DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on June 24, 2026, and any subsequent filings.
Claims 1-5, 16, 19-32, 39-43, 51-53, and 55 stand rejected. Claims 4 and 5 have been canceled. Claims 1-3, 16, 19-32, 39-43, 51-53, and 55 are pending.
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 .
Response to Arguments
Claim Rejections - 35 USC § 112
Claims 4 and 5 have been canceled and the rejections withdrawn.
Claim Rejections - 35 USC § 103
Applicant's arguments filed June 24, 2026 have been fully considered but they are not persuasive.
In response to Applicant's argument that Gustafson's bevel 122 is not the claimed threaded section, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Moreover, Lin disclosed the angled threaded section and Gustafson had been relied on for specific angles of a bevel not the threaded section.
As to Applicant’s argument against the reason to combine Lin and Gustafson, Applicant offers no evidence to support argument yet argument cannot supplant evidence (MPEP 2145(I)).
Response to Amendment
Claim Objections
Claim 53 is objected to because of the following informalities: the status indicator is “Currently Amended” yet the claim has not been amended. Appropriate correction is required.
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.
Claim 3 is 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 3 recites the seal being radially positioned between the ring and surrounding wall yet seal 58 is positioned externally away from the ring and wall as seen in Figures 1-4.
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.
Claims 1-3, 16, 19-32, 39-43, 51-53, and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Lin, U.S. Publication No. 2006/0049098 (“Lin”) in view of Gustafson, et al., U.S. Publication No. 2017/0252682 (“Gustafson”).
Applicant’s claims are directed towards a device and a method.
Regarding Claims 1-3, 16, and 29-32, Lin discloses a filter housing comprising (a) a surrounding wall defining an interior volume; the surrounding wall having an interior surface in communication with the interior volume and an opposite exterior surface; the housing having first and second opposite ends, and an open mouth in communication with the interior volume at the first end (Figs. 2, 4 (note wall of housing)); (i) a longitudinal axis extending through the first and second ends of the housing (Figs. 2, 4); and (c) a threaded section with a threaded section first end and an opposite threaded section second end; the threaded section first end being next to the open mouth, and the threaded section second end being spaced from the open mouth; the threaded section first end being above the threaded section second end when the housing is oriented with longitudinal axis extending vertically and the housing first end being above the housing second end (Figs. 2, 4); (i) the threaded section being angled at an angle relative to a line parallel to the longitudinal axis, as the threaded section extends from the threaded section first end toward the threaded section second end (Figs. 2, 4, (note threaded taper angle)).
Lin does not disclose a ring positioned along the mouth or a threaded section on the ring; (ii) the angle being at least 1 degree angled from the line parallel to the longitudinal axis; (iii) the surrounding wall being wrapped over an end of the ring; or a seal member secured thereto.
Regarding Claim 33, Lin discloses a method of mounting a filter housing on a filter head (Figs. 2, 4); the filter housing having a central longitudinal axis (Figs. 2, 4); the method comprising (a) releasably securing a filter housing to a filter head by screwing a threaded section onto the housing to the filter head until sealed against the filter head (Figs. 2, 4); (i) the threaded section being angled at an angle relative to a line parallel to the longitudinal axis, as the threaded section extends from a threaded section first end toward a threaded section second end the threaded section first end being next to the open mouth and the threaded section second end being spaced from the open mouth (Figs. 2, 4, (note threaded taper angle)).
Lin does not disclose a ring positioned along an open mouth of the filter housing including a surrounding wall wrapped over an end of the ring; a seal member being secured to the filter housing; or (ii) the angle being at least 1 degree.
Regarding Claims 39, 40-43, and 51-53, Lin discloses a filter housing comprising (a) a surrounding wall defining an interior volume; the surrounding wall having an interior surface in communication with the interior volume and an opposite exterior surface; the housing having first and second opposite ends (Figs. 2, 4 (note wall of housing)), and an open mouth in communication with the interior volume at the first end (Figs. 2, 4, (note opening at top first end)); and (c) a threaded section with a first end next to the open mouth and a second end spaced from the open mouth (Figs. 2, 4); (i) the threaded section being angled radially outwardly at an angle as the threaded section extends from the first end toward the second end (Figs. 2, 4, (note threaded taper angle)).
Lin does not disclose (b) a ring positioned along the open mouth or a threaded section on the ring; (ii) the angle being at least 1 degree; or (iii) the surrounding wall being wrapped over an end of the ring.
Gustafson also relates to a filter housing and discloses a ring positioned along the mouth and a threaded section on the ring (Fig. 5, item 84, Paragraph (“Pr”) 110); a threaded section having an angle of at least 1 degree angled from the line parallel to the longitudinal axis (Figs. 5, 10 (note bevel 122 angle of sleeve 84), Pr24-26,53-55,122,199-201,231-233); the surrounding wall being wrapped over an end of the ring (Figs. 5, 10 (note surrounding wall 36 wrapped over upper end of ring 84), Pr126); and a seal member secured thereto (Figs. 4, 5, 10, item 110, Pr117).
