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 1/12/2024 are currently pending. Claim(s) 1-20 is/are rejected.
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, 7-9, 11, 17-19 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by SYREN (US 5360239 A).
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Regarding claim 1, SYREN teaches coupling a first end (32) of a cylindrical base (30) of an oil filter adapter system to an engine; and turning a screw (90) inserted through a second end (34) of the cylindrical base (30) and coupled with a locking mechanism (80) located within the first end (32), a head of the screw being accessible via the second end (34), wherein turning the screw moves the locking mechanism (80) towards the head of the screw or away from the head of the screw (C4/45-C5/15) (figs. 1-6).
Regarding claim 7, SYREN teaches the cylindrical base (30) includes an unfiltered oil passage (36) and a filtered oil passage (37) (fig. 1).
Regarding claim 8, SYREN teaches the locking mechanism (80) is axially movable with respect to the cylindrical base (30). (C5/1-5): fasteners 90 may be tightened, thereby drawing adapter body 30 toward mounting boss 500 until the adapter body is tightly or sealingly coupled to the mounting boss.
Regarding claim 9, SYREN teaches the screw (90) and the locking mechanism (80) are coupled such that, in response to the screw (90) turning clockwise, the locking mechanism (80) moves toward the head of the screw (C5/1-5): fasteners 90 may be tightened, thereby drawing adapter body 30 toward mounting boss 500 until the adapter body is tightly or sealingly coupled to the mounting boss.
Regarding claim 11, SYREN teaches method performed by a system comprising: coupling a first end (32) of a cylindrical component (30); turning a screw (90) inserted through a second end (34) of the cylindrical component (30) and coupled with a locking mechanism (80) located within the first end (32), a head of the screw being accessible via the second end (34); and in response to turning the screw, moving the locking mechanism (80) towards the head of the screw or away from the head of the screw (C4/45-C5/15).
Regarding claim 17, see the rejection of claim 7 above.
Regarding claim 18, see the rejection of claim 8 above.
Regarding claim 19, see the rejection of claim 9 above.
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) 2-3, 5, 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over SYREN (US 10195554 B1) in view of KLEMENTICH (US 5360239 A).
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Regarding claim 2, SYREN teaches a cylindrical base (adapter body 30) coupled to an engine mounting boss via fasteners (screws 90) that draw a mounting plate (locking mechanism 80) axially toward the boss when tightened. This creates a secure, sealing connection. However, the SYREN does not explicitly disclose that axial movement of the locking mechanism causes misalignment of threaded portions between the locking mechanism and the first end of the cylindrical base. The connection in SYREN relies on axial clamping via the fasteners rather than thread misalignment for locking. KLEMENTICH teaches that axial movement during thread engagement causes intentional misalignment (via interference) between threaded portions, generating self-locking tension (C4/40-C4/65). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the oil filter adapter system of SYREN by incorporating the self-locking threaded interference principle taught in KLEMENTICH. As automotive oil filter adapters are subject to significant vibration, thermal cycling, and torque variations from engine operation. The primary reference secures the adapter via axial clamping with fasteners but does not explicitly address long-term resistance to loosening under such conditions. KLEMENTICH provides a well-established technique (interference-fit threads) for creating self-locking connections that resist vibration-induced loosening. This is a standard approach in threaded connections exposed to dynamic loads, particularly in oil and gas tubular applications, which share environmental challenges (vibration, pressure, temperature) with automotive engine compartments.
Regarding claim 3, SYREN teaches the threaded portion of the first end is a female threaded portion (44 – receiving portion) with threads on an internal surface of the cylindrical base (30).
Regarding claim 5, KLEMENTICH as modified teaches the threaded portion of the locking mechanism being misaligned with the threaded portion of the first end creates a tension between the first end and a threaded portion of the engine (C1/35-45, C26/25-30 of KLEMENTICH).
Regarding claim 12, see rejection of claim 2.
Regarding claim 13, see rejection of claim 3.
Regarding claim 15, see rejection of claim 5.
Claim(s) 10 and 20 is/are rejected under 35 U.S.C. 103 as being obvious over SYREN (US 10195554 B1).
Regarding claim 10, SYREN teaches the screw (90) and the locking mechanism (80) are coupled such that turning the screw (90) causes the locking mechanism (80) to move away from the head of the screw. While the reference explicitly describes that tightening the fasteners (screws 90) draws the mounting plate (locking mechanism 80) toward the engine mounting boss (i.e., moves the locking mechanism toward the head of the screw). It also states that partially fastening (i.e., loosening or backing out) the fasteners loosely couple the mounting plate with the adapter body, which inherently means that turning the screw in the opposite direction (counterclockwise) causes the locking mechanism to move away from the head of the screw. Thus, the primary reference at least implicitly teaches the directional coupling recited in claim 10: Tightening (clockwise) → locking mechanism moves toward the head of the screw. Loosening (counterclockwise) → locking mechanism moves away from the head of the screw. Alternatively, if one were to argue that the primary reference does not explicitly assign "clockwise" to tightening and "counterclockwise" to loosening, the specific rotational direction required to tighten or loosen a standard threaded fastener is a matter of conventional engineering practice and is obvious to a person of ordinary skill in the art. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date to understand and implement the fastener such that clockwise rotation causes the locking mechanism to move toward the head of the screw, and counterclockwise rotation causes the locking mechanism to move away from the head of the screw as this conventional knowledge and would result in a predictable result of tightening and loosening the fastener (90).
Regarding claim 20, see the rejection of claim 10.
Allowable Subject Matter
Claim(s) 4, 6, 14, and 16 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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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.
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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.
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/WAQAAS ALI/Primary Examiner, Art Unit 1777