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 § 112(b)
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.
Claim 19 is 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 19 recites:
19. The air filter element of [claims 21 and 16], wherein the filter medium pack further includes a central core. Emphasis added.
Claim 19 is indefinite because the limitation “the filter media pack further includes a central core” contradicts claim 21, which requires that the filter medium pack is “formed without a central core or hollow space.”
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21, 16, 18, 20, 23, 25, 26 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Gieseke et al., US 6,350,291 B1 in view of Holm et al., US 2012/0285902 A1.
Regarding claim 21, Gieseke teaches a filter construction 100 for filtering air, which reads on the claimed “air filter element.” See Gieseke Fig. 1, col. 2, ll. 57–66.
The filter construction 100 comprises a filter pack 50 including filter media 55, which reads on the “filter medium pack comprising a filter media.” See Gieseke Fig. 1, col. 2, ll. 43–55. The filter construction 100 can be “formed without a central core or hollow space,” as claimed, because it can be wound without a mandrel or center core, with Fig. 3 illustrating the filter construction 100 lacking a hollow space. Id. at col. 5, ll. 1–2. The filter pack 50 comprises a top side (the “first side”) and a bottom side (the “second side”). Id. at Fig. 1, col. 2, ll. 43–55
The filter construction 100 further comprises a frame 205 formed of a rigid plastic material and being arranged at the top side of the filter pack 50. See Gieseke Figs. 6, 7, col. 7, ll. 23–31. The frame 205 reads on the “first guiding rim.”
The frame 205 comprises a seal member 250, which can be made from polyurethane, arranged on a tip portion 263 of the frame 205. See Gieseke Figs. 6, 7, col. 5, ll. 64–67, col. 7, ll. 38–47, col. 8, ll. 15–26. The seal member 250 reads on the “polyurethane seal member arranged on the first guiding rim.” The seal member 250 defines a “resilient sealing surface having at least a radially oriented component to provide radial sealing when installed in a suitably shaped cavity,” as claimed, which is the outward component of the seal member 250 that forms a radial seal 172 against a housing. Id. at Fig. 5, col. 6, ll. 1–5, col. 8, ll. 15–26.
The filter pack 50 has a “substantially tubular shape,” as seen in Fig. 1. It comprises a shape obtained by rolling a length of filter media construction 125 to form coiled fluted media without a mandrel or center core. See Gieseke Fig. 3, col. 3, ll. 19–46, col. 5, ll. 1–2. This reads on a shape “obtained by…rolling a length of filter medium to form coiled fluted media without a central core.”
A circumference of the seal member 250 follows the contour of the filter pack 50 (as seen in Fig. 1 where the sealing system 60, which includes seal member 250, follows the contour of the filter pack 50). See Gieseke Fig. 1, col. 5, ll. 64–67.
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Gieseke differs from claim 21 because it is silent as to the circumference of the seal member 250 comprising at least one convex segment and at least one adjoining concave segment, wherein a contour of the filter pack 50 corresponds to the convex and concave segments.
But Gieseke teaches that the filter media pack 50 can have various shapes, including oblong, oval, rectangular, or racetrack-shaped. See Gieseke col. 4, ll. 64–67.
With this in mind, Holm teaches a filter element 26 that is used to filter gaseous fluids such as air. See Holm Fig. 1, [0001], [0017]. The filter element 26 comprises coiled, fluted filter media created by coiling filter material. Id. at [0017], [0020]. The filter element 26 can have various shapes such as oval, racetrack, oblong, kidney, triangle, pear, rectangular or other closed loop shapes, depending on the shape required by the user. Id. at [0020].
