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 . This is a first action on the merits of the application. Claims 1-11 are pending.
Election/Restrictions
Applicant's election with traverse of invention I, claims 1-7 in the reply filed on March 20, 2026 is acknowledged.
The traversal is on the ground(s) that:
(1) Applicants argue Office Action takes the position that Invention I (claims 1-7) and Invention II (claim 8, drawn to a respiratory protection mask comprising a filter unit) are related as combination and subcombination, and the combination clearly requires the particulars of the subcombination, claims 1-8 should be considered. Remarks, pages 1-2, filed 03/20/2026.
In response, Applicant’s argument is not found persuasive because, in the instant case, the combination as claimed, a respiratory protection mask comprising a filter unit, can be constructed by not requiring the particulars of the subcombination as claimed, a filter unit, because a respiratory protection mask could be constructed without using a filter unit as claimed as taught by CN 212347481U (see page 1 of the attached English translation). The subcombination, a filter unit, has separate utility such as a stand-alone filtering unit.
In addition, a serious burden for the Examiner does exist because the elected and non-elected inventions would require different fields of subclass search. For example, claim 1 would require section/class/subclass searching within B01D 46/521+, while claim 8 would require section/class/subclass searching within A62B 7/10+. Therefore, because different subclass searches would be necessary, a serious burden for the Examiner does exist if restriction were not required.
(2) Applicants argue Office Action takes the position that Invention I and Invention III (claims 9-11, drawn to a process for manufacturing a filter unit) are related as process of making and product made, wherein the filter unit as claimed can be made by adopting or comprising an additive manufacturing. However, the process includes providing a particle filter that comprises a smaller end face and a larger end face, wherein the two end faces each are perpendicular or oblique to a central axis of the particle filter, wherein a projection of the smaller end face along the central axis onto the larger end face is such that the projection of the smaller end face is located entirely within the larger end face. The product includes a particle filter that comprises a projection of a smaller end face along a flow direction onto the larger end face is such that the projection of the smaller end face is located entirely inside the larger end face, wherein the smaller end face and the larger end face are each perpendicular or oblique to a flow direction. As the process includes features as provided in the product, it is believed that the product is not made by another process. Remarks, page 2, filed 03/20/2026.
In response, Applicant’s argument is not found persuasive because, in the instant case,
In the instant case the filter unit as claimed can be made by adopting or comprising an additive manufacturing as shown by McFarland et al. (US 2016/0193696 A1).
In addition, a serious burden for the Examiner does exist because the elected and non-elected inventions would require different fields of subclass search. For example, claim 1 would require section/class/subclass searching within B01D 46/521+, while claim 9 would require section/class/subclass searching within A61L 15/00+. Therefore, because different subclass searches would be necessary, a serious burden for the Examiner does exist if restriction were not required.
(3) Applicants argue Office Action takes the position that Invention II and Invention III are related as process of making and product made, wherein the respiratory protection mask comprising a filter unit can be made by adopting or comprising an additive manufacturing. The process includes providing a particle filter that comprises a smaller end face and a larger end face, wherein the two end faces each are perpendicular or oblique to a central axis of the particle filter, wherein a projection of the smaller end face along the central axis onto the larger end face is such that the projection of the smaller end face is located entirely within the larger end face. The product includes a particle filter that comprises a projection of a smaller end face along a flow direction onto the larger end face is such that the projection of the smaller end face is located entirely inside the larger end face, wherein the smaller end face and the larger end face are each perpendicular or oblique to a flow direction. As the process includes features as provided in the product, it is believed that the product is not made by another process. Remarks, pages 2-3, filed 03/20/2026.
In response, Applicant’s argument is not found persuasive because, in the instant case, the respiratory protection mask comprising a filter unit as claimed can be made by adopting or comprising an additive manufacturing as shown by McFarland et al. (US 2016/0193696 A1).
In addition, a serious burden for the Examiner does exist because the elected and non-elected inventions would require different fields of subclass search. For example, claim 8 would require section/class/subclass searching within A62B 7/10+, while claim 9 would require section/class/subclass searching within A61L 15/00+. Therefore, because different subclass searches would be necessary, a serious burden for the Examiner does exist if restriction were not required.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
Claims 1-7 are objected to because of the following informalities:
Claim 1 recites “circumferential gap” in line 15. It is respectfully suggested to amend the limitation to “the circumferential gap”.
Claims 2-7 recite “A filter unit according to claim 1,” in the preamble. It is respectfully suggested to amend the limitation to “The
Claim 3 recites “the shape” in lines 2-3 which lacks an antecedent basis. It is respectfully suggested to amend the limitation to “a shape” or define “a shape” earlier in the claim.
Claim 5 recites “the larger end face” in line 1. It is respectfully suggested to amend the limitation to “the larger end surface
Claim 6 recites “the smaller front surface” in line 2 and “the larger front surface” in line 4. It is respectfully suggested to amend the limitation to “the smaller end end
Claim 7 recites “the smaller front surface” in line 2 and “the larger front surface” in line 4. It is respectfully suggested to amend the limitation to “the smaller end end
Appropriate corrections are required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “sealing element” claim 1-line 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 6 and 7 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 regard(s) as the invention.
Claim 6 recites “the obtuse angle” and “the acute angle” in lines 2-4 which lack antecedent bases.
