Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 6/30/2026.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-9 and 13-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reichter et al. (US 2009/0064646 in IDS) in view of Mertens et al. (US 2008/0029453) and Ng et al. (US 2007/0240392).
Regarding claim 1, Reichter teaches a filter element comprising: a filter media comprising: a first face, a second face opposite the first face, and a plurality of sides extending between the first face and the second face; and a filter element border extending along the plurality of sides and around the filter media, the filter element border (826 829) having a first semi-arcuate shape (bumps projections) (826d) in a cross-sectional plane extending through the filter media and orthogonally to the first face and the second face (Figs. 29-30 and [0208]-[0210]).
Reichter fails to teach the filter element having a first arc extending continuously along an entire length a first side of the plurality of sides. It is noted that modifications to the shape would have been an obvious matter unless some sort of criticality or unexpected results were associated with said change (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.). Further filters are known to come in a variety of shapes (see Mertens Fig. 2 and [0005]; and Ng Figs. 1-3). Additionally, Mertens teaches that changing the filter shape will allow for better use of space and larger filtering areas if desired ([0005]). As such, one skilled in the art would have found it obvious to provide the arc shape along the entire first side of the plurality sides as such shapes are known in the art and would allow for space saving according to the filter housing shape while maximizing filtration area if desired.
Regarding claims 2-3, as discussed above, modifying the shape to have combination of straight and arc sides would have been an obvious matter to one skilled in the art as it is merely an obvious change of shape that would allow for space saving according to the filter housing shape while maximizing filtration area if desired.
Regarding claims 4 and 17, as can be seen in Fig. 30, the border includes a space between the first face (top of filter) and the flat second and fourth portions. See also Ng Figures 1-3.
Regarding claim 5, Figs. 27-29 show the border can include a gasket (829) capable of interacting with a housing as claimed.
Regarding claim 6, it is submitted that arcuate projections/bumps read on this limitation that are capable of interacting with unclaimed elements as claimed.
Regarding claim 7, while Reichter teaches that border projections being extended along the first or second face in Fig. 30, it is submitted that making the filter border slightly lower on the side of the filter would have been an obvious rearrangement of parts where the filter would still operate in the same manner (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Regarding claim 8, Reichter teaches that the filter media is a rectangular prism type shape (Fig. 30).
Regarding claim 9, Reichter teaches the filter element border being positioned between two housing sections (Figs. 29-30).
Regarding claims 13-14, it is submitted that Reichter teaches the inlet (814) and outlet (811) arrangement (openings in 801 and 802) as claimed (Figs. 29-30).
Regarding claims 15, as can be seen in the figures of Reichter and Ng, the filter element border can join the second side of the plurality of sides in a straight line.
Regarding claim 16, see claims 2-3 above.
Regarding claim 18, see claim 4 and 7 above.
Regarding claim 19, see claim 8 above.
Regarding claim 20, see claim 7 above.
Claim 1-9 and 13-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Connor et al. (US 7,247,183 in IDS) in view of Mertens et al. (US 2008/0029453) and Ng et al. (US 2007/0240392).
Regarding claim 1, Connor teaches a filter element comprising: a filter media comprising: a first face, a second face opposite the first face, and at least one side extending between the first face and the second face (the first and second face could be any of the six sides of the rectangular prism filter element); and a filter element border extending along the at least one side and around the filter media, the filter element border having a first semi-arcuate shape (recesses and bumps shown in Fig. 1) in a cross-sectional plane extending through the filter media and substantially orthogonally to the first face and the second face (Figs. 1-2).
Connor fails to teach the filter element having a first arc extending continuously along an entire length a first side of the plurality of sides. It is noted that modifications to the shape would have been an obvious matter unless some sort of criticality or unexpected results were associated with said change (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.). Further filters are known to come in a variety of shapes (see Mertens Fig. 2 and [0005]; and Ng Figs. 1-3). Additionally, Mertens teaches that changing the filter shape will allow for better use of space and larger filtering areas if desired ([0005]). As such, one skilled in the art would have found it obvious to provide the arc shape along the entire first side of the plurality sides as such shapes are known in the art and would allow for space saving according to the filter housing shape while maximizing filtration area if desired.
Regarding claims 2-3, as discussed above, modifying the shape to have combination of straight and arc sides would have been an obvious matter to one skilled in the art as it is merely an obvious change of shape that would allow for space saving according to the filter housing shape while maximizing filtration area if desired.
Regarding claims 4 and 17, as can be seen in Figs. 1-2, the border includes a space between the first face (top of filter) and the flat second and fourth portions. See also Ng Figures 1-3.
Regarding claim 5, Figs. 1-2 show the border can include a gasket (34) capable of interacting with a housing as claimed.
Regarding claim 6, it is submitted that arcuate projections/bumps read on this limitation that are capable of interacting with unclaimed elements as claimed.
Regarding claim 7, as can be seen in Figs. 2-3, the filter border does not extend along the first or second face.
Regarding claim 8, Connor teaches that the filter media is a rectangular prism type shape (Fig. 1).
Regarding claim 9, Connor teaches the filter element border being positioned between two housing sections (Fig. 3).
Regarding claims 13-14, it is submitted that Connor teaches the inlet (58) and outlet (60) arrangement claimed.
Regarding claim 15, as can be seen in the figures of Connor and Ng, the filter element border can join the second side of the plurality of sides in a straight line.
Regarding claim 16, see claims 2-3 above.
Regarding claim 18, see claim 4 and 7 above.
Regarding claim 19, see claim 8 above.
Regarding claim 20, see claim 7 above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 9,415,333. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements of claims 1, 9, 12-14 are present in claims 1 and 6 of `333. Claims 2-4, 7, and 15-18, and 20 overlap with scope of claim 1and 6 of `333 or would be an obvious rearrangement of parts or shape based on the same design and function. Claims 5-6 overlap with claims 1-2 of `333. Claims 8, 11, and 19 are directed to an obvious change of filter shape. Claim 10 would have been an obvious matter of making a single part gasket into two based on a different embodiment in `333.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 9,623,351. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements of claims 1, 9, 12-14 are present in claims 1 of `351. Claims 2-4, 7, and 15-18, and 20 overlap with scope of claim 1-4 of `351 or would be an obvious rearrangement of parts or shape based on the same design and function. Claims 5-6 overlap with claims 1-2 of `351. Claims 8, 11, and 19 are directed to an obvious change of filter shape. Claim 10 would have been an obvious matter of making a single part gasket into two based on a different embodiment in `351.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8 of U.S. Patent No. 9,782,708. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements of claims 1, 9, 12-14 are present in claims 1 of ``708. Claims 2-4, 7, and 15-18, and 20 overlap with scope of claim 1-4 and 8 of `708 or would be an obvious rearrangement of parts or shape based on the same design and function. Claims 5-6 overlap with claims 1-2 of `708. Claims 8 11, and 19 are directed to an obvious change of filter shape. Claim 10 would have been an obvious matter of making a single part gasket into two based on a different embodiment in `708.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6 of U.S. Patent No. 11,833,459. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements of claims 1, are present in claims 1 of `459. Claims 2-4, and 7 overlap with scope of claims 1-4 and 6 of `459 or would be an obvious rearrangement of parts or shape based on the same design and function. Claims 5-6 overlap with claims 1-2 of `708. Claims 8 is directed to an obvious change of filter shape.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. It is noted that the above rejection has been modified to address the added claim limitations regarding the change in shape.
It is further noted that the arguments stated a terminal disclaimer was submitted by no terminal disclaimer was found. As such, the double patenting rejections are still applicable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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