It would have been obvious for the filter construction 100 of Gieseke to be kidney-shaped instead of oblong, oval, rectangular, or racetrack-shaped, depending on the shape required by the user. Changing the shape of the construction 100 in this way would merely represent changing the shape of the device with no significant change in function. See MPEP 2144.04, subsection IV, B. A person of ordinary skill in the art would have had a reasonable expectation of success in changing the shape of the filter construction 100 of Gieseke to be kidney-shaped, at least because Gieseke teaches that the media construction can be rolled by hand (see Gieseke col. 5, ll. 21–22), and a person could manipulate the shape of the filter media with their hands during the rolling process to create a kidney-shaped filter construction.
With this modification, the outer circumference seal member 250 of Gieseke would be kidney-shaped because seal member 250 follows the contour of the filter construction 100 as seen in Figs. 1 and 10. As such, seal member 250 would have “at least one convex segment” and “at least one adjoining concave segment” due to its kidney shape. Also, a “contour of the” filter pack 50 would correspond to the convex portion and the concave portion of seal member 250, because the filter construction 100 would also be kidney-shaped.
Regarding claim 16, Gieseke teaches that the filter pack 50 is formed from coiled fluted filter media. See Gieseke col. 3, ll. 19–27.
Regarding claim 18, Gieseke as modified teaches that the filter construction 100 has a kidney-shaped contour, meaning that the frame 205 (the “first guiding rim”) would also have a kidney-shaped contour. A kidney has two convex portions and two concave portions, and therefore the kidney-shaped frame 205 would also have two convex segment and two concave segments, as claimed.
Regarding claim 20, Gieseke as modified teaches that the filter construction 100 has a kidney-shaped contour, meaning that the filter pack 50 (the “filter medium pack”) would have a kidney-shaped cross-sectional shape, as claimed.
Regarding claim 23, Gieseke teaches that the filter pack 50 comprises z-type filter media because it comprises a rolled up base sheet comprising parallel hollow flutes with a sealing adhesive being applied between consecutive layers of the rolled-up filter medium. See Gieseke col. 4, ll. 3–35.
Regarding claim 25, Gieseke as modified teaches that the contour is kidney-shaped, and therefore is elongate with at least one concave segment being present along a longitudinal side of the contour, as claimed.
Regarding claim 26, Gieseke as modified teaches that the contour is kidney-shaped, and therefore is essentially kidney-shaped, as claimed.
Regarding claim 30, Gieseke teaches an air cleaner 300, which reads on the claimed “air filter system.” See Gieseke Fig. 9, col. 8, ll. 58–65. The air cleaner 300 comprises a housing 305, which reads on the claimed “housing.” Id. The housing 305 defines a cavity shaped so as to be able to hold the filter construction 100, which is the interior space of the housing 305 where the filter construction 100 is located, as seen in Fig. 9. The seal member 250 (the “sealing surface”) provides a radial seal 172 against the housing 305. Id. at Fig. 9, col. 7, l. 66–col. 8, l. 14. The housing 305 comprises an opening (closed by removable cover 315) for inserting the filter construction 100 into the cavity and removing the filter construction 100 from the cavity. Id. at Fig. 9, col. 8, l. 66–col. 9, l. 8. The opening reads on the “access window.” The opening is shaped and positioned in such a way that the filter construction 100 could be inserted and removed by a movement that comprises a rotation. For instance, during insertion, a user could rotate the filter construction 100 while it is below the opening to align the filter construction 100 with the opening, and then insert the filter construction 100. Also, during removal, a user could rotate the filter construction 100 while it is in their hands, after is has been taken out of the housing 305. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Gieseke et al., US 6,350,291 B1 in view of Holm et al., US 2012/0285902 A1 and in further view of Nelson et al., US 2009/0301045 A1.
Regarding claim 17, Gieseke as modified teaches the limitations of claim 21, as explained above.
Gieseke differs from claim 17 because it is silent as to the bottom end (the “second end”) of the filter pack 50 having a second guiding rim mounted to it.
