DETAILED ACTION
Response to Amendment
The Examiner acknowledges the Applicant’s response including amendments to the claims.
Claims 1-6, 12-20 are amended. Claims 1-20 are under prosecution.
With regards to the previous 112 2nd paragraph rejection, Examiner agrees with the Applicant’s arguments and withdraws the 112 2nd paragraph rejection.
However, upon consideration, the amendments and arguments are not sufficient to overcome the prior art.
A final rejection and rebuttal to arguments follow.
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 1-11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ernst et al. US Patent 6,312,489.
Regarding claim 1, Ernst teaches a filter element comprising:
a) A filter medium 8 (Figure 3) comprising a plurality of successive zig-zag folds extending in a longitudinal direction, from a long side to a smaller side (from left to right in the Figure); wherein the filter media comprises a plurality of segments which is considered as the width between the axis of two neighboring peaks;
b) The fold height (the height of each fold peak from the point to the base) of each successive fold continuously decreases in the longitudinal direction (going left to right); and wherein
c) The fold width (the segment width) successively decreases in the longitudinal direction (Figure 3, column 2 lines 46-67), further disclosing that “the fold height, changing here along the surface of this side of filter insert 8, can be achieved by changing the distance between folds when folding the paper webs or fabric webs” (column 2 lines 52-57).
Ernst does not explicitly disclose the fold width of each of the successive segment is constant (while the height of the fold from base to peak successively decreases).
However, Ernst expressly teaches that fold height variation along the longitudinal direction is achieved by selecting the geometry of the folds including the spacing of adjacent folds. Given this teaching, one having ordinary skill in the art would have recognized fold height and fold width as independent adjustable parameters. Thus, it would have been obvious to maintain a constant fold width while varying the fold height as a matter of routine design choice, for example to simplify manufacture by employing a constant pleating pitch while accommodating a tapered filter profile. Such a modification represents a predictable geometric variation of the folded structure disclosed by Ernst and does not result in a new functional interaction or unexpected technical effect.
Regarding claims 2, the fold width each decreases segmentally at the top points (attached to seal base 6).
Regarding claims 3-6, the height with respect to the seal base, continuously decreases in the longitudinal direction from the first traverse side (left) to the second traverse side (right).
Regarding claims 7 and 8, the first fold edges extend from the first plane (base seal 6) and the second fold edges extending a sloping second plane (Figure 3).
Regarding claim 9, the first fold edge and the second fold edge extend parallel to each other (vertical axis taken up and down direction and intersecting the fold points in Figure 3; the vertical axis are parallel).
Regarding claim 10, the second fold edges extend parallel to each other (vertical axis taken up and down direction and intersecting the second fold points in Figure 3; the vertical axis are parallel).
Regarding claim 11, the first fold edges extend parallel to each other (vertical axis taken up and down direction and intersecting the first fold points in Figure 3; the vertical axis are parallel).
Regarding claim 20, Ernst teaches a filter element comprising:
a) A filter medium 8 (Figure 3) comprising a plurality of successive zig-zag folds extending in a longitudinal direction, from a long side to a smaller side (from left to right in the Figure); wherein
b) The filter media comprises a plurality of segments which is considered as the width between the axis of two neighboring peaks. Please refer to the Examiner’s marked up Ernst Figure 3 on page 8 of this office action. The Examiner flipped Ernst’s Figure 3 for better comparison, and added vertical lines that intersect each peak of the successive fold. The Examiner’s added vertical line is analogous to the Applicant’s line 26 in their Figure 1. And as similarly done with the Applicant, the segment is measured as the width of these two neighboring vertical lines.
b) The fold height (the height of each fold peak from the point to the base) of each successive fold continuously decreases in the longitudinal direction (going left to right); and wherein
c) Ernst teaches the fold width (the segment width) successively decreases in the longitudinal direction (Figure 3, column 2 lines 46-67), further disclosing that “the fold height, changing here along the surface of this side of filter insert 8, can be achieved by changing the distance between folds when folding the paper webs or fabric webs” (column 2 lines 52-57).
