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 Status
Claims 1-6, 9-11, 24-29 and 31 are rejected.
Claims 7-8, 18-23, 30 and 32 are withdrawn.
Claims 12-17 have been cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 2, 2026, has been entered.
Election/Restrictions
New added claim 32 includes limitations drawn to Species O, as shown in Fig. 34, which is a non-elected species. Accordingly, claim 32 has been withdrawn from further consideration because it is drawn to a non-elected species.
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.
Claim(s) 1-6, 9-11, 24-29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Kaufmann et al. (US 2014/0165834) [hereinafter Kaufmann] in view of Bautz et al. (US 2018/0161703) [hereinafter Bautz].
With respect to claim 1, Kaufmann discloses a filter 1, as shown in Fig. 1, having: a filter housing 10 comprising a housing upper part 11 (engagement member), as shown in Fig. 1; a filter element 30, as shown in Fig. 1, comprising: a media pack comprising filter media that is configured to filter a fluid passing therethrough, as shown in Fig. 1; and an end disk 36 (endcap) coupled to the media pack and sealing an end of the media pack, as shown in Fig. 1, the endcap 36 defining a seal 33 (sealing member) engageable with the engagement member 11, as shown in Fig. 1, wherein the sealing member 33, along a plane oriented perpendicular to a central axis of the sealing member 33, is formed in a polygonal shape, as shown in Fig. 2 (see paragraph 0056), the sealing member 33 defining an opening that is larger than an opening formed by the media pack where the endcap 36 is coupled to the media pack, as shown in Fig. 1.
Kaufmann does not disclose the endcap formed onto the media pack; and wherein the sealing member, along a plane oriented perpendicular to a central axis of the sealing member, is formed in a Reuleaux shape.
With respect to the endcap formed onto the media pack: This limitation is considered to be a product-by-process limitation since it is drawn to a product, i.e., a media pack, but it includes a process step of making the product, i.e., “the endcap formed onto the media pack”. “Even 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” (see MPEP 2113 [R-1], In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (FED. Cir. 1985)). Furthermore, it would be obvious to one of ordinary skill in the art that the endcap disclosed by Kaufmann can be formed onto the media pack in order to make the media pack and a one-piece element with the endcap.
With respect to the sealing member, along a plane oriented perpendicular to a central axis of the sealing member, formed in a Reuleaux shape: Bautz discloses a filter element 1, as shown in Fig. 2, having: a lower end cap 3 having an inner edge 13 in form of a polygon, in the example shown in the form of a Reuleaux triangle (see paragraph 0024). Bautz further teaches that it is possible to provide the polygon-shaped connection geometry not at the inner edge 13 of the end cap 3, but it may be provided at the outer edge of one or both end caps, or at one end cap at the inner edge and at the other end cap at the outer edge (see paragraph 0039). Bautz teaches that the provision of the particular shape is advantageous in providing so-called incorrect installation protection, which ensures that a filter device can only be operated with a filter element that is designed specifically for the respective application because, akin to a lock-and-key system, the fluid connection between the filter element and the filter device can only be established if the geometric design of the correct filter element matches the geometric design at the connection points of the end caps (see paragraphs 0004-0008). It would have been obvious to one of ordinary skill in the art to provide the sealing member disclosed by Kaufmann, with a Reuleaux shape, as taught by Bautz, in order to provide a design with incorrect installation protection (see paragraphs 0024, 0039 and 0004-0008 of Bautz) and since Kaufmann already suggests that the sealing member may be formed in a polygonal shape (see paragraph 0056 of Kaufmann) and one of ordinary skill would recognize to choose a desired polygonal shape, such as a Reuleaux, according to a desired application.
With respect to claim 2, Kaufmann as modified by Bautz discloses wherein the sealing member 17 has an odd number of edges that have an approximately equal radius, as shown in Fig. 2 of Bautz.
With respect to claim 3, Kaufmann as modified by Bautz discloses wherein a distance between two parallel lines positioned on opposing sides of the sealing member 17 and engaging a boundary of the sealing member 17 is approximately equal in any position along the boundary of the sealing member 17, as shown in Fig. 3 of Bautz.
