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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`15/351,564
`
`11/15/2016
`
`KOji MOTOMURA
`
`PIPMM-56685
`
`2783
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`02/21/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`NISULA~ CHRISTINE XU
`
`1789
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
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`02/21/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/351,564
`Examiner
`CHRISTINEX NISULA
`
`Applicant(s)
`MOTOMURA et al.
`Art Unit
`AIA Status
`1789
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1. 136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 16 March 2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 15 November 2016 is/are: a)[:j accepted or b). objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
`
`b)D Some”
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`C)D None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
`
`Part of Paper No./Mai| Date 20190207
`
`

`

`Application/Control Number: 15/351 ,564
`Art Unit: 1789
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Drawings
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`2.
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`The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they
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`include the following reference character(s) not mentioned in the description: 41 F and 42F in
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`Fig.8 are not described in the specification. Corrected drawing sheets in compliance with 37
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`CFR 1.1 21 (d), or amendment to the specification to add the reference character(s) in the
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`description in compliance with 37 CFR 1.121 (b) are required in reply to the Office action to
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`avoid abandonment of the application. Any amended replacement drawing sheet should include
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`all of the figures appearing on the immediate prior version of the sheet, even if only one figure is
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`being amended. Each drawing sheet submitted after the filing date of an application must be
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`labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR
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`1.121 (d).
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`If the changes are not accepted by the examiner, the applicant will be notified and
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`informed of any required corrective action in the next Office action. The objection to the
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`drawings will not be held in abeyance.
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`3.
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`The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they
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`do not include the following reference sign(s) mentioned in the description: 41 P and 42P in
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`paragraph [0112] of the specification are not disclosed in the drawing, i.e., Fig.8. Corrected
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`drawing sheets in compliance with 37 CFR 1.121 (d) are required in reply to the Office action to
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`avoid abandonment of the application. Any amended replacement drawing sheet should include
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`all of the figures appearing on the immediate prior version of the sheet, even if only one figure is
`
`being amended. Each drawing sheet submitted after the filing date of an application must be
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`labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR
`
`

`

`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 3
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`1.1 21 (d).
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`If the changes are not accepted by the examiner, the applicant will be notified and
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`informed of any required corrective action in the next Office action. The objection to the
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`drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 103
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`4.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`5.
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`This application currently names joint inventors. In considering patentability of the claims
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`the examiner presumes that the subject matter of the various claims was commonly owned as
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`of the effective filing date of the claimed invention(s) absent any evidence to the contrary.
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`Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective
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`filing dates of each claim that was not commonly owned as of the effective filing date of the later
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`invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any
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`potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`7.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 4
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`8.
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`Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Green et
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`al. (US 2010/0181249) (Green) in view of Kazuhiro et al. (JP 2015040366) (Kazuhiro) in
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`reference to the machine translation, taken in view of evidence provided by Lin,
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`“Fundamentals of Electrospinning & Electrospun Nanofibers — 2.6.1 Concentration”,
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`(Lin).
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`9.
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`With respect to claims 1, 2, and 4, Green teaches a multi-layer filter media (i.e.,
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`laminated nonwoven fabric) including a melt-blown fiber filter media layer (i.e., first nonwoven
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`fabric containing first fibers), an electrospun nanofiber media layer (i.e., second nonwoven
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`fabric), and a scrim layer formed via spun bonding process or carding process (Le, a third
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`nonwoven fabric containing third fibers), as shown in Fig.1 of the Office Action below, (Green,
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`[0010]; [0036]; [0063]; Fig.2),
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`
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`Fig.1 (Green, Fig.2)
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`wherein the meltblown fiber filter media layer 202 contains fibers with a median fiber
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`diameter between 1 um and 500 um (Green, [0030]),
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`wherein the fibers of the electrospun media layer 204 have a median fiber diameter
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`between 50 and 700 nanometers (i.e., nanofibers see [0010], per claim 2)) (Green, [0032]),
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 5
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`wherein the scrim layer 206 has a median fiber diameter between 1 pm and 50 um
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`(Green, [0035-0036]),
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`wherein the scrim layer is located on the opposite side of an opposite side to the first
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`nonwoven fabric as shown in Fig.1 above (Green, [0036]).
