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 .
Election/Restrictions
Claims 6-7, 9, 15-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/5/2026.
Applicant's election with traverse of Group I and Species A (Fig. 3), claims 1-8, 10-16, in the reply is acknowledged. The traversal is on the ground(s) that there is no search burden and that the inventions are drawn to a single inventive concept. This is not found persuasive because the specification specifically describes the distinct embodiments of Fig. 8 and 13 having distinct elements such as tabs and fingers with different geometries.
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.
Claims 1-16 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 1 recites the limitation "its " in line 5 and 10. It is unclear what component is being referred to. Possessive pronouns should be replaced with the name of the component.
Claim 10 recites the limitation "the filter cap" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the base" in line 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "its " in line 11, 17. It is unclear what component is being referred to. Possessive pronouns should be replaced with the name of the component.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5 is/are rejected under 35 U.S.C. 102a1 and a2 as being anticipated by Dahlgren (US 5,012,624).
Re Claim 1, Dahlgren discloses a tool for removing and installing a tankless water heater inlet filter comprising: a base portion 16 having a bottom end and an opposing top end, the base portion having a base sidewall around its periphery extending from its bottom end to the top end of the base; a head portion 15 having a bottom end adjacent to the top end of the base portion, the head portion being aligned with and concentric with the base portion and the head portion having a head sidewall around its periphery extending from its bottom end to a free end of the head portion; and at least one reciprocal engagement device 15A, 15C extending from the head portion and [configured to engage with an engagement device of the tankless water heater inlet filter] (Fig. 3-5). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 2, Dahlgren discloses the base portion comprises a hand grip twist knob (Fig. 3-5).
Re Claim 3, Dahlgren discloses the head portion having a circular shape (Fig. 3-5).
Re Claim 5, Dahlgren discloses the at least one reciprocal engagement device of the head portion comprises a first slot and a second slot perpendicular to the first slot (Fig. 3-5).
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102a1 and a2 as being anticipated by Hertel (US D548,030).
Re Claim 1, Hertel discloses a tool for removing and installing a tankless water heater inlet filter comprising: a base portion (right side in Fig. 1) having a bottom end and an opposing top end, the base portion having a base sidewall around its periphery extending from its bottom end to the top end of the base; a head portion (left and second portion in Fig. 1) having a bottom end adjacent to the top end of the base portion, the head portion being aligned with and concentric with the base portion and the head portion having a head sidewall around its periphery extending from its bottom end to a free end of the head portion; and at least one reciprocal engagement device (slots on left side in Fig. 1) extending from the head portion and [configured to engage with an engagement device of the tankless water heater inlet filter] (Fig. 1). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 2, Hertel discloses the base portion comprises a hand grip twist knob (Fig. 1).
Re Claim 3, Hertel discloses the head portion having a circular shape (Fig. 1).
Re Claim 4, Hertel discloses the head portion comprises a lower circular member and an upper circular member, the upper circular member having a diameter less than the lower circular member creating a ledge therebetween (Fig. 1).
Re Claim 5, Hertel discloses the at least one reciprocal engagement device of the head portion comprises a first slot and a second slot perpendicular to the first slot (Fig. 1).
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dahlgren.
Re Claim 8, Dahlgren does not disclose the base portion and the head portion comprise plastic. However, it would be obvious to make the head portion of plastic since it is cheap and easy to manufacture and also 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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hertel.
Re Claim 8, Hertel does not disclose the base portion and the head portion comprise plastic. However, it would be obvious to make the head portion of plastic since it is cheap and easy to manufacture and also 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.
Claim(s) 10-12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Atkinson (PGPub 2005/0104371) in view of Dahlgren.
Re Claim 10, Atkinson discloses a filter kit for a tankless water heater, the filter kit comprising: a replacement tankless water heater inlet filter having an engagement device along an inner periphery of the filter cap; and a tool [for removing a tankless water heater inlet filter and installing the replacement tankless water heater inlet filter] (para. 28). Atkinson does not disclose the tool comprising, a base portion having a bottom end and an opposing top end, the base portion having a base sidewall around its periphery extending from its bottom end to the top end of the base, a head portion having a bottom end adjacent to the top end of the base portion, the head portion being aligned with and concentric with the base portion and the head portion having a head sidewall around its periphery, and at least one reciprocal engagement device extending from the head portion and configured to engage with an engagement device of the tankless water heater inlet filter. However, Dahlgren teaches a tool comprising, a base portion 16 having a bottom end and an opposing top end, the base portion having a base sidewall around its periphery extending from its bottom end to the top end of the base, a head portion 15 having a bottom end adjacent to the top end of the base portion, the head portion being aligned with and concentric with the base portion and the head portion having a head sidewall around its periphery, and at least one reciprocal engagement device 15A, 15C extending from the head portion and configured to engage with an engagement device of the tankless water heater inlet filter (Fig. 3-5). It would be obvious to one of ordinary skill in the art to utilize a tool with these features, as taught by Dahlgren, for the purpose of utilizing a tool capable of matching with a desired geometry to effectively manipulate a component.
Re Claim 11, Dahlgren discloses the base portion comprises a hand grip twist knob (Fig. 3-5).
Re Claim 12, Dahlgren discloses the head portion having a circular shape (Fig. 3-5).
Re Claim 14, Dahlgren discloses the at least one reciprocal engagement device of the head portion comprises a first slot and a second slot perpendicular to the first slot (Fig. 3-5).
Claim(s) 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Atkinson (PGPub 2005/0104371) in view of Hertel.
Re Claim 10, Atkinson discloses a filter kit for a tankless water heater, the filter kit comprising: a replacement tankless water heater inlet filter having an engagement device along an inner periphery of the filter cap; and a tool [for removing a tankless water heater inlet filter and installing the replacement tankless water heater inlet filter] (para. 28). Atkinson does not disclose the tool comprising, a base portion having a bottom end and an opposing top end, the base portion having a base sidewall around its periphery extending from its bottom end to the top end of the base, a head portion having a bottom end adjacent to the top end of the base portion, the head portion being aligned with and concentric with the base portion and the head portion having a head sidewall around its periphery, and at least one reciprocal engagement device extending from the head portion and configured to engage with an engagement device of the tankless water heater inlet filter. However, Hertel teaches a tool comprising, a base portion (right side in Fig. 1) having a bottom end and an opposing top end, the base portion having a base sidewall around its periphery extending from its bottom end to the top end of the base, a head portion (left and second portion in Fig. 1) having a bottom end adjacent to the top end of the base portion, the head portion being aligned with and concentric with the base portion and the head portion having a head sidewall around its periphery, and at least one reciprocal engagement device (slots in Fig. 1) extending from the head portion and configured to engage with an engagement device of the tankless water heater inlet filter (Fig. 1). It would be obvious to one of ordinary skill in the art to utilize a tool with these features, as taught by Dahlgren, for the purpose of utilizing a tool capable of matching with a desired geometry to effectively manipulate a component.
Re Claim 11, Dahlgren discloses the base portion comprises a hand grip twist knob (Fig. 1).
Re Claim 12, Dahlgren discloses the head portion having a circular shape (Fig. 1).
Re Claim 13, Dahlgren discloses the head portion comprises a lower circular member and an upper circular member, the upper circular member having a diameter less than the lower circular member creating a ledge therebetween (Fig. 1).
Re Claim 14, Dahlgren discloses the at least one reciprocal engagement device of the head portion comprises a first slot and a second slot perpendicular to the first slot (Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799
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