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 .
StatusClaims(s) 1-8, 15-26, is/are filed on 6/8/2026 are currently pending. Claim(s) 1-8, 15-26 is/are rejected.
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) 1-8, 15-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schade (US 4700670 A) in view of Thompson (US 5522475 A).
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Regarding claim 1, Schade teaches (see at least FIGS. 4–6) a system comprising: a cylindrical plate (11/11') having a first side (top side) and a second side (bottom side), the cylindrical plate including: a first through-hole (central through-opening of 11'); a recessed portion (annular groove 12 where the seal is seated) within a perimeter of the first side and a seal (13) configured to rest inside the recessed portion; a side-hole (33) extending from an outer wall (peripheral face 23) of the cylindrical plate to a filtered oil passage of the cylindrical plate; and a removable inner portion (bushing 25/25') configured to couple with the cylindrical plate via the first through-hole, the removable inner portion including a second through-hole (bore formed by threads 37) and a threaded portion (threads 37) of an inner wall of the removable inner portion (C1/50–C4/40).
Schade discloses a threaded side-hole (inner threads 20'/21') for receiving connection fittings, but does not teach a valve coupled to the side-hole. Thompson teaches, in the analogous field of engine/compressor lubricating-oil servicing, a Schrader valve coupled to a threaded port of an oil-service body and used "for removal and introduction of oil" and for pressure connection (the Schrader valve and its cap being threaded to the body, and the body being threaded, via threads 19, into the engine/compressor oil port).
It would have been obvious to one of ordinary skill in the art before the effective filing date to couple a valve, as taught by Thompson, to the threaded side-hole of Schade to provide a valved service port through which pressurized (shop) air could be introduced and/or oil could be removed via the plate passage and thereby evacuating residual oil for a cleaner, spill-free filter service — this being the use of a known valve for its established purpose to obtain a predictable result. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Regarding claim 2, Schade teaches wherein the second side includes a first recessed portion (seating of bushing shoulder 27/chamfer 43) configured to receive the removable inner portion and a second recessed portion below a rim (chamfer/rim 42) such that a surface of the removable inner portion and a surface of the second recessed portion are substantially flush (intended use).
Regarding claim 3, Schade teaches wherein the side-hole includes a threaded portion (inner threads 20'/21' of 33) located on an inner wall of the side-hole, the threaded portion being configured to couple with an air inlet valve; Thompson teaches an air-type (Schrader) valve threaded to such a port, as applied above.
Regarding claim 4, Schade teaches wherein the removable inner portion includes a first hole and a second hole located on opposite sides of the second through-hole (wall openings 32/32', 45).
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 (threads 37, identical to an engine spin-on-filter nipple; 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 seals against the engine block via a force applied to the cylindrical plate at the first recessed portion from the removable inner portion (bushing wrenched onto the engine nipple, seal 13 sealably compressed thereby; intended use).
Regarding claim 7, Schade teaches a side-hole (33) communicating the filtered oil passage to external environs through peripheral face 23; and the combination with Thompson teaches that the side-hole is configured to receive air and to pass the air, via the filtered oil passage, to force oil out of an oil filter, for the mess-free servicing purpose set forth above.
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, Schade teaches a system comprising: a cylindrical plate (11/11') having a first and second side, including a first through-hole (central through-opening of 11'); a recessed portion (annular groove 12) within a perimeter of the first side; a side-hole (33) extending from an outer wall (23) to a filtered oil passage; and a removable inner portion (25/25') including a second through-hole (bore formed by threads 37) and a threaded portion (threads 37) of an inner wall (C1/50–C4/40). Schade does not teach a valve coupled to the side-hole; Thompson supplies the valve coupled to a threaded oil-service port, and the combination is made for the reasons stated for claim 1.
Regarding claim 16, Schade teaches the first and second recessed portions and substantially flush relationship as set forth for claim 2 (bushing seating; rim/chamfer 42; intended use).
Regarding claim 17, Schade teaches the threaded portion (inner threads 20'/21' of 33) configured to couple with an air inlet valve; Thompson supplies the air-type valve.
Regarding claim 18, Schade in view of Thompson teaches wherein the threaded portion of the side-hole is configured to couple with an air inlet valve, as applied above.
Regarding claim 19, Schade teaches wherein the removable inner portion includes a first hole and a second hole located on opposite sides of the second through-hole (wall openings 32/32', 45).
Regarding claim 20, the combination of Schade and Thompson teaches the claimed system but does not teach wherein the cylindrical plate has a 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 an appropriate thickness that provides the 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).
