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.
Election/Restrictions
Applicant’s election without traverse of Group I (compensation element, neither filter system nor filter medium), claims 16-29 and 35, in the reply filed on 06/21/26 is acknowledged.
Examiner notes that Claim 29 recites “a compensation element of a filter system,” which is the same subject matter recited in claim 16. Accordingly, claim 29 should be grouped in Group I, directed to the compensation element.
Claims 33-34 recite “the filter system” in line 1, in which falls within the subject matter of Group II, directed to the filter system. Accordingly, claims 33-34 have been withdrawn.
Claim Objections
Claim 29 is objected to because of the following informalities: Claim 29 should end with a period. Appropriate correction is required.
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 24-28 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 24 and 26-28, the phrase "xxx-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 25 depend on claim 24; 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) 16 and 19-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 102020204099 (hereinafter DE ‘099).
As regarding claim 16, DE ‘099 discloses the claimed invention for a compensation element (40 of figs. 2a and 6) of a filter system, the compensation element being configured for volume compensation for a freezing medium, the compensation element comprising: an elongated hollow body (40) with a first end (45) and a second end (44), at the first end, a coupling area being situated which closes the hollow body, and the second end (44) being open; wherein the compensation element has an elastically reversible configuration to return back to an initial state after a deformation from the initial state that has taken place due to ice formation by the medium ([0045], [0049]-[0051]), and wherein the hollow body has a cross section with a circumferentially closed outer area (figs. 2a and 6; no number), and includes an inner structure (50) that extends in a longitudinal direction and that is situated at an inner circumference of the outer area.
As regarding claim 19, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention for wherein the inner structure (50) is configured in such a way that a geometric shape of the inner structure remains essentially unchanged in the event of ice formation, and the outer area is configured n such a way that the deformation takes place predominantly or solely at the outer area (41).
As regarding claim 20, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention for wherein the inner structure (50) and the outer area have a constant, identical wall thickness.
As regarding claim 21, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention for wherein the hollow body at the second end includes a radially outwardly directed flange area (43).
As regarding claim 22, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention for wherein a pressure compensation element (81) that closes the second end is situated at the second end.
As regarding claim 23, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention for wherein the hollow body includes protrusions (43) at an outer circumference, adjacent to the second end, that are configured to fix the compensation element.
As regarding claim 24, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention for wherein the hollow body is cylindrical or truncated cone-like (fig. 6), and the outer area includes a plurality of flat areas that extend in a direction of a center axis of the hollow body.
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) 17-18 and 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over DE 102020204099 (hereinafter DE ‘099).
As regarding claim 17, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the outer area and the inner structure are made of the same material. 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 wherein the outer area and the inner structure are made of the same material in order to provide ease of manufacturing, 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 18, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the outer area and the inner structure have a one-piece configuration, as an injection-molded part. 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 wherein the outer area and the inner structure have a one-piece configuration, as an injection-molded part in order to provide ease of manufacturing, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1993).
As regarding claim 25, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the hollow body includes exactly three flat areas at the outer area, and the inner structure includes three wall areas that meet in the center axis of the compensation element and are situated adjacent to one another at an angle of 120°. 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 wherein the hollow body includes exactly three flat areas (the flat areas of the hollow body results from the three wall areas of the inner structure, which stretch flat-out due to their elastic deformation) at the outer area, and the inner structure includes three wall areas that meet in the center axis of the compensation element and are situated adjacent to one another at an angle of 120° in order to provide additional support inner structures, 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 26, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure includes three inwardly protruding triangular areas in such a way that the compensation element in an undeformed state includes a tripod cavity with three hollow areas that have the same configuration, and that meet in a center axis of the hollow body and are each offset relative to one another by 120°. 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 wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure includes three inwardly protruding triangular areas in such a way that the compensation element in an undeformed state includes a tripod cavity with three hollow areas that have the same configuration, and that meet in a center axis of the hollow body and are each offset relative to one another by 120° in order to provide additional support inner structures, 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 27, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure includes four inwardly protruding triangular areas in such a way that the hollow body in an undeformed state includes a cross-shaped cavity with four hollow areas that meet in a center axis of the hollow body and in each case are spaced apart from one another by 90o. 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 wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure includes four inwardly protruding triangular areas in such a way that the hollow body in an undeformed state includes a cross-shaped cavity with four hollow areas that meet in a center axis of the hollow body and in each case are spaced apart from one another by 90o in order to provide additional support inner structures, 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 28, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure has a cross-shaped configuration with four wall areas that are situated at an angle of 90o relative to one another and that meet in a center axis of the hollow body. 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 wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure has a cross-shaped configuration with four wall areas that are situated at an angle of 90o relative to one another and that meet in a center axis of the hollow body in order to provide additional support inner structures, 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).
Claim 29 is likewise rejected with similar reasons as set forth in claims 16 and 25 above.
Claim(s) 27 is rejected under 35 U.S.C. 103 as being unpatentable over DE 102020204099 (hereinafter DE ‘099), as applied supra, and further in view DE 102019006558 (DE ‘558).
As regarding claim 27, DE ‘099 discloses all of limitations as set forth above. DE ‘099 discloses the claimed invention except for wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure includes four inwardly protruding triangular areas in such a way that the hollow body in an undeformed state includes a cross-shaped cavity with four hollow areas that meet in a center axis of the hollow body and in each case are spaced apart from one another by 90o. 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 wherein the hollow body has a cylindrical or truncated cone-like configuration, and the inner structure includes four inwardly protruding triangular areas in such a way that the hollow body in an undeformed state includes a cross-shaped cavity with four hollow areas that meet in a center axis of the hollow body and in each case are spaced apart from one another by 90o in order to provide additional support inner structures, since it was known in the art as shown in DE ‘558 (fig. 3).
Conclusion
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
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