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 .
Claim Status
Claims 1 and 3-18 are pending. Claims 11-12 are withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “gate member…configured to” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The limitations are interpreted as a socket-shaped connection part in conjunction with a ball-shaped coupling part.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “elastic member” in claim 5; “plate member” in claim 6; “sealing member” in claim 6; “packing member” in claim 13.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102
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 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by U.S. Patent Publication No. 2001/0045386 by Stankowski et al. (Stankowski).
Regarding limitations recited in the claims which are directed to a manner of operating disclosed ion filter, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. "[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). Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). This applies to the following limitations: “configured to received fluid” (claim 1), “configured to discharge the fluid” (claim 1), “configured to filter the fluid” (claim 1), “configured to selectively allow or block the fluid to be introduced into the housing through the inlet” (claim 1), “configured to control operation of the valve assembly” (claim 1), “configured to, based on a rotation of the gate member, selectively press or release the valve assembly by linearly moving in the housing” (clam 1), “configured to (i) move in the valve housing by the filter element and (ii) open or close the inlet” (claim 4), “configured to provide a restoring force to the core” (claim 5), “configured to provide sealing between the plate member and the inlet” (claim 6), “configured to move with respect to the protrusion” (claim 8), “configured to, based on the protrusion being positioned on the upper flat portion, (i) press the valve assembly to be in an open position and (ii) move the packing member to contact the opening” (claim 14), “configured to, based on the protrusion being positioned on the lower flat portion, (i) release the valve assembly to be in a closed position and (ii) move the packing member to be spaced apparat from the opening” (claim 15), “configured to display a state of the ion filter using a point indicated by the selector” (claim 18).
In regard to claim 1, Stankowski teaches a filter (abstract); capable of filtering ions. Stankowski teaches a housing providing an inlet and outlet (abstract, housing, inlet, outlet); capable of receiving fluid and discharging fluid in the housing. Stankowski teaches a filter element accommodated in the housing (abstract, separation means); capable of filtering the fluid. Stankowski teaches a valve assembly provided at the inlet (abstract; Figure 4b, spherical member 34, [0044]); capable of selectively allowing or blocking fluid to be introduced into the housing through the inlet. Stankowski teahces a gate member provided in the housing (abstract; Figure 4b, socket 64; [0044]); capable of controlling operation of the valve assembly.
Stankowski teaches the gate member is rotatable mounted with respect to the housing (Figure 4b, socket 64, male end coupling 63; [0044]). Stankowski teaches the filter element is coupled to the gate member ([0044]); capable of based on rotation of the gate member selectively press or release the valve assembly by linearly moving in the housing.
In regard to claim 3, Stankowski teaches the gate member includes a socket-shaped connection part (Figure 4b, socket 64; [0044]). Stankowski teaches the filter element includes a ball-shaped coupling part inserted into and coupled to the socket shaped connection part (Figure 4b, spherical member 34; [0044]).
In regard to claim 4, Stankowski teaches the valve assembly includes a valve housing coupled to the inlet of the housing (Figure 4b, socket 64; [0044]). Stankowski teaches a core (Figure 4b, spherical member 34; [0044]); configured to move in the valve housing by the filter element and open or close the inlet.
In regard to claim 5, Stankowski teaches the valve assembly further includes an elastic member disposed at a circumferential surface of the core supported by the valve housing (Figure 4b, annular O-ring 28, [0044]); capable of providing a restoring force to the core.
In regard to claim 6, Stankowski teaches the valve assembly further includes a plate member coupled to the core and covering the inlet from an outside of the valve assembly (Figure 5, lower manifold 116; [0045]). Stankowski teahces a sealing member ([0045]); configured to provide sealing between the plate member and the inlet.
In regard to claim 7, Stankowski teaches the housing further includes a lid detachably coupled to the housing and defining an opening in which the gate member is rotatably mounted (Figure 5, lower manifold 116; [0045]). Stankowski teaches the lid provides a protrusion at a circumference of the opening to be operatively associated with the gate member (Figure 5, lower manifold 116; [0045]).
