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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The response filed on July 23, 2025 is acknowledged.
Claim Interpretation
Claim 1 recites the limitation “a one-piece boot” in line 5. The term “one-piece” merely requires the boot to be in one piece. The claim does not limit the boot to be formed of a single seamless integral element. The boot can be formed of multiple elements that are joined into one piece. For example, a vehicle can be in one piece before a crash and be in multiple pieces after a crash. A vehicle is normally made of numerous components.
Claim Rejections - 35 USC § 112
Claims 16-20 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 term “adjacent” in claim 16 is a relative term which renders the claim indefinite. The term “adjacent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term adjacent is defined as: near. Both terms, adjacent and near, are relative terms that require a subjective determination. What may be considered near to one of ordinary skill in the art may not be considered near to another of ordinary skill in the art. The location/distance limited by the claim is uncertain.
Claim Rejections - 35 USC § 102
Claim(s) 1, 2, 5-11 and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pace et al. (5,730,367).
Pace et al. disclose a fuel system comprising:
a fuel injector including an injector housing (see below) having a fuel inlet (see below) and a fuel outlet (see below) formed therein, and an electrical connector (see below) projecting from the injector housing;
a fuel conduit (see below) connected to the fuel injector;
a one-piece boot (see below; the two elements are joined together to form a one piece boot) positioned about the fuel injector and the fuel conduit, and including a boot wall having a window (see below) formed therein receiving the electrical connector, and a filter 35 attached to the boot wall; and
an air gap 31 is defined between the fuel injector and the boot, and a filtered air flow path (air path in filter 35) extends through the filter to the air gap;
wherein the boot wall further includes an air opening 36 formed therein, and the filter is positioned across the air opening;
wherein the boot further includes a filter holder (wall of opening 36), and the filter is interference-fitted in the filter holder;
wherein the filter holder includes a pocket (wall of opening 36 is a pocket in the wall of the boot), and the filter is interference-fitted in the pocket;
wherein the fuel conduit includes a double-walled fuel conduit (see below) having an inner wall and an outer wall and the air gap is fluidly connected to an interwall space 24;
wherein a fluid seal is formed between the electrical connector and the boot (inherent because no fuel leaks flows between the boot and the electrical connector).
PNG
media_image1.png
719
649
media_image1.png
Greyscale
Pace et al. disclose a boot assembly for a fluid system comprising:
an elongate boot body defining a longitudinal axis (longitudinal axis of the injector) and including a boot wall (see above) extending circumferentially around the longitudinal axis and forming a central cavity (internal cavity of the boot) extending axially between an open first axial end (inlet of the injector) and an open second axial end (outlet of the injector);
the boot wall having formed therein a window (see above; including the opening/passage through which the electrical connector is routed) opening directly to the central cavity at a location axially between the open first axial end and the open second axial end, and an air opening 36 at a location that is at least one of circumferentially offset or axially offset from the window; and
a filter 35 attached to the elongate boot body so as to form a filtered air flow path through the air opening into the central cavity;
wherein the elongate boot body includes a filter holder (wall of opening 36), and the filter is removably mounted in the filter holder;
wherein the filter holder is formed on an outer surface (the wall of opening 36 constitutes an outer surface because it is exposed to the outside of the injector) of the elongate boot body;
wherein the window and the air opening are arranged opposite to one another circumferentially around the longitudinal axis.
