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 § 112(b)
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 16–35 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 16 recites:
16. A base for an air filter for an internal combustion engine, the base comprising:
a filter medium, a cap, a base and a seal,
wherein the base comprises a bottom surface and an upper surface, wherein the bottom surface is configured to be in communication with an air intake system;
wherein the seal is for establishing an airtight connection between the bottom surface and the air intake system;
wherein the upper surface is for coupling with the filter medium and the cap wherein the surface is a ridgeless surface configured to establish the airtight connection and wherein the flat, ridgeless surface spans from an interior opening of the base to an exterior edge of the base and is configured to form an airtight connection with the flat surface of the air intake system;
wherein said seal is provided to establish an impermeable barrier between the bottom surface and the upper surface wherein the seal extends from an interior opening of the base to an exterior edge of the base; and
wherein the interior opening is configured to allow passage of an airstream from an interior of the filter medium. Emphasis added.
Claim 16 is indefinite because it uses the term “base” to describe two different elements of the claimed device, as the term “base” is used to describe the entire apparatus (“A base”) and a subcomponent of the apparatus (“a filter medium, a cap, a base, and a seal”). Therefore, it is unclear whether “the base” (used throughout the claim) refers to the entire apparatus (“A base”) or the subcomponent (“a base”).
Claim 16 is also indefinite because “the surface” lacks antecedent basis, and it is unclear if “the surface” refers to the “bottom surface” or the “upper surface” initially introduced in the claim.
Claim 16 is further indefinite because “the flat, ridgeless surface” and “the flat surface of the air intake system” lack antecedent basis.
Claim 16 is also indefinite because it is unclear what is meant by “an impermeable barrier” as it is unclear what elements (e.g., gas, liquid, subatomic particles) are prevented from permeating the “barrier.”
Claims 17–35 are indefinite because they depend from claim 16.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16–35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 recites:
16. A base for an air filter for an internal combustion engine, the base comprising:
a filter medium, a cap, a base and a seal,
wherein the base comprises a bottom surface and an upper surface, wherein the bottom surface is configured to be in communication with an air intake system;
wherein the seal is for establishing an airtight connection between the bottom surface and the air intake system;
wherein the upper surface is for coupling with the filter medium and the cap wherein the surface is a ridgeless surface configured to establish the airtight connection and wherein the flat, ridgeless surface spans from an interior opening of the base to an exterior edge of the base and is configured to form an airtight connection with the flat surface of the air intake system;
wherein said seal is provided to establish an impermeable barrier between the bottom surface and the upper surface wherein the seal extends from an interior opening of the base to an exterior edge of the base; and
wherein the interior opening is configured to allow passage of an airstream from an interior of the filter medium. Emphasis added.
The Applicant has not pointed out where “the surface is a ridgeless surface” is supported, and there does not appear to be a written description of this limitation in the application as filed. Note that “the surface” is interpreted to describe the “upper surface” of the “base” (the subcomponent, instead of the entire apparatus) because “the surface” is introduced in the same clause describing the “upper surface.” The specification fails to use the term “ridgeless” and therefore the limitation is not supported by the text of the disclosure. Also, the drawings do not provide a clear illustration of the entire upper surface of the base 108, and appear to show the upper surface of the base 108 comprising ridges where the upper surface of the base 108 connects to the filter medium 104. See Figs. 1 and 3 of instant application.
The Applicant has also failed to point out where the limitation of “the seal extends from an interior opening of the base to an exterior edge of the base” is supported, and there does not appear to be a written description of this limitation in the application as filed. See MPEP 2163.04, subsection I. It is noted that the fundamental factual inquiry for written description is whether the specification conveys with reasonable clarity to those skilled in the art that the applicant was in passion of the claimed invention as of the effective filing date. See MPEP 2163, subsection I, A. Newly added limitations must be supported in the specification through express, implicit or inherent disclosure. See MPEP 2163, subsection I, B. Here, the text of the specification does not expressly teach that the seal extends from an interior opening of the base to the exterior edge of the base, as claimed. Also, the disclosure does not provide implicit or inherent disclosure of this feature. Instead, Figs. 2 and 4 of the disclosure illustrate that the seal 132 extends from an exterior edge of the base to a boundary, with another structure extending from the boundary to interior opening 136. It is unclear whether this structure extending from the boundary to interior opening 136 is part of the seal 132, because there is a clear boundary line between the structure and the seal 132, with the elements having different shading, and with the structure being unlabeled.
