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
Claims 17-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 was made without traverse in the reply filed on 7/8/25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-15 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13 has been amended to omit “trace quantities of” gold, palladium and platinum. However, as the claim is currently worded, the composition would include oxides of gold, palladium and platinum. The specification as originally filed does not provide support for the composition comprising oxides of gold, palladium and platinum but instead quantities of gold, palladium and platinum. Therefore, the amendment to the claim introduces new matter not disclosed in the specification as originally filed.
The additional claims are rejected as depending from claim 13.
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 2, 10-11, 13-15 and 25 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 2 recites the cartridge has a diameter size in relation to an input line diameter. The specification indicates the input line as element (4) which does not appear to be part of the cartridge or the fluid filter. Therefore, relating the size of the cartridge to a structure that is not defined or positively recited in the claim renders the claim indefinite because the fluid filter may be used with varying sized input lines and thus infringement could occur depending on where the fluid filter is used rather than on what the actual structure of the fluid filter is.
Claim 10 recites the limitation "the activated carbon". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the activated carbon". There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the oxides" in line 3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, “oxides”.
Claim 13, line 2, recites the filtering medium composition of granular particles and “consisting of” a composition of oxides. Thus, the claim requires the filtering composition consist of the composition of oxides. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931). The claim has now been amended to further recite; the granular particles consist of between 80-99.9% by weight of the filtering medium composition. However, the claim requires the filtering medium composition be granular particles and consist of the composition of oxides. Therefore, if the filtering medium composition is 80-99.9% of the granular particles the filtering medium can also include other granular particles which are excluded by the use of the phrase “consisting of”. Additionally, it is unclear in line 13 where the claim recites the granular particles “consist of” between 80-99.9% by weight of the filtering medium. Therefore, it is unclear if the filtering medium composition is excluded from having anything other then the specified 80-99.9% of the granular particles, but the range of granular particles is less than 100% and therefore, by definition would require some other element or ingredient because the phrase “consist of” excludes any element, step or ingredient not specified in the claim.
The additional claims are rejected as depending from claim 13.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 13-14 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 10-11 of prior U.S. Patent No. 11,499,455. This is a statutory double patenting rejection.
Claims 10-11 of the ‘455 patent recite the filtering medium composition is “of granular particles…and consisting of a homogeneous composition of the oxides...” and further recites the oxides of copper comprise at least 80%, non-copper oxides comprise between 0.001% and 19.9999% and gold, palladium and platinum comprise between 0.00001% and 0.0002% of the filtering medium. Therefore, the composition of the filtering medium could be 80.00101% to 100% of the granular particles based on the claimed ranges. Therefore, the recited range of 80-99.9% by weight of filtering medium composition would be included in the range recited in the ‘455 patent.
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.
Claims 1-8 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,499,455. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, the ‘455 patent recites a fluid filter for attachment to a line and comprising a housing packed with a filtering medium composition. Claim 1 of the instant application recites a fluid filter comprising a cartridge placed into a fluid filter housing in a fluid line, the cartridge packed with a filtering medium composition. While the wording is different the claims are directed to substantially the same structure.
Claims 2-3, 5-6 and 8 of the instant application are identical to claims 2-3, 5-6 and 9 of the ‘455 patent.
Claim 4 of the instant application recites a narrower range fully encompassed by the range recited in claim 4 of the ‘455 patent and would have been obvious.
Claims 7 and 15 of the instant application recite a range of wt% that falls within the ranges recited in claims 6 and 10 of the ‘455 patent and therefore would have been obvious.
Response to Arguments
Applicant's arguments filed 10/27/25 have been fully considered but they are not persuasive.
While applicant’s amendments have addressed a number of the previous 112 rejections a number of 112 rejections still remain and the amendments created further 112(a) and (b) rejections as detailed above. Regarding the double patenting rejections, the amendments to claim 13 have not overcome the previous double patenting rejection and the terminal disclaimer filed 10/27/25 as disapproved therefore, the previous double patenting rejections remain.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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.
/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
Prosecution Insights