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) 1-20 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) defining a central recess, the base having a planar pedestal (30) configured to engage a filter cartridge, the base including an upper pedestal surface, an annular sump extending downwardly from the central recess below the upper pedestal surface (the sump including the space below the cartridge (9) where inlet (6) opens into as well as groove (25)), the sump surrounding the planar pedestal, a threaded portion (15) located on a radial surface of the base, a cooperating housing cover (3) threadingly engageable with the threaded portion to define a filter cartridge receiving region, 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.
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).
Walgren teaches a filter housing comprising a base (6) 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 and 39), a radially extending annular sump drainage port (42) positioned in the cylindrical sealing surface, and a threaded portion (48) located radially outward relative to the inwardly facing cylindrical sealing surface and a cooperating housing cover (10) threadingly engageable with the threaded portion to define a filter cartridge receiving region, 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.
Claim 2, Franco further teaches the housing cover has external threads (14) that cooperate with the threaded portion (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 the threaded portion (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 8, Franco teaches a filter housing comprising a base (2) including a planar pedestal (30) configured to engage a bottom surface of a replaceable filter cartridge, a threaded portion (15), an inwardly facing (facing into the groove 25) cylindrical sealing surface (at 29) located radially inward relative to the threaded portion, a pair of primary circulation ports (6, 7) for circulating fluid through the filter cartridge and a fluid circulating region and a drainage port (8), a housing cover (3) configured to fully seat on the base to define the fluid circulating region and capture the filter cartridge therein, the housing cover including a circumferential groove (28) and an annular radially compressible seal (29) configured to sit in the circumferential groove to sealingly separate the drainage port from the fluid circulating region when the housing cover is fully seated on the base, 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 or a drainage port located on the inwardly facing cylindrical sealing surface.
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.
Walgren teaches a filter housing comprising a base (6) 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 and 39), a radially extending annular sump drainage port (42) positioned in the cylindrical sealing surface, and a threaded portion (48) located radially outward relative to the inwardly facing cylindrical sealing surface and a cooperating housing cover (10) threadingly engageable with the threaded portion to define a filter cartridge receiving region, 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.
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 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), the annular wall including a threaded portion (15) configured to threadingly receive 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 drainage port located radially inward relative to the threaded portion, 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.
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.
Walgren teaches a filter housing comprising a housing cover (10) and a filter housing base (6), the base having an annular wall defining a central recess that is configured to receive a filter cartridge, the annular wall including a threaded portion (48) configured to threadingly receive the cover, the cover seatable therein defining an circulating region, the central recess extending to an annular sump with a drainage port (42) positioned therein, the drainage port located radially inward relative to the threaded portion, the drainage port sealingly blocked from the circulating region when the 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 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.
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 defined on the housing cover and the housing cover having exterior threads (14) that cooperate with the threaded portion (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 filed 7/14/26 have been fully considered but they are not persuasive.
Applicant argues that Walgren teaches the threaded section (50) is horizontally positioned with the drainage port (42) and the inwardly facing cylindrical sealing surface which is not the same as a threaded portion located radially outward relative to the inwardly facing cylindrical sealing surface. Walgren teaches the housing having a central axis (8). The sealing surface faces radially inward, with respect to the axis (8), the drainage port is positioned in the sealing surface and the threaded portion is located radially outward relative to the sealing surface, also with respect to the axis (8) (see below). The relative orientation of the housing, vertical, horizontal or something in between, is not relevant to the radial direction. Therefore, Walgren meets the limitations as set forth in the claims.
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Applicant argues that modifying Franco with the teaching of Walgren would modify the operation of Franco. Applicant points to paragraph 50 of Franco which talks about dead travel of the cover where the number of turns of the cover is reduced to ensure air is able to enter the housing. As shown above Walgren teaches the sealing surface is located radially inward with respect to the threads and therefore, modifying Franco would likewise provide this feature. As such, a radial seal would need only clear the axial extent of the sealing surface to allow air to enter the housing to allow proper drainage. The seal would not need to get all the way to the threads as argued by applicant.
Applicant also points to paragraph 51 of Franco which states, “The depth of the groove 25 ensures clean drainage, for example when the filter is in an inclined position.” Applicant states that shifting the position of the drainage port to extend radially with a seal below the drainage port would result in oil pooling in the groove and thereby preventing clean emptying. As an initial matter, Franco does not specifically state what is meant by “clean drainage”. Applicant appears to define it as no oil pooling within the groove, however, there is no teaching in Franco to support this particular interpretation. It appears the more accurate interpretation of “clean drainage” would be the reduction/elimination of having oil spilled during removal of the cover. As paragraph 40 of Franco teaches, the various extent of the axial distance of the threads and the sealing surfaces are arranged such that flow is allowed into the groove and drainage port prior to the cover being fully removed or unsealed from the base. This limits the risk of oil being spilled onto the operator when the filter is changed. This appears to be what is meant by a “clean drainage” namely, oil is not spilled onto the operator during changing of the filter. Additionally, the remedy for the “clean drainage” offered by Franco is a depth of the groove. This would make sense with the above interpretation as a deeper groove would allow for more oil to flow into the groove prior to the cover being removed and prevent oil from spilling from the housing. The position of the drainage opening within the groove is not mentioned by Franco with respect to the “clean drainage” issue. Therefore, applicant’s argument does not appear to be based on any clear teaching in Franco that would lead one of ordinary skill in the art to conclude that the position of the drainage port within the groove would not allow a “clean drainage” and thus modify the operation of Franco in contrast to the express teaching of Franco.
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.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
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