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Claims 17–35 lack written description because they depend from claim 16.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 16–22, 26 and 32–35 are rejected under 35 U.S.C. 103 as being unpatentable over Bergami, US 2003/0029144 A1 in view of Borla, US 2003/0089233 A1.
Regarding claim 16, Bergami teaches a filter 10, which reads on the claimed “base for an air filter for an internal combustion engine.” See Bergami Fig. 1, [0023].
The filter 10 comprises a first filtering element 1 (the “filter medium,”), an annular element 1 and second filtering element 3 (collectively the “cap”) and a gasket 14 (the “seal”).
The filter 10 (the “base”) comprises a “bottom surface,” which is the surface at the bottom of the filter 10, as seen in Fig. 2. The filter 10 also comprises an “upper surface,” which is the surface at the top of the filter 10, as seen in Fig. 2. The bottom surface is configured to be in communication with an air intake system, as claimed, because the bottom surface contacts expansion box 110 to supply air to an internal combustion engine. See Bergami Fig. 1, [0036].
The gasket 14 is for establishing an airtight connection between the bottom surface and the expansion box 110, as claimed, because the gasket 14 creates a pneumatic seal between the filter 10 and the expansion box 110. See Bergami Fig. 1, [0035].
The upper surface is for coupling with the first filtering element 2 and the gap, as claimed, because upper annular element 1 at the top of the filter 10 is connected with the first filtering element 2. See Bergami Fig. 2, [0024].
The bottom surface is a “ridgeless surface” configured to establish the airtight connection between the filter 10 and the expansion box 110, because the bottom surface of the filter 10 is ridgeless as seen in Fig. 2 with the gasket 14 being on the bottom surface for creating the seal. The bottom surface is flat, as seen in Fig. 2. The bottom surface spas from a circular hole 5 (the “interior opening of the base”) to an “exterior edge of the base” (the outer perimeter of the bottom of the filter 10, as seen in Fig. 2). The bottom surface is configured to form an airtight connection with a flat surface of the expansion box 110, because the gasket 14 is placed on the bottom surface to engage with a flat surface of the expansion box 110 to create the seal. See Bergami Figs. 1, 2, [0035].
The gasket 14 is provided to establish an air impermeable barrier between the bottom surface and the upper surface because the gasket 14 creates a seal preventing air from circumventing the bottom of the filter 10. See Bergami [0035].
The hole 5 is configured to allow passage of an airstream from an interior of the first filtering element 2, as claimed, because air moves through the first filtering element 2 through the hole 5 and into the expansion box 110. See Bergami [0036].
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Bergami differs from claim 16 because it does not show the full structure of the gasket 14. Therefore, the reference fails to provide enough information to teach the gasket 14 extending from the circular hole 5 (the “interior opening”) to an exterior edge of the filter 10 (the “base”), as claimed.
But a purpose of the gasket 14 is to provide a pneumatic seal between the expansion box 110 and the supporting means 4. See Bergami Fig. 1, [0034]–[0035]. Also, the gasket 14 is designed so that it has no interference with fixing means 13, which are bolts that extend through the supporting means 4 to attach it to the expansion box 110. Id.
