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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1–13 in the reply filed on July 14, 2025 is acknowledged.
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 5 and 11 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 5 recites:
5. The flexible filter as set forth in [claims 1 and 4], wherein the magnetic strip comprises a first part and a second part wherein the first part is secured to the edges of the opening and the second part is secured to the perimeter of the sheet of anti-static mesh flexible filter screen and wherein the first part and second part of the magnetic strip of opposing polarities. Emphasis added.
Claim 5 is indefinite because it is unclear if the “opening” is a positively recited structural element of the claimed apparatus. This is because claim 1 indicates that the “opening” is not a positively recited element of the filter, as the filter is “for an opening.” But claim 5 appears to indicate that the “opening” is a positively recited element of the claim by saying that the “first part is secured to the edges of the opening.” For the purpose of examination, the “opening” is not a positively recited structural element of the flexible filter of claim 5.
Claim 5 is also indefinite because it is a single claim which claims both an apparatus and the method steps of using the apparatus. Specifically, claim 5 is to an apparatus because it describes a “flexible filter.” But the claim also recites method steps of using the filter by saying that the “first part is secured to the edges of the opening.” Therefore, claim 5 is indefinite because it is unclear whether direct infringement would occur when the filter is created that would allow it to be secured to the edges of the opening, or whether infringement requires that the filter is attached to the edges of the opening. See MPEP 2173.05(p)(II) (A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite).
To overcome these rejections claim 5 could be rewritten as:
5. The flexible filter as set forth in claim 4, wherein the magnetic strip comprises a first part and a second part wherein the first part is configured to be secured to the edges of the opening and the second part is secured to the perimeter of the sheet of anti-static mesh flexible filter screen and wherein the first part and second part of the magnetic strip of opposing polarities.
Claim 11 recites identical language as claim 5 and is indefinite for the same reasons as claim 5.
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, 4, 6, 7, 9, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Byers, US 7,387,654 B1.
Regarding claim 1, Byers teaches a screen assembly 110 for covering the exterior surface 102 of an HVAC air processing unit 100. See Byers Fig. 1, col. 3, ll. 4–32. The screen assembly 110 reads on the “flexible filter.” Note that the limitations describing the “opening leading to a heat transfer surface of a heat exchanger” fail to further limit the scope of the claim, because they describe the intended use rather than the structure of the claimed “flexible filter.” See MPEP 2111.02(II) (the preamble is not considered a limitation and is of no significance to claim construction when the preamble merely states the intended use of the invention and the claim fully and intrinsically sets forth all of the limitations of the claimed invention).
The screen assembly 110 comprises a screen mesh 112 with a perimeter, where the screen mesh 112 can be manufactured of metal filaments. See Byers Fig. 2, col. 3, ll. 33–35. The mesh 112 reads on the “sheet of anti-static mesh flexible filter screen configured with a perimeter.” Note that metal filaments are antistatic because metal is conductive. The perimeter of the mesh 112 is capable of performing the function of extending beyond edges of the opening leading to a heat transfer surface of a heat exchanger, because the screen assembly 110 is intended to be wrapped around the exterior surface 102 of the HVAC air processing unit 100. Id. at Figs. 1, 2, col. 3, ll. 4–32; MPEP 2114(IV) (Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). Note that the “opening leading to a heat transfer surface of a heat exchanger” is not a positively recited structural element of the claimed “flexible filter.” See MPEP 2115 (a claim is only limited by positively recited elements).
The screen assembly 110 also comprises first and second attachment members 128, 130, secured to left and right-hand portions of the perimeter of the screen mesh 112, for securing edges 118, 120 of the screen assembly 110 to the exterior surface 102 of the HVAC air processing unit 100. See Byers Fig. 2, col. 3, ll. 44–52. The first and second attachment members 128, 130 read on the “at least one mounting strip attached to at least a portion of a perimeter of the sheet of filter screen.”
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Regarding claims 3 and 4, Byers teaches that the first and second attachment members 128, 130 (the “at least one mounting strip”) each comprise inner and outer attachment strips 132, 134 where the inner attachment strip 132 comprises a layer of adhesive 144 and a magnetic strip 142. See Byers Figs. 2–4, col. 3, l. 59–col. 4, l. 11. The layer of adhesive 144 reads on the “adhesive strip” (claim 3) and the magnetic strip 142 reads on the “magnetic strip” (claim 4).
Regarding claim 6, Byers teaches the first and second attachment members 128, 130 (the “at least one mounting strip”) comprise hook and loop fasteners. See Byers col. 5, ll. 36–45.
Regarding claim 7, Byers teaches a screen assembly 110 for covering the exterior surface 102 of an HVAC air processing unit 100. See Byers Fig. 1, col. 3, ll. 4–32. The screen assembly 110 reads on the “flexible filter.” Note that the limitations describing the “opening leading to a heat transfer surface of a heat exchanger” fail to further limit the scope of the claim, because they describe the intended use rather than the structure of the claimed “flexible filter.” See MPEP 2111.02(II).
The screen assembly 110 comprises a screen mesh 112 with a perimeter. See Byers Fig. 2, col. 3, ll. 33–35. The mesh 112 reads on the “sheet of anti-static mesh flexible filter screen configured with a perimeter.” The perimeter of the mesh 112 is capable of performing the function of extending beyond edges of the opening leading to a heat transfer surface of a heat exchanger, because the screen assembly 110 is intended to be wrapped around the exterior surface 102 of the HVAC air processing unit 100. Id. at Figs. 1, 2, col. 3, ll. 4–32; MPEP 2114(IV) (Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). Note that the “opening leading to a heat transfer surface of a heat exchanger” is not a positively recited structural element of the claimed “flexible filter.” See MPEP 2115.