Pace et al. disclose a boot for a fuel injector and fuel conduit assembly comprising:
an elongate boot body formed of a non-metallic material (inherent; otherwise the electromagnet would short circuit; a non-electrical conducting material is non-metallic), defining a longitudinal axis (longitudinal axis of the injector) and including a boot wall (see above) extending circumferentially around the longitudinal axis and forming a central cavity (internal cavity of the injector) extending axially between an open first axial end (outlet of the injector) and an open second axial end (inlet of the injector);
the boot wall having formed therein a window (see above) at a location axially between the open first axial end and the open second axial end, and an air opening 36 at a location that is at least one of circumferentially offset or axially offset from the window; and
a filter holder (wall of opening 36) attached to the boot wall and positioned adjacent to the air opening 36, such that the filter holder is closer to the air opening than to the window upon the boot wall;
wherein the open first axial end includes a wall (conical wall at the outlet) extending radially inward and defining a first opening (outlet), and the open second axial end includes a radially outward flange (flange above the O-ring at the inlet) and defines a second opening (fuel inlet) larger than the first opening;
wherein the open second axial end includes an annular protrusion (converging wall below the fuel filter mount) extending circumferentially around the longitudinal axis, and radially inward into the central cavity;
wherein the boot wall includes an outer surface, and an inner surface forming the central cavity, and the filter holder is formed integrally with the elongate body and includes a pocket formed on the outer surface;
wherein the pocket extends greater than 180[Symbol font/0xB0] and less than 360[Symbol font/0xB0] circumferentially around the air opening (opening 36 is inclusive of greater than 180 degrees and less than 360 degrees; claim does not preclude less than 180 degrees or 360 degrees).
Claim Rejections - 35 USC § 103
Claim(s) 3, 4 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pace et al. (5,730,367) in view of Ishikawa et al. (4,811,905).
Regarding claims 3, 4 and 12, Pace et al. disclose the limitations of the claimed invention with the exception of the filter having a frame. Ishikawa et al. disclose a filter comprising a filter frame 11a and a filter medium 11 (filtering portion). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have provided a filter frame to the filter of Pace et al. as taught by Ishikawa et al. to ease installation.
Regarding claim 13, Ishikawa et al. further disclose the frame being annular and extending circumferentially around the filter medium; the elongate boot body is formed of a deformable non-metallic material (inherently non metallic material in Pace et al. in order for the electromagnet to function); and the frame is formed of a not deformable material (inherent because ring 11a is press fitted), and includes an upper frame piece (radially outer) and a lower frame piece (radially inner) sandwiching the filter medium therebetween.
Regarding claim 14, Pace et al. disclose the limitations of the claimed invention with the exception of the protruding installation-deinstallation tab. Ishikawa et al. discloses a filter ring 11a wherein the filter includes a protruding installation-deinstallation tab (ring 11a has a radially inward protrusion/tab/dimension to accommodate an installation pushing force at the upstream end surface and a deinstallation pulling force at the downstream end surface). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have provided a filter frame to the filter of Pace et al. as taught by Ishikawa et al. to ease installation-deinstallation.
Response to Arguments
Applicant's arguments filed July 23, 2025 have been fully considered but they are not persuasive.
Regarding the indefiniteness of the term adjacent, the recitation “such that the filter holder is closer to the air opening than to the window upon the boot wall” does not render the term “adjacent” indefinite. The recitation is another added limitation of the filter holder. The filter holder must remain adjacent to the air opening.
Regarding Applicant’s argument that the boot is one-piece, see the claim interpretation above and the reading of the claim on the prior art above.
Regarding Applicant’s argument to the window opening directly to the central cavity, the window identified in Pace et al. opening directly to the central cavity. Otherwise, the electrical connector could not be routed through the window.
Applicant argues that the boot in Pace et al. would ever be made of something other than a metal. The boot in Pace et al. must be made of a non-electrical conducting material. Otherwise, the electromagnet would short circuit. A non-electrical conducting material is inherently non-metallic because all metallic materials will conduct electricity.
Applicant argues that the Office action does not explain what part of Ishikawa is the “elongate boot.” Claim 9 recites that the filter is attached to the elongate boot body. Therefore, the core 5 of Ishikawa et al. is equivalent to the elongate boot body of Pace et al. because the filter is positioned in the core 5. The rejection of claim 13 is further clarifies the rejection of claim 12 as it pertains to claim 13. It would have been obvious to have provided the support ring of Ishikawa et al. to the filter 35 of Pace et al.
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 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 CHRISTOPHER S KIM whose telephone number is (571)272-4905. The examiner can normally be reached M-F 7:30-3:30.
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, Arthur O Hall can be reached on (571) 270-1814. 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.
/CHRISTOPHER S KIM/Primary Examiner, Art Unit 3752 CHRISTOPHER S. KIM
Examiner
Art Unit 3752
CK