With this in mind, Borla teaches an air filtration device for an internal combustion engine comprising a mounting collar 18 and a gasket 16 that creates a seal between the mounting collar 18 and a filter element 10. The collar 18 has a circular, interior opening in the middle, and an outer edge around the periphery, as seen in Fig. 1. The mounting collar 18 is also attached to the filter 10 using fasteners 56, 58. Id. at Fig. 1, [0024]. The gasket 16 extends from the circular, interior opening of the collar 18 to the exterior edge because the gasket 16 has the same I.D. (inner diameter) and O.D. (outer diameter) of mounting flange 50 of the mounting collar 18. Id. at Fig. 1, [0024]. Also, the gasket 16 has mounting holes that the fasteners 60, 62 as inserted through when attaching the collar 18 to the filter 10. Id. at Fig. 1, [0025]. A person of ordinary skill in the art would have understood that it is beneficial for the gasket 16 to have the same inner and outer diameter of the flange 50 to seal across the entire interface between the gasket 16 and the flange 50.
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It would have been obvious for the gasket 14 of Bergami to have the same inner and outer diameter as the bottom surface of the supporting means to seal across the entire interface between the gasket 14 and the supporting means 4. It also would have been obvious for the gasket 14 of Bergami to comprise mounting holes (as taught in Borla) for the fixing means 13 to extend through to so that there is no interference between the gasket 14 and the fixing means 13.
With these modifications, the gasket 14 would extend from the central circular hole 5 to an exterior edge of the supporting means 4 because it would have the same inner and outer diameter as the bottom of the supporting means 4.
Regarding claims 17 and 18, note that the limitations of each claim describe the capabilities of the “filter medium.” The “filter medium” is not a positively recited structural feature of the claimed apparatus, because the claims are to a “base for an air filter” with the base having an upper surface “for coupling with a filter medium,” instead of a system comprising the base and the filter medium. Therefore, the limitations of claims 17 and 18 fail to impart patentability to the claims. See MPEP 2115 (A claim is only limited by positively recited elements).
But also note that Bergami teaches the limitations of claim 17 because it teaches that the first filtering element 2 is capable of being periodically cleaned by flushing away contaminants with water or a high pressure air stream, because water or compressed air could be applied to the inner or outer surface of the first filtering element 2 to clean it. See MPEP 2114(IV) (Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Bergami also teaches the limitations of claim 18 because it teaches that the first filtering element 2 is adapted to be treated with a filter oil composition that enhances air filtering properties of the first filtering element 2, as the first filtering element 2 comprises a material soaked in oil. See Bergami [0028].
Regarding claim 19, Bergami teaches that the supporting means 4 has a flange 7 incorporated into it. See Bergami Fig. 5, [0034]. The flange 7 reads on the “mounting bracket” because it has holes 6 that allow the base 4 to be attached to the expansion box. Id. at Fig. 4, [0034].
Regarding claims 20 and 21, Bergami teaches that the flange 7 (the “mounting bracket”) comprises a “plurality of protrusions” which are the protruding portions containing the holes 6, as seen in Fig. 4 (claim 20). A hole 6 is disposed in each of the plurality of protrusions, as seen in Fig. 4 (claim 21).
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Regarding claim 22, Bergami teaches that the holes 6 are disposed around a circumference of the flange 7 (the “mounting bracket”) to enable coupling of the supporting means 4 (the “base”) to the expansion box 110 of the air intake 100. See Bergami Fig. 4, [0034].
Regarding claim 26, Bergami teaches that the annular housing 9 of the supporting means 4 (the “base”) is configured to be joined to a bottom end of the first filtering element 2. See Bergami Fig. 2, [0029]–[0030].
Regarding claim 32, Bergami teaches that the gasket 14 (the “seal”) comprises a material suitable for forming an airtight connection. See Bergami [0035].
Regarding claim 33, Bergami teaches that the material of the gasket 14 is suitable for being pressed against a flat surface of the air intake system, because the gasket 14 can be made of rubber. See Bergami [0035].
Regarding claim 34, Bergami teaches that the flange 7 (the “mounting bracket”) is incorporated into the supporting means 4 (the “base”) because the flange 7 is part of the supporting means 4. See Bergami [0031]. The flange 7 is for pressing the gasket 14 against the flat surface, because the flange 7 comprises holes 6 for bolts 13 to be inserted into, with the pressure of the bolts 13 being able to press the gasket 14 against the flat surface of the air collector 110. Id. at Fig. 1, [0034].
