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 6/4/2026.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phillips (US 6,183,633).
Regarding claim 1, Philips teaches an apparatus comprising a fluid passageway including a first passageway portion (6) having a first cross-section, and a second passageway portion having a second cross-section (rectangular), the second passageway portion adjoining the first passageway portion and being downstream of the first passageway portion with respect to the direction of fluid flow through the fluid passageway; and a settlement filter that is disposed in the fluid passageway, the settlement filter comprising a transition from the first passageway portion to the second passageway portion and being configured to receive and retain particles therein, wherein the first cross-section and the second-cross section are perpendicular to a direction of fluid flow through the fluid passageway, and the transition is a result of the first cross-section having a first shape, the second cross-section having a second shape, and the first shape being different than the second shape (Fig. 30, C1/L60-64, and C8/L40-62).
Based on the Figures, it appears the distance between the transition and a beginning of the settlement filter is approximately equal to a distance between an end of the settlement filter, downstream of the beginning of the settlement filter, and an end of the second passageway portion downstream of the settlement filter and not less than the distance between an end of the settlement filter, downstream of the beginning of the settlement filter, and an end of the second passageway portion downstream of the settlement filter as claimed. Even though proportions in drawing are not evidence of actual proportions, (MPEP 2125), Phillips does not explicitly teach the specific proportions/distances and thus fails to anticipate this limitation. However, moving the sediment filter slightly forward or slightly backward would not result in any difference in operation. Further, there is no allegation of benefit or criticality by Applicant in the slight rearrangement of the placement of the settlement filter within the apparatus. As such, the limitation is directed an obvious rearrangement of parts (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). Additionally, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner. It is Examiner’s position that even if there were a slight benefit in moving the placement of the sediment filter in a certain range, a portion of the claimed range of placement would be considered so close to an centered position argued that the beneficial operational effects would have been considered to be the same.
Regarding claim 2, Phillips teaches the first cross section area is smaller than the second cross section area (Fig. 30).
Regarding claim 3, Phillips teaches that the first cross section is circular (pipe portion shown in Fig. 6, 16, 24) and the second cross section is rectangular (C1/L60-64).
Regarding claim 4, as can be seen in Fig. 30 the floor portion of the first and second passageways are flush one with another.
Regarding claim 5, it is noted that the claims are directed to an apparatus and only the claimed elements are given patentable weight. How the apparatus is oriented to unclaimed elements is not given patentable weight. Phillips teaches all claimed structural limitations and the device is capable of being oriented at an angle to unclaimed elements or perspectives and therefore meets the claim limitations. "[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.).
Regarding claims 6-7, it is submitted that the first floor portion based on the bottom of the cylindrical pipe and the flat floor portion of the rectangular structure would include corners as claimed due to the differences in shape. This is more clearly shown in Fig. 31 with the dotted portion of the pipe forming a corner between the two floor positions due to the shape differences. It is noted that Fig. 31 shows outlet (8) and not first passageway 6, but the same principle would apply as outlet (8) and first passageway (6) have the same shape.
Regarding claims 8-10, Phillips teaches that the fluid passageway is part of a housing and includes trap openings (132) along the floor thereof and a vacancy (22) below the trap openings (Fig. 30).
Regarding claim 11, Philips teaches an apparatus comprising a fluid passageway including a first passageway portion (6) having a first cross-section, and a second passageway portion (rectangular portion) having a second cross-section, the second passageway portion adjoining the first passageway portion and being downstream of the first passageway portion with respect to the direction of fluid flow through the fluid passageway; and a settlement filter that is disposed in the fluid passageway, the settlement filter comprising a transition from the first passageway portion to the second passageway portion and being configured to receive and retain particles therein, wherein the first cross-section and the second-cross section are perpendicular to a direction of fluid flow through the fluid passageway, the first cross-section is different from the second cross section in shape or dimension (circular and rectangular), the difference in the first cross-section and the second cross section defining the transition, the fluid passageway defines a floor corresponding to the lowermost portion of the fluid passageway with respect to the direction of gravity of the earth, the settlement filter comprises a sieve/openings (132) disposed in the floor of the second passageway portion, and the sieve is configured to allow passage of particles therethrough under force of gravity (Fig. 30, C1/L60-64, and C8/L40-62).
Based on the Figures, it appears the distance between the transition and a beginning of the settlement filter/sieve is approximately equal to a distance between an end of the settlement filter, downstream of the beginning of the settlement filter/sieve, and an end of the second passageway portion downstream of the settlement filter/sieve and not less than the distance between an end of the settlement filter/sieve, downstream of the beginning of the settlement filter/sieve, and an end of the second passageway portion downstream of the settlement filter/sieve as claimed. Even though proportions in drawing are not evidence of actual proportions, (MPEP 2125), Phillips does not explicitly teach the specific proportions/distances and thus fails to anticipate this limitation. However, moving the sediment filter slightly forward or slightly backward would not result in any difference in operation. Further, there is no allegation of benefit or criticality by Applicant in the slight rearrangement of the placement of the settlement filter/sieve within the apparatus. As such, the limitation is directed an obvious rearrangement of parts (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). Additionally, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner. It is Examiner’s position that even if there were a slight benefit in moving the placement of the sediment filter/sieve in a certain range, a portion of the claimed range of placement would be considered so close to an centered position argued that the beneficial operational effects would have been considered to be the same.
Regarding claims 12-14, Phillips teaches the sieve is comprised of trap openings (132) and the settlement filter includes a trap housing (22) that receives the particles passed through the trap openings.
Regarding claims 15-16, , Phillips teaches that the first cross section is circular (pipe portion shown in Fig. 6, 16, 24) and the second cross section is rectangular (C1/L60-64).
Regarding claim 17, as can be seen in Fig. 30 the floor portion of the first and second passageways are flush one with another.
Regarding claim 18, see claim 5 above for analysis on how the limitation is directed to orientation/perspective/relation to unclaimed elements and the Phillips apparatus is capable of being oriented as claimed.
Regarding claim 19, Phillips teaches a housing that would include the inner passageway (Fig. 30).
Regarding claim 20, it is submitted that the first floor portion based on the bottom of the cylindrical pipe and the flat floor portion of the rectangular structure would include corners as claimed due to the differences in shape. This is more clearly shown in Fig. 31 with the dotted portion of the pipe forming a corner between the two floor positions due to the shape differences. It is noted that Fig. 31 shows outlet (8) and not first passageway 6, but the same principle would apply as outlet (8) and first passageway (6) have the same shape.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive. It is noted that the above rejection has been modified to address how Phillips addresses the added claim limitations.
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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