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 .
This Office action is in response to amendments filed on 08/28/2025. Claims 1-5, 7, 9, and 11-22 are pending. The specification objection (e.g. the abstract objection) is withdrawn, as necessitated by the newly filed abstract. The claim objections to claims 5-19 for improper dependencies has been withdrawn. The nonstatutory double patenting rejection has been updated, as necessitated by the amendments and newly added independent claims.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18, line 3, consider amending to, --ends of [[the]]a pleated filter medium.—for proper antecedent basis.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Conrad (US 2019/0290082).
Regarding claim 21, Conrad (US 20190290082) discloses a handheld vacuum cleaner (item 123; fig. 1) comprising,
a vacuum cleaner housing (item 104; fig. 1),
a handle (item 108; fig. 2) connected to the vacuum cleaner housing (fig. 1),
an intake head (item 128; fig. 1) through which outside air is configured to be drawn in by the handheld vacuum cleaner (pp. [0228]; via inlet 124 on intake head 128; fig. 13),
at least one exhaust port (item 120; figs. 1-2) through which the cleaned air is configured to exit the handheld vacuum cleaner (pp. [0228]),
an airflow circuit (defined as pathway through intake head 128, through waste separation device, filter, suction unit, and exiting through exhaust port 120; fig. 13) extending between the intake head and the at least one exhaust port (pp. [0228]),
a suction unit (item 152; fig. 12) fitted on the airflow circuit (pp. [0244]; air passes through suction unit 152 prior to exiting vacuum cleaner via exhaust port 120), the suction unit comprising an electric motor and a fan (pp. [0232]; suction unit includes suction motor and fan assembly) coupled to the electric motor to generate an air flow in the airflow circuit from the intake head to the at least one exhaust port (pp. [0234]; air is suctioned through intake head 128 via the suction force formed by the suction unit 152),
a waste separation device (item 160; figs. 6 and 12) fitted on the airflow circuit (pp. [0230]; air passes through waste separation device 160 to be filtered) upstream of the suction unit (airflow passes through waste separation device 160 prior to passing through suction unit 152, i.e. upstream) and through which the air flow generated by the fan is configured to pass when the handheld vacuum cleaner is being operated (fig. 13),
a removable tank (item 112; figs. 1-2) for receiving waste separated by the waste separation device (pp. [0230]; dust is separated and collected in the removable tank 160 within item 164; fig. 12), removably attached to the vacuum cleaner housing (pp. [0558]; via item 493; fig. 5),
a removable filter (item 228; figs. 5-6) arranged in the airflow circuit (pp. [0246]; air passes through removable filter 228 prior to exiting vacuum cleaner through exhaust port 120), the removable filter housed in a filter chamber (defined as space, i.e. chamber, within walls 224; fig. 5) of the handheld vacuum cleaner, the filter chamber defined at least in part in the vacuum cleaner housing (filter chamber defined at left end of vacuum cleaner housing 104 in view of fig. 13) and arranged at least in part between the suction unit and a wall (item 224; figs. 5 and 13) of the vacuum cleaner housing (suction unit 152 disposed to the right of filter chamber and leftmost edge of wall is disposed to the left of filter chamber; designated in annotated fig. 13B above),
wherein the filter chamber comprises an access opening (designated in annotated fig. 5 below) for accessing the removable filter formed in the handheld vacuum cleaner (access opening allows filter 228 to be grasped by user when removable tank is removed from vacuum cleaner housing 104; fig. 5), wherein the removable filter is configured to be accessible when the removable tank is detached from the vacuum cleaner housing (when removable tank 112 is decoupled from vacuum cleaner housing 104 via item 493, the removable filter 228 is accessed via access opening and capable of being removed; fig. 5) and
PNG
media_image1.png
323
676
media_image1.png
Greyscale
Conrad Annotated Fig. 5.
wherein, when the removable tank is attached to the vacuum cleaner housing (defined as position in view of figs. 1-2), the removable tank is arranged relative to the vacuum cleaner housing to prevent access to the removable filter through the access opening (removable tank 112 blocks, i.e. prevents, removable filter 228 from being accessed via user during use, i.e. when removable tank 112 is attached to vacuum cleaner housing 104; figs. 1-2), and
wherein the waste separation device, the fan and the electric motor are substantially aligned (the waste separation device 160, the electric motor and fan 152 are disposed along a same axial line, designated in first annotated fig. 13B below).
