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 Status
Claims 1-4 and 15-22 are rejected.
Claims 5-14 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Species F, as shown in Fig. 24, in the reply filed on August 26, 2024, is acknowledged. The traversal is on the ground(s) that the Restriction Requirement appears to extend the election to additional disclosed embodiments that are not encompassed by the pending claims. This is not found persuasive because the requirement includes all the disclosed species and applicant should indicate the claims directed to the elected species. Applicant indicated that claims 1-3, 5-13 and 15-22 are readable on the elected species. However, claim 5 is not drawn to the elected species since it requires a radially inwardly directed seal member, and Fig. 24 shows a radially outwardly directed seal member. Therefore, claims 5-14 are withdrawn from further consideration because they are drawn to a non-elected species. Claim 4 is directed to the elected species and is hereby examined. Accordingly, claims 1-4 and 15-22 are hereby examined, and claims 5-14 are withdrawn from further consideration because they are drawn to non-elected species.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 22 is 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 22 recites the limitation "the element" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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) 1-4, 15, 19 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Curt et al. (US 2010/0108590) [hereinafter Curt].
With respect to claim 1, Curt discloses a fluid filter 10, as shown in Fig. 1, having: a filtering media 14 (filter media construction) including pleated media in a tube shape surrounding an open interior volume and having first and second opposite ends, as shown in Figs. 1-2; an endplate 20 (first end cap) secured to the first end of the filter media construction 14, as shown in Fig. 2; the first end cap 20 having an opening 38 in communication with the open interior volume, as shown in Figs. 2-3; the first end cap 20 having a ring member 16, 30, having a radial wall, as shown in Figs. 1-4; a set of cartridge projections extending radially outwardly from the radial wall 16, 30, as shown in the figure below; and the cartridge projections being circumferentially spaced from each other, as shown in the figure below.
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With respect to claim 2, Curt discloses wherein the cartridge projections include gear teeth, as shown in the figure above.
With respect to claim 3, Curt discloses wherein the cartridge projections are within a plane perpendicular to a central longitudinal axis of the filter media construction 14, as shown in Figs. 1-2.
With respect to claim 4, Curt discloses a seal 42 (radially outwardly directed seal member) secured to the first end cap 20, as shown in Fig. 2.
With respect to claim 15, Curt discloses wherein the cartridge projections are along a full 360° extension, as shown in Fig. 1.
With respect to claim 19, Curt discloses wherein there are no more than 50 projections, as shown in Figs. 1 and 3
With respect to claim 21, Curt discloses tabs 35 (anti-rotation arrangement), as shown in Fig. 4.
With respect to claim 22, Curt discloses wherein the anti-rotation arrangement comprises a plurality of tabs 35 projecting radially from the element, as shown in Fig. 4.
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) 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Curt (US 2010/0108590).
With respect to claims 16-18, Curt lacks wherein each projection has a height of 0.12-0.34″; wherein each projection is a gear tooth sized so that a one tooth angle of rotation is 7.2-20°; and wherein each projection is a gear tooth sized so that a one tooth angle of rotation is about 10-11°. However, the specific dimensions claimed by applicant, are considered to be nothing more than a choice of engineering skill, choice or design that a person having ordinary skill in the art would have found obvious during routine experimentation based among other things, on desired accuracy, since the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device was not patentably distinct from the prior art device (see In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (FED. Cir. 1984), cert. Denied, 469 U.S. 830, 225 USPQ 232 (1984)).
With respect to claim 20, Curt lacks wherein there are no fewer than 18 projections. However, this would have been obvious to one of ordinary skill in the art in order to achieve a desired accuracy, since one of ordinary skill would recognize to choose a desired number of projections according to a desired application.
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 1-4 and 15-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,975,278 in view of Curt (US 2010/0108590). U.S. Patent No. 11,975,278 claims all the claimed subject matter except an end cap having a ring member with a radial wall and the projections extending from the radial wall and being circumferentially spaced from each other. Curt teaches these limitations, as stated above, in order to ensure that the correct filter element is installed in a filtration system (see paragraph 0005 of Curt) and it would have been obvious to modify U.S. Patent No. 11,975,278 for this reason.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gustafson et al. (US 2002/0170279) teaches a filter cartridge having an endcap with projections. Ellis (US 4,698,164) teaches a filter apparatus having a gear mechanism.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE GONZALEZ whose telephone number is (571)272-5502. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
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