Claim 7 recites “the outer surface” in line 2 which lack an antecedent basis.
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 of this title, 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 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 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Holder et al. (US 10,537,841 B2, hereinafter “Holder”), in view of Lee et al. (US 2019/0184324 Al, hereinafter “Lee”)
In regard to claim 1, Holder discloses a filter unit to be arranged for a gas mixture to flow in a flow direction from an inflow side through the filter unit to an outflow side (col. 1, lines 14-39), the filter unit comprising (Figs. 1-2, a filter plate in Fig. 1 is used for making a filter unit in Fig. 2; col. 6, line 49 thru col. 7, line 58):
a housing (3, Fig. 2);
a particle filter (2, Fig. 2) arranged inside the housing (3, Fig. 3), the particle filter (2, Fig. 2) comprising an inflow-side end face, an outflow-side end face and a lateral surface between the inflow-side end face (top and bottom side of the particle filter and side surface of the plastic frame 14, Fig. 2) and the outflow-side end face, the particle filter being configured to filter out particles from a gas mixture flowing in the flow direction through the filter unit (the particle filter 2, Fig. 2 is used for respirators, for medical filters and device particle, especially for manufacturing the particle-filtering element (col. 1, lines 14-17) directs inflow and outflow from a gas mixture flowing in the flow direction through the filter unit as recited). It is reasonably expected that the top and bottom surface of the particle filter (2, Fig. 2) are each perpendicular to the flow direction;
wherein a circumferential gap (9, Fig. 2) is formed between the lateral surface and the housing; and
a sealing element (10, Fig. 2) at least partially arranged in the circumferential gap (9, Fig. 2).
But Holder does not explicitly disclose the particle filter has the shape that one of the inflow-side end face and the outflow-side end face is a smaller end face and the other one of the inflow-side end face and the outflow-side end face is a larger end face, wherein a projection of the smaller end face along the flow direction onto the larger end face is such that the projection of the smaller end face is located entirely inside the larger end face, as a result, the circumferential gap is a tapering gap.
However, Lee discloses an air cleaner comprising an air cleaner filter to remove contaminants the air. The air cleaner may remove bacteria, viruses, mold, fine dust, and chemical substances causing foul odors from suctioned air thus producing purified air (paragraphs [0002]; [0003]). Lee discloses an embodiment of filter assembly (2, Figs. 6-8) is formed to have a conical shape or a circular truncated conical shape, such that the first filter assembly 2 formed either in the conical shape or in the circular truncated conical shape may have a larger surface area than the other filter assembly formed in a cylindrical shape on the assumption that the first filter assembly 2 and the other first filter assembly are formed to have the same diameter. Therefore, the air suctioned through the inlet 110 may more easily pass in through the first filter assembly 2 having a larger surface area, resulting in improved air purification efficiency (Figs. 6-8; paragraph [0072]).
It is noted that both the Holder and Lee references direct a filter unit to be arranged for a gas mixture in a flow direction from an inflow side through the filter unit to an outflow side.
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the filter unit of Holder, in view of Lee, to provide the feature of “the particle filter has the shape that one of the inflow-side end face and the outflow-side end face is a smaller end face and the other one of the inflow-side end face and the outflow-side end face is a larger end face, wherein a projection of the smaller end face along the flow direction onto the larger end face is such that the projection of the smaller end face is located entirely inside the larger end face, as a result, the circumferential gap is a tapering gap, this is because the tapered shape filter unit resulting in improved air purification efficiency as taught by Lee (Figs. 6-8; paragraph [0072]).
In regard to claim 2, Holder discloses the particle filter comprises a pleated form (6, Fig. 1) (col. 6, line 49 thru col. 7, line 58).
In regard to claim 3, Lee discloses the particle filter has the shape of a truncated cone with two circular faces (Figs. 6-8).
In regard to claim 4, Lee discloses a further filter element wherein: the further filter element (11, Fig. 12) is arranged in the housing and downstream of the particle filter with respect to the flow direction. Lee discloses the larger end face of the particle filter is the inflow-side end face (Figs. 6-8).
In regard to claim 5, as set forth above, Holder, in view of Lee, discloses the feature of truncated cone with two circular faces in the filter unit and a tapering gap. The feature of “the larger end face of the particle filter is the outflow-side end face” would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize filter unit activity and utility taking into consideration the operational parameters of the gas filtering operation (residence time, temperature, pressure, throughput), the geometry of the filter unit body, the physical and chemical make-up of the gas mixture feedstock as well as the nature of the filtered gas products.
In regard to claim 6, as set forth above, Holder, in view of Lee, discloses the feature of truncated cone with two circular faces in the filter unit and a tapering gap. The feature of “the smaller front surface is at an obtuse angle to the lateral surface and the obtuse angle is between 100 degrees and 115 degrees; and the larger front surface is at an acute angle to the lateral surf ace and the acute angle is between 65 degrees and 80 degrees” would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize filter unit activity and utility taking into consideration the operational parameters of the gas filtering operation (residence time, temperature, pressure, throughput), the geometry of the filter unit body, the physical and chemical make-up of the gas mixture feedstock as well as the nature of the filtered gas products.
In regard to claim 7, Lee discloses the sealing element (10, Fig. 2) is materially bonded to a circumferential region of the particle filter adjacent to the outer surface (Figs. 2-5; col. 7, lines 1-18).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772
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