PNG
media_image2.png
267
752
media_image2.png
Greyscale
Conrad Annotated Fig. 13B.
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.
Claims 1-5, 7, 9, 11-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Conrad (US 20190290082) in view of King (US 2021/0401248), as cited in Conclusion from Non-Final Rejection filed on 05/28/2025.
Regarding claim 1, Conrad (US 20190290082) discloses a handheld vacuum cleaner (item 123; fig. 1) comprising,
a vacuum cleaner housing (item 104; fig. 1),
a handle (item 108; fig. 2) connected to the vacuum cleaner housing (fig. 1),
an intake head (item 128; fig. 1) through which outside air is configured to be drawn in by the handheld vacuum cleaner (pp. [0228]; via inlet 124 on intake head 128; fig. 13),
at least one exhaust port (item 120; figs. 1-2) through which the cleaned air is configured to exit the handheld vacuum cleaner (pp. [0228]),
an airflow circuit (defined as pathway through intake head 128, through waste separation device, filter, suction unit, and exiting through exhaust port 120; fig. 13) extending between the intake head and the at least one exhaust port (pp. [0228]),
a suction unit (item 152; fig. 12) fitted on the airflow circuit (pp. [0244]; air passes through suction unit 152 prior to exiting vacuum cleaner via exhaust port 120), the suction unit comprising an electric motor and a fan (pp. [0232]; suction unit includes suction motor and fan assembly) coupled to the electric motor to generate an air flow in the airflow circuit from the intake head to the at least one exhaust port (pp. [0234]; air is suctioned through intake head 128 via the suction force formed by the suction unit 152),
a waste separation device (item 160; figs. 6 and 12) fitted on the airflow circuit (pp. [0230]; air passes through waste separation device 160 to be filtered) upstream of the suction unit (air passes through waste separation device 160 prior to entering suction unit 152, i.e. upstream, in order to filter dust and debris from the air to not damage the suction unit 152; fig. 13) and through which the air flow generated by the fan is configured to pass when the handheld vacuum cleaner is being operated (fig. 13),
a removable tank (item 112; figs. 1-2) for receiving waste separated by the waste separation device (pp. [0230]; dust is separated and collected in the removable tank 160 within item 164; fig. 12), removably attached to the vacuum cleaner housing (pp. [0558]; via item 493; fig. 5),
a removable filter (item 228; figs. 5-6) arranged in the airflow circuit (pp. [0246]; air passes through removable filter 228 prior to exiting vacuum cleaner through exhaust port 120), the removable filter housed in a filter chamber (defined as space, i.e. chamber, within walls 224; fig. 5) of the handheld vacuum cleaner, the filter chamber defined at least in part in the vacuum cleaner housing (filter chamber defined at left end of vacuum cleaner housing 104 in view of fig. 13) and arranged at least in part between the suction unit and a wall (item 224; figs. 5 and 13) of the vacuum cleaner housing (suction unit 152 disposed to the right of filter chamber and leftmost edge of wall is disposed to the left of filter chamber; designated in second annotated fig. 13B below), wherein
the filter chamber comprises an access opening (designated in annotated fig. 5 above) for accessing the removable filter formed in the handheld vacuum cleaner wherein the removable filter is configured to be accessible when the removable tank is detached from the vacuum cleaner housing (when removable tank 112 is decoupled from vacuum cleaner housing 104 via item 493, the removable filter 228 is accessed via access opening and capable of being removed; fig. 5) and
wherein, when the removable tank is attached to the vacuum cleaner housing (defined as position in view of figs. 1-2), the removable tank is arranged relative to the vacuum cleaner housing to prevent access to the removable filter through the access opening (removable tank 112 blocks, i.e. prevents, removable filter 228 from being accessed via user during use, i.e. when removable tank 112 is attached to vacuum cleaner housing 104; figs. 1-2).
PNG
media_image3.png
322
726
media_image3.png
Greyscale
Conrad Second Annotated Fig. 13B.
Conrad does not explicitly disclose wherein the removable filter is disposed in the airflow circuit between the suction unit and the at least one exhaust port. However, Conrad does disclose the removable filter may be of any suitable configuration and formed any suitable materials including the pre motor filter housing containing multiple filters, such as an upstream filter and a downstream filter (pp. [0244]).