Regarding claim 35, the flange 7 is capable of being fastened onto the air intake system by way of threaded fasteners, because the bolts 13 of Bergami could be threaded. See Bergami Fig. 1, [0034]. Note that the “threaded fasteners” of claim 13 are not positively claimed, with the language of the claim describing the functional capabilities of the “mounting bracket.” See MPEP 2114(IV) (Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function).
Claims 23–25 are rejected under 35 U.S.C. 103 as being unpatentable over Bergami, US 2003/0029144 A1 in view of Borla, US 2003/0089233 A1 and in further view of Hamada et al., US 6,871,534 B1.
Regarding claim 23, Bergami teaches that there are three holes 6 disposed uniformly around a circumference of the flange 7 (the “mounting bracket”), as seen in Figs. 3 and 4. Note that Fig. 4 of the Applicant’s disclosure illustrates the holes 124 being disposed “uniformly” around a circumference of the mounting bracket, even though the holes 124 are not equally spaced apart. See Spec. Fig. 4, [0025]. Therefore, it is reasonable to interpret the holes 6 of Bergami as disposed “uniformly” around the flange 7 even though they are not equally spaced apart, because the arrangement of the holes 6 in Bergami is very similar to the arrangement of the holes 124 in the disclosure.
Bergami in view of Borla differs from claim 23 because it is silent as to the holes 6 being threaded. But the holes 6 are configured to receive fixing means 13 such as stud bolts, to attach the flange 7 to the expansion box 110. See Bergami [0034]. The bolts 13 read on the claimed “hardware fasteners.”
With this in mind, Hamada teaches a cover 27 that is attached to a seat 23 using threaded bolts 28. See Hamada Fig. 1, col. 12, ll. 55–67. The cover 27 and the seat 23 each have threaded holes 24, 26 which receive the bolts 28. Id. The threaded holes 24, 26 are beneficial because they allow the threaded bolts to be secured in place within the holes 24, 26. It would have been obvious for the holes 6 of Bergami to be threaded so that the bolts 13 can be secured as they are used to attach the flange 7 to the expansion box 110.
Regarding claim 24, Bergami teaches that the bolts 13 (the “hardware fasteners”) are configured for attaching the supporting means 4 (the “base”) to a flat surface of the expansion box 110. See Bergami Fig. 1, [0034].
Regarding claim 25, Bergami in view of Borla and Hamada teaches that the holes 6 are configured to threadably receive the bolts 13 (the “hardware fasteners”) because it would have been obvious for the holes 6 to be threaded in view of Hamada, as explained in the rejection of claim 23 above. The bolted connection between the supporting means 4 and the expansion box 110 is airtight, because the gasket 14 is positioned between the flange 7 and the box 110 to guarantee and pneumatic seal. See Bergami [0035].
Claims 27–31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bergami, US 2003/0029144 A1 in view of Borla, US 2003/0089233 A1 and in further view of McCelland et al., US 2015/0233327 A1.
Regarding claims 27–29, Bergami teaches that the filter element 2 comprises a plurality of layers of fabric or felt that are surrounded by an inner and outer layer of metallic net. See Bergami [0028]. The layers of fabric or felt read on the “filter medium.” The outer layer of metallic net reads on the “first wire support” and the inner layer of metallic net reads on the “second wire support.”
Bergami differs from claim 27–29 because, while it teaches that the lower end of the first filter 2 is fixed to the annular housing 9 of the supporting means 4 and that the first filter 2 has a metallic net support on an outer surface and inner surface (Bergami [0028], [0030]), the reference is silent as to the annular housing 9 being crimped onto the lower end of the first filter 2 (claim 27) or molded onto and retaining the outer and inner wire supports (claims 28 and 29, respectively).