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`Examiner notes the meltblown fiber filter media layer herein will be referred to as the
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`meltblown layer and the electrospun media layer herein will be referred to as the electrospun
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`layer.
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`While Green does not explicitly teach the “average fiber diameter” of the meltblown layer
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`and the electrospun layer, given that the median diameter of the meltblown layer is between 1
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`pm and 500 um and the median diameter of the electrospun layer is between 50 and 700
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`nanometers, wherein 1 pm is equal to 1000 nanometers (Le, 50 and 700 nanometers = 0.05
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`and 0.7 pm), it is clear the average fiber diameter of the fibers in the meltblown layer would
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`necessarily be larger than an average fiber diameter of the fibers in the electrospun layer.
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`Green further teaches the multi-layer filter media may be formed by using the melt-blown
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`fiber media layer as the substrate, depositing the electrospun nanofiber media layer on the melt-
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`blown fiber media layer, and then laminating the scrim layer onto the electrospun nanofiber
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`media layer after they are deposited on the meltblown layer (Green, [0063]) (Le, the multi-layer
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`filter media corresponds to laminated nonwoven fabric, wherein due to the structure as shown in
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`Fig.2 the electrospun layer (i.e., second nonwoven) is laminated on the meltblown layer (i.e.,
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`first nonwoven) and the scrim layer (i.e., third nonwoven) is laminated on the electrospun layer
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`(i.e., second nonwoven) as the multi-layer filter media is formed by lamination, per claim 1).
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`Green does not explicitly disclose an adhesive containing a plurality of particles, wherein
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`some of the plurality of particles of the adhesive are attached to the second nonwoven fabric,
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 6
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`wherein at least one of the first nonwoven fabric and the third nonwoven fabric is adhered to the
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`second nonwoven fabric via the some of the plurality of particles of the adhesive, wherein an
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`average particle diameter of the plurality of particles of the adhesive is smaller than the average
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`fiber diameter of the first fibers.
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`With respect to the difference, Kazuhiro teaches a filter medium for air filter including
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`nanofibers in a nanofiber layer (Kazuhiro, title; problem to be solved),
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`wherein nanofibers in the nanofiber layer are properly bonded by spreading adhesive
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`particles in an appropriate amount during electrospinning of the nanofiber layer in the spinning
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`space, (Kazuhiro, [0026]; problem to be solved),
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`wherein as a result of spreading adhesive particles during electrospinning of the
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`nanofiber layer, the nanofiber filter medium can bind the nanofiber surface layer and the cover
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`sheet with adhesive particles when curing with the base material (Kazuhiro, [0026]),
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`wherein when the diameter of the adhesive particles is 1 to 100 um to produce favorable
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`results (Kazuhiro, [0034]).
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`As Kazuhiro expressly teaches spreading adhesive particles in an appropriate amount
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`during electrospinning of the nanofiber layer allows the nanofiber layer and the cover sheet to
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`withstand damage such as peeling/tearing and fracturing due to the blocking phenomenon
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`during product removal or unwinding, so that it can be maintained and easily handled therefore
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`improving the processability of the nanofiber filter medium so that it is possible to provide the
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`filter medium, simply, quickly, with good yield, and economically (Kazuhiro, [0034]).
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`Green and Kazuhiro are analogous art as they are both drawn to nanofiber filter media.
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`In light of the motivation provided by Kazuhiro, it therefore would have been obvious to one of
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`ordinary skill in the art before the effective filing date of the invention to spread adhesive
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`particles with a diameter within 1 to 100 pm during electrospinning of the nanofiber layer in the
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`spinning space of Green, in order to improve processability of the nanofiber filter medium so
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 7
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`that it is possible to provide the filter medium, simply, quickly, with good yield, and economically
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`(Kazuhiro, [0034]).
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`Given the plurality of particles of the adhesive are spread in the spinning space during
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`electrospinning of the nanofiber layer (i.e., second nonwoven fabric), it is clear some of the
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`plurality of particles are attached to the nanofiber layer (i.e., second nonwoven fabric).
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`Given the adhesive particles of Kazuhiro are used to bind the nanofiber surface layer to
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`the cover sheet and the plurality of adhesive particles are spun with the nanofibers of the
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`nanofiber layer, it is clear some of the plurality of adhesive particles of Green in view of
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`Kazuhiro would be present on the surface of the nanofiber layer and adhere to either the
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`meltblown layer or the scrim layer (i.e., at least one of the first nonwoven fabric and the third
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`nonwoven fabric).