Ernst does not explicitly disclose the ratio of the fold width of each of the successive segment to the fold height is constant (while the height of the fold from base to peak successively decreases).
However, Ernst expressly teaches that fold height variation along the longitudinal direction is achieved by selecting the geometry of the folds including the spacing of adjacent folds. Given this teaching, one having ordinary skill in the art would have recognized fold height and fold width as independent adjustable parameters or related by a constant ratio. In comparing the Figures of Ernst’s Figure 3 with the Applicant’s Figure 1 (see page 8 of this office action), one having ordinary skill in the art can see that the geometric shape of the filter pleats are very similar and thus a constant ratio of the segment width and height can be obviated by the figures. Ernst’s Figure 3 discloses that the height decreases with the segment width decreases along the longitude of the filter. Thus, one having ordinary skill in the art would expect that the ratio between height and width would be constant, or obvious to make it constant. Thus, maintaining a constant ratio of height and width is as a matter of routine design choice, for example to simplify manufacture by employing a constant pleating pitch while accommodating a tapered filter profile. Such a modification represents a predictable geometric variation of the folded structure disclosed by Ernst and does not result in a new functional interaction or unexpected technical effect.
Claims 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ernst et al. US Patent 6,312,489 in view of Golden et al. US 2005/0252182.
Regarding claims 12-19, Ernst does not explicitly disclose the dimensions of the fold division or the fold height. However, since the filter is meant to use in engines, one having ordinary skill in the art would understand that the pleat sizes would fall in the millimeter ranges.
Golden teaches a similar pleated filter where the dimensions of the pleat height is at least 0.05 inches (at least 1.27 mm) and the distance between the pleat points are at least 0.25 inch (6.35 mm). Although Golden teaches pleat heights smaller, the general dimensions of the filter pleats are known in the art for machine filtration. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention to optimize the pleat sizes by routine experimentation.
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Applicant’s Figure 1 compared to Ernst Figure 3 in US 6,312,489
[AltContent: textbox (34c)][AltContent: connector][AltContent: connector][AltContent: textbox (32a)][AltContent: connector][AltContent: connector][AltContent: arrow][AltContent: arrow]
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Ernst Figure 3 flipped vertically (for easy comparison) and marked up by the Examiner showing that the segments, indicated by the arrowed horizontal lines, of the successive folds decrease in a longitudinal direction, i.e. the width between the peak’s axis, 32a and gets smaller as it approaches 34c. The height of the fold peaks decreases continuously along with the segment width of each neighboring peak; thus, it is expected or obvious that the ratio of peak height to segment width would be about constant.
Response to Arguments
Applicant's arguments filed 11/10/25 have been fully considered but they are not persuasive. The amendments constituted a change from 102 to 103 under the previously cited prior art.
Applicant argues on page 7:
Conversely, Ernst et al. at Fig. 1 identically discloses a filter element 1 comprising a filter insert (i.e., medium) 2 having a first folded region (i.e., segment) 3 with a relatively low fold height and a second folded region (i.e., segment) 4 with a relatively high fold height. However, the fold height within the first folded region 3 and the fold height within the second folded region 4 is constant, not continuously decreasing in the longitudinal direction (from left to right transverse to the flow direction 11) as claimed. Ernst et al. at Fig. 2 identically discloses a first folded region (i.e., segment) 3 with a relatively high fold height and a second folded region (i.e., segment) 5 with a relatively low fold height. Similarly, the fold height within the first folded region 3 and the fold height within the second folded region 5 is constant, although the fold heights in each of the folded regions 3, 5 continuously decreases in the longitudinal direction. Ernst et al. at Fig. 3 identically discloses a filter element 7 comprising a filter insert (i.e., medium) 8 comprising a single region (i.e., segment) having a fold height and a fold width that both continuously decreases in the longitudinal direction (from left to right transverse to the flow direction 11) in contrast to the fold width within each segment being constant as claimed.
