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 .
This is a response to Applicant's amendment filed on September 14, 2026.
Status of Claims
No claim has been amended. Claims 1-6 have been withdrawn. New claims 11-14 have been added. Claims 1-14 are pending. Claims 7-14 are examined herein.
Response to Arguments
Applicant's Remarks/Arguments and Amendments to the Claims both filed 09/14/2026 have been fully considered.
Applicant argues that claim 7 and its dependent claims are not anticipated nor prima facie obvious over cited prior art(s), Schmid et al. (US 10,589,205 B2) and/or Hasenfratz et al. (US 10,316,804 B2), since the cited reference(s), alone or in a combination, does not teach the features of, in the context of filter element for a filter system, “grooves in circumference walls of structure elements of a filter element, as recited by claim 7. While Hasenfratz may teach the insertion of the guide crosspieces 46 and 48 into the guide grooves 58 and 60, there is no teaching or suggestion in Hasenfratz that the guide crosspieces 46 and 48 themselves have circumferential walls with grooves. One of ordinary skill in the art would not read Hasenfratz's positioning of the guide crosspieces 46 and 48 of the filter element 10 in the guide grooves 58 and 60 of the filter housing 11 to teach that a groove in any portion of the filter element 10, let alone a groove in the circumferential walls of any of the guide crosspieces 46 and 48. Thus, the proposed combination of Schmid and Hasenfratz does not teach or suggest "structure elements protruding from a circumference of the filter element, the structure elements comprising grooves in circumference walls of the structure elements," as recited by claim 7. See Remarks, pages 5-8.
In response, the examiner respectfully disagrees.
As discussions presented in the Office action dated 06/26/2026 (see pages 3-5), Schmid discloses a filter element for a filter system (Abstract), the filter element (10, Fig. 1) comprising (a filter element embodiment in Fig. 1 in conjunction with a filter housing in Fig. 8; col. 6, lines 26-65): (i) a filter body with a filter medium in a bellow shaped (12, 14, Fig. 1) enclosed by a circumferential frame element (28, Fig. 1); and (ii) structure elements (40, Fig, 1) protruding from a circumference of the filter element, structure elements (40, Fig, 1) is configured for disposing the filter element in a receiving part (a filter housing, 108, Fig. 8) (Fig. 8).
But Schmid discloses does not explicitly disclose the feature of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” as recited.
The missing feature in the Schmid reference compared to the claimed invention of claim 7 is the filter element has “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part”.
In order to cure the shortfall of the Schmid, the Hasenfratz reference was introduced.
Hasenfratz discloses a flat filter element, for installing in a filter housing of a filter for fluids, particularly an air filter, particularly of an internal combustion engine, particularly of a motor vehicle, with an open filter bellows made of a filter medium, which has an upstream side and an downstream side for the fluid to be filtered, and with an element axis that can be aligned parallel or axially to an installation direction for installing the filter element into the filter housing (col. 1, lines 18-26). Hasenfratz discloses, in an embodiment shown in Fig. 13, a filter element (10, Fig. 13) that is combined into a filter housing (11, Fig. 13) as: Housing case 19 has two case-side high guide grooves 58 and two case-side low guide grooves 60. Guide grooves 58 and 60 are each arranged in a manner fitting the corresponding high guide crosspieces 46 and low guide crosspieces 48 on the radially inner peripheral side, relative to housing axis 25 of housing case 19. Low guide grooves 60 each have on their side facing housing cover 21 a shoulder 62 on which step 50 of the corresponding low guide crosspieces 48 can abut (col. 15, lines 18-34). The mechanical principle of combining the filter element (10, Fig. 13) with filter housing (11, Fig. 13) taught by Hasenfratz meets the recitation “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part”.
Both the Schmid and Hasenfratz references direct a filter element for a filter system to be placed in a filter housing.
In light of teachings from Schmid and Hasenfratz, it would have been obvious to one of ordinary skill in the art to modify the filter element for a filter system of Schmid to provide the features of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” as taught by Hasenfratz, this is because mechanical principle of combining the filter element (10, Fig. 13) with filter housing (11, Fig. 13) by utilizing the concept of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” is a known, effective method as taught by Hasenfratz (Fig. 13; col. 15, lines 18-34).
A reference is analogous art to the claimed invention if the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325 (MPEP 2141.01(a) I.). Therefore, it is still examiner’s position that the Hasenfratz reference is reasonably pertinent to the problem of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” in the context of a filter element for a filter system as recited in the claimed invention with motivations that mechanical principle of combining the filter element (10, Fig. 13) with filter housing (11, Fig. 13) by utilizing the concept of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” is a known, effective method as taught by Hasenfratz (Fig. 13; col. 15, lines 18-34). Consequently, the Hasenfratz reference can be applied to in analyzing the subject matter at issue.
In addition, per MPEP, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”). See MPEP 2144 IV. Consequently, in light of teachings from Schmid and Hasenfratz, one skilled in the art would reasonably design/manufacture the filter element for a filter system taught by Schmid, in view of Hasenfratz, by including feature of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” in the context of manufacturing a filter element for a filter system as claimed based on the motivation(s) taught by Hasenfratz (Fig. 13; col. 15, lines 18-34).
