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 .
Status
Claim(s) 1-10, is/are filed on 06/04/2026 are currently pending. Claim(s) 1-10 is/are rejected.
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 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 pre-AIA 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(s) 1-9 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Xue (CN 107218102 A).
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Regarding claim 1, Xue discloses a filter unit for filtering liquid, comprising: a housing (1 and 2) having an inlet (3) and an outlet (4), wherein the inlet and the outlet are disposed on a same side of the housing (top side); a first filter (i.e. 12 – left filter unit) disposed in the housing and including: a first axial end (13) affixed to an inner surface of the housing, an axial inlet (inlet from 3 i.e. 16) disposed over an opening of the inlet of the housing, and a first filter media (11); a second filter (i.e. 6 – middle filter unit 6) disposed in the housing and including: a first axial end (7) affixed to the inner surface of the housing, an axial outlet (10) disposed over an opening of the outlet in the housing, and a second filter media (6), wherein the first filter and the second filter are disposed laterally (fig. 1) with respect to each other within the housing, and wherein the first axial end of the first filter and the first axial end of the second filter are affixed to the same side of the housing (top side); wherein each of the first filter and the second filter is hollow (they have inner cavities through which oil flows – the magnets are simply placed along the inner periphery of the central tube 11) and has a tubular shape (see fig. above) with a second axial end (i.e. 14 and 8 respectively) opposite the first axial end, and wherein the second axial end of each of the first filter and the second filter is spaced apart from the housing (1 and 2) (see fig. above); and wherein the first filter and the second filter are configured in a way such that a liquid flow path extending extends from the inlet to the outlet through the first filter media and the second filter media in series such that the liquid is directed from the inlet of the housing through the first filter to the outlet of the housing through the second filter (intended use), wherein the filter unit is configured in a way such that the liquid flow path configured to direct the liquid flows radially outward through the first filter media and to direct the liquid radially inward through the second filter media (intended use) (p. 1-5).
Regarding claim 2, Xue teaches wherein the axial inlet (16) of the first filter is formed in the first axial end (13) of the first filter, and the axial outlet (10) of the second filter is formed in the first axial end (7) of the second filter.
Regarding claim 3, Xue teaches wherein the first filter media is configured to be a radial outlet of the first filter, and the second filter media is configured to be a radial inlet of the second filter (intended use – however, Xue is teaches this is how it functions).
Regarding claim 4, Xue teaches wherein the first filter is spaced apart from the second filter within the housing (fig. 1).
Regarding claim 5, Xue teaches wherein the first filter and the second filter are disposed side by side within the housing (fig. 1).
Regarding claim 6, Xue teaches wherein the liquid flow path includes, in order: a first portion extending through the first filter along an axis of the first filter, a second portion extending radially outward through the first filter media, a third portion extending from the first filter media to the second filter media, a fourth portion extending radially inward through the second filter media, a fifth portion extending through the second filter along an axis of the second filter (intended use). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).“The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.” Id.at 580.
Regarding claim 7, Xue teaches wherein the third portion extends in a first direction that is radially outward with respect to the first filter and radially inward with respect to the second filter (intended use).
Regarding claim 8, Xue teaches wherein the first filter media and the second filter media are depth fibers (i.e. paper) thereof.
Regarding claim 9, Xue teaches wherein the first filter media and the second filter media are the same type of filter media (i.e. filter paper).
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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) 10 is/are rejected under 35 U.S.C. 103 as being obvious by Xue (CN 107218102 A).
Regarding claim 10, Xue does not wherein the first filter media and the second filter media are different types of filter media. However, it is well-known to use multiple filters of different types – for example to filter out different type impurities in which the other filter cannot to optimize filtration (see at least US 5342511 A). It would have been obvious to one of ordinary skill to have modified the filters of Koslow for the aforesaid advantages.
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It is noted that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
Response to Arguments
Applicant's arguments with respect to the claims have been considered but are not found persuasive.
The applicant argues that Xue’s filters are not "completely hollow" because they contain magnetic filtration device components and screen packs inside their central tubes. The applicant asserts that the claimed filters have an "open, unobstructed hollow interior" with no internal components.
The term "hollow" in the context of filters does not require a completely empty interior. Xue’s second central tube (11) and first central tube (5) are explicitly described as having inner cavities (e.g., "the inner chamber of the first central tube 5" and "the inner chamber of the second central tube 11"). These cavities allow oil to flow through the tubes, satisfying the functional definition of "hollow." The magnetic filtration components and screen packs are functional elements that do not fill the entire interior volume of the tubes. They are analogous to the applicant’s filter media, which also occupy a portion of the interior space.
The applicant argues that Xue’s parallel-then-converge flow path is fundamentally different from the claimed serial flow path, where liquid passes through one filter and then another in series.
The applicant’s reliance on differences in flow architecture (parallel vs. serial) is not a structural limitation in the claim. The claim language does not recite this limitation, and the examiner is not obligated to read it into the specification. Even if the applicant’s intended flow path differs, Xue’s disclosure already describes a serial filtration process where oil passes through the second filter cores (with magnetic filtration) and then through the first filter core before exiting. This satisfies the functional requirement of the claim. As stated in the office action: "Apparatus claims cover what a device is, not what a device does." (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990)). "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." (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Waqaas Ali whose telephone number is (571) 270-0235. The examiner can normally be reached on M-F 9-5 PM.
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, Claire Wang can be reached on 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAQAAS ALI/Primary Examiner, Art Unit 1777
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