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 1-4, 8, 9, and 15 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 housing" in line 13. There is insufficient antecedent basis for this limitation in the claim.
Claims 8 and 15 recites the limitation "the inlet opening and the outlet opening" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-4 and 9 are rejected as being dependent upon a rejected base claim.
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, 2, 3, 11, 12, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2021/0235549 to Smith et al.
Regarding Claims 1 and 11, Smith teaches a heater (Smith title) for aquariums (italics indicates functional language the structure of Smith is “capable of” apparatus claims need to structurally distinguish) comprising: a heating element (Smith Fig. 1 #22) configured to generate an amount of heat for heating an amount of water of an aquarium (Smith is designed to heat water and is this “capable of” heating aquarium water; paragraph [0012]); a support body (Smith Fig. 1 #14), wherein the heating element is located and supported on an outer surface (Smith Fig. 1 #22) of the support body, wherein the support body has a heat exchange surface (Smith Fig. 1 #30 inside surface of tube #14) located substantially opposite the outer surface and on an inner surface of the support body and is configured to come into contact with the water to be heated to transmit at least a portion of the amount of heat generated by the heating element thereto; and wherein the support body is at least partially made of alumina (Smith aluminum and aluminum oxide, paragraph [0003]-[0005], [0014]-[0017], and Fig. 1 #32); and wherein the support body has a substantially tubular shape (Smith Fig. 1 #14); wherein the support surface at least partially defines an inner surface of the housing (Smith Fig. 1 #18); and wherein the heat exchange surface at least partially defines an outer surface of the support body (Smith Fig. 1 #22 is part of outer surface of #14); a containment body (Smith Fig. 1 #16) defining a passage channel for a water flow; wherein at least a portion of the support body (Smith Fig. 1 #14) is located within a cavity of the containment body so that the water flow comes into contact with the heat exchange surface.
Regarding Claims 2 and 12, Smith teaches the heating element is printed or screen-printed on a surface of the support body (Smith #22 printed on #14, abstract, paragraph [0002]-[0004]).
Regarding Claims 3 and 13, Smith teaches at least one heating film (Smith #22, abstract, paragraph [0002]-[0004]).
Claim Rejections - 35 USC § 103
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 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) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2021/0235549 to Smith et al in view of U.S. Patent No. 6,565,330 to Bresolin.
Regarding Claims 4 and 14, Smith teaches wherein the at least one film at least partially defines the heating element (Smith #22), but is silent on explicitly teaching the at least one film is at least partially made of a material having a positive temperature coefficient (PTC). However, Bresolin teaches the general knowledge of one of ordinary skill in the art that it is known to select at least one film is at least partially made of a material having a positive temperature coefficient (PTC) (Bresolin Col. 3 lines 33-56). It would have been obvious to one of ordinary skill in the art to modify the teachings of Smith with the teachings of Bresolin before the effective filing date of the claimed invention with a reasonable expectation of success to prevent overheating as taught by Bresolin. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results and/or the simple substitution of one known material for another to obtain predictable results.
Claim(s) 8, 10, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2021/0235549 to Smith et al in view of PCT WO 0022882 to Bresolin.
Regarding Claims 8 and 15, Smith is silent on teaching an impeller located within the support body within the passage channel and collinear with the inlet opening and the outlet opening. However, Bresolin teaches the general knowledge of one of ordinary skill in the art that it is known to provide an impeller (Bresolin Fig.4 #24 in #8) located within the support body within the passage channel and collinear with the inlet opening and the outlet opening. It would have been obvious to one of ordinary skill in the art to modify the teachings of Smith with the teachings of Bresolin before the effective filling date of the claimed invention with a reasonable expectation of success for circulation as taught by Bresolin. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results
Regarding Claim 10, Smith teaches all the limitations as outlined in independent claim 1 above, but is silent on at least one of a filter for aquariums, a pump, or a skimmer. However, Bresolin teaches the general knowledge of one of ordinary skill in the art that it is known to provide a filter for aquariums (Bresolin Fig. 4 filter at inlet to #8, filter is not numbered in the figure). It would have been obvious to one of ordinary skill in the art to modify the teachings of Smith with the teachings of Bresolin before the effective filing date of the claimed invention with a reasonable expectation of success to prevent debris from clogging the heater and/or pump as taught by Bresolin. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results.
Claim(s) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2021/0235549 to Smith et al in view of European Patent EP 0757507 to Bresolin.
Regarding Claims 9 and 16, Smith is “capable of” being used outside of an aquarium, but is silent on the system components to configure it to be configured to be arranged, in use, outside the aquarium. However, Bresolin EP teaches the general knowledge of one of ordinary skill in the art that it is known to configure the aquarium heater outside the aquarium (Bresolin EP Fig. 4 #4). It would have been obvious to one of ordinary skill in the art to modify the teachings of Smith with the teaching of Bresolin EP before the effective filing date of the claimed invention with a reasonable expectation of success for preferable filtering as taught by Bresolin EP. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results and/or "obvious to try" choosing from a finite number of identified, predictable solutions with a reasonable expectation of success. The modification is merely an obvious engineering design choice derived through routine tests and experimentation for ease of routine maintenance involving an obvious shift in location performing the same intended function [In re Japikse, 181 F.2d 1019, 1023, 86 USPQ 70, 73, (CCPA 1950]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 8-16 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.
The examiner maintains that applicant hasn’t patentably distinguished over the prior art of record.
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 ANDREA M VALENTI whose telephone number is (571)272-6895. The examiner can normally be reached Available Monday and Tuesday only, eastern time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA M VALENTI/Primary Examiner, Art Unit 3643
04 May 2026
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