It is noted that one of ordinary skill in the chemical process arts has a degree in chemical engineering or chemistry. One of ordinary skill in the chemical process arts has studied the general principles of chemistry, chemical engineering, and process design. One of ordinary skill in the chemical process arts has studied and practiced specific aspects of chemistry and chemical engineering related to specific processes (e.g., a filtering process using a filter system). Thus, one of ordinary skill in the chemical process arts understands how to apply those general principles to specific apparatuses/processes. Consequently, one of ordinary skill in the chemical process arts is considered to understand the value of reference such as Hasenfratz as well as its applicability to the problems related to the filter element for a filter system has the feature of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part”.
Therefore, the applicants’ arguments are not considered persuasive. The previous 35 U.S.C. 103 rejections to claims 7-10 are maintained.
Applicants’ addition of new claims 11-14 necessitated a new ground(s) of rejection presented in this Office action.
Upon further consideration and search, a modified/new ground of rejections to claims 7-14 are presented, in view of the previously presented prior art(s), Schmid et al. (US 10,589,205 B2) and/or Hasenfratz et al. (US 10,316,804 B2), as presented in the instant Office action.
MODIFIED REJECTIONS
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated 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 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.
Claims 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid et al. (US 10,589,205 B2, herein referred as “Schmid”), in view of Hasenfratz et al. (US 10,316,804 B2, herein referred as “Hasenfratz”).
In regard to claim 7, Schmid discloses a filter element for a filter system (Abstract), the filter element (10, Fig. 1) comprising (a filter element embodiment in Fig. 1 in conjunction with a filter housing in Fig. 8; col. 6, lines 26-65):
(i) a filter body with a filter medium in a bellow shaped (12, 14, Fig. 1) enclosed by a circumferential frame element (28, Fig. 1); and
(ii) structure elements (40, Fig, 1) protruding from a circumference of the filter element, structure elements (40, Fig, 1) is configured for disposing the filter element in a receiving part (a filter housing, 108, Fig. 8) (Fig. 8).
But Schmid discloses does not explicitly disclose the feature of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” as recited.
However, Hasenfratz discloses a flat filter element, for installing in a filter housing of a filter for fluids, particularly an air filter, particularly of an internal combustion engine, particularly of a motor vehicle, with an open filter bellows made of a filter medium, which has an upstream side and an downstream side for the fluid to be filtered, and with an element axis that can be aligned parallel or axially to an installation direction for installing the filter element into the filter housing (col. 1, lines 18-26). Hasenfratz discloses, in an embodiment shown in Fig. 13, a filter element (10, Fig. 13) that is combined into a filter housing (11, Fig. 13) as: Housing case 19 has two case-side high guide grooves 58 and two case-side low guide grooves 60. Guide grooves 58 and 60 are each arranged in a manner fitting the corresponding high guide crosspieces 46 and low guide crosspieces 48 on the radially inner peripheral side, relative to housing axis 25 of housing case 19. Low guide grooves 60 each have on their side facing housing cover 21 a shoulder 62 on which step 50 of the corresponding low guide crosspieces 48 can abut (col. 15, lines 18-34). The mechanical principle of combining the filter element (10, Fig. 13) with filter housing (11, Fig. 13) taught by Hasenfratz meets the recitation “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part”.
It is noted that both the Schmid and Hasenfratz references direct a filter element for a filter system to be placed in a filter housing.
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the filter element for a filter system of Schmid to provide the features of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” as taught by Hasenfratz, this is because mechanical principle of combining the filter element (10, Fig. 13) with filter housing (11, Fig. 13) by utilizing the concept of “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” is a known, effective method as taught by Hasenfratz (Fig. 13; col. 15, lines 18-34).
In regard to claim 8, Hasenfratz discloses a rectangular shape, not a tapered shape, of the structure elements (46, 48, Fig. 13) in a mounting direction (Fig. 13). However, the tapered shape of the structure is considered as changes in shape and considered obvious to one skilled in the art. See MPEP 2144.04.
In regard to claim 9, Schmid discloses the structure elements (40, Fig, 1) are integral with a side wall of the circumferential frame element (28, Fig. 1) surrounding the filter body (12, 14, Fig. 1).
In regard to claim 10, Schmid discloses the structure elements (40, Fig, 1) are integral with the circumferential frame element (28, Fig. 1).
In regard to claims 11 and 12, as set forth above in rejection of claim 7, Schmid, in view of Hasenfratz, renders the recitation “the structure elements comprising grooves in circumference walls of the structure elements, and the grooves configured for receiving edges of breakthroughs of counter elements that are arranged circumferentially on and formed through a wall of a receiving part in a sealing manner when the filter element is arranged in the receiving part” prima facie obvious. This also renders the recitation “at least a portion of each of the grooves extends in a mounting direction” prima facie obvious.
Hasenfratz discloses a rectangular shape, not a tapered shape, of the structure elements (46, 48, Fig. 13) in a mounting direction (Fig. 13), wherein however, the tapered shape of the structure is considered as changes in shape and considered obvious to one skilled in the art. See MPEP 2144.04.
Consequently, in light of teachings from Schmid, in view of Hasenfratz, the recitation “the circumference walls of the structure elements extend around the tapered shape such that each of the grooves extends around the tapered shape of one of the structure elements” is considered prima facie obvious.
In regard to claims 13 and 14, Schmid discloses the circumference (28, Fig. 1) of the filter element (10, Fig. 1) includes four sides, and wherein each of the four sides includes at least one of the structure elements (40, Fig. 1), or at least two of the sides includes at least two of the structure elements (40, Fig. 1).
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 YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached on 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772
