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 .
Election/Restrictions
Applicant’s election of Group I, directed to Claims 1-13 in the reply filed on 26 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Applicant has cancelled the non-elected claims 14-19 which are now no longer in consideration.
Applicant has amended the claims to include new claims 20-26. The new claims are distinct from the elected claims in significant ways which requires a species restriction.
Newly submitted claims 20-26 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: This application contains claims directed to the following patentably distinct species: Species 1 directed to Claims 1-13 and Species 2 directed to Claims 20-26. The species are independent or distinct because Species 1 requires "said axial component of said filter housing second end having a radially inner surface with one or more beads configured to engage a combustion engine or a conduit connected thereto" which is distinct from Species 2's connection to a combustion engine or conduit which reads "wherein the second end has a radial extending surface having one or more threads configured to engage a combustion engine or a conduit connected to the combustion engine for attachment thereto;". These species describe connections with distinct features which do not overlap in scope and which directly replace each other. Additionally, Species 1 requires that "said carrier and said filter housing first end being integrally joined" whereas Species 2 merely requires "a carrier positioned within the internal cavity and connected to the first end". In addition, these species are not obvious variants of each other based on the current record.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancelation 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).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 20-26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 and all dependent claims are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case Claim 2 requires "said carrier being integrally joined with said filter housing first end" which is merely a restating of the limitation "said carrier and said filter housing first end being integrally joined" of line 10 of the first claim. There is no further limiting of Claim 1 in dependent Claim 2. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 3 and 9 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.
With regards to Claim 3 it is unclear in the claim what is being cured. The limitation “before or during curing” is referring to a unknown part of the filter assembly as it is unclear whether this is referring to curing the anchors or curing the filter housing first end neither of which are claimed as “cured” pieces.
The term “tamper resistant” in claim 9 is a relative term which renders the claim indefinite. The term “tamper resistant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 9 requires that “said carrier and said hydrocarbon trap media are “tamper resistant” However, it is unclear what this means as resistance to tampering is a term of degree rather than a specific structural set of requirements. One of ordinary skill in the art would not know what the metes and bounds of “tamper resistance” are based on the claims. Additionally, while the specification Paragraph 64 states “In this way, the carrier 30 and the filter housing first end 24 become a single part upon curing and this renders the structure tamper resistant because the carrier 30 cannot be removed from the air filter 21.” This does not make clear how the hydrocarbon trap media is “tamper resistant”.
Claim Rejections - 35 USC § 102/103
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.
(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.
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.
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) 1-5, 7-11, 13 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Campbell et al. (US 2014/0144112 A1).
With regards to Claim 1 and 2 Campbell teaches:
A gas filter assembly, part 100, which reads on applicant's claimed filter assembly which comprises a primary filter cartridge, part 102, which reads on applicant's claimed air filter. The primary filter cartridge comprises An end piece, part 170, with a central section, part 172, which collectively reads on applicant’s claimed first housing first end having a first diameter. An end cap, part 154, which reads on applicant's claimed filter housing second end having a second diameter and a central aperture, part 155, which reads on applicant's claimed central opening with a housing seal region, part 156, which reads on applicant's claimed an axial component with projection arrangement, part 163, which reads on applicant's claimed one or more beads configured to engage a conduit connected thereto. A filter media, part 150, which reads on applicant's claimed filter media which extends between the first and second ends of the filter housing. A secondary filter, part 1, disposed inside of the air filter, part 102, and connected integrally with the filter housing first end, part 172, by the receiving groove, part 50 of the cartridge support end, part 133, of the central cartridge support, part 130, which reads on applicant's claimed carrier. The central cartridge support has a circular cross-section, see Fig. 5, formed of a plurality of ribs, part 30, which reads on applicant's claimed, axial members and spacers, parts 36-38, which reads on applicant's claimed circumferential members. Media, part 2, which reads on applicant's claimed hydrocarbon trap media, is disposed on a radially inward side of said members of said carrier, see Fig 4, and the media, part 2, is disposed within an envelope of the filter assembly. (See Campbell Fig. 4, 5, 13, 13A, 13B, 15 and Paragraphs 94-95 fig. 5 description, 114, 115, 135, 138 cartridge, 147 cartridge support, 159, 170, 171, 176 projection arrangement, 177-186 primary filter, 201 another embodiment)
With regards to Claim 3 Campbell further teaches:
The receiving groove, part 50 of the cartridge support end, part 133, reads on applicant’s claimed anchors which are positioned within the filter housing first end before any curing in place. (See Campbell Fig. 13 and 13a) Applicant does not explicitly claim curing.
With regards to Claim 4 Campbell further teaches:
The filter housing first end has a first side facing the filter housing second end. (See Campbell Fig. 13)
With regards to Claim 5 Campbell further teaches:
There is a groove in the filter housing first and and in the filter housing second end which defines a location for the filter media. (See Campbell Fig. 13)
With regards to Claim 7 and 13 Campbell further teaches:
The filter media is frusto-conical in shape. (See Campbell Fig. 4, 5, 13 and Paragraph 111 and 169)
With regards to Claim 8 Campbell further teaches:
The filter media, part 2, is slidably installed into the carrier without adhesives or fasteners. (See Campbell Paragraph 123 and Fig. 4 and 13)
With regards to Claim 9 Campbell further teaches:
The carrier and hydrocarbon trap media are considered to be tamper resistant due to the sealing effect mentioned and the integration with the first end of the housing. (See Campbell Paragraph 123 and Fig. 13)
With regards to Claim 10 Campbell further teaches:
The support, part 20, which reads on applicant's claimed carrier, is injection molded. (See Campbell Paragraph 129-130)
With regards to Claim 13 Campbell further teaches:
The media, part 2, which reads on applicant's claimed hydrocarbon trap media, is a rolled sheet, see Fig. 4, and reads on applicant’s claimed rolled hydrocarbon sheet. (See Campbell Fig. 4-10)
Claim(s) 6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Campbell et al. (US 2014/0144112 A1).
With regards to Claims 6 and 12:
The filter media is frusto-conical in shape. (See Campbell Fig. 4, 5, 13 and Paragraph 111 and 169)
Campbell does not explicitly teach a cylindrical filter media or carrier. Campbell teaches “Alternatives are possible.”
Campbell discloses the claimed invention except for the shape of the filter is frusto-conical rather than cylindrical. The shape of the filter element is considered a design choice dependent on fitting an area, maximizing volume of a filter, etc. and does not appreciably affect the function of the filter media and thus one of ordinary skill in the art at the time of filing would have found it obvious to change the shape to another suitable shape as there is no structural benefit and another shape would perform substantially identically. See MPEP 2144(IV-B)
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIT E ANBACHT whose telephone number is (571)272-9876. The examiner can normally be reached on M, T, R, F 11 am - 4 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9876.
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.
/BRIT E. ANBACHT/Examiner, Art Unit 1776
BRIT E. ANBACHT
Examiner
Art Unit 1776
Prosecution Insights