But McClelland teaches an air filtration system for the intake of an engine. The system comprises a housing portion 112 and an air filter 108 with an end 148 that is inserted into a recess 144 of the housing portion 112. See McClelland Fig. 2, [0027]. The filter 108 also has a wire support 152. Id. The recess 144 has a ridge 144 that surrounds the end of the filter 108 that is inserted into the recess 144. The ridge 144 can be fixed to the end 148 of the filter 108 by crimping the ridge 144 on the wire support 152 or the ridge 144 may be molded to the wire support 152. Id.
It would have been obvious for the annular housing 9 of Bergami to be fixed to the lower end of the filter 2 by being crimped onto the metallic net supports or by being molded onto and retaining the inner and outer metallic net supports, because McClelland teaches that these are suitable methods for attaching an end of an air filter element to a housing.
Regarding claim 30, Bergami teaches that the first filter 2 (the “filter medium”) comprises inner and outer metallic net supports (the “first wire support and the second wire support”) are on either side of a fabric or felt filtration material. See Bergami [0028]. But Bergami differs from claim 30 because it is silent as to the inner and outer metallic net supports being co-pleated with the layers of fabric or felt. But McClelland teaches that its air filter 108 comprises wire supports 152 on an outer and inner surface of the filter material 156 of the air filter 108, where the wire supports are co-pleated along with the filter medium 156 so as to reinforce the filter 108. See McClelland [0031]. It would have been obvious for the inner and outer metallic net supports of Bergami to be co-pleated along with fabric or felt filtration of Bergami to reinforce the filter material.
Regarding claim 31, Bergami as modified teaches the limitations of claim 30, as explained above.
Bergami as modified differs from claim 31 because it is silent as to the inner and outer metallic net supports (the “first wire support and the second wire support”) comprising powder-coated aluminum wire screens. But McClelland teaches that its wire supports 152 are powder-coated aluminum screen wire. See McClelland [0031]. It would have been obvious to use the powder-coated aluminum screen wire material of McClelland as the inner and outer metallic net supports of Bergami, because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
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.
U.S. Patent No. 10,744,440 B2
Claims 16, 17, 19, 20, 26 and 32–34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,744,440 B2.
Regarding claim 16, claim 1 of the ’440 patent teaches a base for an air filter for an internal combustion engine (the flangeless air filter) comprising a filter medium (the filter medium), a cap (the cap), a base (the base) and a seal (the seal). The base comprises a bottom surface (the surface comprising the seal) and an upper surface (the surface opposite the surface comprising the seal). The bottom surface is configured to be in communication with an air intake system, and with the seal for establishing an airtight connection between the bottom surface and the air intake system (as the seal is configured to contact the flat surface of an air intake system and connect an interior of the air filter with an air intake duct). The seal is for establishing an airtight connection between the bottom surface and the air intake system (as it is made of a pliable material amendable to being compressed so as to establish an airtight connection between the base and the flat surface of the air intake system). The upper surface is for coupling the filter medium and the cap (as the base comprises a mounting bracket that receives a portion of the filter medium, and the filter medium is disposed between the base and the cap). The bottom surface is a flat ridgeless surface (as the seal is on the bottom surface and forms a flat, ridgeless surface) that spans from an interior opening of the base to an exterior edge of the base and is configured to form an air tight connection with a flat surface of the air intake system. The seal is provided to establish an impermeable barrier between the bottom surface and the upper surface (as the seal is provided to establish an airtight connection between the base and the flat surface of the air intake system). The seal extends from an interior opening of the base to an exterior edge of the base (as the seal has a flat, ridgeless surface that spans from an interior opening of the base to an exterior edge of the base). The interior opening is configured to allow passage of an airstream from an interior of the filter medium (as base has an interior opening, with the seal extending from the interior opening to an exterior edge of the base, and with the seal being configured to contact the flat surface of the air intake system to connect an interior of the air filter with the intake duct).
Regarding claim 17, the filter medium of claim 1 of the ’440 patent is presumed capable of being periodically cleaned by flushing away contaminants with water or a high-pressure air stream because it has the same structure as the claimed filter medium.
