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 Objections
Claims 9, 10 and 12–14 are objected to for having the wrong status identifier. Specifically, the claims should be labeled as “Withdrawn” because they are non-elected. But the claims have the status identifier “Currently Amended” or “Previously Presented.” Failure to include the proper status identifier in future communications may result in a notice of non-compliance.
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.
Claims 21 and 23 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 21 recites:
21. The deaerator of claim 1 further comprising:
a cylindrical extension of material extending coaxially from an upstream end of the cylindrical element,
wherein the outlet is in fluid communication with a hydraulic fluid tank. Emphasis added.
Claim 21 is indefinite because “the outlet” lacks antecedent basis.
Claim 23 is indefinite because it depends from claim 21.
Also, claim 23 recites:
23. The deaerator of claim 21, wherein the housing comprises a gas bleed hole extending from the gap to an outside of the housing through the end cap. Emphasis added.
Claim 23 is indefinite because “the housing” lacks antecedent basis.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, 5, 21, 24, 34, 45, 52 and 53 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olschok et al., US 2020/0016518 A1.
Regarding claim 1, Olschok teaches a fluid treatment device 50 that can be used to remove air from liquid, which reads on the claimed “deaerator.” See Olschok Fig. 7, [0050].
The fluid treatment device 50 comprises a cylindrical element assembly 10, which reads on the “cylindrical element.” See Olschok Fig. 1a, [0035].
The cylindrical element assembly 10 comprises a material 22 of second element 14, with the material 22 comprising a nonwoven filter material (a “fibrous media”) with a filter fineness of 1 to 90 µm. See Olschok Fig. 2, [0044], [0047]. The material 22 reads on the “gas nucleation media.”1 The filter fineness of 1 to 90 µm is interpreted as being the mean flow pore size of the material 22.2 The prior art range of 1 to 90 µm is within the claimed range of “a mean pore size of 100 µm or less.”
The cylindrical element 10 also comprises a material 20 of first element 12, with the material 20 being porous with a filter fineness of 1 to 90 µm and being arranged downstream of and around the material 22 (as fluid can flow from inside to outside). See Olschok Fig. 2, [0010], [0044], [0047]. The material 20 reads on the “porous barrier.” The filter fineness of 1 to 90 µm is interpreted as meaning the material 20 has a mean flow pore size (i.e. openings sized) between 1 to 90 µm, which is within the claimed range of “openings sized 100 µm or less.”
The cylindrical element 10 further comprises an end cap at the top (the combination 18a/18b) and an end cap at the bottom (the combination of 16a/16b). See Olschok Figs. 5, 6a, 6b, [0052]. Either end cap 18a/18b or 16a/16b reads on the “end cap disposed at one end of the cylindrical element.”
The material 22 (the “gas nucleation media”) and the material 20 (the “porous barrier”) are arranged in a cylindrical shape, as claimed (seen in Fig. 1a) with a flow chamber 33 (the “gap”) between the material 22 and the material 20. See Olschok Fig. 2, [0041].
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Regarding claim 3, Olschok teaches that the fluid treatment device 50 comprises a perforated support tube 26 between the material 22 (the “gas nucleation media”) and the material 20 (the “porous barrier”). See Olschok Fig. 2, [0027]. The perforated support tube 26 reads on the “growth media.” Note that the limitation describing the media as being for “growth” fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the media. See MPEP 2114, subsection II (an apparatus claim covers what a device is, not what a device does).
Regarding claim 5, Olschok teaches that the material 22 (the “gas nucleation media”), the perforated support tube 26 (the “growth media”) and the material 20 (the “porous barrier”) are in a nested configuration with each other, as claimed, as seen in Fig. 2.
