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 .
Drawings
The drawings were received on 12-24-2025. These drawings are acceptable.
Specification
The disclosure is objected to because of the following informalities: The status of parent application in paragraph 0001 should be updated.
Appropriate correction is required.
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 4 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.
In claim 4 “the duct” lacks clear antecedent basis. It is unclear if this the air intake duct or another duct which directs the airstream from air inlets to the enclosure interior. It is current being interpreted as the latter.
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 1-6 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11958340 in view of Eisel (US Patent No. 3591945)
Instant claim 1 corresponds to patent claim 1 except that instant claim 1 requires the transparent inspection region to be of transparent material including plastic and requires a mounting section of fasteners. However, Eisel (US3591945) does disclose inspection transparent region 11 being mounted by fasteners 19. It would have been obvious to one of ordinary skill in the art before the effective filing date to include fasteners in the instant claim 10 at the inspection region for replacement or removal of the transparent region as shown by Eisel. Eisel additionally discloses the interior of the enclosure comprises a plurality of smooth surfaces and rounded edges(Figure 3, as the housing 22 is clearly circular) as in claim 1 .
In regards to the transparent material such is anticipated by the combination of patent claim 8 and patent 1.
Instant claim 2 correspond to patented claim 2.
Instant claim 3 corresponds to patented claim 3.
Instant claim 4 corresponds to patented claim 4
Instant claim 5 corresponds to patented claim 5
Instant claim 6 corresponds to patented claim 6
Instant claim 9 correspond to patented claim 9.
Claims 10-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims10-15 of U.S. Patent No. 11958340 in view of Eisel (US Patent No. 3591945)
With respect to instant claim 10 and 16 correspond to patented claim 10 except that patented claim 10 does not disclose an inspection region having a plurality of fasteners. However, Eisel (US3591945) does disclose inspection transparent region 11 being mounted by fasteners 19. It would have been obvious to one of ordinary skill in the art before the effective filing date to include fasteners in the instant claim 10 at the inspection region for replacement or removal of the transparent region as shown by Eisel. Eisel additionally discloses the interior of the enclosure comprises a plurality of smooth surfaces and rounded edges (Figure 3, as the housing 22 is clearly circular) as in claim 10 .
Instant claims 11-15 correspond to patented claims 11-15 respectively.
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11958340 in view of Eisel (US Patent No. 3591945).
Limitations of Claim 17-18 corresponds to the combination of patent claims 1, 7-9 except for the plurality of fasteners. However, Eisel (US3591945) does disclose inspection transparent region 11 being mounted by fasteners 19. It would have been obvious to one of ordinary skill in the art before the effective filing date to include fasteners in the instant claim 10 at the inspection region for replacement or removal of the transparent region as shown by Eisel. Eisel additionally discloses the interior of the enclosure comprises a plurality of smooth surfaces and rounded edges(Figure 3, as the housing 22 is clearly circular) as in claim 17 .
In regards to claim 19, Eisel discloses a rubber seal. It would have been obvious to include a rubber seal 28 for the gasket of instant claim 17 in order to effectively seal the enclosure.
In regards to claim 20 mere changes in shape of the inspection region is well within the skill of one of ordinary skill in the art before the effective filing date in order to conform the inspection region to the general shape of the enclosure. Mere change in shape being obvious expedient without further criticality see MPEP 2144.04 IV. B
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.
Claims 1,4,6 are rejected under 35 U.S.C. 102a1 as being anticipated by Eisel (US 3591945)
Eisel teaches an air box (figures 1-3) for communicating an airstream from one or more aerodynamic elements of a vehicle to an air intake duct of an engine, the air box comprising:
an enclosure (12,27) configured to support the air filter (14) within an interior of the enclosure; one air inlet (23) that are configured to receive the airstream from one or more air inlet ports
a duct (21,24) configured to direct the airstream from the one or more air inlets to the interior of the enclosure;
a substantially transparent inspection region(11) disposed on a surface of the enclosure, the inspection region including a window comprised of a substantially transparent material comprising one of glass, plastic, or a combination thereof(col. 3 lines 15-20), configured so that the air filter may be viewed without requiring complete uninstallation of the air box (col. 2 lines 25-30), wherein the inspection region further comprises a mounting section including a plurality of fasteners(18,19) for attachment to the enclosure;
and a conduit (16,17) configured to communicate the airstream from an interior of the air filter to the air intake duct.