The screen assembly 110 also comprises first and second attachment members 128, 130, secured to left and right-hand portions of the perimeter of the screen mesh 112, for securing edges 118, 120 of the screen assembly 110 to the exterior surface 102 of the HVAC air processing unit 100. See Byers Fig. 2, col. 3, ll. 44–52. The first and second attachment members 128, 130 read on the “at least one mounting strip attached to at least a portion of a perimeter of the sheet of filter screen.”
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Regarding claims 9 and 10, Byers teaches that the first and second attachment members 128, 130 (the “at least one mounting strip”) each comprise inner and outer attachment strips 132, 134 where the inner attachment strip 132 comprises a layer of adhesive 144 and a magnetic strip 142. See Byers Figs. 2–4, col. 3, l. 59–col. 4, l. 11. The layer of adhesive 144 reads on the “adhesive strip” (claim 9) and the magnetic strip 142 reads on the “magnetic strip” (claim 10).
Regarding claim 12, Byers teaches the first and second attachment members 128, 130 (the “at least one mounting strip”) comprise hook and loop fasteners. See Byers col. 5, ll. 36–45.
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 2 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Byers, US 7,387,654 B1 in view of Simmons et al., US 2008/0098702 A1 and in further view of Neher et al., US 2011/0284173 A1.
Regarding claims 2 and 13, Byers teaches the limitations of claims 1 and 7, as explained above.
Byers differs from claims 2 and 13 because it is silent as to the mesh 112 being anti-static and comprising a nylon or polyester mesh material.
But Byers teaches that the mesh 112 can be manufactured from metal, fiberglass or plastic filaments. See Byers Fig. 2, col. 3, ll. 33–43. Also, the mesh 112 is a screen material that is reduce ingress of airborne particulate matter into the interior of the HVAC air processing unit 100. Id. at col. 3, ll. 21–31.
With this in mind, Simmons teaches a flexible filtration screen 14 for preventing debris from entering the interior of an HVAC condensing unit 12, where the filtration screen 14 can be manufactured from materials such as polyester or wire. See Simmons [0017]. Also, Neher teaches a polyester screen fabric material intended to protect an opening (such as a window or door) from insects and other debris from entering, where the screen material is coated with an antistatic material to reduce soiling. See Neher [0014], [0028].
It would have been obvious for the mesh 112 of Byers to be manufactured from polyester because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. It also would have been obvious for the polyester material to be coated with the antistatic material of Neher to reduce soiling.
Claims 5 and 11 is rejected under 35 U.S.C. 103 as being unpatentable over Byers, US 7,387,654 B1 in view of Bennington et al., US 6,221,120 B1.
Regarding claims 5 and 11, Byers teaches that the magnetic strip 142 is secured to the perimeter of the mesh sheet 112. See Byers Fig. 6, col. 4, ll. 12–26. The magnetic strip 142 reads on the “second part.”
Byers differs from claims 5 and 11 because it is silent as to another magnetic strip (the “first part”) that is secured to the exterior surface 102 of the HVAC air processing unit 100 (the “edges of the opening”) with the additional magnetic strip having an opposite polarity to the magnetic strip 142.
But Byers teaches that the magnetic strip 142 is intended to be magnetically secured to the exterior surface 102 of the HVAC air processing unit 100. Id. at col. 4, ll. 12–26.
With this in mind, Bennington teaches a screen member for attachment to the exterior of a heat exchanger by a magnetic connection, where one magnetic strip is attached to the perimeter of the screen member and another magnetic strip is attached to the housing of the heat exchanger. See Bennington col. 3, ll. 27–31, col. 4, ll. 25–33, col. 5, ll. 8–13. The two magnetic strips are of opposite polarities because they are magnetically attracted to each other so that the screen member 30 is attached to the housing of the heat exchanger. Id. The magnetic strip on the housing of the heat exchanger is beneficial because it allows the screen member 30 to be magnetically attached to a housing that is made of a non-ferrous material. Id. at col. 5, ll. 8–13.
It would have been obvious for the exterior surface 102 of the HVAC air processing unit 100 of Byers to comprise a magnetic strip of an opposite polarity to the magnetic strip 142 on the mesh screen 112 so that the screen assembly 110 can be attached to an HVAC air processing unit 100 made of a non-ferrous material. With this modification, the magnetic strip attached to the exterior surface 102 of the HVAC air processing unit 100 would read on the “first part.”
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Byers, US 7,387,654 B1 in view of Simmons et al., US 2008/0098702 A1.
Regarding claim 8, Byers teaches the limitations of claim 1, as explained above.
Byers differs from claim 2 because it is silent as to the mesh 112 comprising a nylon or polyester mesh material.
But Byers teaches that the mesh 112 can be manufactured from metal, fiberglass or plastic filaments. See Byers Fig. 2, col. 3, ll. 33–43.
With this in mind, Simmons teaches a flexible filtration screen 14 for preventing debris from entering the interior of an HVAC condensing unit 12, where the filtration screen 14 can be manufactured from materials such as polyester or wire. See Simmons [0017].
It would have been obvious for the mesh 112 of Byers to be manufactured from polyester because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Huang et al., US 11,759,742 B2; Amundson, US 11,708,890 B2; Kelly et al., US 11,703,251 B2; Johnson, US 10,145,570 B2; Simmons, US 8,726,954 B2; Bond, US 8,454,720 B1; Sandberg, US 7,332,011 B1; Jensen, US 2008/0034776 A1; Miller, US 7,140,194 B1; Kiiunen, US 6,780,216 B2; Miller, US 6,708,514 B1; Deal, US 5,809,800.
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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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776