But Nelson teaches a filter element 1 comprising coiled fluted media, where the filter element 1 comprises a radial seal 6 at the top end (similar to the construction of Gieseke) and a skid shirt 30 on the bottom end. See Nelson Fig. 1, [0066]. The skid skirt 30 is beneficial because it provides engagement between the filter element 1 and structure of the filter housing during use, to facilitate installation. It would have been obvious to provide the skid skirt 30 of Nelson on the bottom end of the filter pack 50 of Gieseke to facilitate installation of the filter construction 100.
Election/Restrictions
Newly submitted claims 31–40 (which are newly submitted because claim 31 is a new independent claim) are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 21, 16–20, 23, 25, 26 and 30, drawn to an air filter element, classified in B01D46/527.
II. Claims 31–40, drawn to an air filter element, classified in B01D46/4227.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related air filter elements. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
Here, the inventions as claimed can have a materially different design. Specifically, Invention II indicates that the filter medium pack can be formed with a hollow space as limitation (d) indicates that the filter medium pack has a substantially tubular shape obtained by arranging pleated filter media as a tube with multiple pleats “formed about a hollow center,” which is materially different from Invention I where the filter medium pack is formed “without a central core or hollow space.” Also, Invention II indicates that the filter medium pack can be obtained by arranging pleated filter media as a tube with multiple pleats, which is different from Invention I where the filter medium pack is obtained either by rolling a length of filter medium to form a coiled fluted media or combining multiple substantially tubular units of coiled fluted media (with the “arranging pleated filter media as a tube with multiple pleats formed about a hollow center” limitation being deleted from claim 21 of Invention I). Further, the air filter element of Invention I could have a materially different design from Invention II because the air filter element of Invention I could have a design lacking a handle that extends laterally across the at least one concave segment (which is required by Invention II). Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 31–40 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
The Applicant notes that claim 21 is amended to specify that the filter medium pack is formed “without a central core or hollow space,” and that, in the previous rejection of claim 21 over Gieseke in view of Holm it was argued that the shape of the filter element 26 follows the shape of the core around which the filter material is coiled. See Applicant Rem. filed December 11, 2025 (“Applicant Rem.”) 9. It is argued that this rationale no longer applies because claim 21 specifies that the filter medium pack is formed without a central core or hollow space. Id.
The Examiner maintains that it would have been obvious to change the shape of the filter construction 100 of Gieseke to be kidney-shaped in view of Holm, with the filter construction 100 of Gieseke being coreless. More specifically, Gieseke teaches that the fluted media of the filter construction 100 can be wound without a mandrel or center core, and can be rolled, for instance, by hand. See Gieseke col. 5, ll. 1–22. The filter construction 100 can have various shapes, depending on the shape of the space the filter is inserted into, including oblong, oval, rectangular, or racetrack. Id. at col. 4, ll. 64–67. Likewise, Holm teaches a filter element that can be used to filter air, comprising coiled, fluted filter media having various shapes such as oval, racetrack, oblong, kidney, triangle, pear, rectangular or other closed loop shapes. See Holm [0017], [0020]. Also, changes in shape have been found obvious absent persuasive evidence that the particular claimed configuration is significant. See MPEP 2144.04, subsection IV, B. Therefore, it would have been obvious to change the shape of the coreless filter construction 100 of Gieseke from oblong, oval, rectangular, or racetrack to kidney-shaped, in view of Holm which teaches a similar coiled filter media construction that can be kidney-shaped in addition to oval, racetrack, oblong, triangle, pear, rectangular or other closed loop shapes, because this would merely represent obvious change of shape (as coiled fluted filter media can have various shapes, including kidney-shaped, depending on the space the filter is designed to fit into). A person of ordinary skill in the art would have had a reasonable expectation of success in changing the shape of the filter construction 100 of Gieseke to be kidney-shaped because the filter media can be rolled by hand, and therefore a person could manipulate their hands during the rolling process to obtain a desired shape. See Gieseke col. 5, ll. 21–22.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Izutani et al., US 5,900,148; Rothman, US 5,772,883; Taki et al., US 4,439,321.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776