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(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 9 – 12 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 9 – 12 each recite the limitation "The air filter device according to claim 1" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is direct to “A filter element”. It is unclear if the “air filter device” recited in claims 9 – 12 is directed to the filter element.
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 5 – 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 202005011078 (hereinafter referred to as DE ‘078).
In regard to claim 1, as shown in figure 4, DE ‘078 discloses a filter element (30) that can be used for an air filter device of a motor vehicle. The filter element has a frame (34) which at least partially surrounds a filter material (32) of the filter element. The frame (34) includes a front wall (40) which extends perpendicularly to a direction that can be considered an insertion direction, in which the filter element can be inserted into a receiving space of a housing. The slots (48) can be considered to form at least one fastening element, which is arranged on a front side of the front wall (40). The slots (48) are capable of being used to fix a cover onto the front wall to close a receiving space. As shown in figure 4, a plate-shaped base body of the front wall (40) has a narrow side beyond which a retaining tab (56) of the filter element formed separately from the at least one fastening element (48) projects. The filter element (30) can be secured against movement in or opposite to the insertion direction by introducing the retaining tab (56) into a retaining recess provided on a side of a housing of an air filter device. Claim 1 of the present application is directed to as filter element. How the filter element is used in a filter device is considered intended usage. The retaining tab (56) of DE ‘078 is capable of engaging in a retaining recess provided on a side of a housing of an air filter device. The receiving space is further capable of then being closed by means of a cover of the air filter device, which can be fixed to the at least one fastening element of the filter element.
In regard to claims 5 and 6, the opening of the slot (48) can be considered to form a sleeve-shaped retaining space, as broadly recited in the claim. A closure element of a cover is capable of being inserted into the sleeve-shaped retaining space. The closure element is capable of having a structure wherein, by rotating the closure element about an axis of rotation, the at least one closure element encompassed by the retaining region can be clamped by the fastening element (48). Further, in regard to claims 5 and 6, the closure element is not positively claimed. A closure element having the claimed structure is considered to be capable of being used with the filter element of DE ‘078.
In regard to claim 7, as shown in figure 4, the frame (34) extends around the entire perimeter of the filter material (32) and includes two side walls (not numbered) that extend from the front wall (40) in the insertion direction and at least one support web (not numbered) opposite and spaced apart from the front wall that supports the filter material and connects the sidewalls to one another.
Allowable Subject Matter
Claims 2 – 4 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.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered but they are not persuasive.
The examiner respectfully disagrees that the amendment to claim 1 represents previous claim 8 rewritten in independent form. Previous claim 8 was directed to a filter device where the housing is positively recited. While similar language from claim 8 is incorporated into claim 1, claim 1 is still directed to a filter element. How the filter element is used in the filter device is considered intended usage. As noted in the rejection above, the retaining tab (56) of DE ‘078 is capable of engaging in a retaining recess provided on a side of a housing of an air filter device. The receiving space is further capable of then being closed by means of a cover of the air filter device, which can be fixed to the at least one fastening element of the filter element.
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 Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773