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 .
StatusClaims(s) 1-11, is/are filed on 10/2/23 are currently pending. Claim(s) 10-11 is/are withdrawn, 1-9 is/are rejected.
Election-Restrictions
The applicant elected group 1 corresponding to claims 1-9 in the reply filed 11/17/2025. Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed.
Applicants argue there is no search or examination burden because, applicant believes all the claims are in the same overlapping class. However, this not found persuasive. There is a search and/or examination burden for the patentably distinct species the inventions required a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries even though the inventions are classified together) (refer MPEP 808.02). Moreover, in this case the method and apparatus have separate classification as noted in the restriction, thereby employing a search burden. This restriction is made final.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-2, 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over all apparatus claims of US 20230098200 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because claim(s) of US 20230098200 A1 substantially correspond to claims 1-2, 5-7 of instant application because each of claims of the instant application are broader version the patent. Instant claim 1 is anticipated by reference claim 1. Instant claim 2 is anticipated by reference claim 3. Instant claim 5 is anticipated by reference claim 6. Instant claim 6 is anticipated by reference claim 7. Instant claim 7 is anticipated by reference claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 4 and dependent claim(s) thereof is/are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim(s) 4 recites the limitation ‘wherein the shut off valve spring is located in a blind cavity outside of the path of fluid flow through the assembly’. It is unclear what is meant by a blind cavity. For interpretation, it means any cavity.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapur (US 20030127384 A1) in view of Pall (US 3262563 A).
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Regarding claim 1, Kapur teaches a filter assembly comprising: a manifold (2) having a fluid inlet (3) and a fluid outlet (4); a filter housing (13); a filter medium (12) within the filter housing (13), the filter medium (12) defining an inner filter chamber (chamber inside filter 12) and defining an outer filter chamber (chamber between 12 and 13) between the filter medium (12) and the filter housing (13), the filter housing being removably attached to the manifold so as to provide a fluid flow path from the inlet into the inner filter chamber, through the filter medium into the outer chamber and out of the outlet (intended use); and the filter housing (13) being removably attached to the manifold (2) so as to provide a fluid flow path from the inlet (3) into the inner filter chamber (chamber inside filter 12), through the filter medium (12) into the outer chamber (chamber between 12 and 13) and out of the outlet (4); and a valve assembly mounted inside the manifold (2), the valve assembly comprising a shut off valve piston (8) and a shut off valve spring (18) arranged in engagement with the valve piston (8) to bias the valve piston (8) into a first position; an adaptor ring (19) located between the shut off valve piston (8) and the filter housing (13) and provided with an annular outlet seal (19); wherein the shut off valve piston (8) is provided with a radially extending flange (flange laterally extending out of valve 8) and an inner piston wall configured such that as the filter housing (13) is being detached from the manifold (2), the shut off valve spring (18) expands to move the shut off valve piston (8) to a shut off position whereby the piston flange (flange laterally extending out of valve 8) is in sealing engagement with the adaptor ring (19) and the outlet seal (19), and the inner piston wall is in sealing engagement with inlet seals (19) such that flow from the fluid inlet (3) and the fluid outlet (4) is shut off from entering the filter housing (13); a bypass channel (ports 31) between the fluid inlet (3) and the fluid outlet (4) [0019-0028].
Kapur utilizes a bypass valve 30 maintained in engagement with valve seat 32 by spring 18, which opens under differential pressure to allow bypass flow. Kapur does not teach disk spring. Pall teaches a disk spring (83) as a bypass relief valve in a filter assembly. As modified with Kapur, Pall would teach positioned across the bypass channel (passage 5) such that, in its default state, the disk spring (83) extends across the bypass channel (passage 5) to prevent flow from the fluid inlet to the fluid outlet via the bypass channel (passage 5) and wherein, when the pressure differential across the disk spring (83) exceeds a predetermined threshold, the disk spring (83) deforms to open the bypass channel (passage 5) and allow the flow of fluid from the fluid inlet to the fluid outlet via the bypass channel (passage 5) (C7/62 to C8/1). It would have been obvious to one of ordinary skill in the art to combine the disk spring bypass of Kapur with the filter assembly of Pall to provide an alternative solution to ensure that fluid is always provided until the filter material is replaced, as the disk spring offers a well-known alternative to a shut-off valve sitting in a valve seat to prevent unwanted damage to the filter assembly.
Regarding claim 2, Kapur does not teach the wherein the outlet seal is a lip seal. However, lip seals are a standard, well-known components. Choosing a lip seal over another seal type (like a simple gasket or O-ring) to address a known sealing issue is often considered a basic and routine engineering decision, not an inventive leap (see at least US 7469906 B2, item 10). It would have been obvious to one of ordinary skill in the art to combine the lip seal of US 7469906 B2 with the filter assembly of Kapur to provide enhanced bidirectional sealing under pressure, as lip seals offer flexible engagement and improved leak prevention in fluid systems compared to standard annular seals and provide low insertion force, high removal force, prevention of accidental detachment, accommodation for greater sealing protrusion.
Regarding claim 3, Kapur teaches a cap ring (20) mounted to the top of the filter housing (13
Regarding claim 4, Kapur teaches the shut off valve spring (18) is located in a blind cavity (cavity/space inside 18) outside of the path of fluid flow through the assembly.
Regarding claim 5, Kapur teaches further comprising: a supply chamber (chamber of 22) between the fluid inlet and the inner filter chamber.
Regarding claim 6, Kapur teaches further comprising: a supply channel (channel of 10) fluidly connecting the supply chamber and the inner filter chamber.
Regarding claim 7, Kapur teaches further comprising: an outlet chamber between the outer filter chamber (11) and the fluid outlet.
Regarding claim 8, Kapur teaches further comprising sealing means (seal between threaded engagement at 15 and 16 – shown in fig. 1) between the manifold and the filter housing.
Regarding claim 9, Kapur teaches a fuel filter (45) arranged between a fuel supply (49) and a fuel application (not shown but implicit) and comprising the filter assembly as claimed in claim 1, the inlet arranged to be connected to the fuel supply and the outlet arranged to be connected to the fuel application [0001, 0028-0029]. Note, the term fuel is material worked upon. See MPEP § 2114 and 2115.
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It is noted that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Waqaas Ali whose telephone number is (571) 270-0235. The examiner can normally be reached on M-F 9-5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vickie Kim can be reached on 571-271-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAQAAS ALI/Primary Examiner, Art Unit 1777