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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 6-7 are directed to the structure of the mold cavity and the first slide insert, which is also part of the mold. The mold is not part of the claimed invention as the invention is directed to a piping filter. Therefore, the limitations of claims 6-7 do not provide any further structural limitations to the piping filter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102 and 103
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.
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.
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.
Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over applicant’s admission of prior art (aapa) in view of Pranger et al. US 2014/0158608 and Uemura et al. US 2022/0023777.
Claim 1, applicant’s admission of prior art teaches a piping filter comprising a joint (50) comprising a tubular body and an opening (51) at each end of the tubular body configured to allow fluid to pass therethrough, the tubular body having a corner (at 52) between the two opposing openings, the joint has a filter member (60) inside the tubular body comprising a dividing plate comprising a plurality of filtering holes (61) and a peripheral edge of the dividing plate connected with the inner wall of the tubular body, the filter member being disposed in the tubular body at the corner (fig. 11 of instant application). Applicant’s admission of prior art does not teach the filter member being inclinedly disposed or the filter member being monolithically formed from the plastic material of the joint.
Pranger teaches a piping filter comprising a joint (210) made of molded plastic (par 29) the joint has a tubular body and an opening at each end of the tubular body configured to allow fluid to pass therethrough, the joint has a filter member (230) inside the tubular body comprising a dividing plate comprising a plurality of filtering holes and a peripheral edge connected with the inner wall of the tubular body where the filter member is inclinedly disposed with respect to the inner wall of the tubular body (fig. 6). It would have been obvious to one of ordinary skill in the art to incline the filter member with respect to the inner wall of the tubular body because the oblique disposition of the filter provides ample open area to avoid presentment of a restrictive orifice where the open area of the screen mesh could be three or more times the cross sectional area of the tubular body (par 30 and 39).
Uemura teaches a piping filter comprising a joint (120) comprising a tubular body and an opening (123, 124) at each end of the tubular body configured to allow fluid to pass therethrough, the joint has a filter member (110) inside the tubular body comprising a dividing plate comprising a plurality of filtering holes (114) and a peripheral edge (112) of the dividing plate integrally connected with the inner wall of the tubular body, the joint is made of molded plastic material and the joint comprising the tubular body and the filter member is monolithically formed from the molded plastic material (fig. 2, par 18-19). The recitation of the tubular body and filter member being monolithically formed from the plastic material is a recitation of making the tubular body and filter member as an integral unit. [T]he use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice; In re Larson 144 USPQ 23 1952. Uemura teaches a monolithically formed tubular body and filter element and it would have been obvious to one of ordinary skill in the art to form the tubular body and filter element monolithically because it allows for a filter with a low cost and high productivity (par 9).
The recitation of the joint being made by melting plastic particles into a liquid plastic material and injecting the plastic material into a mold cavity defined inside a mold is a recitation of how the piping filter is made and renders the claim a product by process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USDQ 964 (1985). The prior art to Uemura teaches the piping filter is made of molded plastic and therefore deemed a structural equivalent to the injection molding process recited.
The recitation in lines 10-23 are directed to the structure of the mold and does not provide any further structural limitations to the piping filter.
Claims 2-4, aapa further teaches the tubular body is a bent/90 degree elbow pipe and the filter member is located within the tubular body between the open ends of the tubular body (fig. 11) and therefore is considered to be located at a middle section of the tubular body.
Claims 6-7 do not provide any further structural limitations to the claimed apparatus as stated above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 1/27/26 have been fully considered but they are not persuasive.
Applicant argues that Uemura does not teach the filter member and tubular body monolithically formed from the same liquid plastic material. Uemura teaches two separate embodiments shown in figures 2 and 5c. In figure 5c the filter member (310) and the tubular body (320) are separately molded (par 34). In figure 2 the filter member and tubular body (120) are integrally molded in an injection molding method (par 17-18). The recited integral injection molding process would readily be understood by one of ordinary skill in the art as the material of the tubular body and filter member are both formed in the same injection molding process and thus would be monolithically formed from the same plastic materials taught in paragraph 18 of Uemura.
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 BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779