With respect to claim 4, Kaufmann as modified by Bautz discloses wherein the sealing member 17 includes curved edges at each vertex of the Reuleaux shape and side edges between each curved edge, as shown in Fig. 3 of Bautz. Kaufmann as modified by Bautz lacks wherein a ratio between a radius of at least one of the curved edges and a radius of at least one of the side edges is within a range between approximately 0 and 0.5. However, the specific range claimed by applicant, i.e., between approximately 0 and 0.5, is considered to be nothing more than a choice of engineering skill, choice or design that a person having ordinary skill in the art would have found obvious during routine experimentation based among other things, on desired accuracy, since the courts have held that where 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 a prior art device, the claimed device was not patentably distinct from the prior art device (see In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (FED. Cir. 1984), cert. Denied, 469 U.S. 830, 225 USPQ 232 (1984)).
With respect to claim 5, Kaufmann as modified by Bautz discloses wherein the sealing member 33 defines a central opening, as shown in Fig. 1 of Kaufmann. Kaufmann as modified by Bautz lacks wherein a cross-section through the sealing member, along a radial reference plane that extends through a central axis of the central opening is formed in the Reuleaux shape. However, this would have been obvious to one of ordinary skill in the art since the courts have held that a change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966)).
With respect to claim 6, Kaufmann as modified by Bautz discloses wherein the sealing member 17 defines a central opening that is formed in the Reuleaux shape, as shown in Fig. 2 of Bautz.
With respect to claim 9, Kaufmann as modified by Bautz discloses wherein the endcap 36 includes a base and an extension piece 332 that extends axially away from the base, as shown in Fig. 1 of Kaufmann, the sealing member 33 coupled to the extension piece 332, as shown in Fig. 1 of Kaufmann.
With respect to claim 10, Kaufmann as modified by Bautz discloses wherein the extension piece 332 defined the sealing member 33, as shown in Fig. 1 of Kaufmann, and is formed in the Reuleaux shape, as shown in Fig. 2 of Bautz.
With respect to claim 11, Kaufmann as modified by Bautz discloses wherein the Reuleaux shape has an approximately constant cross-sectional width, as shown in Fig. 2 of Bautz.
With respect to claim 24, Kaufmann as modified by Bautz lacks wherein the sealing member forms a five-sided Reuleaux shape having five curved edges and five vertices. However, this would have been obvious to one of ordinary skill in the art since the courts have held that a change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966)). Furthermore, Kaufmann and Bautz teach the use of polygonal shapes for the endcaps (see paragraph 0039 of Bautz and 0056 of Kaufmann) and therefore, the selection of a five-sided Reuleaux shape having five curved edges and five vertices, would be obvious to one of ordinary skill since one of ordinary skill would recognize to choose a desired shape according to a desired applicaiton.
With respect to claim 25, Kaufmann as modified by Bautz discloses wherein a width of the five-sided Reuleaux shape is greater than a width of an opening in the end cap 3, as shown in Fig. 2 of Bautz.
With respect to claim 26, Kaufmann as modified by Bautz discloses a sealing member 33, as shown in Fig. 1 of Kaufmann. Kaufmann as modified by Bautz lacks the specific shape of the sealing member, i.e., square cut gasket. However, this would have been obvious to one of ordinary skill in the art since the courts have held that a change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966)).
With respect to claim 27, Kaufmann as modified by Bautz lacks wherein the sealing member comprises a gasket having a Reuleaux-shaped cross-section. However, this would have been obvious to one of ordinary skill in the art since the courts have held that a change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966)).
With respect to claim 28, Kaufmann as modified by Bautz discloses wherein the sealing member comprises a gasket 17, and wherein the overall shape of the gasket is a Reuleaux shape, as shown in Fig. 2 of Bautz. Kaufmann as modified by Bautz lacks wherein a cross-sectional shape of the gasket is the same Reuleaux shape. However, this would have been obvious to one of ordinary skill in the art since the courts have held that a change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966)).
With respect to claim 29, Kaufmann as modified by Bautz discloses wherein the sealing member comprises a gasket 17 having a Reuleaux shape, as shown in Fig. 2 of Bautz. Kaufmann as modified by Bautz lacks wherein a cross-sectional shape of the gasket has a different number of sides than the overall shape of the gasket. However, this would have been obvious to one of ordinary skill in the art since the courts have held that a change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (see In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966)).
With respect to claim 31, Kaufmann as modified by Bautz discloses wherein the endcap 36 further defines an inlet opening and an outlet opening, as shown in Fig. 1 of Kaufmann, and wherein a width of the Reuleaux shape formed by the sealing member is greater than a diameter of the outlet opening of the endcap, as shown in Fig. 1 of Kaufmann.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6, 9-11, 24-29 and 31 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.
In response to applicant’s argument that Bautz lacks the new limitations added to claim 1: The new limitations of claim 1 are obvious over Kaufmann in view of Bautz, as stated in the rejection above.
Conclusion
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/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
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