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.
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) 14-15 and 18-20 are finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikeda et al. (US 2021/0060457) [hereinafter Ikeda].
With respect to claim 14, 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.
With respect to claim 15, Ikeda discloses wherein: the holding unit 20 has a cylindrical shape, as shown in Fig. 3; the groove has a circular-ring shape, as shown in Fig. 3; and the filter 10 has a circular shape, as shown in Fig. 2.
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, and the filter 10 is disposed in a space between the first member 22 and the second member 21, as shown in Fig. 3.
With respect to claim 19, 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, 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.
With respect to claim 20, Ikeda discloses wherein the filter 10 is made of a metal (see paragraph 0063).
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) 16-17 are finally rejected under 35 U.S.C. 103 as being unpatentable over Ikeda (US 2021/0060457).
With respect to claims 16-17, 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 first inscribed circle and the diameter of the second inscribed circle. 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)).
Response to Arguments
Applicant's arguments filed on March 31, 2026, have been fully considered but they are not persuasive.
In response to applicant’s argument that Ikeda lacks the limitation “a size of the groove in an extending direction of the holding unit is larger than a thickness of the filter”, as required by claim 14, because the space that receives the filter is not larger than the thickness of the filter itself: This argument is not persuasive. Ikeda teaches a 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 and as required by claim 14. The space surrounding the frame section 12 has been considered to be the claimed groove, and said space is inherently larger than the thickness of the filter 10 in order to be able to accommodate the frame section 12, as shown in Fig. 3 of Ikeda.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the space S1 allows the filter to move in the axial direction without being fixed to the groove) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It appears that this does not happen in Ikeda; however, this is not being recited in the claim.
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 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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