DETAILED ACTION
Status of Claims:
Claims 1-16 are pending.
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 states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: a “filtration filter having a planar shape…having the second set of through holes shifted relative to the first set of through holes” (see claim 1) and a “filter base having a planar shape…having a second plurality of through holes that are offset relative to each other”. The original disclosure does not provide support for a planar filter with offset through holes stating that it is “required that the filtration filter 1A have a tubular shape” (see para. 0058 USPN 2021/0077925) and the original disclosure teaches that the offset/shifted holes are formed when the ends of the filter sheet are joined (see para. 0103).
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, “a filtration filter having a planar shape…the second set of through hole shifted relative to the first set”, “a filter base having a planar shape…through holes that are offset relative to each other…” and “a continuous portion having a first set of through holes… and a non-continuous portion having a second set of through holes…the second set of through holes shifted relative to the first set of through holes… must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The figures only show through holes of the non-continuous section (ref. # 14) shifted with respect to each other not with the first set of through holes. Further there are no figures of a planar shape with through hole shifted, although figures 2-4, for example, appear planar they are “enlarged schematic” views of the tubular filter of figure 1, not figures of a planar filter.
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.
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 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,951,422. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1:
The claims of the patent disclose filtration filter having a shape, the filtration filter comprising: a filter base that defines a plurality of through holes arranged in a square grid array, wherein the filter base includes a continuous portion having a first set of through holes of the plurality of through holes and a non-continuous portion having a second set of through holes of the plurality of through holes, the continuous portion extending in a first direction and extending in a second direction along at least a first portion of the filtration filter orthogonal to the first direction, the non-continuous portion having the second set of through holes shifted relative to the first set of through holes of the continuous portion, the non-continuous portion extending in the first direction.
The claims of the patent do not teach that the filtration filter has a planar shape. However it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the tubular shaped of the claims of the patent to a planar shape because it is a simple change in shape without any change in the function of the device. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
Regarding Claims 2-8:
Claims 2-8 of the instant invention respectively correspond to claims 3-6 and 8-10 of the patent.
Regarding Claim 9:
The claims of the patent disclose the filtration filter comprising: a filter base having a shape, the filter base including: a continuous portion having a first plurality of through holes arranged in a square grid array, the continuous portion extending in a first direction and extending in a second direction along at least a first portion of the filter base orthogonal to the first direction, and a non-continuous portion having a second plurality of through holes that are offset relative to each other, the non-continuous portion extending in the first direction (see claim 11).
The claims of the patent do not teach that the filtration filter has a planar shape. However it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the tubular shaped of the claims of the patent to a planar shape because it is a simple change in shape without any change in the function of the device. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
Regarding Claims 10-16:
Claims 10-16 of the instant invention directly correspond to claims 1-16 and 18-20 of the patent.
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 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schulte et al (USPN 6,283,302).
Regarding Claim 1:
Schulte teaches the filtration filter having a planar shape, the filtration filter comprising: a filter base that defines a plurality of through holes arranged in a square grid array, wherein the filter base includes a continuous portion having a first set of through holes (openings 42 in first column) of the plurality of through holes and a non-continuous portion having a second set of through holes of the plurality of through holes, the continuous portion extending in a first direction and extending in a second direction along at least a first portion of the filtration filter orthogonal to the first direction (extending at least the length and width of the through holes), the non-continuous portion having the second set of through holes (openings 42 in second column) shifted relative to the first set of through holes of the continuous portion (see fig. 3 annotated below), the non-continuous portion extending in the first direction (extending at least the length of the through holes) (see col. 5 lines 32-35, fig. 3B annotated below).
Regarding Claim 9:
Schulte teaches filtration filter comprising: a filter base having a planar shape, the filter base including: a continuous portion having a first plurality of through holes arranged in a square grid array (openings 42 in first column), the continuous portion extending in a first direction and extending in a second direction along at least a first portion of the filter base orthogonal to the first direction, and a non-continuous portion having a second plurality of through holes (openings 42 in second and third columns) that are offset relative to each other, the non-continuous portion extending in the first direction (extending at least the length of the opening) (see col. 5 lines 32-35, fig. 3B annotated below). The claims do not require that the first plurality of through holes not be offset relative to the second plurality of through holes.
