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 § 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) 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Franco EP 1 776 992 in view of Hawkins et al. US 2009/0134087.
Claim 8, Franco teaches a filter housing comprising a base (2) and cooperating housing cover (3) that when the housing cover is fully seated on the base define a fluid circulating region and that is configured to capture a replaceable filter cartridge (9) therein, the base including a circumferentially continuously planar pedestal (30) configured to engage a bottom surface of a replaceable filter cartridge, the base having a pair of primary circulation ports (6, 7) for circulating fluid through the filter cartridge and fluid circulating region and further having a drainage port (8) that is sealingly separated from the circulating region by an annular radially compressed seal (29) in a circumferential groove (28) on the housing cover when the filter housing cover is fully seated on the base and wherein when the housing cover is partially removed upwardly from the base, the annular radial seal is moved to a non-blocking position whereby fluid in the circulating region may enter the drainage port to be drained (fig. 1). The recitation of the filter housing being for an off road vehicle engine with an interface and crankcase oil sump at a bottom of the engine, the interface being above the oil sump and gravity draining of oil to the crankcase oil sump are recitations of intended use that do not provide any further structural limitations to the filter housing. Franco does not teach a ported projection.
Hawkins teaches a filter housing comprising a base (308) and cooperating housing cover (104) that, when the housing cover is fully seated on the base, define a fluid circulating region configured to capture a filter cartridge therein, the base including a planar pedestal (328) configured to engage a bottom surface of a filter cartridge and a ported projection (314) configured to receive the filter cartridge, the ported projection including one or more ports (318) extending laterally from the projection (fig. 1-6). Franco teaches the cover helps to seat/hold a filter cartridge in place (pg. 5, par 3-4). Hawkins teaches the cover and the ported projection cooperate with one another to securely hold a filter cartridge within the circulating region (par 27). It would have been obvious to one of ordinary skill in the art to use the ported projection of Hawkins as a way to provide a secure holding of a filter cartridge within the housing.
Claims 9-10, Franco further teaches the drainage port is positioned in an annular sump (25) in the filter housing base (fig. 1); the annular sump defines the planar pedestal and the planar pedestal includes a filter cartridge engaging surface and the planar pedestal is continuously planar between the filter cartridge engaging surface and the annular sump (fig. 1).
Claim 11, Franco further teaches a replaceable filter cartridge that is spool shaped with filter media extending between two ends thereof and an axially extending aperture (11) extending therethrough (fig. 1) and Hawkins further teaches the ported projection is conformingly sized to an axially extending aperture of a filter cartridge and is insertable therein (fig. 1-6). Franco does not teach two end caps. In the previous office action, the office asserted that the use of two endcaps is common knowledge in the art. This statement is now taken to be admitted prior art because applicant failed to traverse the assertion of official notice.
Claim 12, Franco further teaches the housing cover has a downward central projection (10) sized to the axially extending aperture of the filter cartridge and is insertable therein (fig. 1).
Claim 13, Franco teaches the filter housing in combination with the filter cartridge and an internal combustion engine (Description line 1) but does not specifically teach an off road vehicle engine as recited. One of ordinary skill in the art would readily recognize that internal combustion engines are frequently used in off road vehicles and the application of the filter housing in such a vehicle would have been well within the normal capabilities of one of ordinary skill in the art as a way to effectively filter the oil required by an off road vehicle’s internal combustion engine. Engines commonly have an oil sump at a bottom of the engine and positioning the filter above the oil sump is also very common in the art. In the previous office action, the office asserted that both a sump at a bottom of an engine and positioning the filter above the sump were common knowledge in the art. This statement is now taken to be admitted prior art because applicant failed to traverse the assertion of official notice.
Claim(s) 1-7 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Franco EP 1 776 992 in view of Walgren et al. US 8,246,825 and Hawkins et al. US 2009/0134087.
Claim 1, Franco teaches a filter housing comprising a base (2) and cooperating housing cover (3) that define a filter cartridge receiving region (4), wherein the base having an upper portion and a lower portion (5), the upper portion defining a central recess, the base having a planar pedestal (30) configured to engage a filter cartridge, an annular sump extending downwardly from the central recess below an upper pedestal surface, the sump surrounding the planar pedestal, the planar pedestal is continuously planar between the outlet (7) and the annular sump, the base having a cylindrical sealing surface at least partially defining the annular sump, an extending annular sump drainage port (8) positioned in the annular sump, and the housing cover having a closed upper end and a downwardly extending annular wall (13) sized to extend into the sump, the annular wall having a lower seal (29) that, when the housing cover is fully seated with the base, a sealed closure is provided to preclude entry of fluid into the drainage port, whereby when the housing cover is raised upwardly, the lower seal is raised above the drainage port and fluid in the filter housing may drain out the drainage port (fig. 1). Franco does not teach a filter cartridge receiving ported projection extending upwardly from the planar pedestal into the central recess, an inwardly facing sealing surface or a radially extending drainage port.