It would have been obvious to one of ordinary skill in the art prior the effective filing date of the claimed invention to combine the filter housing disclosed by Lin with the angle and structure disclosed by Gustafson because, according to Gustafson, the bevel and structure provide advantages (Pr122) including providing easy alignment between filter components.
Regarding Claim 55, Lin discloses a method of mounting a filter housing on a filter head (Figs. 2, 4); the method comprising (a) releasably securing a filter housing to a filter head by screwing a threaded section onto the housing to the filter head until secured to the housing forming a seal against the filter head (Figs. 2, 4); (i) the threaded section being angled radially outwardly at an angle as the threaded section extends from a first end toward a second end; the first end being adjacent to an open mouth in the housing (Figs. 2, 4, (note threaded taper angle)).
Lin does not disclose a ring positioned along an open mouth; a seal member secured to the housing forms a seal against the filter head; the filter housing including a surrounding wall wrapped over an end of the ring; or (ii) the angle being at least 1 degree.
Gustafson also relates to a method of mounting a filter housing and discloses a ring positioned along an open mouth (Fig. 5, item 84, Pr110); seal member secured to the housing forms a seal against the filter head (Figs. 4, 5, 10, item 110, Pr117); the filter housing including a surrounding wall wrapped over an end of the ring (Figs. 5, 10 (note surrounding wall 36 wrapped over upper end of ring 84), Pr126); and a threaded section having an angle of at least 1 degree (Figs. 5, 10 (note bevel 122 angle of sleeve 84), Pr24-26,53-55,122,199-201,231-233).
It would have been obvious to one of ordinary skill in the art prior the effective filing date of the claimed invention to combine the seal member disclosed by Gustafson with the filter housing disclosed by Lin because the seal prevents fluid leakage. Also, it would have been obvious to combine the filter housing disclosed by Lin with the angle disclosed by Gustafson because, according to Gustafson, the bevel and structure provide advantages (Pr122) including providing easy alignment between filter components.
Additional Disclosures Included: Claim 2: wherein the angle is angled radially outwardly from the line parallel to the longitudinal axis (Lin, Figs. 2, 4; Gustafson, Figs. 5, 10 (note outwardly dependent on point of reference)). Claim 16: an end plate at least partially covering the first end of the housing; the end plate having a central opening defining the open mouth (Gustafson, Figs, 5, 7, item 100 (note end plate integrated with threaded section does not impart patentability, see MPEP 2144.04), Pr121). Claim 29: a spin-on filter assembly comprising a filter housing of Claim 1 (see analysis above) and a filter element non-removably positioned in the interior volume (Gustafson, Fig, 5, item 30, Pr103). Claims 30, 52: wherein the filter element comprises: (a) a pleated section of filter media extending between a first end cap and an opposite second end cap; the first end cap being adjacent to the open mouth (Gustafson, Fig. 5, item 50, Pr103); (b) the first end cap having a central opening (Gustafson, Fig. 5, item 56, Pr105); and (c) a filter element seal member being secured to the first end cap (Gustafson, Fig. 5, item 74, Pr107). Claim 31: a bowl filter assembly (Gustafson, Pr99,171) comprising a filter housing of Claim 1 (see analysis above) and a filter cartridge removably positioned in the interior volume (Gustafson, Pr99 (note replaceable filter in bowl filter assembly)). Claim 32: wherein the filter element comprises: (a) a pleated section of filter media extending between a first end cap and an opposite second end cap; the first end cap being adjacent to the open mouth (Gustafson, Fig. 5, item 50, Pr103); (b) the first end cap having a central opening (Gustafson, Fig. 5, item 56, Pr105); and (c) a filter element seal member being secured to the first end cap (Gustafson, Fig. 5, item 74, Pr107). Claim 40: a seal member secured thereto (Gustafson, Figs. 4, 5, 10, item 110, Pr117). Claim 41: a recess located axially between the threaded section and the open mouth, the recess holding the seal member (Figs. 4, 5, 10, item 94, Pr117). Claim 42: wherein the ring comprises a sleeve circumscribing the exterior surface of the surrounding wall; the sleeve having the threaded section; the sleeve having a first sleeve end and an opposite second sleeve end; the sleeve having the recess for holding the seal member (Gustafson, Fig. 5, item 84, Pr110). Claim 43: wherein the surrounding wall is wrapped over the first sleeve end and extends into the recess (Gustafson, Fig. 10, items 37, 44, Pr117). Claim 51: a spin-on filter assembly comprising a filter housing of Claim 39 (see analysis above) and a filter element non-removably positioned in the interior volume (Gustafson, Fig, 5, item 30, Pr103). Claim 53: a bowl filter assembly comprising a filter housing of Claim 39 (see analysis above) and a filter cartridge removably positioned in the interior volume (Gustafson, Pr99 (note replaceable filter in bowl filter assembly)).
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 PATRICK ORME whose telephone number is (408)918-7585. The examiner can normally be reached Monday - Thursday, 7:30 am - 6:00 pm Pacific Time.
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/PATRICK ORME/Primary Examiner, Art Unit 1779
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