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 .
Claim Rejections - 35 USC § 102 or § 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 (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.
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.
Claims 1 – 12 and 17 – 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Borla (US 5,198,625).
With respect to claim 1, Borla teaches a muffler (Fig.1) comprising a shell (Fig.1, Item 10) defining a shell cavity, the shell having a shell longitudinal axis, a shell first end, and a shell second end opposite and spaced apart along the shell longitudinal axis from the shell first end (Fig.1, Item 10), wherein the shell first end and the shell second end each define a shell opening extending to the shell cavity; and a tube assembly (Fig.1, Item 24) disposed within the shell cavity, the tube assembly including three or more nested tubes (Figs.1 and 4, Items 21, 23, 25, 27, 29 and 31), each of the three or more nested tubes having a tube longitudinal axis parallel to the shell longitudinal axis (Fig.3), a tube first end, and a tube second end opposite and spaced apart along the tube longitudinal axis from the tube first end (Fig.3), wherein each of the three or more nested tubes defines a plurality of perforations (Figs.1 and 3, Items 28), wherein the three or more nested tubes are circularly arranged around the shell longitudinal axis (Fig.4) such that portions of sides of the three or more nested tubes form an open portion (Fig.4, Item 33) extending along the shell longitudinal axis, the open portion located at a center of the tube assembly.
Or in the alternative, Borla fails to particularly disclose wherein the open portion located at a center of the tube assembly.
The Examiner considers that it would have been an obvious matter of design choice to eliminate the Borla central tube in order to provide an open portion located at a center of the tube assembly because it would tune the muffler to attenuate sound at a predetermined frequency range while providing a desired airflow profile as necessitated by the specific requirements of the particular application without departing from the scope and spirit of the Borla invention. Furthermore, it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karison, 136.USPQ 184.
With respect to claim 2, Borla teaches wherein the tube assembly further includes a first collar (Fig.1, Item 20) and a second collar (Fig.1, Item 22) each defining a collar longitudinal axis, a collar first end, and a collar second end opposite and spaced apart along the collar longitudinal axis from the collar first end, wherein the collar first end defines a collar opening extending to the collar second end, wherein the tube first end of each of the three or more nested tubes are disposed within the collar second end of the first collar, and the tube second end of each of the three or more nested tubes are disposed within the collar second end of the second collar (Figs.1 and 3, Items 20 and 22).
With respect to claim 3, Borla teaches wherein the collar opening of the collar first end has a first cross-sectional area as viewed in a plane perpendicular to the collar longitudinal axis, and the collar opening of the collar second end has a second cross-sectional area as viewed in a plane perpendicular to the collar longitudinal axis, wherein the second cross-sectional area is greater than the first cross-sectional area (Figs.1 and 3, Items 20 and 22).
With respect to claim 4, Borla teaches wherein the collar first end has a cylindrical shape (Fig.3, Item 37).
With respect to claim 5, Borla teaches wherein the collar opening of the collar second end of the first collar and the second collar defines three or more lobes (Fig.5, Item 22) having an arcuate cross-section as viewed in a place perpendicular to the collar longitudinal axis, wherein each of the three or more nested tubes is disposed within a different one of the three or more lobes (Fig.3, Item 22).
With respect to claim 6, Borla teaches wherein the three or more lobes each have a radius of curvature corresponding to a radius of curvature of one of the three or more nested tubes (Figs.4 and 5).
With respect to claim 7, Borla teaches further including a first end cap (Fig.1, Item 12) and a second end cap (Fig.1, Item 14), wherein each of the first end cap and the second end cap defines an end cap opening, wherein the first end cap is disposed within the shell opening of the shell first end, and the second end cap is disposed within the shell opening of the shell second end (Figs.1 and 3).
With respect to claim 8, Borla teaches wherein the collar first end (Fig.3, Item 35) of the first collar is disposed within the end cap (Fig.3, Item 12) opening of the first end cap, and the first collar end (Fig.3, Item 41) of the second collar is disposed within the end cap opening of the second end cap (Fig.3, Item 14).
With respect to claim 9, Borla teaches wherein the end cap opening defines a flange extending axially relative to the shell longitudinal axis (Fig.3).
With respect to claim 10, Borla teaches wherein the flange of the end cap opening is configured to be couplable to one of an inlet duct or an outlet duct of an exhaust system (Fig.3, Items 16 and 18).
With respect to claims 11 and 12, Borla teaches wherein the three or more nested tubes comprises five or more nested tubes; and wherein the five or more nested tubes comprises six or more nested tubes (Fig.4. Items 21, 23, 25, 27, 29 and 31).
With respect to claims 17 – 20, Borla teaches, further comprising a sound attenuating material (Figs.1 and 3, Item 26) disposed within the shell cavity between the three or more nested tubes (Figs.1 and 3, Item 24) and the shell (Figs.1 and 3, Item 10), wherein the sound attenuating material comprises steel wool, fiberglass or ceramic fiber (Col.3, Lines 59 – 60).
Claims 13 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Borla (US 5,198,625).
With respect to claims 13 – 15, Borla teaches the limitations already discussed in a previous rejection, but fails to particularly disclose wherein each of the three or more nested tubes has an outer surface, wherein the plurality of perforations are located on a portion of the outer surface covering 5% to 80% of each of the three or more nested tubes; wherein the portion of the outer surface covers 20% to 40% of each of the three or more nested tubes; or wherein each of the three or more nested tubes has an outer surface, wherein the plurality of perforations are located substantially completely around of each of the three or more nested tubes.
The Examiner considers that it would have been an obvious matter of design choice to provide the nested tubes with a predetermined number/amount/percentage of perforations because it would help control the fluid-flow through the tubes into the sound attenuating material, in this manner tuning the muffler to provide a desired acoustic and fluid-flow performance as necessitated by the specific requirements of the particular application. Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
With respect to claim 16, The Examiner takes official notice that it is well-known in the art to provide the shell having an oval cross-sectional shape as viewed in a plane perpendicular to the shell longitudinal axis because it could provide a compact/space-saving and/or aerodynamic configuration without departing from the scope and spirit of the Borla invention.
Response to Arguments
Applicant's arguments filed on 10/28/2025 have been fully considered but they are not persuasive. The Examine still considers that the patent to Borla teaches the limitations described in the claims as discussed above.
The Examiner considers that any person with ordinary skill in the art would recognize that the Borla central tube creates an “open portion located at a center of the tube assembly” since, by definition, a tube is a hollow/open element that will permit the free flow of gases through it.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGARDO SAN MARTIN whose telephone number is (571)272-2074. The examiner can normally be reached on 9:00 - 5:00 M - F.
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, Shawki S. Ismail can be reached on 571-272-39853985. 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.
/Edgardo San Martin/
Edgardo San Martín
Primary Examiner
Art Unit 2837
January 16, 2026