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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Upon further review, Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
This application is claiming the benefit of prior-filed application No. 14/701,163 under 35 U.S.C. 120, 121, 365(c), or 386(c). Copendency between the current application and the prior application is required. As discussed in MPEP 211.01(b), appropriate references must be made in each intermediate application in a chain of prior applications. The priority benefit to application No. 16/691,587 is proper, however, as seen in the decision dated June 15, 2023 in application No. 16/691,587, the petition to accept an unintentionally delayed claim for the benefit of prior-filed application No. 14/701,163 was dismissed. The present application was filed after the pendency of application No. 14/701,163. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication No. 2016/0317963 to Williams et al. (hereinafter referred to as Williams).
In regard to claim 14, as shown in figure 3, Williams discloses an air filter (104) having a filter medium (144). As discussed in paragraph [0043], the filter medium (144) can be treated with a filter oil composition. As discussed in paragraph [0038], the filter medium can be washable. Therefore, making the filter medium inherently includes configuring a washable filter medium for treatment with a filter oil composition for removing airborne particulate matter from an airstream. As shown in figure 3, making the filter further incudes retaining the filter medium (144) within a supportive frame (148). As discussed in paragraph [0043], the filter oil composition includes a dye. Making the filter further inherently includes configuring the dye to give the filter medium the color of the dye, adding the dye to the filter oil composition, and applying the filter oil composition and the dye to the filter medium. Williams, however, does not specifically disclose using a black dye. There is no evidence the color of the dye affects the function of the filter medium. As discussed in MPEP 2144.04(I), aesthetic design changes are a matter of choice which cannot be used to distinguish a claim from the prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Williams to use a back dye in the filter oil composition to give the filter medium a black color given a user prefers a filter with a black color.
In this case, the method includes configuring a black dye to give the filter medium an appealing black appearance, adding the black dye to the filter oil composition, and applying the filter oil composition and the black dye to the filter medium
In regard to claim 15, as discussed in paragraph [0039], the filter medium (144) can be formed from 4 to 6 layers of cotton gauze sandwiched between two epoxy-coated aluminum wire screens.
In regard to claim 16, the claim does not require any specific size or shape to fit within a ventilation system. Any size and shape the filter is formed in is considered to be suitable for orienting the air filter within a ventilation system, as broadly recited in the claim.
In regard to claim 17, Williams does not specifically disclose giving the supportive frame a color that is coordinated with the color of the filter medium. There is no evidence the color of the frame affects its function. As discussed in MPEP 2144.04(l), aesthetic design changes are a matter of choice which cannot be used to distinguish a claim from the prior art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Williams to give the supportive frame a color that is coordinated with the color of the filter medium given a user prefers a filter with a single color.
In regard to claim 18, as discussed in paragraphs [0036] and [0037], retaining the filter medium within a supportive frame can include molding the supportive frame onto a wire support comprising the filter medium.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Williams as applied to claims 14 – 18 above, and further in view of KR 10-2006-0085525 to Park et al. (hereinafter referred to as Park).
Williams is discussed above in section 4. Williams generally discloses treating the filter medium with an oil composition. Williams does not disclose spraying the filter oil composition, which includes a dye, onto the filter medium. As shown in figures 3 and 4, Park discloses a similar filter having a filter medium (30) in a frame (40). As shown in figure 4, the filter medium (30) can be coated by a high viscosity oil (110) by spraying the oil from a spray injection device (100) onto the filter medium. The oil being sprayed is inherently in aerosol form.
Thus, it would further have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Williams to apply the oil composition using a spray technique as suggested by Park as this is a known method in the art for applying an oil to a filter medium. The combination of Williams and Park will include an application step of spraying the filter oil composition and the black dye onto the filter medium by way of an aerosol spray.
Response to Arguments
Applicant's arguments filed January 8, 2026 have been fully considered but they are not persuasive.
Applicant generally argues that Williams fails to teach or suggests the steps of “configuring a black dye to give the filter medium an appealing black appearance”, “adding the black dye to the filter oil composition”, and “applying the filter oil composition and the black dye to the filter medium”. As discussed in the rejection above, Williams teaches configuring a dye, adding the dye to the filter oil composition, and applying this filter oil composition to the filter medium. The choice in the color of the dye inherently gives the filter medium that color. As discussed in paragraph [0043], the color of the oil and/or dye is not critical. Further, as noted in the rejection above, as discussed in MPEP 2144.04(I), aesthetic design changes are a matter of choice which cannot be used to distinguish a claim from the prior art. The examiner considers Williams to disclose all of the limitations of the method except for the color of the dye. While, Williams does not specifically disclose a black dye, the color of the dye is not considered to a patentable feature. The examiner maintains it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Williams to use a back dye in the filter oil composition to give the filter medium a black color given a user prefers a filter with a black color.
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 Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773
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