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
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.
Claim(s) 1, 6, 8, 13, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Neill (US PG-pub 20220178457).
Regarding claims 1, 6, 8, 13, and 15, O’Neill teaches a system including (claims 1, 8, and the method steps of claim 15): a manifold 14 (fig. 13) configured to be fixedly mounted to the fluid tank 12 (fixed via conduits 16) and defining an inner volume for receiving a flow of the fluid returning from the one or more hydraulic devices (via conduits 16); and a mount 22 configured to be fixedly mounted to each of the fluid tank 12 and the manifold 14, the mount 22 defining one or more passageways (suction tubes 20) configured to establish a fluid connection between the inner volume of the manifold 14, a fluid filter 26 of the work machine, and an internal volume of the fluid tank 14 (para. 0025, lines 1-8); (claims 6 and 13) wherein the manifold 14 is mounted to the fluid tank at a position above a maximum fill level of the fluid in the internal volume of the fluid tank (as shown in fig. 13, the manifold is positioned higher than the fluid tank and would therefore, be positioned higher than a max. fill level of the fluid in the tank).
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.
Claim(s) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Neill (US PG-pub 20220178457), as applied to claims 1, 6, 8, 13, and 15 above.
Regarding the recitation “… welded connection”, the term “welded” is considered to be directed to the method of manufacture of the claimed structure in this apparatus claim. As set forth in M.P.E.P. §2113:
“M.P.E.P. §2113 Product by Process Claims [ R-1 ]
PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"Even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe , 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A 35 U.S.C. 102 / 103 REJECTION MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessman, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be "essentially free of alkali metal." The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not "essentially free of alkali metal" and therefore a different and unobvious product.).
As set forth in the above explanation, the claimed structure finds their equivalents in the applied prior art. Thus the claim(s) are unpatentable even though potentially manufactured by a different process.
Allowable Subject Matter
Claims 2-5, 9-12, and 16-20 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.
The following is a statement of reasons for the indication of allowable subject matter: O’Neill fails to disclose (claims 2, 9, and 16) first passageway extending from the first end surface to the second end surface and configured to route the fluid from the inner volume of the manifold to a fluid inlet of the fluid filter; (claims 4, 11, and 17) a second passageway extending from the first end surface to the second end surface and configured to route the fluid from a fluid outlet of the fluid filter to the internal volume of the fluid tank; the one or more apertures being configured to receive at least one of the manifold or the mount for fixedly mounting the at least one of the manifold or the mount to the fluid tank.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. MACADE NICHOLS whose telephone number is (571)270-5428. The examiner can normally be reached Mon-Fri 9:00-5:00 P.M..
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/P. MACADE NICHOLS/Primary Examiner, Art Unit 3753