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 .
Applicant amended Claims 1 and 4. Applicant added Claims 24-29. New matter rejections appear below.
Election/Restrictions
Applicant’s election of Group I, including Claims 1-5 in the reply filed on 12/01/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
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: “grasping element” 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.
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.
Response to Amendment
Responsive to communications filed on 04/13/2026, amendments to the claims have been acknowledged.
The rejections over the prior art have been overcome by the amendments but rejections under 35 U.S.C. 112(a) and (b) have been made necessitated by amendment.
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 1-5 and 24-29 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 1 recites “an expandable gasket engaging the tool shank” in Lines 6-7. While the instant Specification at [0030] recites “provide a gasket material or insert 44 between the shank and the filter plate,” this recitation does not support “an expandable gasket engaging the tool shank.” This new recitation constitutes new matter.
Claim 24 recites “said grasping element comprises a ring or hook.” The instant Specification only supports the following in [0027]: “…although lifting eye 34 is depicted as a closed circle, any shape configured to receive the handle would be acceptable…a hook shape is also contemplated” (emphasis added). There is no support for a grasping element comprising a ring or hook which constitutes the addition of new matter.
Claim 25 recites “said ring or hook is selectively detachable from the shank.” There is no support for this recitation in the instant Specification. The Specification recites at [0027] “The lifting eye 34 can also be detachable from the shank portion 32.” As set forth above, there is no support for the grasping element comprising a ring or hook. At best, a loop is depicted in Figures 3-7 but handle 38 would serve as the grasping element. The new recitation constitutes the addition of new matter. Applicant is encouraged to clearly establish each claimed element.
Claim 26 recites “said grasping element is selectively removable form the shank.” There is no support for this recitation in the instant Specification. The Specification recites at [0010] “The filter handling tool includes a removable handle end secured to the molten metal filter box to suspend the filter medium.” The new recitation constitutes the addition of new matter.
Claim 27 recites “said head end includes a rectangular perimeter.” (emphasis added). There is no support for this recitation in the instant Specification. The Specification recites at [0041] “…head portion 236 constitutes a cross provided with perimeter elements 238...” The instant Specification at [0041] recites “…the shape of the head portion is not limited to rectangular.” There is no support for the head end including a perimeter. The new recitation constitutes the addition of new matter.
Claim 29 recites “said shank has a length greater than at least three times the thickness of the filter.” While depicted in Figures 4 and 6-7 as exemplary embodiments, there is insufficient information in the disclosure to support “a length greater than at least three times the thickness of the filter. The recitation at [0037] of the instant Specification states only that “it may be desirable for the shank 32 to have a length greater than a depth of the filtration box.” But this recitation, along with the depiction of three stacked filters does not provide sufficient support to enable persons of ordinary skill in the art to establish a quantitative correspondence between the shank length and filter thickness. The new recitation constitutes the addition of new matter.
Claims 2-5 and 28 are rejected for their dependency on a rejected claim.
Claim Rejections - 35 USC § 112
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 1-5 and 24-29 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 1 recites “removing a the filter” in Lines 1-2. It is unclear if reference was intended to the first recitation of “a filter” in Line 1 or some other filter entirely. Appropriate correction is required to establish grammatical clarity.
Claim 1 recites in Lines 5-6 “a plate of porous ceramic material defining a passage disposed in a center of the filter and configured to receive the tool.” Prior to amendment, the claim read “a plate of porous ceramic material defining a passage configured to receive the tool.” It is now unclear how the plate can ‘define’ a passage that has been disposed. Essentially, it is unclear what element comprises a passage. Appropriate correction is required.
Claim 1 recites “disposed in a center of the filter” in Line 5. The center of an object is a defined property. It is unclear whether the center of the filter or any centered portion of the filter meets the limitations of the instant claims, rendering the claim indefinite.
Claim 1 recites “an expandable gasket engaging the tool shank” in Lines 6-7. It is unclear how “engaging” differs from being provided, as set forth in the instant Specification at [0030]. The word “engaging” implies a function and it is unclear how the function of engaging the tool shank is being achieved.
Claim 25 recites “said ring or hook is selectively detachable from the shank.” Not only is there no support for selective detachability, it is unclear what is meant by “selectively detachable,” whether this recitation relates to optional detachability, detachability only at certain times of operation, or some other meaning entirely. Appropriate correction is required.
Claim 26 recites “said grasping element is selectively removable form the shank.” Not only is there no support for “selectively removable,” it is unclear what is meant by “selectively removable,” whether this recitation relates to optional removability, removability only at certain times of operation, or some other meaning entirely. Appropriate correction is required.
Claim 27 recites “said head end includes a rectangular perimeter.” (emphasis added). Not only is there no support for “rectangular perimeter,” it is unclear what is meant by “rectangular perimeter,” whether this recitation relates to shape or has some other meaning entirely. Generally, changes in shape will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such shape is critical. See MPEP 2141.01(a) I. Appropriate correction is required.
Claim 28 recites “said filter consists of a planar body having a width, a depth and a thickness, wherein each of the width and depth are greater than the thickness.” It is unclear how a plane can have both a depth and a thickness. Planar bodies have lengths and widths. In context, the filter consisting of a planar body would have a length, width, and height/depth/thicknesses. It is unclear the distinction between the depth and thickness of a planar body filter and these terms have not been redefined or explained in the instant Specification. Appropriate correction is required.
Claims 2-5 and 24 are rejected for their dependency on a rejected claim.
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered and are persuasive as to the prior art rejections. An indication the claims are presently free of prior art appears below.
Claims Free of Prior Art
PNG
media_image1.png
486
539
media_image1.png
Greyscale
Fig. 2, Yukihisa et al. ‘098
PNG
media_image2.png
637
458
media_image2.png
Greyscale
PNG
media_image3.png
685
484
media_image3.png
Greyscale
Ross US 5932098 A Figs. 1-3.
The closest prior art to the amended claims is Yukihisa et al. JPH 05195098 A which teaches in combination a filter and a tool for installing and removing a filter from a molten metal filtration box, said tool comprising a shank, a head end secured to a first end of the shank, and a grasping element releasably secured to a second end of the shank, said filter comprising a plate of porous ceramic material defining a passage configured to receive the tool. A French press patent, US 5932098 A is cited herein to make of record that longstanding liquid filtration devices featuring a centered base plate, porous filter, shank or rod, and cylindrical shank sleeve and hub are well-known. However, even if the passageway of the shank of Yukihisa et al. ‘098 included an expandable gasket material, Yukihisa et al. ‘098 in light of additional prior art does not provide sufficient motivation for one of ordinary skill in the art to combine the art of a French press to arrive at the claimed invention. The prior art therefore does not teach or fairly suggest the claimed invention and the claims are presently free of prior art. However, as set forth in the 35 U.S.C. 112 rejections above, the instant claims are not in condition for allowance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US D475568 S1 teaches a cylindrical polypropylene lining on a French press shank.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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, Keith Hendricks can be reached at (571) 272-1401. 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.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
Prosecution Insights