King (US 2021/0401248) teaches a vacuum cleaner (item 30; fig. 7) comprising a removable tank (item 31; fig. 7), a vacuum cleaning housing (includes items 6, 34; figs. 7-8) including at least one exhaust port (item 7; fig. 7), a suction unit (item 26; figs. 5-6), and a removable filter (includes items 3 and 4; figs. 4-6) housed in a filter chamber (defined as chamber between outer structure of motor, i.e. item 25, and walls of housing, i.e. outer walls of items 6 and 34), wherein the removable filter is disposed in the airflow circuit between the suction unit and at least one exhaust port (removable filter is an annular filter surrounding outer structure of suction unit and disposed within walls of housing which includes exhaust port 7, figs. 4-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the removable filter, as disclosed in Conrad, to be an annular filter surrounding the suction motor, as taught in King, since it has been held that rearranging the parts of an invention involves only routine skill in the art (refer to MPEP 2144.04-VI-C) and the rearrangement is expected to function in an equivalent manner to filter particles remaining in the airflow exiting the waste separation device before air flow passes through the suction unit and the exhaust port while also, providing a more compact arrangement for the vacuum cleaner.
Regarding claim 2, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, wherein the access opening is formed in the vacuum cleaner housing (designated in annotated fig. 5 above; access opening is disposed at left end of vacuum cleaner housing in view of fig. 13) and faces the removable tank when the removable tank is attached to the vacuum cleaner housing (access opening faces removable tank 112 when mounted and in use; figs. 1-2).
Regarding claim 3, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, wherein the intake head forms a front part of the handheld vacuum cleaner (designated in second annotated fig. 13B above; intake head 128 is at the front part of vacuum cleaner), and
wherein the access opening and the removable tank are arranged relative to each other such that the removable filter is configured to be removed from a front of the handheld vacuum cleaner (designated in second annotated fig. 13B above) through the access opening when the removable tank is detached from the vacuum cleaner housing (when removable tank 112 is detached from vacuum cleaning housing 104, i.e. fig. 5 position, the removable filter can be removed in a direction moving towards the front part of the handheld vacuum cleaner to slide out of filter chamber through access opening).
Regarding claim 4, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, wherein the filter chamber is entirely contained within the vacuum cleaner housing (filter chamber is within vacuum cleaner housing 104 since filter is modified to surround suction unit 152 which is disposed entirely within vacuum cleaner housing 104) and is arranged between the suction unit and the wall of the vacuum cleaner housing (as modified above by King, filter and filter chamber entirely surround suction unit 152 and therefore, are arranged between outer walls of suction unit 152 and wall 224 of vacuum cleaner housing 104; fig. 13).
Regarding claim 5, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, wherein the removable filter and the filter chamber extend at least partially around the suction unit (as modified above by King; removable filter and filter chamber entirely surround, i.e. enclose, the suction unit, corresponding to item 152 in Conrad).
Regarding claim 7, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, wherein the electric motor comprises an output shaft (pp. [0233-0235]; defined as shaft within suction unit 152 which fan rotates about, i.e. about item 540) with a rotary axis (item 540; fig. 13), wherein the output shaft is coupled to the fan (in order to rotate about rotary axis 540), and wherein the removable filter, the filter chamber, and the access opening are annular in shape and are centered on the rotary axis (removable filter, filter chamber and the access opening are all aligned with one another; removable filter, as modified above, surrounds motor and centered about the rotary axis).
Regarding claim 9, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 7, wherein the waste separation device is a cyclone separator (pp. [0230]; waste separation device 160 is a cyclone chamber configured to separated dirt via cyclone axis of rotation; fig. 13) with a main axis (item 482; pp. [0234]; fig. 13) that is coaxial with the rotary axis of the output shaft of the electric motor (pp. [0235]; fig. 13).
Regarding claim 11, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, but does not explicitly disclose the details of the suction unit such as further comprising a suction unit casing that at least partially surrounds the suction unit.