In response, the Examiner relies on Ernst’s Figure 3 which more adequately shows the inventive concept as amended. The fold pleats continuously decrease in height along with the decreasing pleat width (segment) in a longitudinal direction of the filter across the pleats. Claim 1 now requires that the segment width is constant while the heights decrease. The Examiner has acknowledged that this is not explicitly taught in Ernst but nonetheless the change would have been obvious to one having ordinary skill in the art from Ernst’s teachings.
Ernst expressly teaches that fold height variation along the longitudinal direction is achieved by selecting the geometry of the folds including the spacing of adjacent folds. Given this teaching, one having ordinary skill in the art would have recognized fold height and fold width as independent adjustable parameters. Thus, it would have been obvious to maintain a constant fold width while varying the fold height as a matter of routine design choice, for example to simplify manufacture by employing a constant pleating pitch while accommodating a tapered filter profile. Such a modification represents a predictable geometric variation of the folded structure disclosed by Ernst and does not result in a new functional interaction or unexpected technical effect. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966): changes in shape or configuration would be obvious in the art.
Applicant argues with amended claim 20 on pages 8-9:
Claim 20, as amended herein, requires a filter element comprising a filter medium comprising a plurality of successive folds arranged in a longitudinal direction from a first transverse side to a second transverse side of the filter medium. A fold height of the successive folds and a fold width of the successive folds continuously decreases in the longitudinal direction. Further, a ratio of the fold height and the fold width of each of the successive folds is constant.
Conversely, Ernst et al. at Fig. 3 identically discloses a filter element 7 comprising a filter insert (i.e., medium) 8 comprising a plurality of successive folds arranged in a longitudinal direction from a first transverse side to a second transverse side wherein the fold height and the fold width each continuously decreases in the longitudinal direction. However, Ernst et al. does not identically disclose that a ratio of the fold height and the fold width of each of the successive folds is constant.
In response, the Examiner acknowledges that Ernst does not explicitly disclose the ratio of the pleat height and fold segment width are constant. However, Ernst expressly teaches that fold height variation along the longitudinal direction is achieved by selecting the geometry of the folds including the spacing of adjacent folds. In particular, as the height of the folds decrease the width of the folds also decrease. The Examiner reproduced the Figures of Ernst’s Figure 3 to compare with the Applicant’s Figure 1, and added markings to show that there is a strong similarity to the pattern and shape between the two filters. Thus, it is strongly suggested in Ernst that the ratio of the pleat height and segment width are about constant or find it obvious to make it constant by a mere design choice. Such a modification represents a predictable geometric variation of the folded structure disclosed by Ernst and does not result in a new functional interaction or unexpected technical effect. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966): changes in shape or configuration would be obvious in the art.
Applicant argues on page 8:
Golden et al. teaches a smaller pleat height of at least 0.05 inches and a pleat width of at least 0.25 inches. The Examiner suggests that general dimensions of filter medium pleats are known in the filtration art, and therefore, it would have been obvious to optimize the pleat sizes (fold height and fold width?) by routine experimentation.
Without comment or argument at this time whether the specific fold width ranges and fold height ranges of claims 12-19 would have been obvious, Applicant submits that Golden et al. fails to overcome the deficiencies of Ernst et al. with regard to the patentable limitations of claim 1.
In response, the Examiner has provided Golden as evidence for the general dimensions of filter pleats. Thus, one having ordinary skill in the art can refer to Golden for known dimensions of filter pleats that are conventional in the art. Further, the dimensions of the filter pleats are a known variable and it would have been obvious to arrive at the claimed ranges by routine experimentation. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966): changes in shape or configuration would be obvious in the art. In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955): “[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.”
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.
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/SHARON PREGLER/Primary Examiner, Art Unit 1772