Walgren teaches a filter housing comprising a base (6) and cooperating housing cover (10) that define a filter cartridge receiving region, wherein the base having an upper portion and a lower portion, the upper portion defining a central recess, the base having a pedestal having an upper pedestal surface and a filter cartridge receiving ported projection (32) extending upwardly from the upper surface into the central recess, an annular sump, the base having an inwardly facing cylindrical sealing surface at least partially defining the annular sump (at 44), a radially extending annular sump drainage port (42) positioned in the cylindrical sealing surface, and the housing cover having a closed upper end and a downwardly extending annular wall sized to extend into the sump, the annular wall having a lower seal (44) that, when the housing cover is fully seated with the base, a sealed closure is provided below the drainage port to preclude entry of fluid into the drainage port, whereby when the housing cover is raised upwardly, the lower seal is raised above the drainage port and fluid in the filter housing may drain radially out the drainage port (fig. 1-2). The recitation of having an inwardly facing cylindrical sealing surface and radially oriented drainage port is a recitation of a rearrangement of the parts of Franco that is known in the art as demonstrated by Walgren. Shifting the position of an element is unpatentable if shifting the position of the element would not modify the operation of the device, In re Japikse, 86 USPQ 70 (1950). In this case, shifting the sealing surface and drainage port position would not modify the operation of the device as removal of the housing cover would still allow fluid to drain from the sump of the base through the drainage port.
Hawkins teaches a filter housing comprising a base (308) and cooperating housing cover (104) that, when the housing cover is fully seated on the base, define a fluid circulating region configured to capture a filter cartridge therein, the base including a planar pedestal (328) configured to engage a bottom surface of a filter cartridge and a ported projection (314) configured to receive the filter cartridge, the ported projection including one or more ports (318) extending laterally from the projection (fig. 1-6). Franco teaches the cover helps to seat/hold a filter cartridge in place (pg. 5, par 3-4). Hawkins teaches the cover and the ported projection cooperate with one another to securely hold a filter cartridge within the circulating region (par 27). It would have been obvious to one of ordinary skill in the art to use the ported projection of Hawkins as a way to provide a secure holding of a filter cartridge within the housing. Providing the ported projection of Hawkins within the planar pedestal of Franco would have the planar pedestal of Franco to be continuously planar between the ported projection and the annular sump. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 2, Franco further teaches the housing cover has external threads (14) that cooperate with internal threads (15) of the base and the lower seal is positioned below the external threads (fig. 1). Having the seal on an exterior surface of the annular wall would be inherent in the rearrangement of claim 1 above.
Claim 3, Franco further teaches the housing cover further has a primary seal (19) positioned above the external threads, the primary seal engaging with an inwardly facing sealing surface of the base (fig. 1).
Claim 4, Franco further teaches the housing cover has external threads (14) that cooperate with internal thread (15) of the base, the housing cover having a fully seated position on the base, and wherein when the housing cover is fully seated two annular seals connect between the filter housing cover and the base including the lower seal (fig. 1). Franco does not teach a third annular seal. The recited third annular seal is a recitation of duplication of the seals taught by Franco. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced, In re Harza, 124 USPQ 378 (1960). Additionally, providing multiple seals is a known technique in the art as a way to provide a secondary or backup seal member in case the first seal member is damaged or fails in some way.
Claim 5 recites a filter cartridge remaining seated on the ported projection when the cover is removed such that the filter cartridge may be manually removed. This is a recitation of an intended use of the filter housing and does not provide any further structural limitations to the filter housing. The filter housing of Franco is capable of performing the recited intended use as there is no teaching of a positive connection or catch between the cover and the filter cartridge.
Claims 6, Franco further teaches the annular sump has a bottom surface (fig. 1) and Walgren further teaches the drainage port is positioned above a bottom surface of the sump and the annular cylindrical sealing surface is positioned between the drainage port and the bottom surface (fig. 1-2).
Claim 7, The annular sump of Franco would be visible and manually accessible for cleaning when the cover is removed (fig. 1).
Claim 14, Franco teaches a filter housing comprising a cooperating housing cover (3) and a filter housing base (2), the base having an annular wall defining a central recess that is configured to receive a filter cartridge (9) and receives the housing cover, the housing cover seatable therein defining a circulating region, the central recess extending to an annular sump (see below) with a drainage port (8) positioned therein, the annular sump defining a planar pedestal (30) sized and shaped to engage across a bottom surface of a filter cartridge, the drainage port sealing blocked from the circulating region when the housing cover is fully seated in the base by a lower annular seal (29) that extends between an annular wall and the housing cover, wherein when the housing cover is unseated the annular seal moves to a non-blocking position allowing fluid in the circulating region to flow to the drainage port (fig. 1). Franco does not teach the seal extending between an inner surface of the annular wall and an outer surface of the housing cover or a ported projection extending from the planar pedestal.