Double Patenting
Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 17983764. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards ion filters comprising the same structural components. Claims 1-3 and 5-6 of pending application ‘764 reads on instant claims 1, ‘764 teaches an ion filter with a housing, an inlet, an outlet, filter element, valve, and core (reading on gate member); claim 6 of ‘764 reads on instant claim 3; claim 1 of ‘764 reads on instant claims 4; claim 4 of ‘764 reads on instant claims 5; claims 1-3 of ‘764 reads on instant claim 6; claim 6 of ‘764 reads on instant claim 7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 8-10 and 13-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art of record does not teach the combination of limitations.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive.
In regard to the Applicant’s argument regarding the 112f interpretation of “elastic member”, “plate member”, “sealing member”, and “packing member”; these terms do not invoke 112f because the terms connote sufficient structure to one of ordinary skill, the Examiner notes that these terms are not being interpreted under 112f.
As noted in the Office Action above: This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “elastic member” in claim 5; “plate member” in claim 6; “sealing member” in claim 6; “packing member” in claim 13.
In regard to the Applicant’s argument regarding the 102 rejection; Stankowski fails to teach “the gate member is rotatably …housing”; Stankowski at paragraph [0044] does not disclose the filter element accommodated in the housing is coupled to the gate member; Stankowski’s filter 12 in the housing is not coupled to the socket 64 and the male end coupling 63; Stankowski’s filter 12 accommodated in the housing 10 is not configured to selectively press or release the alleged valve assembly by linearly moving in the housing and instead spherical member 34 moves by a fluid flow flowing through a manifold 16 rather than by linearly moving in the housing; Stankowski’s socket 64 and male end coupling 63 are not rotatably mounted with respect to the housing; Stankowski’s socket 64 is provided in the manifold 16 separated from the housing, the Examiner does not find this persuasive.
Claim 1 requires “the gate member is rotatably mounted with respect to the housing, the filter element is coupled to the gate member, and the filter element is configured to, based on a rotation of the gate member, selectively press or release the valve assembly by linearly moving in the housing”.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The prior art structure of Stankowski is capable of “based on a rotation of the gate member, selectively press or release the valve assembly by linearly moving in the housing”.
As noted above, Regarding limitations recited in the claims which are directed to a manner of operating disclosed ion filter, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. "[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). Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). This applies to the following limitations: “configured to received fluid” (claim 1), “configured to discharge the fluid” (claim 1), “configured to filter the fluid” (claim 1), “configured to selectively allow or block the fluid to be introduced into the housing through the inlet” (claim 1), “configured to control operation of the valve assembly” (claim 1), “configured to, based on a rotation of the gate member, selectively press or release the valve assembly by linearly moving in the housing” (clam 1), “configured to (i) move in the valve housing by the filter element and (ii) open or close the inlet” (claim 4), “configured to provide a restoring force to the core” (claim 5), “configured to provide sealing between the plate member and the inlet” (claim 6), “configured to move with respect to the protrusion” (claim 8), “configured to, based on the protrusion being positioned on the upper flat portion, (i) press the valve assembly to be in an open position and (ii) move the packing member to contact the opening” (claim 14), “configured to, based on the protrusion being positioned on the lower flat portion, (i) release the valve assembly to be in a closed position and (ii) move the packing member to be spaced apparat from the opening” (claim 15), “configured to display a state of the ion filter using a point indicated by the selector” (claim 18).
Claim 1 requires “the gate member is rotatably mounted with respect to the housing, the filter element is coupled to the gate member, and the filter element is configured to, based on a rotation of the gate member, selectively press or release the valve assembly by linearly moving in the housing”.
Claim 1 does not require the filter element is directly coupled to the gate member as argued.
As noted in the prior art rejection above: Stankowski teaches the gate member is rotatable mounted with respect to the housing (Figure 4b, socket 64, male end coupling 63; [0044]). Stankowski teaches the filter element is coupled to the gate member ([0044]); capable of based on rotation of the gate member selectively press or release the valve assembly by linearly moving in the housing.
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 KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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, Vickie Kim can be reached at 571-272-0579. 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.
/KARA M PEO/Primary Examiner, Art Unit 1777
Prosecution Insights