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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-6 and 17-20 in the reply filed on 4/8/24 is acknowledged. Claim 28 was added on a later date.
Based on applicant’s persuasive arguments, previously withdrawn claims 2, 4, 18 and 19 are hereby reinstated
Claims 29-31 are part of the air channeling device of the coating facility, which were part of the non-elected invention as of 4/8/24. Therefore, they are held as withdrawn from consideration. However, applicant may rejoin them upon finding of allowability of the active claims, as combination of the filter and air-channeling device.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 1: “filter device … includes: a disposable structure composed of one or more thermally decomposable disposable components located within the filter housing.”
The only disclosure appears to support this seems to be figure 2 A-C. Fig. 2A shows a paneled structure 86 with slots 102. Figure 2B shows the media. The claim element has, therefore, the media 96 disposable (that can be burned.)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Argument is not persuasive: the filter device including ‘a disposable structure’ is a generic place holder for applicant’s disclosed structures and equivalents thereof.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3 and 28 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.
Claims 3 and 28 are confusing with the added elements in c)-e). Unclear whether the filter structure and filter device are the same or different. If different, this would appear mixing the embodiments of figures 2 and 3 together. Similarly, filter carrier structure and filter housing. Issue with antecedents.
Arguments are not persuasive. Please note that any color coding does not get transmitted to the application file – the office is still in the first half of 20th century in this regard - they are black and white.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 28 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 is limited to a disposable components within the filter housing. Claim 35 requires thermally regenerable reusable components. Claim 3 adds more regenerable components in steps a)-e), and also makes in step e) the filter device as a whole regenerable, which makes claim 3 broader than or different in scope from claims 1 and 35 from which it depends. Please note that claim 3 can have all of a-e present together.
Claim 28 adds more disposables, including the entire structure as disposable, whereas claim 1 has disposable components are within the filter housing.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Arguments are not all persuasive – and are addressed in the rejection.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 1, 3-6, 17-20, 28 and 33-38 are rejected under 35 U.S.C. 103 as being unpatentable over Link et al (US 9,321,070) in view of Nystrom et al (US 6,162,270) and Slama et al (US 2017/01366483.)
Claims broadly recite a paint booth filtration system having an air channeling device (claim 37), a filter module having a module housing, a filter devices having filter housing and disposable structure for components in the filter housing (like the media) in claim 1. Other dependent claims recite what combination of elements are disposable and regenerable.
The Link reference belongs to the applicant. Link teaches the plenum or air-channeling device, which is part of the paint booth, and is not disposable, and to which the filter module is connected during operation. Link substantially teaches the details claimed. Claim 28 has all elements disposable under the broadest reasonable interpretation. Link’s teaching, comparing the background description, is moving away from reusable parts to disposable parts [emphasis].
Link is the US version of the DE patent cited by applicant (DE 10 2011 108 631 A1) as teaching a paint booth overspray filter system. Applicant’s invention is described as an improvement over this, characterized by providing more regenerable parts.
For claim 1, Link does not teach two or more filter devices in a module housing. However, dividing the single filter device into a number of filter devices in a module housing is only prima facie obvious to one of ordinary skill in the art. In fact one would do so to reduce the size of the devices for easy handling. See MPEP 2144.04 for changes in size, proportion or duplication of parts. This part is further addressed infra.
Applicant’s claims are directed to a filter module, with varying degrees of regenerable material usage (as alternatives) as further recited in the dependent claims, the rest being of disposable materials like paper and plastic.
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While Link teaches recycling the filter module (col. 2 lines 48-50, claims,) Link does not appear to teach thermally regenerable materials for the filter module. However, such material usage is known in this art, as is seen in the teaching of Nystrom. Nystrom teaches a downdraft paint booth (abstract) having a metallic filter (steel: col. lines 26-40) that can withstand regeneration by heat, and is reusable. The filter is removed and cleaned using heat or cleaning chemical solution – see col. 7, lines 15 – col. 8 line 12, and 8 line 47 – col. 9 line 36.
Nystrom teaches in details the need for re-usable filters in the background art. Having reusable filters are also common sense to reduce waste. Therefore, it would have been obvious to one of ordinary skill to use the teaching of Nystrom in the teaching of Link for such improvements as suggested by Nystrom.
Link’s fig. 1 is substantially similar to applicant’s fig. 1. Link teaches the air-channeling device as claimed, with the filter modules connected as claimed – see Id. Details of the filter module are seen in figures 3-4 and 6.
Col. 7 lines 48-60 of Link teaches the listed disposable filter materials of the dependent claims.
Link’s teaching of the filter structure is seen in figures 3, 4 and 6, and col. 6, lines 48-63. This includes flat filter plates (flat media) and honeycomb designs, but fails to teach “two or more filter devices” as in claim 1 and vertically stacking as in claim 34. However, having plurality of these filters stacked instead of just one large filter, would have been prima facie obvious to one of ordinary skill in the art. In fact, one would do so to reduce the size of these filters for easy handling. See MPEP 2144.04 for change in shape, size, making integral or separable are prima facie obvious.
Slama teaches filters for similar applications (like automobile painting booth overspray: [0006]) which are made of paper or plastic materials and made in the form of media filters in housings in foldable box-like structures like what is suggested as alternates by Link in col. 6, lines 58-63. Plurality of these structures can be easily loaded and stacked as the “compartment structures” (Id.) into the module housing of link, fig. 3. Slama teaches in [0025] that these filters are inexpensive, have extended surface area, and can be fitted in conventional modular wall frames known in industrial coating applications. Therefore, it would also have been obvious to one of ordinary skill in the art to use the teaching of Slama in the teaching of Link for the advantages taught by Slama.
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For claim 38, both Link (col. 3 lines 7 and 8) and Slama teach disposable filter media which are vertically oriented in the filter for operation.
Response to Arguments
Applicant's arguments filed 7/5/26 have been fully considered but they are not persuasive.
The argument that Link teaches placing filter plates through slots, or using openings in a substantially horizontal plate 78, etc., these arguments are about bodily incorporation. In response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
THIS ACTION IS MADE FINAL. 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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
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