Eisel further discloses wherein the interior of the enclosure comprises a plurality of smooth surfaces and rounded edges (Figure 3 shows housing 22 as circular edges )
In regard to claim 4 Eisel discloses an opening coupled to the air inlet port (23) the inlet port has an opening as seen in figures 1-3.
In regards to claim 6 there is a flat surface 27 engaging the air intake duct (16,17) and a seal 29 engaging the air intake duct.
In regard to claim 7 and 8 the window (11) is transparent and made of recited materials including glass and plastic (col 3 lines 15-20).
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 1-6,9-15 and 17-20 are rejected under 35 U.S.C. 103 as being obvious over Wall et al (US11124059) taken together with Eisel (US 3591945).
The applied reference has a common inventor Steve Williams with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Watt et al. discloses as in claim 1, 10 and 17 an airbox 100 with an enclosure 108 having a filter element 124,
One or more air inlets 104 communicating with one or more air inlet ports 168,
A duct 112 to direct air from inlets to the enclosure interior 120,
An inspection region having a transparent window 188 and a mounting region 184 having flat panel and plurality of fasteners (col. 8 lines 33-35). It is clear window 188 is part of the unnumbered flat panel over opening 180 as shown in figures 1-4,
And a conduit 128 to communicate airflow form enclosure interior to air intake duct (col 4 line 64),
Wall et al further disclose wherein the interior of the enclosure comprises a plurality of smooth surfaces and rounded edges configured to decrease turbulence and air resistance through the air box, thereby improving performance of the engine. (col. 5 lines 1-5)
In regards to claims 2,3,11,12 Wall et al disclose supports to couple the enclosure air box to engine mounts
In regard to claim 4 Wall et al disclose air inlets having opening coupled to corresponding air inlet ports (col. 2 lines 35-40).
In regards to claims 5, 10 Wall et al disclose a gasket 172 surrounding perimeter edge of air inlets (col 2 lines 59-62)
In regards to claim 6 and 13 Wall et al disclose a flat surface and base including a seal to receive air filter (col 5 lines 40-50)
In regards to claim 14 the window is transparent (col. 8 line 50).
Wall et al does not disclose as in claim 1 ,15,17 the material the transparent window is comprised. However, Eisel discloses a similar air box with a transparent inspection region formed of like materials (col 3 lines 15-20). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the window of Wats et al of glass or plastic as in Eisel as such are well known material for forming transparent windows in air boxes and one of ordinary skill would have a reasonable expectation of success.
Wall et al does not disclose a plurality of windows as in claim 10 and 17. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a plurality of windows such providing multiple viewpoints. To increase for multiplied effect being well within the scope of one of ordinary skill in the art.
With regards to claim 18 Watts et al disclose the plate having a locking mechanism (unlabeled fasteners and gasket of unlabeled flat panel (col 8 lines 33—45)
With regards to claim 19 the gasket seal is pliable in Walls et al (col. 2 line 66).
In regards to claim 20, Wallet al does not disclose the window to be an annular configuration. However mere change in shape being an obvious variant to one of ordinary skill in the art. It would have been obvious to one of ordinary skill in the art to change the shape of the inspection region to annular depending on the engine obstructions and construction to allow better view.
Response to Arguments
Applicant's arguments filed 12-24-2025 have been fully considered but they are not persuasive. Applicant first comments that the obvious double patenting rejections be held in abeyance until final determination of allowable subject matter. As no specific arguments were presented to the obvious double patenting rejections, The obvious double patenting rejections are maintained. Applicant further argues that Eisel does not disclose wherein the interior of the enclosure comprises a plurality of smooth surfaces and rounded edges configured to decrease turbulence and air resistance through the air box, thereby improving performance of the engine. The examiner respectively disagrees in that Eisel discloses the housing 22 as ring (see Figure 1) a such the walls are circular and have rounded edges see 12 at Figure 3 wherein the edge is rounded). Thus, meeting the claimed structure . The further functional limitation of configured to decrease turbulence would naturally follow from the Eisel structure being the same as claimed.
Furthermore, applicant repeats said argument for the 103 rejection. The examiner respectively disagrees in that Wall et al clearly discloses such limitations at col. 5 lines 1-5.
All other arguments have been considered but are not deemed to be persuasive.
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 Duane Smith whose telephone number is (571)272-1166. The examiner can normally be reached 9-5 Monday-Friday.
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/DUANE SMITH/Supervisory Patent Examiner, Art Unit 1759