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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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamba et al (US 2016/0041075) in view of Schulte et al (USPN 6,283,302).
Regarding Claim 1:
Kamba teaches the filtration filter having a planar shape (see fig. 1), the filtration filter comprising: a filter base (cavity arrangement structure 1) (see fig. 1, para. 0040) that defines a plurality of through holes (square cavities 11) arranged in a square grid array (see para. 0040), wherein the filter base includes a continuous portion having a first set of through holes of the plurality of through holes, the continuous portion extending in a first direction (x) and extending in a second direction (y) along at least a first portion of the filtration filter orthogonal to the first direction (the grid extends along the x and y axis) (see fig. 1).
Kamba does not teach a non-continuous portion having a second set of through holes of the plurality of through holes, the non-continuous portion having the second set of through holes shifted relative to the first set of through holes of the continuous portion, the non-continuous portion extending in the first direction. Kamba further teaches that the through holes (cavities) can be arranged in different ways such as periodically or aperiodically (see para. 0039) and further in different period structures (see para. 0039-0040).
Schulte teaches a filtration filter having a planar shape, comprising a continuous portion having a first set of through holes (openings 42 in first column) and a non-continuous portion having a second set of through holes (openings 42 in second column) of the plurality of through holes, the non-continuous portion having the second set of through holes shifted relative to the first set of through holes of the continuous portion, the non-continuous portion extending in the first direction (extending at least the length of the opening) (see col. 5 lines 32-35, fig. 3B annotated below).
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Kamba and Schulte are analogous inventions in the art of planar filters. It would have been obvious to one skilled in the art before the effective filing date of the invention to arrange the columns of through holes (cavities) of Kamba such that they are shifted with respect to the adjacent columns (as disclosed by Schulte), thereby forming a non-continuous section with a second set of through holes shifted relative to the first, as taught by Schulte, because it is a simple change in shape without changing the function of the device, with an expectation of success. Further Kamba teaches that different hole (cavity) arrangements can be used (see Kamba para. 0039). The change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
Regarding Claim 2:
Kamba, as modified, teaches the filtration filter according to Claim 1, wherein the non-continuous portion extends in the second direction along at least a second portion of the filtration filter (extends at least the width of the opening) (see Schulte fig. 3B above).
Regarding Claim 3:
Kamba, as modified, teaches the filtration filter according to Claim 1, wherein the filter base includes: a first filter base extending in the first direction in the non-continuous portion, the first filter base having a first side and a second side opposite the first side; a plurality of second filter bases connected to the first side of the first filter base at respective first connection portions, the plurality of second filter bases extending in the second direction; and a plurality of third filter bases connected to the second side of the first filter base at respective second connection portions, the plurality of third filter bases extending in the second direction, wherein the respective plurality of first connection portions and the respective plurality of second connection portions (connection portions are where the first filter base portion meets the second or third filter base portions) are shifted relative to each other in the first direction (see Schulte fig. 3, annotated below).
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Regarding Claim 4:
Kamba, as modified, teaches the filtration filter according to Claim 3, wherein the respective first connection portions are each disposed between a corresponding adjacent two of the respective second connection portions (see Schulte fig. 3, above).
Regarding Claim 5:
Kamba, as modified, teaches the filtration filter according to Claim 3, wherein a first width of the first filter base is equal to a second width of a part of the continuous portion of the filter base (all portions of the filter base extending between the openings are the same width) (see Schulte fig. 3, above).
Regarding Claim 6:
Kamba, as modified, teaches the filtration filter according to Claim 1, wherein the filter base comprises at least one of a metal and a metal oxide as a main component thereof (see Kamba para. 0045).
Regarding Claim 7:
Kamba, as modified, teaches the filtration filter according to Claim 1, wherein a thickness of the filter base is one-tenth to ten times a size of a through hole of the plurality of through holes (Thickness T of 0.5 to size of opening D of 1.8 is 1:3.6) (see Kamba para. 0088).
Regarding Claim 8:
Kamba, as modified, teaches filtration filter according to Claim 1, wherein a main surface (interpreted as surface inside of cavities) of the filter base configured to contact a fluid containing filtration objects (first target substance) (see Kamba para. 0060) has a surface roughness less than a size of the filtration objects (the first target substance passes though the cavities, therefore the surface roughness is less than the size of the filtration object or it would block the filtration object within the cavities) (see Kamba para. 0060).
