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 specie 1 in the reply filed on 3/9/26 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Claim 3 is withdrawn as directed to a non-elected specie.
Information Disclosure Statement
The information disclosure statement filed 10/18/23 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
An English translation of the foreign document is not provided.
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 1-2 and 4-8 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, line 5 recites a reinforcing plate is provided inside the elastic member. Line 3 recites annular elastic members at both end of the filtration section. Thus, line 3 requires two elastic members. Therefore, it is unclear if only one of the elastic members is required to have a reinforcing plate or if both elastic members are required to have a reinforcing plate. For examination purposes the latter is assumed and line 6 is assumed to recite “each reinforcing plate…”
Claim 1 recites the limitation "the reinforcing plates" in line 7. There is insufficient antecedent basis for this limitation in the claim. The limitation in lines 7-8 are directed to the non-elected embodiment of figure 5.
Claim Rejections - 35 USC § 102
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 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) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malgorn et al. US 2018/0369733.
Claim 1, Malgorn teaches a filter element (100) comprising: a cylindrical filtration section (110), and annular elastic members (130, 150) provided at both ends of the filtration section, wherein a reinforcing plate (140) is provided inside each elastic member and the reinforcing plate has an annular shape when viewed along an axis of the filtration section (fig. 1-5, par 24-26).
Claim 2, Malgorn further teaches the elastic member has a groove into which an end of the filtration section is inserted and the reinforcing plate is provided at a position intersecting with a center line of the groove when the elastic member is cut on a cross sectional surface along the axis of the filtration section (fig. 1-5).
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.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgorn et al. US 2018/0369733.
Claim 5, Malgorn teaches the filter element of claim 1 where the filtration section includes a cylindrical first filtration section but does not teach a second cylindrical filtration section on an outer side of the first filtration section. Providing a second filtration section is a recitation of providing a second layer of filter media on the outer side if the first filter media. This is a very common technique in the art as a way to provide different levels of filtration within one filter element while ensuring a compact design and would have been well within the normal capabilities of one of ordinary skill in the art.
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPS6428918 in view of Malgorn et al. US 2018/0369733.
Claim 1, JP teaches a filter element comprising: a cylindrical filtration section (63) and annular elastic members (65) provided at both ends of the filtration section (fig. 1). JP does not teach reinforcing plates.
Malgorn teaches a filter element (100) with a filtration section (110) and annular elastic members (130, 150) provided at both ends of the filtration section, wherein a reinforcing plate (140) is provided inside each elastic member and the reinforcing plate has an annular shape when viewed along an axis of the filtration section (fig. 1-5, par 24-26). It would have been obvious to one of ordinary skill in the art to use the reinforcing plates of Malgorn in the filter element of JP because the reinforcing plate allows for the flexibility of the sealing portion to be maintained in order to provide sufficient radial compression force (par 26).
Claim 2, JP further teaches the elastic member has a groove into which an end of the filtration section is inserted (fig. 1) and Malgorn further teaches the reinforcing plate positioned to intersect a center line of a groove, in which filter media is inserted (fig.1-5).
Claim 5, JP in view of Malgorn teaches the filter element of claim 1 where the filtration section includes a cylindrical first filtration section but does not teach a second cylindrical filtration section on an outer side of the first filtration section. Providing a second filtration section is a recitation of providing a second layer of filter media on the outer side if the first filter media. This is a very common technique in the art as a way to provide different levels of filtration within one filter element while ensuring a compact design and would have been well within the normal capabilities of one of ordinary skill in the art.
Claim 6, JP further teaches a strainer comprising a filter element and a case (6) inside of which the filter element is provided, wherein an end face and an outer peripheral surface of the elastic member on a side where the filtration section is not provided is pressed by the case and thereby deformed (fig. 1).
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPS6428918 in view of Malgorn et al. US 2018/0369733 as applied to claim 6 above, and further in view of JP 55-133257.
Claim 7, JP ‘918 in view of Malgorn further teaches the case includes a tubular portion into which the filter element is inserted and an axis of the filtration section and an axis of the tubular portion coincide (fig. 1). JP ‘918 does not teach a rectifying member.
JP ‘257 teaches a strainer with a filter element within a case, where the case includes a tubular portion into which the filter element is inserted, an axis of the filtration section and an axis of the tubular portion coincide, the filtration section includes a rectifying member (5) that closes a hollow portion of the filtration section and the is provided at a center in a longitudinal direction of the filtration section (fig. 1). The use of a rectifying member is a common technique in the art as demonstrated by JP ‘918 and would have been well within the normal capabilities of one of ordinary skill in the art. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record to Malgorn teaches the filter element of claim 2 where the filtration section comprises filter media, which is interpreted as being a net, and there is a distance between a bottom surface of the groove and the reinforcing plate (par 28). Malgorn does not teach the distance between a bottom surface of the groove and the reinforcing plate is larger than a pitch of the net nor would it have been obvious to modify the prior art to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
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