However, King (US 2021/0401248) teaches a vacuum cleaner (item 30; fig. 7) comprising a suction unit (item 26; figs. 5-6), and a removable filter (includes items 3 and 4; figs. 4-6) housed in a filter chamber (defined as chamber between outer structure of motor, i.e. item 25, and walls of housing, i.e. outer walls of items 6 and 34), and a suction unit casing (includes items 6 and 20; figs. 4-6) that at least partially surrounds the suction unit (suction unit casing entirely surrounds suction unit 26; figs. 4-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the handheld vacuum cleaner, as disclosed in Conrad, to include a suction unit casing, as taught in King, in order for the fluid to flow easily through the suction unit casing without unnecessarily comprising the structural integrity of the suction unit casing (pp. [0052] in King).
Regarding claim 12, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 11, wherein the suction unit casing comprises a first annular wall (King; item 25; fig. 5) and a second annular wall (King; designated in annotated fig. 6 below), the first annular wall at least partially surrounding the suction unit (King; first annular wall surrounds end portion of suction unit 26, i.e. partially surrounds) and the second annular wall at least partially surrounding the first annular wall (King; second annular wall surrounds end portion of first annular end, i.e. partially surrounds; defined as portion within circular boundary designated in annotated fig. 6 below), the second annular wall concentric with the first annular wall (King; first and second annular walls surround same center, i.e. along axis A; figs. 5-6) and spaced apart from the first annular wall to define an annular space between the first annular wall and the second annular wall (King; defined as space between first annular wall and second annular wall, i.e. includes items 4 and 11; figs. 5-6), the annular space forming the filter chamber in which the removable filter is housed (filter 3 is disposed between first annular wall 25 and second annular wall; thereby, annular space defines filter chamber).
PNG
media_image4.png
271
354
media_image4.png
Greyscale
King Annotated Fig. 6.
Regarding claim 13, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 12, wherein the second annular wall of the suction unit casing forms at least one wall of the vacuum cleaner housing (King; second annular wall is an outermost wall of vacuum cleaner housing that includes exhaust outlets; corresponding to wall with exhaust ports in Conrad, figs. 2-5).
Regarding claim 14, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 13, wherein the second annular wall comprises the at least one exhaust port (King; second annular wall includes the exhaust ports, corresponding to item 104 in Conrad).
Regarding claim 15, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 12, wherein the first annular wall and the second annular wall are connected by at least one connecting wall (King; designated in annotated fig. 5 below) extending radially, relative to a rotary axis (connecting wall extends radially outward from rotary axis, i.e. item A in King, corresponding to item 540 in Conrad) of an output shaft (King; figs. 5-6) of the electric motor between the first annular wall and the second annular wall (King; connecting wall is disposed between first annular wall and second annular wall; designated in annotated fig. 5 below).
PNG
media_image5.png
266
524
media_image5.png
Greyscale
King Annotated Fig. 5.
Regarding claim 16, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 15, wherein the at least one connecting wall extends to a bottom of the filter chamber.
Regarding claim 17, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 1, wherein the removable filter is annular in shape (removable filter, as modified by King, is annular to surround motor).
Regarding claim 18, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 17, wherein the removable filter comprises annular end disks (King; designated in annotated fig. 13 below) attached to axial ends of a pleated filter medium (annular end disks are disposed on left and right ends, i.e. axial ends, of pleated filter medium of filter 3; pp. [0077] in King).
PNG
media_image6.png
367
457
media_image6.png
Greyscale
King Annotated Fig. 13.
Regarding claim 19, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 18, wherein a first of the annular end discs closes the access opening when the removable filter is placed in the filter chamber (a first annular end disk, defined as left disk in view of fig. 13 of King above, is defined as end in which suctioned airflow passes through first; therefore, corresponding to figs 5 and 13B of Conrad above, left side of filter 3, corresponding to first annular disk end, closes the access opening when mounted in place and in use).
Regarding claim 20, Conrad as modified discloses the handheld vacuum cleaner as claimed in claim 17, wherein the removable filter comprises a pleated filter medium (as modified from King, pp. [0077) that is annular in shape (King; pp. [0076]; figs. 4-6 and 13).
