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 .
Election/Restrictions
Applicant’s election of claims 1-6 in the reply filed on 11/24/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election is considered made without traverse for the reason cited above.
Claim Rejections - 35 USC § 112
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 1-6 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 3 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McBurney et al. (WO 01/05449A1).
Regarding claim 1, McBurney teaches a device for substance exchange between a first medium and a second medium (refer fig. 1 disclosing exchange between blood 156 and air 160), comprising
a housing element (108) in which there is arranged a hollow fiber bundle containing substance-permeable hollow fibers (refer 112) which extend axially between axial ends of the housing element and at their respective axial end region are potted with a potting compound (124),
at least among one another, and around which (outside of hollow fibers) the first medium (156) can flow and through which (within lumens of hollow fiber) the second medium (160) can flow, wherein the housing element (108), at at least one of the axial ends is closed by a cover element (300, refer fig. 3) which has a media connection in fluidic communication with the axially open ends of the hollow fibers (refer fig. 3 indicating inlet for 160),
wherein at at least one of the axial ends of the housing element an outer sealing ring surrounding the hollow fiber bundle is formed from the potting compound arranged between the hollow fibers, which outer sealing ring extends in the radial direction at least in part between axial end faces of the housing element and of the cover element and is compressed between these (refer fig. 1 indicating the potting compound having flange portion extending radially towards 168; the cover element 300 adjoins the potting compound and end of cylindrical housing 108), and
at at least one of axial ends of a winding core (116) which carries the hollow fibers an inner sealing ring arranged on an inner circumference of the hollow-fiber bundle is formed from the potting compound arranged between the hollow fibers, which inner sealing ring extends in the radial direction at least in part between axial end faces of the winding core and of a plug in the cover element and is compressed between these (refer fig. 1 indicating the potting material 124 extending between inner surface of housing 108 including inner side and outer side of axial ends of core 116, fig. 13 discloses potting jig and Col. 7 – Line 5 through 33 discloses a potting process indicating formation of potting 124 at axial ends).
Regarding claim 2, McBurney teaches limitations of claim 1 as set forth above. The inner and out sealing rings (radially extending portions of potting 124) of McBurney is in one piece because it is formed by potting the entire potting portion 124 using a potting resin (refer Col. 7 – Line 5 through 33).
Regarding claim 3, McBurney teaches limitations of claim 1 as set forth above. McBurney discloses that the potting compound is formed by an elastomer (refer Col. 6 – L31-34 disclosing polyurethane which is an elastomer).
Regarding claim 4, McBurney teaches limitations of claim 1 as set forth above. Fig. 1 of McBurney discloses that the axial end face of the housing element (108) has radially inwardly, an axially and radially inwardly open access in which the outer sealing ring lies compressed (refer fig. 1 disclosing housing 108 having a curved shape near 168 where outer sealing ring of potting 124 rests and is compressed when cover 300 is joined). The limitations following “and/or” are optional limitations.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over McBurney et al. (WO 01/05449A1), in view of Doh et al. (US 2007/0144716A1).
Regarding claim 5, McBurney teaches limitations of claim 1 as set forth above. McBurney does not teach that an axial, annular projection is arranged radially inwardly on one of the end faces of housing element or cover element and lies at least in part in the axially open recess in the end face of the opposite element, or an axial, annular projection is arranged radially outwardly on one of the end faces of the winding core or of the plug in the cover element, which projection lies at least in part in the axially open recess in the end face of the opposite element.
Doh teaches a hollow fiber membrane module comprising a bundle of hollow fibers potted at end region thereof, the module comprises a housing having an axial, annular projection arranged radially inwardly on of end faces of housing element (refer fig. 3 indicating housing 304 having grooves/channels providing a fluid tight seal (Refer [0044]. Doh also discloses that the channels/grooves can be provided on housing, sleeve, or endcap (Refer [0044]).
It would have been an obvious matter of design choice to one of ordinary skill in the art to select shape of joining elements in the device of McBurney to provide an axial, annular projection is arranged radially inwardly on one of the end faces of housing element or cover element and lies at least in part in the axially open recess in the end face of the opposite element to provide a fluid tight seal as taught by Doh.
Regarding claim 6, modified McBurney teaches limitations of claim 5 as set forth above. Doh further discloses that the outer sealing ring is extended in a radial direction outward beyond the projection and overhangs it and by a stepped region at the recess of the opposite element is bent axially into a region which is arranged set back radially outwardly from the projection and axially behind the projection (refer fig. 3 indicating trapezoids shapes having projections and grooves where potting material is filled to provide a fluid tight seal between housing/endcap and hollow fiber bundle). Doh also teaches that the grooves and channels can be any shape that can be formed in a housing or sleeve wall (refer [0044]. It would have been an obvious matter of design choice to one of ordinary skill in the art to select shape of joining elements in the device of McBurney to provide the outer sealing ring that is extended in a radial direction outward beyond the projection and overhangs it and by a stepped region at the recess of the opposite element is bent axially into a region which is arranged set back radially outwardly from the projection and axially behind the projection to provide a fluid tight seal as suggested by Doh.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRANAV PATEL whose telephone number is (571)272-5142. The examiner can normally be reached M-F 6AM-4PM.
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, Bobby Ramdhanie can be reached at (571) 270-3240. 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.
/PRANAV N PATEL/Primary Examiner, Art Unit 1777
Prosecution Insights