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 with traverse of claims 1-35 in the reply filed on 4/2/2026 is acknowledged. The traversal is on the ground(s) that no burden is present. This is not found persuasive because burden is established when one of the following is shown:
Separate classification;
Separate status in the art;
A different field of search; and
Prior art applicable to one invention would likely not be applicable to another invention. (MPEP 808.02).
In the present case, the inventions have a separate classification in the art, separate status in the art, a different field of search due to one being an apparatus and the other a method, and prior art applicable to one invention would likely not be applicable in another. Therefore, burden is established.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities: Limitation h recites “are pulled taught” but should read “are pulled taut.”. Appropriate correction is required.
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.
Claims 1-35 are 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 1 limitations d (iv) and d (v) both recite “a filter membrane.” It is unclear if the two references to “a filter membrane” are referring to the same or different element. For the purposes of examination, it will be assumed that the two references are referring to different elements as the specific placing of each filter membrane is different in the claims. It is also noted that this leads to indefinite issues for any subsequent reference to any filter membrane later in the claims, such as later in claim 1 limitation d (v), f, g, and h, claims 9,11-12, and 25.
Claim 1 limitations d (iv) and d (v) both recite “a polar liquid fill chamber.” It is unclear if the two references to “a polar liquid fill chamber” are referring to the same or different element. For the purposes of examination, it will be assumed that the two references are referring to different elements as the specific placing of each a polar liquid fill chamber is different in the claims. It is also noted that this leads to indefinite issues for any subsequent reference to any polar liquid fill chamber later in the claims, such as later in claim 1 limitation g, and h.
Claim 1 recites the limitation "the membrane" in limitations d(iv) and d(v). There is insufficient antecedent basis for this limitation in the claim. Terminology should be consistent throughout the claims.
Claim 1 limitations d (i) and d (vii) both recite “an inlet port.” It is unclear if the two references to “an inlet port” are referring to the same or different element. For the purposes of examination, it will be assumed that the two references are referring to different elements as the specific placing of each inlet port is different in the claims.
Claim 1 limitation f recites “a hollow support tube” but later recites “a support tube.” It would appear that the terminology used defines two different support tubes, namely a hollow support tube and a different support tube. However, the specification uses the two terms for the same elements. As such, it is unclear if the “a hollow support tube” and the later recitation of “a support tube” are referring to the same or different elements. For the purposes of examination, it will be assumed they are the same element.
Claim 1 recites the limitation "the co-axial support tube through passageway" in limitation g. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 14, 16, 21 and 29 recite the broad numerical recitation, and the claim also recites a narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 14, 16, and 29, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim21, the phrase "preferred" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the limitation "the porous filter membrane." There is insufficient antecedent basis for this limitation in the claim.
Claim 34 recites the limitation "the exhaust gas." There is insufficient antecedent basis for this limitation in the claim.
Claim 35 recites the limitation "the dryer exhaust gas." There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 16 of prior U.S. Patent No. 12,521,651. This is a statutory double patenting rejection.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 12,521,651. Although the claims at issue are not identical, they are not patentably distinct from each other because as discussed above, claim 1 of the present invention is essentially claim 16 of `651. While the dependent claims of `651 do not depend on claim 16, it would have been obvious to provide a screening step in order to remove unwanted debris material. The table below provides a comparison of the claims between the present invention and `651.
Present
`651
Present
`651
2
2
21
18
3
3
22
19
4
13
23
21
5
14
24
22
6
15
25
23
7
4
26
24
8
12
27
25
9
8
28
27
10
9
29
28
11
10
30
20
12
11
31
29
13
5
32
26
14
6
33
30
15
7
34
31
16
7
35
32
20
17
It is noted that claims 17-19 do not have a direct correlation between the claims of the present invention and `951. However, it merely recites structure that is taught to be used for the screening step in claim 16 of `651 and therefore would have been an obvious matter to provide the specific structure taught in the specification in order to achieve the desired screening effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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, Jennifer Dieterle can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER KEYWORTH/Primary Examiner, Art Unit 1777
Prosecution Insights