Regarding claim 19, claim 1 of the ’440 patent teaches a mounting bracket incorporated into the base (as a mounting bracket is coupled with the base).
Regarding claim 20, claim 1 of the ’440 patent teaches that the mounting bracket includes a plurality of protrusions.
Regarding claim 26, claim 1 of the ’440 patent teaches that the base is configured to be joined to an end of the filter medium (as the mounting bracket of the base has an opening that receives a portion of the filter medium adjacent to the base, and this portion of the filter medium can be considered an “end”).
Regarding claim 32, claim 1 of the ’440 patent teaches that the seal comprises a material suitable for forming the airtight connection.
Regarding claim 33, claim 1 of the ’440 patent teaches that the material is suitable for being pressed against the flat surface comprising the air intake system.
Regarding claim 34, claim 1 of the ’440 patent teaches that a mounting bracket is incorporated into the base and is capable of pressing the seal against the flat surface.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 10,744,440 B2.
Regarding claim 18, claim 7 of the ’440 patent teaches that the filter medium is configured to be treated with a filter oil composition that enhances air filtering properties of the filter medium.
Claims 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,744,440 B2.
Regarding claim 21, claim 5 of the ’440 patent teaches that the plurality of protrusions are configured to enable coupling with the flat surface (described in claim 1) and that the a multiplicity of holes are disposed around the circumference of the mounting bracket and configured to receive hardware fasteners so as to couple the base with the flat surface (described in claim 5). Therefore, it would have been obvious for at least one of the multiplicity of holes to be disposed in each of the protrusions because the protrusions are provided to enable coupling with the flat surface and the holes are configured to receive fasteners for this purpose.
Regarding claim 22, claim 5 of the ’440 patent teaches that the holes are disposed around a circumference of the mounting bracket to enable coupling the base with the air intake system.
Claims 23–25 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,744,440 B2 in view of Hamada et al., US 6,871,534 B1.
Regarding claims 23 and 35, while claim 5 of the ’440 patent is silent as to the multiplicity of holes comprising three holes uniformly disposed around the circumference, it would have been obvious for the multiplicity of holes to include at least three holes because this would merely represent obvious duplication of parts. Also, the holes in claim 5 of provided to receive hardware fasteners to couple the base with the flat surface, and therefore it would have been obvious for the at least three holes to be uniformly disposed around the circumference to evenly distribute the force that the fasteners apply to the flat surface. Claim 5 is silent as to the holes being threaded so as to receive the hardware fasteners. But Hamada teaches a cover 27 that is attached to a seat 23 using threaded bolts 28. See Hamada Fig. 1, col. 12, ll. 55–67. The cover 27 and the seat 23 each have threaded holes 24, 26 which receive the bolts 28. Id. The threaded holes 24, 26 are beneficial because they allow the threaded bolts to be secured in place within the holes 24, 26. It would have been obvious for the holes of claim 5 of the ’440 patent to be threaded so that the bolts 13 can be secured as they are used to attach the flange 7 to the expansion box 110.
Regarding claim 24, claim 5 of the ’440 patent teaches that the holes and the hardware fasteners are configured for attaching the base to a flat surface of the air intake system.
Regarding claim 25, claim 5 of the ’440 patent modified by Hamada teaches that the holes are configured to threadably receive the hardware fasteners for establishing the airtight connection.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,744,440 B2 in view of McCelland et al., US 2015/0233327 A1.
Regarding claim 27, claim 1 of the ’440 patent teaches the limitations of claim 26, as explained above.
Claim 1 of the ’440 patent differs from instant claim 27 because it is silent as to the base being crimped onto and retaining the end of the filter medium.
But McClelland teaches an air filtration system for the intake of an engine. The system comprises a housing portion 112 and an air filter 108 with an end 148 that is inserted into a recess 144 of the housing portion 112. See McClelland Fig. 2, [0027]. The recess 144 has a ridge 144 that surrounds the end of the filter 108 that is inserted into the recess 144. The ridge 144 can be fixed to the end 148 of the filter 108 by crimping the ridge 144 onto the air filter 108. Id.
