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 .
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “air intake duct”, “internal combustion engine”, and “PVC valve” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The phrase of “for affixing to a filter medium of an air filter for an internal combustion engine” or “for coupling an interior of a filter medium with an air intake duct of the internal combustion engine” or “configured to couple the interior of the cone filter with any of a PCV valve that is electrically connected with the internal combustion engine” is understood as being directed to and further reciting the purpose or intended use of the claimed invention which does not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the claimed invention, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02 and § 2112 - § 2112.02.
In this view, the “filter medium”, “air filter”, “apex portion” (as characterized as part of the ‘air filter’), “internal combustion engine”, “PCV valve” and “intake duct” (as characterized as part of ‘internal combustion engine’) are neither required by nor positively recited in the claimed invention.
Therefore, the at least claim 21 has been interpreted as follows:
“a base comprising: a flange; wherein flange is comprised of a material amendable to being stretched and compressed so as to be coupled with sizes that are, respectively, greater than or lessor than a relaxed interior diameter of the flange; a cap comprises an apex portion; a shell receiver; and a vent inlet receiver comprised of a flange adapter.”
The phrase of “amendable to being stretched and compressed so as to be coupled with sizes of the air intake duct that are, respectively, greater than or lessor than a relaxed interior diameter of the flange” which are directed to a manner of operating disclosed flange of the base, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Accordingly, the “pliable, flexible, or elastic” material of the flange enables it to stretch and/or compress, allowing it to couple with the air intake duct having diameters either greater than or smaller than the flange’ relaxed inner diameter.
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 21-30 and 36 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 21 recites the limitation "intake airstream" in line 8.
Claim 21 recites the limitation "the vent inlet" in line 12.
Claim 21 recites the limitation "the cone filter" in lines 12-13.
There is insufficient antecedent basis for this limitation in the claim.
Claims 22-30 depend on claim 21; and hence are also rejected.
As regarding claim 36, the word "substantially" renders the claim indefinite because it is unclear whether the limitation following the word "substantially" is a required by the Applicant as part of the claimed invention or not.
Claim Rejections - 35 USC § 102
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) 31-34, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ng-Gee-Quan (US 6319298).
As regarding claims 31-34, and 37, Ng-Gee-Quan discloses the claimed invention for an air filter comprising: a filter medium (4) disposed between a base and a cap; wherein the base (figs. 1-3; no number) comprising: a flange (fig. 3; no number); and a cap (2 of figs. 1 and 3; fig. 1 shows portion 2 is at apex).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 21-24, 27, 29-30, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Ng-Gee-Quan (US 6319298) in view of Williams et al (US 20180209384; hereinafter Williams).
As regarding claims 21-24, 27, and 39-40, Ng-Gee-Quan discloses the claimed invention for a base (figs. 1-3; no number) comprising: a flange (fig. 3; no number); and a cap (2 of figs. 1 and 3; fig. 1 shows portion 2 is at apex).
Ng-Gee-Quan does not disclose wherein flange is comprised of a material amendable to being stretched and compressed so as to be coupled with sizes of the air intake duct that are, respectively, greater than or lessor than a relaxed interior diameter of the flange. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein flange is comprised of a (pliable) material amendable to being stretched and compressed so as to be coupled with sizes of the air intake duct that are, respectively, greater than or lessor than a relaxed interior diameter of the flange in order to enhance air filter performance, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Ng-Gee-Quan as modified does not disclose a vent inlet receiver for providing fluid communication with the interior of the filter medium; wherein the vent inlet receiver comprised of an adapter. Williams teaches an air filter (116 in Figs. 3, 4A and 5) for an internal combustion engine comprising a base plate (108) including one or more vent receivers (see 196 in Figs. 3, 4A and 5) configured to couple with the engine into fluid communication with the interior cavity of the air filter (116), such as the vent receivers (196) may be comprised of one or more flanges (flange adapter – threaded fittings [0039]) adapted to couple the interior cavity (116) with any of a PCV valve, a crankcase breather, and various sensors that are electrically connected with the engine ([0039]). It would have been obvious to a person having ordinary skill in the art at the time the invention was made to provide a vent receiver comprised of a flange adapter as taught by Williams for the cone air filter of Ng-Gee-Quan in order to optimize filtration of an airstream passing through a volume within an air cleaner of an internal combustion engine.
As regarding claims 29-30, Ng-Gee-Quan as modified discloses all of limitations as set forth above. Ng-Gee-Quan as modified discloses the claimed invention for the cone air filter configured to be retained within a rigid exterior shell (1) such that the intake air stream is directed between the cap (2) and an interior of the exterior shell (1), drawn through the filter medium into an interior of the cone air filter, the contaminants and particulate matter being removed from the intake airstream by the filter medium, and drawn into the air intake duct to the internal combustion engine.
Claims 25, 26, 28, and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Ng-Gee-Quan (US 6319298) in view of Williams et al (US 20180209384; hereinafter Williams), as applied supra, in view of Alnafisah (US 2015076491).
As regarding to claims 25, 26, and 28, Ng-Gee-Quan as modified discloses all of limitations as set forth above. Ng-Gee-Quan as modified discloses the claimed invention except for the cone filter comprising one or more holes configured to receive fasteners. Alnafisah discloses a conical filter (1 in Fig. 3) comprising one or more holes (6) surrounding the perimeter of the base (4) configured to receive fasteners to couple the conical filter to the air intake duct. It would have been obvious to a person having ordinary skill in the art at the time the invention was made to provide a plurality of holes configured to receive fasteners as taught by Alnafisah in the cone filter of Ng-Gee-Quan since it is well-known in the art that fasteners around the base of a cone filter would facilitate tight fit installation of the filter to the air intake duct.
Claims 35-36 are likewise rejected with similar reasons as set forth in claims 25-26 above.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Ng-Gee-Quan (US 6319298) as applied supra.
As regarding to claim 38, Ng-Gee-Quan as modified discloses all of limitations as set forth above. Ng-Gee-Quan as modified discloses the claimed invention except for the vent inlet receiver includes a multiplicity of interior threads configured to engage with exterior threads disposed on the flange adapter. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide the vent inlet receiver includes a multiplicity of interior threads configured to engage with exterior threads disposed on the flange adapter in order to provide other ways of fastening, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
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 AlA. 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 |.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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,826,687, over claims 1-8 of U.S. Patent No. 11,179,664 and over claims 1-9 of U.S. Patent No. 10,661,215. Although the claims at issue are not identical, they are not patentably distinct from each other because of the same subject matter which is a cone air filter for a closed intake system of an internal combustion engine comprising a cone-shaped filter medium, retained between a base and a cap, that is fabricated to remove contaminants and particulate matter from an intake airstream, wherein the base comprises a flange that couples with an air intake duct of the internal combustion engine, a shell receiver incorporated into the base and receiving a rigid exterior shell, such that the exterior shell surrounds the cone air filter and directs the intake airstream therein, and a cap disposed on an apex portion of the cone air filter and configured to direct the intake airstream around the apex portion and into the cone-shaped filter medium.
Response to Arguments
Applicant's arguments filed 21-30 have been fully considered but they are not persuasive.
Applicant’s remark argues that Ng-Gee-Quan or Williams (alone or in combination) fails to disclose or teach or suggest the vent inlet is comprised of a flange adapter.
Examiner respectfully disagrees.
Paragraph [0039] of Williams clearly discloses or teaches or suggests the vent (inlet) receivers (196) may be comprised of one or more flanges (flange adapter – threaded fittings [0039]).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
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