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 Status
Claims 1-13 have been canceled.
Claims 14-20 are rejected.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 3, 2026, has been entered.
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.
Claim(s) 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (US 2017/0216744) [hereinafter Kondo] in view of Ikeda et al. (US 2021/0060457) [hereinafter Ikeda].
With respect to claim 14, Kondo discloses a filtration filter 100A, as shown in Fig. 1, having: a filter including a porous film 10 (film section) and an edge portion 13 (frame section), as shown in Fig. 2, the film section 10 having a plurality of through-holes 11, as shown in Fig. 1, the frame section 13 surrounding a periphery of the film section 10, as shown in Fig. 2; and a frame 20 (holding unit) in a round or angular tubular shape, as shown in Fig. 1, the holding unit 20 having a recesses 21 (groove) on an inner wall of the holding unit 20 that is constructed to hold the frame section 13 of the filter, as shown in Fig. 2, wherein a size of the groove 21 in an extending direction of the holding unit 20 is larger than a thickness of the filter, as shown in Fig. 2, so as to define a space that allows the filter to move in the extending direction without being fixed to the groove 21, as shown in Figs. 5-6.
Kondo lacks as viewed in the extending direction of the holding unit, an outer diameter of the filter and a diameter of the groove are substantially the same size.
Ikeda discloses a filtration recovery device 1A, as shown in Fig. 1, having: a filter 10 including a filter portion 11 (film section) and a frame portion 12 (frame section), as shown in Fig. 2, the film section 11 having a plurality of through-holes 13, as shown in Fig. 4, the frame section 12 surrounding a periphery of the film section 11, as shown in Fig. 2; and a holder 20 (holding unit) in a round or angular tubular shape, as shown in Fig. 1, the holding unit 20 having a groove on an inner wall of the holding unit 20 that is constructed to hold the frame section 12 of the filter 10, as shown in Fig. 3, wherein a size of the groove in an extending direction of the holding unit 20 is larger than a thickness of the filter 10, as shown in Fig. 3, and as viewed in the extending direction of the holding unit 20, an outer diameter of the filter 10 and a diameter of the groove are substantially the same size, as shown in Fig. 3. The configuration of the holding unit 20 may make it possible to suppress leakage of liquid for recovery held inside the holder to the outside of the holder and may make it possible to easily recover the filtration object captured by the filter (see paragraph 0044). It would have been obvious to one of ordinary skill in the art to provide the device disclosed by Kondo with an outer diameter of the filter and a diameter of the groove being substantially the same size, as taught by Ikeda, in order to suppress leakage of liquid and may make it possible to easily recover the filtration object captured by the filter (see paragraph 0044 of Ikeda). Furthermore, the specific size of the diameters claimed by applicant, i.e., an outer diameter of the filter and a diameter of the groove are substantially the same size, is considered to be nothing more than a choice of engineering skill, choice or design that a person having ordinary skill in the art would have found obvious during routine experimentation based among other things, on desired accuracy, since the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device was not patentably distinct from the prior art device (see In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (FED. Cir. 1984), cert. Denied, 469 U.S. 830, 225 USPQ 232 (1984)).
With respect to claim 15, Kondo discloses wherein: the holding unit 20 has a cylindrical shape, as shown in Fig. 1; the groove 21 has a circular-ring shape, as shown in Fig. 2; and the filter has a circular shape, as shown in Fig. 1.
With respect to claims 16-17, Kondo as modified by Ikeda lacks wherein a difference between the size of the groove in the extending direction of the holding unit and the thickness of the filter is smaller than a half of a difference between the diameter of the groove and the outer diameter of the filter. However, this is considered to be nothing more than a choice of engineering skill, choice or design that a person having ordinary skill in the art would have found obvious during routine experimentation based among other things, on desired accuracy, since the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device was not patentably distinct from the prior art device (see In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (FED. Cir. 1984), cert. Denied, 469 U.S. 830, 225 USPQ 232 (1984)).
With respect to claim 18, Ikeda discloses wherein the holding unit 20 includes a second holder 22 (first member) and a first holder 21 (second member), as shown in Fig. 3 of Ikeda, and the filter 10 is disposed in a space between the first member 22 and the second member 21, as shown in Fig. 3 of Ikeda, and it would have been obvious to modify Kondo in order to suppress leakage of liquid and may make it possible to easily recover the filtration object captured by the filter (see paragraph 0044 of Ikeda).
With respect to claim 19, Kondo as modified by Ikeda discloses wherein the first member 22 and the second member 21 are disposed so that an outer wall of the first member 22 and an inner wall of the second member 21 contact each other in a peripheral direction of the holding unit 20, as shown in Fig. 3 of Ikeda, and the space between the first member 22 and the second member 21 is in an axial direction of the holding unit 20, as shown in Fig. 3 of Ikeda.
With respect to claim 20, Kondo discloses wherein the filter 10 is made of a metal (see paragraph 0037).
Response to Arguments
Applicant’s arguments with respect to claim(s) 14-20 have been considered but are moot because of new grounds of rejection.
In response to applicant’s argument that Ikeda lacks the new limitations added to claim 14 regarding a space that allows the filter to move in the extending direction without being fixed to the groove: Kondo teaches the new limitations of amended claim 14, as stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE GONZALEZ whose telephone number is (571)272-5502. The examiner can normally be reached M-F 9-5:30.
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/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
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