Walgren teaches a filter housing comprising a base (6) and cooperating housing cover (10) the base having an annular wall defining a central recess that receives a filter cartridge (12) and receives the housing cover, the housing cover seatable therein defining a circulating region, the central recess extending to an annular sump with a drainage port (42) positioned therein, the drainage port sealing blocked from the circulating region when the housing cover is fully seated in the base by a lower annular seal (44) that extends between an inner surface of the annular wall and an outer surface of the housing cover, wherein when the housing cover is unseated the annular seal moves to a non-blocking position allowing fluid in the circulating region to flow to the drainage port (fig. 1-2). The recitation of having a lower annular seal (44) that extends between an inner surface of the annular wall and an outer surface of the housing cover is a recitation of a rearrangement of the parts of Franco, namely the position of the drainage port and lower seal, that is known in the art as demonstrated by Walgren. Shifting the position of an element is unpatentable if shifting the position of the element would not modify the operation of the device, In re Japikse, 86 USPQ 70 (1950). In this case, shifting the sealing surface and drainage port position would not modify the operation of the device as removal of the housing cover would still allow fluid to drain from the sump of the base through the drainage port.
Hawkins teaches a filter housing comprising a base (308) and cooperating housing cover (104) that, when the housing cover is fully seated on the base, define a fluid circulating region configured to capture a filter cartridge therein, the base including a planar pedestal (328) configured to engage a bottom surface of a filter cartridge and a ported projection (314) configured to receive the filter cartridge, the ported projection including one or more ports (318) extending laterally from the projection (fig. 1-6). Franco teaches the cover helps to seat/hold a filter cartridge in place (pg. 5, par 3-4). Hawkins teaches the cover and the ported projection cooperate with one another to securely hold a filter cartridge within the circulating region (par 27). It would have been obvious to one of ordinary skill in the art to use the ported projection of Hawkins as a way to provide a secure holding of a filter cartridge within the housing.
The recitation of the filter housing being for an off road vehicle engine with an interface and crankcase oil sump at a bottom of the engine, the interface being above the oil sump are recitations of intended use that do not provide any further structural limitations to the filter housing.
Claim 15, Franco further teaches the planar pedestal defines an upwardly facing and continuously planar filter cartridge engaging surface, wherein the planar pedestal is continuously planar between where the ported projection of Hawkins would be located and the annular sump (fig. 1).
Claim 16, Franco further teaches the filter cartridge is spool shaped with filter media extending between two ends thereof and an axially extending aperture (11) extending therethrough (fig. 1) and Hawkins further teaches the bottom surface of a filter cartridge includes a bottom surface of an endcap or two end caps (202, 206) and the ported projection is conformingly sized to an axially extending aperture and is insertable therein (fig. 1-6). In the previous office action, the office asserted that the use of two endcaps is common knowledge in the art. This statement is now taken to be admitted prior art because applicant failed to traverse the assertion of official notice.
Claim 17, Franco further teaches the housing cover has a downward central projection (10) sized to the axially extending aperture of the filter cartridge and is insertable therein (fig. 1).
Claim 18, Franco further teaches the filter base has a first primary circulating passageway (7) that would connect to the upward ported projection, as it would necessarily be in fluid communication with the interior of the filter cartridge to drain filtered fluid, and a second primary circulating passageway (6) that has a second primary port (fig. 1). The recitation of the second primary port being on the upwardly facing and continuously planar oil filter cartridge engaging surface locatable radially outward from the bottom surface of the oil filter cartridge is a recitation of a change in the shape or extent of the planar pedestal of Franco such as annotated in figure 1 of Franco below. [W]here the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 220 USPQ 777 (1984). The claimed relative dimensions would not perform any differently as fluid would still be able to flow into the housing, through the filter cartridge and then out of the housing. There is no evidence or showing that providing a planar pedestal across the entire radial extent of the filter cartridge would provide any difference in performance, some advantage or some unexpected result. Providing the second primary port radially outward from the bottom surface of the cartridge would have been obvious to one of ordinary skill in the art to prevent the bottom surface of the cartridge from impeding the flow of fluid into the housing through the port.
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Claim 19, Franco further teaches the cover has a lowermost annular groove (28) that receives the lower annular seal define don the housing cover and the housing cover having exterior threads (14) that cooperate with internal threads (15) of the base, the annular groove and annular seal positioned below the exterior threads (fig. 1).
Claim 20, Franco further teaches when the housing cover is fully seated, the lower annular seal is positioned in the annular sump and the filter housing cover comprises another annular groove (18) with an annular seal (19) positioned above the drainage port (fig. 1) and Walgren further teaches the lower annular seal positioned below the drainage port (fig. 1-2).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 8 and 14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
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