Regarding claim 22, Conrad (US 20190290082) discloses a handheld vacuum cleaner (item 123; fig. 1) comprising,
a vacuum cleaner housing (item 104; fig. 1),
a handle (item 108; fig. 2) connected to the vacuum cleaner housing (fig. 1),
an intake head (item 128; fig. 1) through which outside air is configured to be drawn in by the handheld vacuum cleaner (pp. [0228]; via inlet 124 on intake head 128; fig. 13),
at least one exhaust port (item 120; figs. 1-2) through which the cleaned air is configured to exit the handheld vacuum cleaner (pp. [0228]),
an airflow circuit (defined as pathway through intake head 128, through waste separation device, filter, suction unit, and exiting through exhaust port 120; fig. 13) extending between the intake head and the at least one exhaust port (pp. [0228]),
a suction unit (item 152; fig. 12) fitted on the airflow circuit (pp. [0244]; air passes through suction unit 152 prior to exiting vacuum cleaner via exhaust port 120), the suction unit comprising an electric motor and a fan (pp. [0232]; suction unit includes suction motor and fan assembly) coupled to the electric motor to generate an air flow in the airflow circuit from the intake head to the at least one exhaust port (pp. [0234]; air is suctioned through intake head 128 via the suction force formed by the suction unit 152),
a waste separation device (item 160; figs. 6 and 12) fitted on the airflow circuit (pp. [0230]; air passes through waste separation device 160 to be filtered) and through which the air flow generated by the fan is configured to pass when the handheld vacuum cleaner is being operated (fig. 13),
a removable tank (item 112; figs. 1-2) for receiving waste separated by the waste separation device (pp. [0230]; dust is separated and collected in the removable tank 160 within item 164; fig. 12), removably attached to the vacuum cleaner housing (pp. [0558]; via item 493; fig. 5),
a removable filter (item 228; figs. 5-6) arranged in the airflow circuit (pp. [0246]; air passes through removable filter 228 prior to exiting vacuum cleaner through exhaust port 120), the removable filter housed in a filter chamber (defined as space, i.e. chamber, within walls 224; fig. 5) of the handheld vacuum cleaner, the filter chamber defined at least in part in the vacuum cleaner housing (filter chamber defined at left end of vacuum cleaner housing 104 in view of fig. 13) and arranged at least in part between the suction unit and a wall (item 224; figs. 5 and 13) of the vacuum cleaner housing (suction unit 152 disposed to the right of filter chamber and leftmost edge of wall is disposed to the left of filter chamber; designated in annotated fig. 13B above),
wherein the filter chamber comprises an access opening (designated in annotated fig. 5 above) for accessing the removable filter formed in the handheld vacuum cleaner (access opening allows filter 228 to be grasped by user when removable tank is removed from vacuum cleaner housing 104; fig. 5), wherein the removable filter is configured to be accessible when the removable tank is detached from the vacuum cleaner housing (when removable tank 112 is decoupled from vacuum cleaner housing 104 via item 493, the removable filter 228 is accessed via access opening and capable of being removed; fig. 5) and
wherein, when the removable tank is attached to the vacuum cleaner housing (defined as position in view of figs. 1-2), the removable tank is arranged relative to the vacuum cleaner housing to prevent access to the removable filter through the access opening (removable tank 112 blocks, i.e. prevents, removable filter 228 from being accessed via user during use, i.e. when removable tank 112 is attached to vacuum cleaner housing 104; figs. 1-2).
Conrad does not explicitly disclose wherein the removable filter is annular in shape and extends around the suction unit. However, Conrad does disclose the removable filter may be of any suitable configuration and formed any suitable materials including the pre motor filter housing containing multiple filters, such as an upstream filter and a downstream filter (pp. [0244]).
King (US 2021/0401248) teaches a vacuum cleaner (item 30; fig. 7) comprising a removable tank (item 31; fig. 7), a vacuum cleaning housing (includes items 6, 34; figs. 7-8) including at least one exhaust port (item 7; fig. 7), a suction unit (item 26; figs. 5-6), and a removable filter (includes items 3 and 4; figs. 4-6) housed in a filter chamber (defined as chamber between outer structure of motor, i.e. item 25, and walls of housing, i.e. outer walls of items 6 and 34), wherein the removable filter is annular in shape and extends around the suction unit (removable filter is an annular filter surrounding outer structure of suction unit and disposed within walls of housing which includes exhaust port 7, pp. [0076]; figs. 4-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the removable filter, as disclosed in Conrad, to be an annular filter surrounding the suction motor, as taught in King, since it has been held that rearranging the parts of an invention involves only routine skill in the art (refer to MPEP 2144.04-VI-C) and the rearrangement is expected to function in an equivalent manner to filter particles remaining in the airflow exiting the waste separation device before air flow passes through the suction unit and the exhaust port while also, providing a more compact arrangement for the vacuum cleaner.
