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
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 1-6 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 1 recites the limitation "the other side" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is assumed to recite, “another side”.
Claim 1, line 10, requires the second medium channel be connected to an engine through a pipeline. The claim is directed to an oil filter base assembly, which one of ordinary skill in the art would recognize as a component that would be attached to an engine but would not include the engine. Therefore, it is unclear if the claimed invention requires the recited engine and pipeline. For examination purposes the claim is assumed to require the second medium channel be configured to connect to an engine through a pipeline.
The additional claims are rejected as depending from claim 1.
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 (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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al. CN 113062784.
Claim 1, Zhu teaches an oil filter base assembly, comprising an oil filter base (10), where in the oil filter base has one side connected to a first cooler (20) arranged and another side connected to a second cooler (30) arranged, a first medium channel (11) and a second medium channel (12) are further arranged inside the oil filter base, opposite ends of the first medium channel and the second medium channel are both connected to interiors of the first and second coolers and one end, away from the first cooler of the first medium channel is connected to a medium inlet (50) provided on the oil filter base, and one end, away from the first cooler of the second medium channel is configured to be connected to an engine through a pipeline (fig. 1-5, abstract).
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) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. CN 113062784 in view of Girondi US 2019/0316499.
Claim 2, Zhu teaches the oil filter base but does not teach what material the base is made of. Aluminum alloy is common material used to make an oil filter base as demonstrated by Girondi (fig. 1-7, par 111) and would have been an obvious choice of material to one of ordinary skill in the art. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 3, Zhu further teaches the first medium channel and the second medium channel are arranged on the oil filter base is parallel (fig. 2, 4).
Claims 4-5, Zhu further teaches a process hole on an end surface of the oil filter base (at 60) (fig.1-3). Zhu appears to show a cap/plug arranged at the hole, as opposed to the clearly open channel (at 50). One of ordinary skill in the art would readily understand that the channel (60) would need to be sealed at the end surface of the base to prevent fluid from leaking from the base. The recitation of the plug being welded onto the process hole is a recitation of how the plug is attached. “[E]ven 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 USDQ 964 (1985). The method of attaching the plug of Zhu is deemed a structural equivalent to the method of welding.
Claim 6, Zhu does not teach the material of the first and second coolers. As stated above, the use of aluminum alloy for a filter base is well known in the art and the use of the alloy for the coolers would also have been obvious to one of ordinary skill in the art as the aluminum alloy is commonly used for automotive engine components. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779