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 with traverse of group I, claims 1-4, 7, 9, 15-18, 20, 22-23 and 27-29 in the reply filed on 12/3/24 is acknowledged. The traversal is on the ground(s) that applicant considers that searching all groups to not be a serious burden. This is not found persuasive because the groups are restricted on the basis of a lack of unity of invention. The current groups do not share the same technical feature for the reasons stated in the restriction requirement of 10/3/24.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement filed 2/20/25 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
The NPL document is not in English.
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.
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 20, 22-23 and 27-29 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 20 recites the filter element of claim 1 is manufactured by infrared sintering or by an additive manufacturing process. As currently amended claim 1 requires the filter body and head structure are integrally sintered together. The recitation of sintering in claim 1 appears to be contradictory to the additive manufacturing process recited in claim 20 as these two manufacturing processes would be incompatible with one another or mutually exclusive. Therefore, the precise metes and bounds of the claim cannot be determined.
Claim 22, at line 9 recites the filter element receptacle comprises a sealing structure cooperating with the seal formed in the head structure of the filter element. The claim appears to be directed to the filter element holder alone and not in combination with the filter element. However, the claim also appears to require the seal of the filter element to cooperate with the receptacle which would require the filter element. For examination purposes the sealing structure of the receptacle is assumed to be configured to cooperate with the seal of the filter element.
The additional claims are rejected as depending from claim 22.
Claim Rejections - 35 USC § 102 and 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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) 1-4, 7, 9, 15-16, 20, 22-23 and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al. US 2018/0236388 in view of Herding DE 35 44 404.
Claim 1, Harris teaches a filter element (100) comprising a throughflow-porous filter body (101) extending between a head end (at 121) and a longitudinally opposite foot end (at 111), where a head structure (121) is formed at the head end of the filter element, the head structure having a seal (425) configured to seal the filter element with a filter element holder, the head structure has a sidewall (125) extending in the longitudinal direction and the seal is formed on the sidewall (fig.1-2).
Harris teaches the filter element of claim 1 but does not teach the head structure and filter body integrally formed of a sintered particulate material.
Herding teaches a filter element (20) comprising a throughflow porous filter body (23) extending between a head end and a longitudinally opposite foot end, a head structure (21) formed at the head end of the filter element, the head structure has a sidewall extending in the longitudinal direction, the filter body and the head structure are composed of plastic particles integrally sintered together (fig. 1, description par. 1, 8). Providing a filter element with a head structure and filter body made from sintered plastic particles is known in the art as demonstrated by Harding and would have been obvious to one of ordinary skill in the art because the material allows for flexing of the filter element without material fatigue as well a freedom from cracks and is dimensionally stable (description par. 10-11).
Claims 2-4, 9 and 15-16, Harris further teaches the seal is formed on the sidewall of the head structure so as to extend circumferentially around a clean fluid outlet opening formed in the head structure (fig. 1-2); the seal has a sealing element extending transversely to the longitudinal direction and the sealing element is an O-ring (fig. 1-2); the sidewall has a recess for receiving the sealing element, wherein the recess extends orthogonally to the longitudinal direction (fig. 1-2); the filter element comprises a foot end wall (111) and two wide and two narrow sidewalls connected to each other, a region of the sidewalls forms the filter body, where the wide sidewalls is formed in a corrugated manner, peaks and valleys of the sidewall have a course extending in the longitudinal direction of the filter element and the peaks and valleys in the head structure flatten toward the head end so that a clean fluid outlet (123) has a substantially rectangular cross section (fig. 1-2); the head structure forms at least one outwardly projection protrusion (122) capable of cooperating with a retaining structure formed on a filter element holder to secure the filter element against displacement in the longitudinal direction (fig. 1-2); and the head structure projects outwardly in the region of the sidewall at least in a portion thereof so that the head structure forms a protrusion (122) forming an end face that is direction towards the foot end of the filter body (fig. 1-2) (the recitation of the end face cooperating with a mating end face formed on the filter element holder in order to secure the filter element against displacement in the longitudinal direction is a recitation of intended use and does not provide any further structural limitations to the filter element).
Claim 7, Harris in view of Herding teaches the filter element of claim 4 but does not teach a plurality of recesses. The recitation of a plurality of recess is a recitation of a duplication of the parts of Harris, namely providing more than one recess capable of holding a seal. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced, In re Harza, 124 USPQ 378 (1960). Providing multiple recess that could hold a seal is well known in the art and would have been an obvious modification to one of ordinary skill in the art as a way to provide an additional seal in the even one of the seal fails.