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.
Claim 22 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/020801 in view of Conrad (US 2017/0290479) . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 in application no. 18/020801 teaches all of the same limitations as claim 22 in the instant application except for the limitation of the filter being removable, and the filter chamber being formed at least in part in the vacuum cleaner housing and being arranged at least in part between the suction unit and a wall of the vacuum cleaner housing, wherein the filter chamber comprises an access opening for accessing the removable filter that is formed in the handheld vacuum cleaner such that the removable filter can be accessed when the removable tank has been detached from the vacuum cleaner housing and in that, when the removable tank is attached to the vacuum cleaner housing, the removable tank is arranged relative to the vacuum cleaner housing such that it prevents access to the removable filter through the access opening.
Conrad (US 2017/0290479) discloses a handheld vacuum cleaner (item 100, figs. 1-30) comprising,
a vacuum cleaner housing (item 104; figs. 1-2 and 6), a handle (item 108; figs. 1-2 and 6), an intake head (item 116, fig. 1), at least one exhaust port (items 120; fig. 6), a suction unit (item 152; fig. 6) fitted on the airflow circuit (pp. [0216]; suction unit 152 is on the airflow circuit as air travels through suction unit before exiting through exhaust port 120), the suction unit comprising an electric motor and a fan (pp. [0213]; fig. 6) to generate an air flow in the airflow circuit from the intake head to the at least one exhaust port (pp. [0213]; fig. 6),
a waste separation device (item 160; pp. [0212], [0224]; fig. 6) fitted on the airflow circuit (waste separation device 160 is on airflow circuit as dirty air travels through to separate dirt from air; pp. [0224]; fig. 4),
a removable tank (item 164; pp. [0223]; figs. 8-11) which is removably attached to the vacuum cleaner housing (pp. [0251]; figs. 8-11; tank 160 is removable from vacuum cleaner housing 104 in order for dirt to be emptied),
a removable filter (item 228; pp. [0216] ,[0218]; figs. 6 and 8a) arranged in the airflow circuit (fig. 6), the removable filter being housed in a filter chamber (within item 208, i.e. items 256 and 260; pp. [0215], [0218]; figs. 6 and 8) of the handheld vacuum cleaner, the filter chamber being formed at least in part in the vacuum cleaner housing (filter chamber is within vacuum cleaning housing 104; pp. [0215]; fig. 6) and being arranged at least in part between the suction unit and a wall of the vacuum cleaner housing (item 216; fig. 6),
the filter chamber comprises an access opening (defined as open in view of fig. 11 to grasp the filter 228) for accessing the removable filter that is formed in the handheld vacuum cleaner such that the removable filter can be accessed when the removable tank has been detached from the vacuum cleaner housing (pp. [0290]; when removable tank 164 is detached from vacuum cleaner housing 104, the access opening is open to the user to get access to the filter 228; figs. 8-11) and in that, when the removable tank is attached to the vacuum cleaner housing (defined as position in figs. 1-2 and 6), the removable tank is arranged relative to the vacuum cleaner housing such that the removable tank prevents access to the removable filter through the access opening (when removable tank 164 is mounted to the vacuum cleaner housing 104, the access opening is unable to be accessed by the user and the removable filter 228 cannot be removed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the filter, as disclosed in application no. 18/020801, to be removable since it has been held that constructing a formerly integral structure in various elements for replacement, maintenance, and/or repair involves only routine skill in the art (see MPEP 2144.04.V-C), and as taught in Conrad, in order for the filter to be cleaned or replaced (pp. [0218] in Conrad).