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`Given the particle diameter of the plurality of particles of the adhesive is within 1 to 100
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`um, it is clear, in some cases, the average particle diameter of the plurality of particles of the
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`adhesive would be smaller than the average fiber diameter of the meltblown fibers (i.e., 1 to 500
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`pm).
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`It should be noted that in the case where the claimed ranges overlap or lie inside ranges
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`disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d
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`257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQZd 1934 (Fed. Cir.
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`1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to
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`show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330
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`(Fed. Cir. 2003).
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 8
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`10.
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`With respect to claim 3, given the particle diameter of the plurality of particles of the
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`adhesive is within 1 to 100 um, it is clear the average particle diameter of the plurality of
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`particles of the adhesive would be larger than the average fiber diameter of the spunbound
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`fibers (i.e., 0.05 to 0.7 pm).
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`11.
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`With respect to claim 5, Green in view of Kazuhiro further teaches when the adhesive is
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`sprayed by the electrospinning method, it becomes a mixed layer with ultrafine fibers with many
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`spindle-like beads and spherical fine particles when the solution concentration is lower and
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`solvent evaporates (Kazuhiro, [0040]).
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`As evidence by Lin, the ultrafine fiber with many spindle-like beads corresponds to a
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`beads-on-string morphology of electrospun products as dilute polymer solutions and
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`evaporation of the solvent result in beads-on string structures,
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`wherein the beads-on-string structure contains thin filaments and droplets or beads (Lin,
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`2.6.1 Concentration, pg. 40 line 1 — pg. 41 line 13; Fig. 2.8).
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`As Kazuhiro expressly teaches the spray glue particles in the shape close to the true
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`sphere are in the nanofiber layer and connect the surrounding nanofibers (Kazuhiro, [0040]),
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`wherein the spray glue particles are a suspension of adhesive particles and the particles
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`described in Kazuhiro are the adhesive particles in the suspension of the spray glue particles
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`(Kazuhiro, [0017]).
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`Green and Kazuhiro are analogous art as they are both drawn to nanofiber filter media.
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`In light of the motivation provided by Kazuhiro, it therefore would have been obvious to one of
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`ordinary skill in the art before the effective filing date of the invention to ensure when the
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`adhesive is sprayed, the solution concentration is lower and the solvent evaporates so that
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`ultrafine fibers with many spindle-like beads (i.e., beads-on-string structure) and spherical fine
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`particles are produced in the nanofiber layer of Green as the shape close the true sphere are in
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 9
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`the nanofiber layer and connect the surrounding layers, and thereby arrive the claimed
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`invention.
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`Given the nanoparticle layer of Green in view of Kazuhiro contains adhesive in the form
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`of ultrafine fibers with many spindle-like beads (i.e., beads-on-string structure) and spherical fine
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`particles, it is clear one of the beads in the beads-on-string structure would correspond to one of
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`the plurality of particles and the string in the beads-on-string structure would correspond to the
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`filament in view of evidence provided by Lin.
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`While it is the Examiner’s position one of the beads in the beads-on-string structure
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`would correspond to one of the plurality of particles and thus the beads-on-string structure
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`would correspond to an adhesive filament connected to any one of the plurality of particles of
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`the adhesive, even if not, as the adhesive undergoes electrospinning, it is clear one of the
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`spherical fine particles would be in contact with the beads-on-string structure, and thus in
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`contact with the string (i.e., filament), corresponding to an adhesive filament connected to any
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`one of the plurality of particles of the adhesive.
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`Conclusion
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`12.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to CHRISTINE X NISULA whose telephone number is (571)272-2598. The
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`examiner can normally be reached on Mon - Fri 9:30 - 5:00.
`
`Examiner interviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Marla McConnell can be reached on (571) 270-7692. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 15/351 ,564
`Art Unit: 1789
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`Page 10
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`Information regarding the status of an application may be obtained from the Patent
`
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`/C.X.N./
`
`Examiner, Art Unit 1789
`
`/CORIS FUNG/
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`Primary Examiner, Art Unit 1787
`
`