Regarding Claim 9:
Kamba teaches the filtration filter comprising: a filter base having a planar shape (cavity arrangement structure 1) (see fig. 1, para. 0040), the filter base including: a continuous portion having a first plurality of through holes (square cavities 11) arranged in a square grid array (see para. 0040), the continuous portion extending in a first direction and extending in a second direction along at least a first portion of the filter base orthogonal to the first direction.
Kamba does not teach a non-continuous portion having a second plurality of through holes that are offset relative to each other, the non-continuous portion extending in the first direction.
Schulte teaches filtration filter comprising: a filter base having a planar shape, the filter base including: a continuous portion having a first plurality of through holes arranged in a square grid array (openings 42 in first column), the continuous portion extending in a first direction and extending in a second direction along at least a first portion of the filter base orthogonal to the first direction, and a non-continuous portion having a second plurality of through holes (openings 42 in second and third columns) that are offset relative to each other, the non-continuous portion extending in the first direction (extending at least the length of the opening) (see col. 5 lines 32-35, fig. 3B annotated below). The claims do not require that the first plurality of through holes not be offset relative to the second plurality of through holes.
Kamba and Schulte are analogous inventions in the art of planar filters. It would have been obvious to one skilled in the art before the effective filing date of the invention to arrange the columns of through holes (cavities) of Kamba such that they are shifted with respect to the adjacent columns (as disclosed by Schulte), thereby forming a non-continuous section with a second plurality of through holes shifted relative to each other, as taught by Schulte, because it is a simple change in shape without changing the function of the device, with an expectation of success. Further Kamba teaches that different hole (cavity) arrangements can be used (see Kamba para. 0039). The change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
Regarding Claim 10:
Kamba, as modified, teaches the filtration filter according to Claim 9, wherein the non-continuous portion extends in the second direction along at least a second portion of the filter base. (extends at least the width of the opening) (see Schulte fig. 3B above).
Regarding Claim 11:
Kamba, as modified, teaches the filtration filter according to Claim 9, wherein the filter base includes: a first filter base extending in the first direction in the non-continuous portion, the first filter base having a first side and a second side opposite the first side; a plurality of second filter bases connected to the first side of the first filter base at respective first connection portions, the plurality of second filter bases extending in the second direction; and a plurality of third filter bases connected to the second side of the first filter base at respective second connection portions, the plurality of third filter bases extending in the second direction, wherein the respective plurality of first connection portions and the respective plurality of second connection portions (connection portions are where the first filter base portion meets the second or third filter base portions) are shifted relative to each other in the first direction (see annotated figure of 3B provided with rejection of claim 3 above).
Regarding Claim 12:
Kamba, as modified, teaches the filtration filter according to Claim 11, wherein the respective first connection portions are each disposed between a corresponding adjacent two of the respective second connection portions (see Schulte, fig. 3B).
Regarding Claim 13:
Kamba, as modified, teaches the filtration filter according to Claim 11, wherein a first width of the first filter base is equal to a second width of a part of the continuous portion of the filter base (all portions of the filter base extending between the openings are the same width) (see Schulte fig. 3, above).
Regarding Claim 14:
Kamba, as modified, teaches the filtration filter according to Claim 9, wherein the filter base comprises at least one of a metal and a metal oxide as a main component thereof (see Kamba para. 0045).
Regarding Claim 15:
Kamba, as modified, teaches the filtration filter according to Claim 9, wherein a thickness of the filter base is one-tenth to ten times a size of a through hole of the plurality of through holes (Thickness T of 0.5 to size of opening D of 1.8 is 1:3.6) (see Kamba para. 0088).
Regarding Claim 16:
Kamba, as modified, teaches filtration filter according to Claim 9, wherein a main surface (interpreted as surface inside of cavities) of the filter base configured to contact a fluid containing filtration objects (first target substance) (see Kamba para. 0060) has a surface roughness less than a size of the filtration objects (the first target substance passes though the cavities, therefore the surface roughness is less than the size of the filtration object or it would block the filtration object within the cavities) (see Kamba para. 0060).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 11/19/2025