DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of group II, claims 32-37 in the reply filed on 12/21/25 is acknowledged.
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 37, 41, 45 and 47 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 37 recites the limitation of the system being packaged. It is unclear what structural limitation is being recited that would further limit the structure of the recited system by having the system packaged.
Regarding claim 41, the phrase "optionally" 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 45 recites the limitation "the two or more support plates". There is insufficient antecedent basis for this limitation in the claim. For examination purposes claim 45 is assumed to depend from claim 44 and to recite, “the two or more center support plates”.
Claim 47 recites the limitation "the support plates". There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, “the one or more support plates”.
Double Patenting
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 32-37 and 39-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 9,314,561. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 32 and 33, the claims of the ‘561 patent recite the following limitations: Claim 1 recites a filter apparatus comprising two or more filter cartridges each having a first end with a screen and a second end with an outlet and a screen and walls configured to contain a filter media, a housing comprising an upper plate and a lower plate configured for holding the two or more filter cartridges in about the same orientation/parallel, the upper and lower plates comprise openings for rotatably engaging the two or more filter cartridges and an attachment clamp. Claim 2 recites one or more support elements connecting the upper and lower plates, claim 3 recites the attachment clamp is connected to one or more of the support elements and claim 4 recites the support elements comprise a combination of rods and support plates. The limitations not expressly recited in the ‘561 patent are the walls contain the filter media and a knob. The ‘561 patent recites the walls are configured to contain filter media and therefore, actually providing the filter media would have been obvious to provide for a functional system. Claim 5 recites the attachment clamp is a pole clamp. One of ordinary skill in the art would readily recognize that pole clamps commonly have a knob that allows for the clamp to be tightened onto a pole and therefore the recitation of a knob would have been obvious to one of ordinary skill in the art.
The limitations of claims 34-36, 39-40 and 48-49 are recited in claims 7-13, 15 and 17 of the ‘561 patent.
Claim 37, the ‘561 patent does not recite the system being packaged, labeled and sterilized. The system of the ‘561 is assembled and therefore is assumed to be “packaged”. The recitation of the system being labeled is a recitation of printed matter that is not functionally related to the product. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004). One of ordinary skill in the art would also readily recognize that the system of the ‘561 patent would commonly be used for filtering blood and therefore would require sterilization before use.
Claim 42, the ‘561 patent recites the subassembly is configured for mounting the filter apparatus to a support structure (claim 5 recites the clamp being a pole clamp). As stated above, the use of knob to secure the clamp is a well-known technique in the art and would have been obvious to one of ordinary skill in the art.
Claims 43 and 44, the ‘561 patent recites multiple support plate (claim 4) but does not recite a center support plate or multiple center support plates. The recitation of the support plates being center support plates is a recitation of the relative position of the support plates. The configuration of the apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant, In re Dailey, 149 USPQ 47 (1966).
Claim 45, providing a rotatable clamp mounted on a support plate is well known in the art and would have been well within the normal capabilities of one of ordinary skill in the art. One of ordinary skill in the art would readily recognize that the clamp would need to be attached to some portion of the apparatus in order to mount the apparatus for use. The ‘561 patent also recites the clamp is connected to one or more of the support elements (claim 3).
Claims 41 and 46, the ‘561 patent recites the clamp being connected to one or more of the support elements but does not teach the clamp being rotatably mounted by a pin extending through the clamp. The use of a rotatable clamp on a pin and the use of stop pins to limit rotation of an element is a well-known technique in the art and would have been well within the normal capabilities of one of ordinary skill in the art.
Claim 47, the ‘561 patent recites the one or more support plates connect the upper and lower plates but does not recite how the support plates are attached to the upper and lower plates. Screws are a common type of connector and would have been well within the normal capabilities of one of ordinary skill in the art.
Claim 50, the ‘561 patent recites the one or more support elements connecting the upper plate to the lower plate comprise rods extending between and connected to the upper and lower plates but does not recite how the support plates are attached to the upper and lower plates. Screws are a common type of connector and would have been well within the normal capabilities of one of ordinary skill in the art. The ‘561 patent also recites the filter cartridges are located between the upper and lower plates. The ‘561 patent does not recite the precise locations of the cartridges, support plates or rods. The recited locations of the element is a recitation of the relative configuration of the apparatus. The configuration of the apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant, In re Dailey, 149 USPQ 47 (1966).
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