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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 27, 2026 has been entered.
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 1-19, 21-23 and 28-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 10,792,608. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instant claims are fully encompassed and envisaged in the patent claims. It is acknowledged that the patent claims recite and require an air handling unit with an air inlet and mixing chamber, however a person having ordinary skill in the art will understand that the fastened-on scrubber of the patent claims is an independent part that is useful on its own. Additionally, no positive connection between the scrubber and air handling unit is recited (only “configured to mate” is used). So we have two distinct elements in the patent claim, one of which is being claimed in the instant application.
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) 1-5, 7-10, 12, 14-20, 23 and 28-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chamberlain (2,633,928).
Chamberlain ‘928 teaches an air dehumidifier comprising a housing (10), one side of the housing including an inlet port (21) and an outlet port (22), an adsorbent cartridge (50) in the housing, a fan (39), a heating coil (lamp 47), an outside air inlet (23) for purge air, a purge air outlet (24), and bypass dampers (29,30) for controlling treated air and purge air flows (see figures 1-5, 21, col. 2, lines 24-35, col. 4, lines 12-75, col. 5, lines 56-71). The side of the housing with inlet and outlet ports (21,22) anticipates an interface that is capable of being connected to and external inlet of an HVAC system without conduits for treating air within the system. The interface is also capable of partially or completely covering an opening, depending on the size of the opening. The spacing of the inlet and outlet will minimize re-entry of treated air into the housing and the coupling of the interface supports the weight of the housing (figure 21).
Claim(s) 1-14, 16 and 23, 28, 29 and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neary (2006/0236867 A1).
Neary ‘867 teaches a gas separation vessel comprising a housing (29), one side of the housing including flanged inlet ports (33) and a flanged outlet port (34), air outlets on a perforated inner tube for expelling air from the assembly, and an adsorbent cartridge (60) in the housing (see figure 6, paragraphs 64-66). The side of the housing with inlet and outlet ports anticipates an interface that is capable of being connected to and external inlet of an HVAC system without conduits for treating air within the system. The interface is also capable of partially or completely covering an opening, depending on the size of the opening. The spacing of the inlet and outlet will minimize re-entry of treated air into the housing and one of the inlets can be used as a return air inlet to receive purge air (instant claim 6) or as a separate channel to allow a flow of outside air (instant claim 13). Purging is not disclosed, however the inlets and outlet are inherently capable of receiving purge gas flows.
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.
Claims 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chamberlain ‘928 in view of Schaffhausen (5,443,625).
Chamberlain ‘928 discloses all of the limitations of the claims except that there is a sensor to measure contaminants in the inlet or outlet and measurements are used to control activation or deactivation of the assembly. Schaffhausen ‘625 discloses an air purifier with a contaminant detection device that is used to control operation of the device (see col. 7, lines 7-23). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the device of Chamberlain ‘928 by using the detection/control arrangement of Schaffhausen ‘625 in order to provide a means that efficiently controls operation so that the fan is not powered when contamination is below an acceptable level.
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive. First it is noted that the outstanding claim objection, indefiniteness rejection, and statutory rejection have each been overcome and are withdrawn.
Regarding the claim interpretation (paragraph 11 of the non-final office action filed on April 29, 2025), applicant disagrees because the claims contain structural and functional relationships between the scrubber assembly and an external air inlet opening to a chamber of an HVAC system. The examiner agrees with this characterization, but maintains that the HVAC system is not required to anticipate the claim, as long as a prior device is capable of connecting to the system as claimed.
Applicant argues that the non-statutory double patenting rejection is improper in view of the claim amendments and previously claimed subject matter. The examiner disagrees and maintains the previous double patenting rejection with the exception of removing instant claim 20 because the patent claims do not include a bypass damper. It is acknowledged that the patent claims recite and require an air handling unit with an air inlet and mixing chamber, however a person having ordinary skill in the art will understand that the fastened-on scrubber of the patent claims is an independent part that is useful on its own. Additionally, no positive connection between the scrubber and air handling unit is recited (only “configured to mate” is used). So we have two distinct elements in the patent claim, one of which is being claimed in the instant application.
Regarding the anticipation rejections over Chamberlain ‘928 and Neary ‘867, applicant argues that the references do not disclose the instant invention because they are silent with respect to how the interface or attachment is capable of performing the claimed features including the physical attachment and air flow capabilities. The examiner agrees that no HVAC system is disclosed in the references, however it is maintained that the prior devices are inherently capable of mating with an air inlet of an air handling system and communicating with air in the system via their inlets and outlets. The instant claims do not give any requirement to the size or structure of the HVAC system or its external air inlet that would make the prior devices incompatible. The only requirement is that the assembly can attach with an opening.
With respect to the obviousness rejection over Chamberlain in view of Schauffhausen, applicant argues that the examiner has not identified any teaching, suggestion or motivation that would have led a person having ordinary skill in the art to combine the references, however it is pointed out that paragraph 23 of the final rejection states that the combination would have been made in order to provide a means that efficiently controls operation so that the fan is not powered when contamination is below an acceptable level.
Applicant also argues that the examiner relies on hindsight reconstruction of applicants’ invention, however the Schauffhausen patent is only cited to show the use of sensors with device operation control that can be used in an air purifier.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK LAWRENCE whose telephone number is (571)272-1161. The examiner can normally be reached Mon-Fri 8:30am-7pm.
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, 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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/FRANK M LAWRENCE JR/Primary Examiner, Art Unit 1776
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