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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “return air duct boot” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The phrase of “for use in a return air duct boot” is understood as being directed to and further reciting the purpose or intended use of the claimed invention which does not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the claimed invention, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02 and § 2112 - § 2112.02.
In this view, the “return air duct boot” and “interior wall” (parts of the return air duct boot) are neither claimed nor positive recited in the claim.
Therefore, the at least claim 1 has been interpreted as follows:
“An air filter comprising: a sheet of air filtration material having a size and shape; in which the air filtration material is generally rectangular in shape; in which the air filter further comprises a plurality of magnetic strips integrated into the air filtration material around the perimeter of the rectangular shape of the air filter; and further in which the plurality of magnetic strips integrated into the perimeter of the air filter.”
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 1-11 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.
Regarding claims 1 and 4, the word "generally" renders the claim indefinite because it is unclear whether the limitation following the word "generally" is a required by the Applicant as part of the claimed invention or not.
Claims 2-3 and 5-11 depend on claims 1, 4; and hence are also rejected.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minaeeghainipour (US 20130340400; hereinafter Mina).
As regarding claim 1, Mina discloses the claimed invention for an air filter comprising: a sheet of air filtration material (50) having a size and shape; in which the air filtration material is generally rectangular in shape; in which the air filter further comprises a plurality of magnetic strips (33) integrated into ([0010]) the air filtration material around the perimeter of the rectangular shape of the air filter; and further in which the plurality of magnetic strips integrated into the perimeter of the air filter (figs. 4-6).
As regarding claim 2, Mina discloses all of limitations as set forth above. Mina discloses the claimed invention for in which spaces (figs. 4-6; no number) are disposed between adjacent pieces of the plurality of magnetic strips to permit use of the air filter in different sizes and shapes of return air duct boots.
As regarding claim 3, Mina discloses all of limitations as set forth above. Mina discloses the claimed invention for in which the air filter is reusable ([0029] – “when filter 50 needs to be cleaned or replaced, flaps 33 are detached from fan 10 by lifting them up to break the magnetic connection…”).
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over Minaeeghainipour (US 20130340400; hereinafter Mina).
As regarding claim 4, Mina discloses the claimed invention for an air filter for use in and over a return air duct boot comprising: a frame (fan box 10) having the shape generally of a rectangle; further comprising a flange (figs. 4-6; no number) having an inner perimeter and an outer perimeter in which the inner perimeter defines an air conduit; further comprising a plurality of walls (12, 14, 16) extending approximately orthogonally from the inner perimeter of the flange; further comprising a first filter (50) sized and shaped to fit around the plurality of walls of the frame and attached thereto sealably and further comprises a plurality of magnetic strips (33, 33a) affixed to the first filter such that during use the magnetic strips sealably affix the first filter to the interior walls of the return air duct boot.
Mina does not disclose a resilient frame. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide a resilient (flexible or elastic material) frame in order to enhance durability/impact resistance, noise reduction or vibration damping, maintenance and longevity, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
As regarding claim 5, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention for in which the air filter further comprises a second filter having the size and shape of the first filter and in which the second filter is affixed to the first filter serially. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide in which the air filter further comprises a second filter having the size and shape of the first filter and in which the second filter is affixed to the first filter serially in order to improve air quality and cleaner output, extend filter life, and flexibility, since it has been held that mere duplication of parts has no patentable significance, unless a new and unexpected result is produced, since it involves only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
As regarding claim 6, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention for in which the first filter comprises a plurality of pockets (pleated filtration medium naturally form ‘pockets’ between peaks and valleys) of air filtration material suitable to help retain the air filter in position in a return air duct boot.
As regarding claim 7, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention for in which a flap (33a) of air filtration material of the second filter is disposed between the first filter and the second filter attachment to help retain the air filter in position in a return air duct boot.
As regarding claim 8, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention for peel-and-stick adhesive strips ([0022]). However, Mina as modified does not disclose in which the frame of the air filter further comprises tear strips on the flange. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide in which the frame of the air filter further comprises tear strips on the flange in order to simplify installation, enable repositioning and adjustment, and enhance cost and time efficiency, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
As regarding claim 9, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention for in which the first filter may be removed from the frame and cleaned for reuse ([0029]).
As regarding claim 10, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention for in which the first filter and the second filter may be removed from the frame and cleaned for reuse ([0029]).
As regarding claim 11, Mina as modified discloses all of limitations as set forth above. Mina as modified discloses the claimed invention except for in which a notch is disposed between each wall of the plurality of walls of the frame and the wall proximate to said wall. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide in which a notch is disposed between each wall of the plurality of walls of the frame and the wall proximate to said wall in order to ensure proper installation of the filter on to the filter frame/housing, since it was known in the art as shown in Liu et al (US 20190107302; hereinafter Liu; [0032] –“…filter 100 may comprise one or more registration features (e.g., a notched or angled corner of the frame, a cavity or detent structure, etc.) that mate with a complementary registration feature of receptacle 11 when filter 100 is properly installed.”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUNG H BUI whose telephone number is (571)270-7077. The examiner can normally be reached Monday-Friday 8:00 - 4:30 ET.
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, Bobbly 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.
/DUNG H BUI/ Primary Examiner, Art Unit 1773