Additionally, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the filter chamber and removable filter, as disclosed in application no. 18/020801), to have the filter chamber be defined at least in part in the vacuum cleaner housing and arranged at least in part between the suction unit and a wall of the vacuum cleaner housing, and include an access opening in the filter chamber for accessing the removable filter that is formed in the handheld vacuum cleaner such that the removable filter can be accessed when the removable tank has been detached from the vacuum cleaner housing and in that, when the removable tank is attached to the vacuum cleaner housing, the removable tank is arranged relative to the vacuum cleaner housing such that it prevents access to the removable filter through the access opening, as taught in Conrad, in order for the airflow to pass through the filter prior to reaching the suction unit to prevent dirty air and debris damaging the suction unit (Conrad; pp. [0216]) and for the filter to be secured in place during use by the removable tank and capable of being removed once removable tank is removed for the filter to be cleaned and replaced (Conrad; pp. [0218]; fig. 6).
This is a provisional nonstatutory double patenting rejection the patentably indistinct claims have not in fact been patented.
Instant application, Claim 22
App no. 18/020801, claim 13 (depends from claim 1)
Claim 22, lines 1-2: A handheld vacuum cleaner comprising a vacuum cleaner housing
Claim 1
Claim 22, line 3: a handle connected to the vacuum cleaner housing
Claim 1
Claim 22, lines 4-5: an intake head through which outside air can be drawn by the handheld vacuum cleaner;
Claim 1
(intake head of instant application = intake inlet of ‘801)
Claim 22, lines 6-7: at least one exhaust port through which the cleaned air is configured to exit the handheld vacuum cleaner,
Claim 1
Claim 22, line 8: an airflow circuit extending between the intake head and the exhaust port,
Claim 1
Claim 22, lines 9-11: a suction unit…comprising an electric motor and a fan coupled to the electric motor to generate an air flow in the airflow circuit form the intake head to the at least one exhaust port,
Claim 1
Claim 22, lines 12-14: a waste separation device fitted on the airflow circuit upstream of the suction unit and through which the airflow generated by the fan is configured to pass when the handheld vacuum cleaner is operated,
Claim 1
Claim 22, lines 15-16: a removable tank for receiving the waste separated by the waste separation device, removably attached to the vacuum cleaner housing
Claim 1
Claim 22, lines 17-20: a removable filter arranged in the airflow circuit, the removable filter housed in a filter chamber of the handheld vacuum cleaner, the filter chamber defined at least in part in the vacuum cleaner housing and arranged at least in part between the suction unit and a wall of the vacuum cleaner housing,
Claim 10 (which depends from claim 1)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the filter to be removable filter, as taught in from Conrad above
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the filter chamber defined at least in part in the vacuum cleaner housing and arranged at least in part between the suction unit and a wall of the vacuum cleaner housing, as taught in from Conrad above
Claim 22, lines 21-25: the filter chamber comprises an access opening for accessing the removable filter formed in the handheld vacuum cleaner, wherein the removable filter is configured to be accessible when the removable tank is detached from the vacuum cleaner housing and wherein, when the removable tank is attached to the vacuum cleaner housing, the removable tank is arranged relative to the vacuum cleaner housing to prevent access to the removable filter through the access opening,
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the filter chamber to have an access opening so that the removable filter can be accessed when the removable tank has been detached from vacuum cleaner housing and in that, when the removable tank is attached to the vacuum cleaner housing, the removable tank prevents access to the removable filter through the access opening, as taught in from Conrad above
Claim 22, lines 26-27: wherein the removable filter and the filter chamber are substantially annular in shape and extend around the suction unit
Claim 13 (which depends from claim 10)
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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. As necessitated by the amendments, a new grounds of rejection is made in view of Conrad (US 20190290082) and further in view of King (US 2021/0401248), as cited in Conclusion from Non-Final Rejection filed on 05/28/2025.
Lastly, in regard to arguments of the double patenting rejection (p. 12 of Remarks), the request for abeyance until allowable subject matter is noted by the Examiner. A complete response to a nonstatutory double patenting rejection (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimed. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentable distinct from the reference application’s claim, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. When a terminal disclaimer is filed in an application in which the claims are then canceled or otherwise shown to be patentable distinct from the reference claims, the terminal disclaimed may be withdrawn before issuance of the patent by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimed. Please refer to MPEP 802.02 VI.
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 SIDNEY D FULL whose telephone number is (571)272-6996. The examiner can normally be reached Monday-Friday, 7:00a.m.-2:30p.m..
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, Brian Keller can be reached at (571)272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SIDNEY D FULL/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723