does not have a specific definition for term “adjacent” and under the broadest reasonable interpretation, Fukushima’s membrane 3 and 2 are “adjacent to each other”. Applicant’s arguments are therefore not persuasive.
The applicant traverses the rejection based on impermissible hindsight. The applicant argues that the Office Action improperly relying on the present specification in the obviousness analysis, and knowledge gleaned only from applicant’s disclosure, Applicant Rem. p. 10.
Noted here that Office Action relies on IPA rating test for the rejection, IPA rating test is mentioned in the published instant Spec. (hereinafter “Spec.”), [0095]. However, IPA rating test is not applicant’s work, it is a standard officially reaffirmed and originally developed in 2004 to determine a fabric’s low-energy surface finish or resistance to wetting2. IPA rating test is therefore treated as common knowledge in the art, which is also developed before the instant invention, and therefore qualifies as prior art. Per ISO-23232-2009, IPA test rating grade is assigned based on the highest percentage of IPA or alcohol solution that the fabric or substrate can repel without wetting, darkening, or wicking within a set time frame3. ISO-23232 also states that IPA/water test rating typically range from 0 (poor resistance, wetting occurs to a higher number4. It is therefore common knowledge that IPA/water test rating is a result effective variable because it directly related with material wetting resistance. Combining Fukushima’s disclosure of its membrane being waterproof, it would have been obvious for one ordinary skill in the art at the time of filing to optimize Fukushima’s waterproof membrane to be at least 30% IPA/water to have an optimum resistance to water or aqueous stains, because the higher the IPA/Water rating, the higher resistance to wetting. The rejection is therefore not hindsight, because IPA/water rating test is knowledge within the level of ordinary skill in the art at the time of claimed invention was made, MPEP IPA/water rating test is not Applicant’s work, and therefore, there is no hindsight.
The applicant then argues that waterproof does not indicate hydrophobic, the applicant argues Fukushima solely discloses a waterproof membrane, but not a hydrophobic membrane. The applicant argues that the Office Action appears to conflate the definition of waterproof and hydrophobic, the applicant gives an example where Fukushima’s waterproof membrane may simply have a pore size that does not allow ingress of liquid water, rather than additionally being hydrophobic (water-repelling), Applicant Rem. p. 11. The applicant also argues that the office fails to articulate a reasoning as to how Fukushima’s waterproof membrane 2 reasonably apprises one of ordinary skill in the art to modify the same to have an IPA rating of at least 30% IPA/water as claimed, Applicant Rem. p. 11.
As stated in previous section, IPA test rating grade is assigned based on the highest percentage of IPA or alcohol solution that the fabric or substrate can repel without wetting, darkening, or wicking within a set time frame5. It is well within the ambit of one ordinary skill in the art to understand that both waterproof and hydrophobic membrane repels water. Under the specific context of IPA/water wetting rating test, the distinction between “waterproof” and “hydrophobic” is not meaningful. Additionally, the applicant relies on a hypothetical example of Fukushima’s waterproof membrane simply have a pore size that does not allow ingress of liquid water, which is neither supported by Fukushima nor distinguishes between the concept of hydrophobic and waterproof under the context of IPA wetting test.
Applicant’s arguments are therefore not persuasive.
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 QIANPING HE whose telephone number is (571)272-8385. The examiner can normally be reached on 7:30-5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached on (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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/Qianping He/Examiner, Art Unit 1776
1 does PTFE REDUCE SURFACE NERGY - Google Search
2 ipa WETTING RATING TEST STANDARD YEAR - Google Search
3 ISO-23232-2009.pdf
4 ISO-23232-2009.pdf
5 ISO-23232-2009.pdf
Prosecution Insights