Regarding claim 21, Olschok teaches an outlet pipe 74, which is a cylindrical piece of material extending coaxially from the bottom end of the element assembly 10, with the bottom end being the upstream end when fluid flows from inside out. See Olschok Fig. 7, [0010], [0055]. The outlet pipe 74 reads on the “cylindrical extension of material extending coaxially from an upstream end of the cylindrical element. Also, the fluid treatment device 50 comprises an inlet 68, which could function as an outlet when fluid moves from inside-out of the element assembly 10, with the inlet 68 being in fluid communication with housing 52 (a “hydraulic fluid tank”). Id. at Fig. 7, [0055]. The inlet 68 reads on the claimed “outlet.”
Regarding claim 24, Olschok teaches that the material 22 (the “gas nucleation media”) comprises a material that is capable of filtering particulates because it is a nonwoven material, with the material having a filter fineness (interpreted as “mean flow pore size”) of 1 to 90 µm, which anticipates the claimed range of “a mean flow pore size of 5 µm or more as measured by ASTM F316.” See Olschok [0044], [0047].
Regarding claim 34, Olschok teaches that the material 20 (the “porous barrier”) has a filter fineness of 1 to 90 µm, which is interpreted as meaning the material 20 has a mean flow pore size (i.e. openings sized) between 1 to 90 µm, which is within the claimed range of “openings sized less than 80 µm.” See Olschok [0047].
Regarding claims 45 and 52, Olschok teaches the element assembly 10, which reads on the “filter element suitable for use in the deaerator of claim 1.” See Olschok Fig. 1a, [0035]. The filter element comprises the material 22 (the “layer of gas nucleation media”) and the support tube 26 (the “layer of growth media”). Id. at Fig. 2, [0037].
With respect to the claim 52 limitation requiring that the “filter element is a replacement part for the deaerator”—this limitation fails to further limit the scope of the claim because it describes the intended use rather than the structure of the claimed “filter element.” See MPEP 2114, subsection II (a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim).
Regarding claim 53, the limitation of—“the deaerator is disposed inside of a hydraulic fluid tank and is configured to separate air from hydraulic fluid inside the hydraulic fluid tank”—fails to patentably distinguish over the prior art because it describes the manner of operating the device (i.e., disposing the deaerator in a hydraulic fluid tank), instead of the structure of the deaerator itself. See MPEP 2114,subsection II (manner of operating the device does not differentiate apparatus claim from the prior art).
Note, however, that that the element assembly 10 of Olschok can be interpreted as reading on the “deaerator,” and the element assembly 10 is disposed inside of a housing 52 (the “hydraulic fluid tank”) with the element assembly 10 being configured to separate air from hydraulic fluid inside the housing 52. See Olschok Fig. 7, [0019], [0053].
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 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Olschok et al., US 2020/0016518 A1 in view of Bikkina, US 2020/0094170 A1 and in further view of Cady et al., US 2016/0047186 A1.
Regarding claims 26 and 27, Olschok teaches the limitations of claims 1 and 3, as explained above.
Olschok differs from claims 26 and 27 because it is silent as to the material 22 of Olschok (the “gas nucleation media”) comprising an oleophobic material.
But the material 22 of Olschok comprises a surface on which air bubbles can coalesce (i.e., nucleate). See Olschok [0044]. Also the fluid in Olschok can be water (aqueous) or hydraulic fluid (oil based). Id. at [0019].
With this in mind, Bikkina teaches that, for aqueous solutions, bubble nucleation occurs on hydrophobic surfaces due to relatively weaker adhesive forces between water and the hydrophobic surface, compared with a hydrophilic surface. See Bikkina [0070]. Also, Cady teaches a material that can be used with drilling fluids (used to lubricate a drilling apparatus) where the material is coated with an oleophobic coating. See Cady [0020].
Because the material 22 of Olschok is used to nucleate gas from hydraulic oil, it would have been obvious for the material 22 to comprise the oleophobic coating of Cady when used for hydraulic fluid (as opposed to water) to improve bubble nucleation of the material 22, in view of Bikkina.
