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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 6/16/2026.
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 22-24 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. Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features. See Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356-57, 116 USPQ2d 2006, 2010-11 (Fed. Cir. 2015). The mere absence of a positive recitation is not basis for an exclusion. However, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). "Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 589 F.3d 1336, 1351, 94 USPQ2d 1161, 1172). In this case, no disclosure is present in the originally filed specification that would provide a basis for the filter element being “free of a separate extraction protrusion” of claim 22 and the locking protrusion “is not configured to be engaged by an operating structure” of claim 23. Further, claim 24 recites specific handle radial dimensions in comparison to the housing but such dimensions are not taught in the specification and it is questionable if such dimensions are provided by the Figures as well. As such, the limitations are directed to new matter.
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) 1-8 and 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baird (US 9,737,834) in view of Park et al. (US 2020/0139280).
Regarding claim 1, Baird teaches a filter element comprising a housing having a first end with an inlet and outlet (36a 36b) and a second end (18), and a locking protrusion (90) proximate the second end (Fig. 3a-3b and C5/43-C7/L62).
Baird fails to teach a handle at the second end. Park teaches that it is beneficial to provide a handle (23c) for water filters in order to allow a user to grip the filter and apply force thereto (Figs. 6-8 and [0064]). As such, it would have been obvious to provide a handle on the Baird filter in order to allow a user to grip the filter and apply force thereto.
It is noted that language detailing how the filter is acted upon by unclaimed elements is not given patentable weight. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). In this case, all claimed structural elements of the water filter element are taught or rendered obvious and the unclaimed elements of the water purification system are capable of providing the function claimed to the filter. Therefore, the limitations of the unclaimed water purification system are not read into the claims that are solely directed the water purification system and elements thereof.
Regarding claims 2-3, as can be seen in Fig. 6 of Park, the handle (23c) is curved and at an oblique angle.
Regarding claim 4, as can be seen in Fig. 6 of Park, the handle can include a protrusion (23b).
Regarding claim 5, Baird teaches that the locking protrusion (90) is a beveled surface (Fig. 3a).
Regarding claim 6, Park teaches that the handle comprises an open annular interior (Fig. 6).
Regarding claim 7, Baird teaches a guide protrusion (92) provided on the side of the filter opposite the locking mechanism (Fig. 3a).
Regarding claim 8, Baird teaches that guide rails/guide protrusions are provided but fails to teach the specific shape of the guide rails as claimed. It is submitted that the cut/shape (beveled) or length of the guide rails would have been an obvious matter to one skilled in the art (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
Regarding claim 21, see claim 1 above for details of the claimed water filter element and also how the limitations directed to
Regarding claims 22-23, it is noted that the limitations attempt to define an element, lack of an element, or lack of an interaction as said element/interaction is employed to contact and connect with unclaimed elements. As such, the limitations directed to intended use and not given patentable weight. It is submitted that the structure of Baird is capable of providing the functional limitations claimed depending on what unclaimed elements said filter interact with.
Regarding claim 24, as can be seen in Fig. 6 of Park, the radial dimensions of the actual handle are smaller than the outer diameter of the housing.
Allowable Subject Matter
Claims 9-12 and 25 are objected to as being dependent upon/referencing 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.
Response to Arguments
Applicant's arguments filed 6/16/2026 have been fully considered but they are not persuasive. The above rejection has been modified to address the claim amendments. As discussed above, claims 1-8 and 21-24 are directed to a filter element. How the filter element is intended to be employed and interact with unclaimed elements are not given patentable weight as they are directed to intended use/interaction of the claimed apparatus. Modified Baird teaches all claimed structure taught or implied by any functional limitations and thus reads on the rejected claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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