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 .
Election/Restrictions
Applicant’s election of Group I claims 1-5, 7 and 9-12 in the reply filed on 11/10/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claim 7 is 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.
Claim 7 recites the limitation " the axial position of the sheet of filter media " in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,401,093 (Gates).
For claim 1, the Gates reference discloses a vent assembly comprising: a vent housing having (figure 4 object 26): a first axial end (figure 4 side of 26), a second axial end (figure 4 side of 36), and an airflow pathway extending from the first axial end towards the second axial end (figure 4 objects 24 and 40), an environmental opening towards the second axial end configured for fluid communication with an external environment (figure 4 object 34), an enclosure opening towards the first axial end configured for fluid communication with an interior of an enclosure (figure 4 object 26), a perimetric support surface surrounding the airflow pathway (see below), and a support brace extending across the airflow pathway, wherein the support brace has a lateral support surface offset in the axial direction from at least a portion of the perimetric support surface (figure 4, object 38) ; and filter media disposed laterally across the airflow pathway, wherein the filter media has a perimeter region supported by the perimetric support surface around the airflow pathway (figure 4 object 30), and the filter media has a central region supported by the lateral support surface (figure 4 objects 30 and 38). The reference does not disclose the filter media is non-planar.
The regard to the Gates reference not disclosing the filter media is non planar. It would have been obvious to one having ordinary skill in the art to have modified the Gates reference to include a variety of shapes of filters including a filter media which is non planar as the courts have held that the configuration of the claimed apparatus was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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For claim 2, the Gates reference discloses the lateral support surface is positioned axially between the perimetric support surface and the second axial end (figure 4 object 38).
For claim 3, the Gates reference discloses the lateral support surface is positioned axially between the perimetric support surface and the first axial end (figure 4, object 38).
For claim 4, the Gates reference discloses the lateral support surface is offset in the axial direction from the entire perimetric support surface (perimetric support surface as shown above and top of object 38).
For claim 5 the Gates reference discloses the housing comprises an axial sidewall surrounding the airflow pathway, and the support brace has two ends that are each coupled to the axial sidewall (figures 4 and 5, objects 34, 44 and 38 and column 2, linse 58-64).
For claim 7, what is being claimed with regard to the sizing of the filter media is not clear per the 112b rejection above. It is noted the Gates reference discloses filter media is a sheet of filter media having the sheet of filter media has a cross-dimension (figure 4 object 30). With regard to the dimensions of the filter media, the courts have held that the configuration of the claimed apparatus was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). that is greater than the cross-dimension of the airflow pathway at the axial position of the sheet of filter media. Further the Federal Circuit 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 the prior art device, the claimed device was not patentably distinct from the prior art device. 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).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,401,093 (Gates) as applied in claim 1 above and further in view of US 6,585,128 (Clevenger).
For claim 9 Gates reference does not disclose a splash guard disposed across the airflow pathway, wherein the splash guard is spaced in the axial direction from the support brace and wherein the splash guard and the support brace define a tortuous fluid pathway between the enclosure opening and the filter media.
The Clevenger reference discloses a splash guard disposed across the airflow pathway, wherein the splash guard is spaced in the axial direction from the support brace and wherein the splash guard defines a tortuous fluid pathway between the enclosure opening and the filter media (figures 4-6 object 26 and 54)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Gates reference to include the Clevenger splash guard (Clevenger object 26) disposed across the airflow pathway (Gates object 40) so as to minimize the amount of oil that can make it out of the breather structure as well as allow the movement of air to or through the breather structure. This combination of references would result in the splash guard being spaced in the axial direction from the support brace and wherein the splash guard and the support brace define a tortuous fluid pathway between the enclosure opening and the filter media .
Claim(s) 10 -12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,401,093 (Gates) as applied in claim 1 above and further in view of US 2020/0061506 (Lees).
For claim 10, the Gates reference does not disclose a membrane coupled to the vent housing between the filter media and the second axial end and a spacing region between the filter media and the membrane.
The Lees reference discloses a membrane coupled to the vent housing between the filter media and the second axial end a spacing region between the filter media and the membrane (figure 4 objects 170 and 180).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Lees reference to include a membrane coupled to the vent housing between the filter media and the second axial end a spacing region between the filter media and the membrane (Lees figure 4 objects 170 and 180) so as to prevent the ingress of liquids to the housing.
For claim 12, the Gates reference does not disclose the filter media comprises coalescing filter media.
The Lees reference discloses the filter media comprises coalescing filter media (paragraph [0027]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Gates reference to include the filter media comprises coalescing filter media (Lees paragraph [0027]) so as to coalesce oil that makes contact with the filter media. Further the courts have held it 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.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
For claim 1 the applicant contends that the Gates reference does not disclose “a lateral support surface (that supports a central region of the filter media) offset in the axial direction from at least a portion of the Examiner annotated red potion, which is the alleged “perimetric support surface””.
This is not found to be persuasive. A portion of the sides of 38 which would be considered the “a lateral support surface” is “offset in the axial direction from at least a portion of the perimetric support surface” as reproduced below.
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The applicant contends that the shape of the filter is critical and therefore not merely a change in shape.
This is not found to be persuasive. First tenting for a great surface area is readily recognized within the prior art (for example pleated filter media) as a method of increasing surface area. Further MPEP 2144.04 states “The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” The applicant has provided no such evidence and merely provides assertions that the filter shape is significant. Mere allegation do not take the place of factual evidence thereof.
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 AMBER ROSE ORLANDO whose telephone number is (571)270-3149. The examiner can normally be reached Monday-Thursday 6:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AMBER ROSE ORLANDO
Primary Examiner
Art Unit 1731
/AMBER R ORLANDO/Primary Examiner, Art Unit 1731
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