Claim 20 is a recitation of how the filter body and head structure are manufactured and renders the claim a product by process claim. Harris in view of Herding teaches the filter element of claim 1 where the filter body and head structure are sintered. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USDQ 964 (1985). The process of making the filter body and head structure of Herding is deemed a structural equivalent to a filter body and head structure made by infrared sintering.
Claim 22, Harris teaches a filter element holder adapted to receive a filter element according to claim 1 comprising: a support plate (205) having a filter element receptacle (208) into which the filter element can be inserted in such a way that the filter element is seated with its head structure in the filter element receptacle, the receptacle comprises a sealing structure (the wall of the receptacle) configured to cooperate with the seal formed in the head structure of the filter element (fig. 1-2, 4).
Claims 23 and 27, Harris further teaches the filter element receptacle comprises a collar extending away from the support plate in a longitudinal direction, the collar comprises a collar abutment surface adapted to cooperate with the seal of the filter element (fig. 1-2, 4); a seal retaining structure includes a recess (the L-shaped recess in 208) that is formed on the collar abutment surface which is adapted to receive the seal of the head structure, the seal retaining structure extends over an entire circumference of the collar abutment surface (fig. 4).
Claim 28, Harris teaches a combination of a filter element according to claim 1 and a filter element holder according to claim 23, into which the filter element can be inserted such that in the filter element in the inserted state separates a raw fluid space from a clean fluid space of a filter device, the sidewall of the head structure and the filter element receptacle cooperate to seal the filter element with respect to the filter element holder in cooperation with the sealing element extending transversely to the longitudinal direction (fig. 1-4).
Claim 29, Harris teaches a filter device comprising: a raw fluid space and clean fluid space, the filter device comprises the combination of claim 28, the filter element is inserted into a filter receptacle formed in the filter element holder such that the filter element in the inserted state separates the raw fluid space from the clean fluid space (fig. 1-5).
Response to Arguments
Applicant's arguments filed 9/23/25 have been fully considered but they are not persuasive.
Applicant argues that claim 22 would be interpreted by one of ordinary skill in the art in the manner suggested by the examiner and therefore the claim is definite. However, as explained in the rejection, the wording of the claim indicates that the filter element be present as part of the claimed invention in order to cooperate with the sealing structure of the filter element holder. The claim language currently requires both a filter element holder and a filter element. Therefore, the metes and bounds of the claim are indefinite as the claim is directed to a filter element holder alone and not a combination of a filter element holder and filter element. The combination is recited in claim 28. The examiner made an assumption in order to examine the claims. Applicant should amend claim 22 to clearly define the metes and bounds of the invention without the need for an assumption that the claim recites something that it currently does not.
Applicant argues that Harris teaches the media is securely potted, thermally bonded, glued or otherwise firmly attached to the top and bottom caps and is not integrally sintered together. Therefore, the office action looks to the combination of Harris with Herding to remedy the defects of Harris but includes the erroneous assertion that Herding describes the head structure and filter body are composed on sintered plastic particles. The examiner does not dispute the teaching of Harris. However, regarding the alleged erroneous assertion of Herding, on pg. 3 of the translation of Herding (the 12th paragraph on pg. 3 just below the description of fig. 12), Herding states:
“The filter 20 according to the invention essentially consists of a base 21 with fastening bores 22 and a bellows-shaped section 23.”
Thus, it is clear from this teaching in Herding that the filter 20 includes both the base 21 and the bellows shaped section 23. Page 4, the second paragraph on the page, Herding then states:
“The filter 20 is produced in such a way that a shaped body is first produced, the pore size of which is relatively large due to the coarse material. The large pore size has the advantage that the opening cross-section between the z. B. sintered particles is large, but the individual particles due to their sintering give the molded body sufficient stability, especially against mechanical stress.”
This portion of Herding clearly teaches the filter 20 is produced by sintering particles together and the previous portion of Herding clearly teaches the filter 20 includes both the base 21 and the bellows 23. The clear teaching of Herding is that both the base and the bellows are integrally sintered together as the filter 20 consists of both the base and the bellows and the filter is sintered together. Figure 1 also clearly shows the filter base and bellows being integral as there is no break or change in the hash lines of figure 1 between the bellows and the base.
Applicant argues that one of ordinary skill in the art upon reading the Herding reference would understand that the head structure is made of plastics material that has to be cast to the filter body, e.g., by injection molding. The casting process includes embedding stiffening element made from metal in the plastics material forming the head structure. There is no teaching or support in Herding of such an injection molding or casting of the head structure to the filter body or embedding stiffening elements of metal within the head structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779