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 § 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (WO2018030061A1, provided by Applicant in file).
Claims 1, 4-7, and 12: Watanabe et al. teach a filtration device comprising: a passage member (Fig. 4, 1) defining a passage including an inlet (3b) and an outlet (2b); and a filter (4) disposed in the passage between the inlet and the outlet, wherein the inlet has an inlet passage sectional area (3b), wherein the passage includes: a first passage having a first passage sectional area that increases from the inlet toward the filter on an upstream side of the filter, and a second passage having a second passage sectional area that is uniform from the first passage toward the filter, wherein the second passage sectional area is greater than the inlet passage sectional area, and wherein a second passage length of the second passage is greater than a first passage length of the first passage.
Watanabe et al. do not teach the specific ratios, proportions, or shapes of the passages and taper of the filter housing as claimed.
It is well-known that the shape of a filter housing is designed to direct fluid flow efficiently towards the filter media. This can be seen in the smaller cross-section of the inlet area which gradually opens to the second passage which then allows for consistent flow to the filter and then vice versa back to the outlet. The specific proportion and design as claimed is not critical and does not appear to have any unexpected or new results associated with the specifications. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 2: the first passage has a tapered shape and a sectional area that increases continuously from the upstream side of the filter toward the filter (Annotated figure above wherein the 1st passage indicated is tapered and has a continuous increasing radius which results in continuously increasing sectional area).
Claim 3: the first passage has a tapered wall (see annotated image above) and a curved inner wall that connects to the 2nd passage (Fig. 1 shows that the cross section is round which means the inner wall is curved).
Claim 11: the outlet passage (2b) has a cross sectional area that is smaller than the second passage sectional area (see annotate figure above wherein the outlet passage narrows after the consistent width of the 2nd passage shown above).
Claim 13: the filtration device is oriented such that the inlet is below the outlet (See annotated figure above).
Claim 14: the filter is a porous metal film [0047].
Claim 15: the filter adapter is connected to a syringe [0044], a syringe has a housing for holding liquid (i.e. container), a liquid supply device [0046] (i.e. tip of the syringe), and a plurality of passage lines that connect the filtration device, the container, and the liquid supply device through which the liquid travels (passage lines include flow through the container and the tip of the syringe).
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
Applicant argues that Watanabe et al. do not teach the newly added limitations which were previously rejected over Watanabe et al. as a 103 obviousness type rejection over original claims 8 and 9.
The amendments to Claim 1 recite a “third passage” and the shape/design of the passage which is such that the passage tapers towards the filter. The non-final rejection mailed 3/26/2026 states:
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The Examiner maintains that modifying Watanabe et al.’s design to have a taper, or narrowing, towards the filter membrane is an obvious engineering design choice that would haven obvious to one of ordinary skill in the art at the time of the invention to help control the flow of fluid and direct fluid flow towards the filter media. The curvature would also obviously prevent build up of fluid at corners. Applicant has failed to demonstrate how or why this shape and design is critical to the invention and why this is a non-obvious modification over the prior art.
For example, Adrian et al. (US Pub. No. 2017/0209816) show a filter with a tapered housing towards the filter, as does Pascale et al. (USP 4902421). These among a wide number of additional references that make it clear the shape of the housing is an obvious engineering design choice and not a critical element to the invention that would establish novelty over the prior art unless Applicant can argue or show otherwise.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773
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