It would have been obvious for the base of claim 1 of the ’440 patent to be fixed to the filter medium by being crimped onto the filter medium, because McClelland teaches that this is a suitable method for attaching an end of an air filter element to a housing.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,744,440 B2.
Regarding claim 28, claim 3 of the ’440 patent teaches that the base is molded onto and retains a first wire support of the filter medium.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,744,440 B2 in view of Bergami, US 2003/0029144 A1.
Regarding claim 29, claim 3 of the ’440 patent teaches the limitations of instant claim 28, as explained above.
Claim 3 of the ’440 patent differs from claim 29 because it is silent as to the filter medium comprising a second wire support disposed on an inner surface of the filter medium with the base being molded onto and retaining the second wire support.
But Bergami teaches a filter element 2 for filtering air supplied to an internal combustion engine where the filter element 2 comprises a filter medium surrounded by inner and outer layers of a metallic net, with the inner and outer layers fixed to an annular housing 9 in a supporting means 4. See Bergami Figs. 1, 5, [0028], [0030]. It would have been obvious for the filter medium of claim 3 of the ’440 patent to comprise inner and outer layers of a wire support (in the manner taught by Bergami) and with the inner layer of wire support being molded onto an retained by the base (in the manner taught in claim 3) because Bergami teaches that it is beneficial for a filter medium used for air supplied to an internal combustion engine to have inner and outer supports to provide structural support to the filter medium.
Claims 30 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,744,440 B2 in view of Bergami, US 2003/0029144 A1 and in further view of McCelland et al., US 2015/0233327 A1.
Regarding claims 30 and 31, claim 3 of the ’440 patent modified by Bergami teaches the limitations of claim 29, as explained above.
Claim 3 of the ’440 patent modified by Bergami differs from instant claim 30 because it is silent as to the inner and outer wire supports (the “first wire support” and the “second wire support”) being co-pleated along with the filter medium. Claim 3 of the ’440 patent modified by Bergami differs from instant claim 31 because it is silent as to one or more of the first and second wire supports comprising a powder-coated aluminum wire screens.
But McClelland teaches an air filter 108 comprising wire supports 152 on an outer and inner surface of the filter material 156 of the air filter 108, where the wire supports are co-pleated along with the filter medium 156 so as to reinforce the filter 108. See McClelland [0031]. McClelland also teaches that its wire supports 152 are powder-coated aluminum screen wire. See McClelland [0031]. It would have been obvious for the inner and outer wire supports of claim 3 of the ’440 patent modified by Bergami to be co-pleated along with fabric or felt filtration of Bergami to reinforce the filter material while improving filtration area. It also would have been obvious for the inner and outer wire supports of modified claim 3 of the ’440 patent to be made the powder-coated aluminum screen wire material of McClelland because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07.
Response to Arguments
35 U.S.C. 112(a) Rejections
The Applicant has failed to overcome the previous 35 U.S.C. 112(a) rejections, and the amended claims introduce additional issues of new matter, as explained above.
35 U.S.C. 112(b) Rejections
The claim amendments fail to overcome the previous 35 U.S.C. 112(b) rejections, and the amendments introduce new indefiniteness issues, as explained above.
35 U.S.C. 103 Rejections
The Applicant argues that the cited prior art is silent as to the claim limitation of—“the surface is a ridgeless surface configured to establish the airtight connection and wherein the flat, ridgeless surface spans from an interior opening of the base to an exterior edge of the base and is configured to form an airtight connection with the flat surface of the air intake system.” See Applicant Rem. filed December 16, 2025 (“Applicant Rem.”) 9. The Examiner respectfully disagrees for the reasons stated in the 35 U.S.C. 103 rejection of claim 16 above.
Double Patenting Rejections
The Examiner withdraws the double patenting rejections over U.S. Patent No. 11,478,739 B2.
The Examiner maintains the double patenting rejections over U.S. Patent No. 10,744,440 B2.
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.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776