Regarding claim 21, Schade teaches the cylindrical plate (11/11'), first through-hole, side-hole (33) extending from outer wall (23) to a passage, and removable inner portion (25/25') with a second through-hole (bore of 37) and threaded inner wall (threads 37). Schade does not teach a Schrader valve coupled to the side-hole. Thompson teaches a Schrader valve threaded to a port of an engine/compressor oil-service body for introducing/removing oil and reading pressure. It would have been obvious to couple such a Schrader valve to Schade's threaded side-hole, for the reasons and with the motivation stated for claim 1.
Regarding claim 22, Schade teaches wherein the first side includes a recessed portion (annular groove 12) configured to receive a seal (13).
Regarding claim 23, Schade teaches the first recessed portion configured to receive the removable inner portion (bushing seating / chamfer 43) and a second recessed portion below a rim (42) with the substantially flush relationship (intended use).
Regarding claim 24, Schade teaches the side-hole including a threaded portion (inner threads 20'/21' of 33) on an inner wall; Thompson teaches the Schrader valve received in such a threaded port, so the combination teaches the threaded portion configured to receive the Schrader valve.
Regarding claim 25, Schade teaches wherein the removable inner portion includes a first hole and a second hole located on opposite sides of the second through-hole (wall openings 32/32', 45).
Regarding claim 26, Schade teaches wherein the cylindrical plate is configured to rotate relative to the removable inner portion to position the side-hole — "the adapter plate being rotatable around bushing 25… to position the plate" for making the side connections (Schade col. 3; Schade claim 5: "said plate is rotatable about said bushing").
Claim(s) 1-8, 15, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cochran (US 4700670 A) in view of Gilles (US 5522475 A).
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Regarding claim 1, Cochran discloses a system comprising a cylindrical plate (body 36) having a first and second side, the plate including a first through-hole (central opening 38); a recessed portion within a perimeter of the first side (annular groove 84) with a seal configured to rest therein (sealing ring 86; Cochran: the groove "receives a sealing ring 86"); and a side-hole (first radial conduit 46) extending from an outer wall of the plate to a passage of the plate (annular chamber 76/axial passage 68; Cochran: conduit 46 "extends between the middle section 42… and the outer cylindrical wall"). Cochran further discloses a removable inner portion (insert 60) configured to couple with the plate via the first through-hole, the removable inner portion including a second through-hole (axial passage 68) and a threaded portion of an inner wall (internally threaded cylinder 62) (C3/5-65).
Cochran does not expressly disclose a valve coupled to the side-hole. Gilles discloses an oil-filter adaptor having a valve (drain valve 17) operable to evacuate oil retained in the filter (Gilles: oil "is evacuated through the third channel 35 and back into the crankcase," leaving the filter "adequately drained of oil").
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a valve, as taught by Gilles, at the threaded radial port of Cochran, in order to controllably evacuate residual oil from the filter before removal and thereby achieve a cleaner, spill-free filter change. The combination is the use of a known valve for its known oil-evacuation function to yield a predictable result (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
Claim 8 (interposed between engine block and oil filter): Cochran discloses the adapter "mounted between the oil filter mounting block 12 and the… filter 16."
Claim 5 (threaded inner wall coupled to a threaded portion of an engine block): Cochran discloses the insert's axial passage 68 "threaded to mount directly on the stud 24" of the engine mounting block (Cochran, claim 3).
Claim 6 (inner portion threads onto the engine block such that the plate seals against the block via force at the recess): Cochran discloses that the insert 60 secures "the mounting block, the filter and the adapter tightly together," and that sealing ring 86 prevents leakage between the adapter and the mounting block; the resulting clamp-up compresses the face seal.
Claim 7 (side-hole receives air and passes it, via the passage, to force oil out of the filter): Cochran's radial conduit 46 opens into the oil passage, and Gilles teaches valve-based evacuation of oil from the filter. It would have been obvious to admit compressed air through the ported valve to expel oil from the filter, for the same mess-free-service purpose taught by Gilles.
Claims 3, 17, and 18 (threaded side-hole configured to couple with an air inlet valve): Cochran discloses that radial conduits 46, 52 "are threaded for convenient connection"; the valve is supplied by Gilles.
Claims 4 and 19 (removable inner portion has first and second holes on opposite sides of the second through-hole): Cochran discloses "a plurality of ports 74… formed through the cylindrical wall 62" surrounding axial passage 68.
Claim 15 is rejected on the same basis as claim 1, Cochran disclosing the cylindrical plate (36), first through-hole (38), recessed portion (84), side-hole to a passage (46 to 76), and removable inner portion (60) with second through-hole (68) and threaded inner wall (62), and Gilles supplying the recited valve).
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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.
Response to Arguments
Applicant' s arguments with respect to the claims have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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 extension fee 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 Waqaas Ali whose telephone number is (571) 270-0235. The examiner can normally be reached on M-F 9-5 PM.
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/WAQAAS ALI/Primary Examiner, Art Unit 1777
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