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 .
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.
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Claims 1-5, 7-17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,207,211 in view of Dishman US 2018/0214804 and Baird et al. US 2015/0307365.
Claim 1, ‘211, claim 1 recites, a filter cartridge assembly comprising: a housing having a body extending in an axial direction and a top portion for forming a fluid tight seal with the body, the housing top portion will inherently have an axial center and further includes an ingress and egress port and an elongated protrusion or rail having longitudinal sides and lateral sides, the lateral sides shorter than and perpendicular to the longitudinal sides, the elongated protrusion or rail extending in the axial direction upwards from the housing top portion, the elongated protrusion or rail extending radially outwards approximately from the axial center of the housing top portion, the elongated protrusion or rail having a T-shape with a rectangular base segment having a length and width, and a top portion with a flat top surface and straight side faces exposed along the longitudinal sides of the elongated protrusion of rail, the flat top surface parallel to the housing top portion, the straight side faces perpendicular to the housing top portion, the flat top surface and straight side faces extending beyond the rectangular base segment width in a direction parallel to the lateral sides for fixably receiving a connector piece or key that is designed to interface with a complementary mating filter base. ‘211 does not recite the housing being substantially cylindrical, the ingress and egress ports extending from a non-diameter chord line of the housing top portion, the recited shape of the ingress and egress ports, the ports having an aperture exposed in a direction of a minor segment formed by the non-diameter chord line or the elongated rail extending away from the minor segment for a predetermined distance greater than a distance it extends within the minor segment.
Providing a cylindrical body is a very common feature in the art as demonstrated by Dishman as well as providing ingress and egress ports that extend from the housing top portion as also demonstrated by Dishman where the ingress ports each having a top, middle and bottom segment adjacent to the housing top and in fluid communication with the cylindrical body and seal located at the junctions between the upper and middle segments and the lower and middle segments (fig. 1-10).
The recitation of the ports extending from a non-diameter chord line of the housing top portion is a recitation of shifting the positions of the ports and does not provide a patentable distinction. Shifting the position of an element is unpatentable if shifting the position of the element would not modify the operation of the device, In re Japikse, 86 USPQ 70 (1950). There is nothing to indicate that shifting the position of the ports provides any particular benefit or unexpected result. Dishman further teaches the ingress and egress ports middle sections have an aperture for fluid flow and that the aperture is exposed in a direction. Providing the aperture to be exposed in a particular direction is a design choice and amounts to a rearrangement of the parts taught by the prior art. Shifting the position of an element is unpatentable if shifting the position of the element would not modify the operation of the device, In re Japikse, 86 USPQ 70 (1950). There is nothing to indicate that having the apertures open in a certain direction provides any particular benefit or unexpected result.
Baird teaches a filter cartridge comprising a housing having a body and a housing top portion (56) including an ingress and egress port (58, 60), the egress port comprising a body with a top segment (above 62b), a middle segment (66) and a bottom segment (below 64b) adjacent to the housing top portion and in fluid communication with the body, the top segment having at least one seal (62b) at the junction with the middle segment, and a seal (64b) at the junction with the middle segment, each of the seals having an outer surface first diameter and the middle segment having an outer surface with a second diametric extension less than the seal first diameter (fig. 1-2). It would have been obvious to one of ordinary skill in the art to use the smaller diameter of the middle segment as the channel formed provides for an equalization of pressure between the seals (62b, 64b) which helps the seals better seal and helps reduce weeping of moisture past the seals (par 84-89).
‘211 recites the elongated rail will extend in a direction away from a minor segment for some distance. The recitation of that distance being greater than a distance the elongated rail extends within the minor segment is a recitation of the relative dimensions of the apparatus. [W]here 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 is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 220 USPQ 777 (1984). The relative distance the rail extends over any portion of the housing top portion would not perform any different as the rail merely provides for the connection of a key to the cartridge and the relative size of the rail will not affect the connection of the key to the cartridge.
Claim 15 recites the same limitations as claim 1 but positively recites a filter key fixably attached to the elongated protrusion or rail which is recited in claim 8 of ‘211. ‘211 does not recite the structure of the filter key. Dishman teaches a filter key comprising an extended finger including on one side a contacting portion comprising a camming surface (the underside of the filter (420) forming a first angle in a first direction with respect to a longitudinal axis of the housing body and an adjacent side forming a second angle in the first direction with respect to the housing body longitudinal axis, such that the first and second angles are not equal, the ingress port middle segment aperture and egress port middle segment aperture are exposed in a second direction opposite the first direction (fig. 1-10). It would have been obvious to one of ordinary skill in the art to use the filter key structure of Dishman because it allows for connection to a suitable filter base to provide secure engagement and avoid unwanted uncoupling (abstract).
The limitations of claims 2-5, 7-9, 14 and 16 are recited in claims 2-8 or ‘211.
Claims 10 and 17, the recitation of the middle segments being in a hourglass shape is a recitation of the relative shape of the segment. 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).
Claims 12-13 and 19-20, Dishman further teaches the ingress and egress ports include a cavity on its body, the cavity located in the middle segment and the top and bottom segments are substantially cylindrical (fig. 1-6).
Regarding claim 11, the direction the cavities are exposed in relation the contacting portion of the connector piece or filter key does not further limit the claim as the connector piece and filter key is not positively recited as part of the claimed invention.
Response to Arguments
Applicant's arguments filed 3/30/26 have been fully considered but they are not persuasive.
Applicant argues that Dishman teaches away from the present invention because Dishman teaches the ingress and egress ports exposed in the opposite direction to that of the present invention, which are oriented to direct fluid flow away form electronic components on the top portion of the filter cartridge upon removal of the cartridge from a mating filter base. Applicant’s arguments are not commensurate in scope to the claimed invention as the claims do not recite electronic components on the top portion of the filter cartridge.
Applicant argues the directionality of the ports with respect to the filter camming surfaces likewise allows drainage of water away from the electronic circuitry. Regarding claim 11, the filter key is not positively recited as part of the claimed invention and therefore how the ports are oriented with respect to the key does not provide any further structural limitations to the apparatus. Additionally, applicant’s arguments are not commensurate in scope to the claimed invention as the claims do not recite electronic components on the top portion of the filter cartridge.
Applicant argues that shifting the position of the ports to a non-diameter chord line modifies the operation of the device as the filter cartridge would not otherwise mate with its designed filter base and there would be no forward room for a printed circuit board housing. Shifting the position of the ports would allow for the cartridge to mate with another filter base and thus would not modify the operation of the device. Applicant’s arguments are not commensurate in scope to the claimed invention as the claims do not recite a printed circuit board housing.
Applicant argues that the recitation of a “camming” surface is more than a recitation of intended use. While the structure of the camming surface being exposed in a particular direction and forming the recited angles are structural limitations. However, the recitation of the surface being a “camming” surface does not impart any particular structural limitation to the surface and is only a recitation of the intended use of the surface.
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 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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