With this modification, the oleophobic coating reads on the “oleophobic material” of claims 26 and 27. The oleophobic coating would have an oil contact angle of at least 90°, because this is the definition of an oleophobicity (claim 26). See e.g., Rapp et al., US 2019/0292377 A1, [0004] (oleophobic surfaces have a contact angle of oils >90°). The oleophobic coating would also be expected to have an oleophobic rating or 1 or greater as measured by AATCC method 118 because it is oleophobic, and a rating of 1 is the lowest level of oleophobicity measured by the test (claim 27). See Spec. [0076].
Claims 54 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Olschok et al., US 2020/0016518 A1 in view of Ohue et al., US 4,663,222.
Regarding claim 54, Olschok teaches the limitations of claim 1, as explained above.
Olschok differs from claim 54 because it is silent as to the material 20 (the “porous barrier”) comprising a metal mesh. Olschok, however, teaches that the material 20 can comprise at least one protective layer (protective fleece) to protect other layers (e.g., the main filter) of the material 20. See Olschok [0047].
With this in mind, Ohue teaches a nonwoven fabric that can be used in a cylindrical liquid filter, where the nonwoven fabric is reinforced by a reinforcing sheet made of metal mesh. See Ohue col. 7, ll. 52–66. It would have been obvious to use the reinforcing sheet of Ohue as a protective layer of Olschok because this would merely represent the simple substitution of one known element for another to yield predictable results. See MPEP 2143, subsection I, B.
Regarding claim 55, Olschok as modified teaches that the reinforcing sheet (the “metal mesh”) is a pleated panel configuration, as claimed, because the material 20 (including the protective layer) is pleated. See Olschok Fig. 2, [0046].
Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over Olschok et al., US 2020/0016518 A1.
Regarding claim 56, Olschok teaches the limitations of claim 1, as explained above.
Olschok differs from claim 1 because it is silent as to the size of the flow chamber 33 (the “gap”). But the flow chamber 33 is described as “narrow” and is provided so that fluid is routed across a relatively large surface area and largely evenly onto the inflow surface of the element (i.e., element 12) downstream of the chamber 33. See Olschok [0007], [0041]. It would have been obvious to use routine experimentation to determine the optimal width of the chamber 33 so that it is “narrow” while providing sufficient surface area to provide relatively even flow into the inflow surface of element 12. See MPEP 2144.05, subsection II (where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
U.S. Application No. 17/426,542
Claims 1, 3, 5, 34, 45, 52–56 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 17/426,542 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the ’542 application teaches or renders obvious all of the limitations of instant claims 1, 3, 5, 34, 45, 52–56.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
35 U.S.C. 112(b) Rejections
Claims 21 and 23 remain rejected as indefinite for the reasons stated above.
35 U.S.C. 103 Rejections
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on the interpretation of the prior rejection of record for any teaching or matter specifically challenged in the argument.
Double Patenting
The Examiner maintains that claims of instant application are rejected for non-statutory double patenting over co-pending Application No. 17/426,542.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
1 The material 22 of Olschok is capable of performing gas nucleation. Specifically, the material 22 is configured to coalesce air bubbles as liquid contacts and flows through the material 22. Id. at [0044]. The coalescence of air bubbles is interpreted as being gas nucleation. This is because Serfass et al., US 3,827,561 describes a fibrous filter material for deaerating liquid where air is coalesced on the outer layer of the filter material (see Serfass col. 4, ll. 14–21), with the reference describing this process as the air “nucleates” on the outside of the filter as liquid passes through (id. at col. 2, ll. 18–20). The material 22 of Olschok is also presumed capable of nucleating gas because it is made of a hydrophobic material, such as polyester or polypropylene (see Olschok [0047]) and hydrophobic materials act as nucleation sites for microbubble formation (see Yen et al., US 2007/0119774 A1, [0030]).
2 See e.g., Meyer et al., US 2011/0290369 A1, [0004] (“the filter fineness, i.e., the size of the pores”); Hueppchen et al., US 2006/0180541 A1, [0014] (“the use of glass fiber media enables a filter fineness with a pore size of less than 25 µm”).