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 .
Status
Claims(s) 1-20, is/are filed on 12/27/2023 are currently pending. Claim(s) 9-14 is/are withdrawn, 1-8, 15-20 is/are rejected.
Restriction/Election
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, 15-20, drawn to an oil filter system, classified in B01D 46/0004.
II. Claims 9-14, drawn to a method of using a filter system, classified in B01D 46/68.
The inventions are independent or distinct, each from the other because:
Inventions 2 and 1 are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process such as without applying pressurized air to an air inlet.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search7and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions required a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Thomas Cleary on 2/18/2026 a provisional election was made without traverse to prosecute the invention of Group I claims 1-8, 15-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
[AltContent: textbox (First recessed portion of second side)][AltContent: textbox (First recessed portion of second side)]In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 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 pre-AIA 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-8, 15-19 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Schade (US 4700670 A).
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Regarding claim 1, Schade teaches from at least fig. 5 a system comprising: a cylindrical plate (11) having a first side (top side) and a second side (bottom side), the cylindrical plate including: a first through-hole (top through hole of 11’); a recessed portion (recessed portion of 11 where seal 13 is seated) within a perimeter of the first side and seal (13) configured to rest inside the recessed portion; and a side-hole (33) extending from an outer wall (23) of the cylindrical plate to a filtered oil passage of the cylindrical plate; and a removable inner portion (25) configured to couple with the cylindrical plate via the first through-hole, the removable inner portion including a second through-hole (through hole formed by 37) and a threaded portion (threads 37) of an inner wall of the removable inner portion (C1/50-C4/40).
Regarding claim 2, Schade teaches wherein the second side of the cylindrical plate includes a first recessed portion (see recessed portion above) configured to receive the removable inner portion and a second recessed portion below a rim (42) of the cylindrical plate such that when the removable inner portion and the cylindrical plate are coupled together, a surface of the removable inner portion and a surface of the second recessed portion of the cylindrical plate are substantially flush (intended use).
Regarding claim 3, Schade teaches wherein the side-hole includes a threaded portion (see inner threads of 33) located on an inner wall of the side-hole, the threaded portion of the side-hole being configured to couple with an air inlet valve (intended use).
Regarding claim 4, Schade teaches wherein the removable inner portion includes a first hole (top hole) and a second hole located on opposite sides of the second through-hole (bottom hole).
Regarding claim 5, Schade teaches wherein the threaded portion of the inner wall of the removable inner portion is configured to be coupled to a threaded portion of an engine block (intended use).
Regarding claim 6, Schade teaches wherein the removable inner portion is configured to thread onto an engine block such that the cylindrical plate to seals against the engine block via a force applied to the cylindrical plate at the first recessed portion from the removable inner portion (intended use).
Regarding claim 7, Schade teaches wherein the side-hole of the cylindrical plate is configured to receive air and to pass the air, via the filtered oil passage, to force oil out of an oil filter when the cylindrical plate is coupled to an engine.
Regarding claim 8, Schade teaches wherein the cylindrical plate is configured to be interposed between an engine block and an oil filter (intended use).
Regarding claim 15, a system comprising: a cylindrical plate (11) having a first side (top side) and a second side (bottom side), the cylindrical plate including: a first through-hole (top through hole of 11’); a recessed portion (recessed portion of 11 where seal 13 is seated) within a perimeter of the first side; and a side-hole (33) extending from an outer wall (23) of the cylindrical plate to a filtered oil passage of the cylindrical plate; and a removable inner portion (25) including a second through-hole (through hole formed by 37) and a threaded portion (threads 37) of an inner wall of the removable inner portion (C1/50-C4/40).
Regarding claim 16, Schade teaches wherein the second side of the cylindrical plate includes a first recessed portion (see recessed portion above) configured to receive the removable inner portion and a second recessed portion below a rim (42) of the cylindrical plate such that when the removable inner portion and the cylindrical plate are coupled together, a surface of the removable inner portion and a surface of the second recessed portion of the cylindrical plate are substantially flush (intended use).
Regarding claim 17, Schade teaches wherein the side-hole includes a threaded portion (see inner threads of 33) located on an inner wall of the side-hole, the threaded portion of the side-hole being configured to couple with an air inlet valve (intended use).
Regarding claim 18, Schade teaches wherein the threaded portion of the side-hole is configured to couple with an air inlet valve (intended use).
Regarding claim 19, Schade teaches wherein the removable inner portion includes a first hole (top hole) and a second hole located on opposite sides of the second through-hole (bottom hole) (C1/50-C4/40).
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schade (US 4700670 A).
Regarding claim 20, Schade does not teaches wherein the cylindrical plate has thickness between 0.3 inches and 0.4 inches. It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected to appropriate shape that provides best function in terms of design and function. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (C1/50-C4/40).
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It is noted that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Waqaas Ali whose telephone number is (571) 270-0235. The examiner can normally be reached on M-F 9-5 PM.
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, Claire Wang can be reached on 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WAQAAS ALI/Primary Examiner, Art Unit 1777