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 are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Element 11 in Figure 1 is not disclosed in the as-originally filed specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Claim Interpretation
Claim 1 recites “filter assembly for an aircraft engine” and “filter housing having a fluid inlet and a fluid outlet for flowing a triboelectric fluid into and out of the inner cavity”. Under the broadest reasonable interpretation, claim 1 is understood as “an aircraft engine” and “a triboelectric fluid” are not elements of the claimed filter assembly.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2491994 A1 (hereinafter EP 994).
Regarding claim 1, EP 994 discloses a filter assembly for an aircraft engine (see EP 994 fluid treatment elements and assemblies – abstract, figures 1, 3 and paragraphs 0004-0006). Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
EP 994 discloses a filter housing defining an inner cavity (see EP 994 housing 25 with a header 62 figure 3 and paragraphs 0026-0027), the filter housing having a fluid inlet and a fluid outlet for flowing a triboelectric fluid into and out of the inner cavity (see EP 994 inlet 30 and outlet 31 figure 3 and paragraphs 0013, 0017, 0025-0026).
EP 994 discloses a filter bowl removably attached to the filter housing to seal the inner cavity (see EP 994 bowl 63 figure 3 and paragraphs 0026-0027, 0033).
EP 994 discloses a filter disposed in the inner cavity (see EP 944 the inside of the housing/header/bowl contains a filter/fluid treatment element 10, which may include a perforated core 53, fluid treatment medium 14, treatment pack 11, porous layer 34 – figures 1-5 and paragraphs 0012, 0014-0016, 0020).
EP 994 discloses the filter electrically coupled to the filter bowl at a first electrical connection (see EP 994 a spring-biased electrical contact arrangement 22 / a moveable conductive pin 24,54/spring 23 figures 1, 3, 4 and paragraph 0022-0024).
EP 994 does not disclose the filter electrically coupled to the filter housing at a second electrical connection distinct from the first electrical connection.
However, EP 994 discloses the fluid treatment elements and assemblies “may be modified to provide more than one spring-biased electrical contact arrangement on the end cap. A plurality of spring-biased electrical contact arrangements, e.g., equally angularly spaced around the end cap, may even further enhance the dissipation of electrical charge to the housing. Further, one or more spring-biased electrical contact arrangements may be mounted to the upper end cap 20 instead of or in addition to the spring-biased electrical contact arrangement(s) on the lower end cap 21. The spring-biased electrical contact arrangements may then electrically contact the header of the housing” (see EP 994 paragraph 0031; see also paragraphs 0012, 0032-0033).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the fluid treatment element and assembly of EP 994 by incorporating a spring-biased electrical contact arrangement at both the upper end cap/header and the lower end cap/bowl because it would assist “to dissipate electrical charge from the fluid treatment pack and/or the end caps to the housing” (see EP 994 abstract; see also EP 994 paragraph 0006).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the fluid treatment element and assembly of EP 994 by incorporating a spring-biased electrical contact arrangement at both the upper end cap/header and the lower end cap/bowl since it has been held that mere duplication of an element of an apparatus involves only routine skill in the art. MPEP 2144.04.VI.B. There is no patentable significance of an additional spring-biased electrical contact arrangement, which predictable provides one of ordinary skill in the art with additional dissipated electrical charge, and does not produce any new and/or unexpected results.
Hence, EP 994 is deemed to disclose a filter assembly for an aircraft engine, comprising a filter housing defining an inner cavity, the filter housing having a fluid inlet and a fluid outlet for flowing a triboelectric fluid into and out of the inner cavity; a filter bowl removably attached to the filter housing to seal the inner cavity; and a filter disposed in the inner cavity, the filter electrically coupled to the filter bowl at a first electrical connection and the filter electrically coupled to the filter housing at a second electrical connection distinct from the first electrical connection to thereby indirectly electrically couple the filter bowl to the filter housing via the filter.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of EP 994 is substantially identical to the claimed filter assembly comprising a first electrical connection and a second electrical connection distinct from the first electrical connection of the present application, and therefore, the structure of EP 994 is presumed inherently capable of indirectly electrically coupling the filter bowl to the filter housing via the filter.
EP 994 discloses one or both of the first electrical connection and the second electrical connection providing a degree of freedom for the filter to displace relative to the filter housing or the filter bowl upon engagement with the filter (EP 994 spring component within the spring-biased electrical contact arrangement allows movement paragraphs 0004, 0005, 0012, 0022).
Regarding claim 2, EP 994 discloses the invention as discussed above in claim 1. Further, EP 994 discloses one or both of the first electrical connection and the second electrical connection is operable to allow the filter to displace in a direction parallel to a direction of abutment between the filter and the first electrical connection or the second electrical connection (see rejection of claim 1).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of EP 994 is substantially identical to the claimed one or both of the first electrical connection and the second electrical connection of the present application, and therefore, the structure of EP 994 is presumed inherently capable of allowing the filter to displace in a direction parallel to a direction of abutment between the filter and the first electrical connection or the second electrical connection.
Regarding claim 3, EP 994 discloses the invention as discussed above in claim 1. Further, EP 994 discloses a first set of seals disposed between the filter bowl and the filter housing (see EP 994 thread connection and/or O-ring 44 – figure 3 and paragraphs 0026, 0027, 0033), and a second set of seals disposed between the filter and the filter housing (see EP 994 O-ring 44 – figure 3 paragraph 0017), wherein the first set of seals and the second set of seals are operable to compress upon attachment of the filter bowl to the filter housing (see EP 994 paragraphs 0017 and 0027).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of EP 994 is substantially identical to the claimed first set of seals and the claimed second set of seals of the present application, and therefore, the structure of EP 994 is presumed inherently capable of compressing upon attachment of the filter bowl to the filter housing.
Regarding claim 4, EP 994 discloses the invention as discussed above in claim 1. Further, EP 994 discloses one of the first electrical connection and the second electrical connection includes a protrusion protruding from the filter bowl or the filter housing, the protrusion being operable to abut the filter (see EP 994 casing 56 – figures 3-5 and paragraphs 0023, 0024, 0032).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of EP 994 is substantially identical to the claimed protrusion of the present application, and therefore, the structure of EP 994 is presumed inherently capable of abutting the filter.
Regarding claim 5, EP 994 discloses the invention as discussed above in claim 1. Further, EP 994 discloses one or both of the first electrical connection and the second electrical connection includes a spring pin assembly having a spring operatively coupled to the filter bowl or the filter housing and a pin at a distal end of the spring, the pin being operable to abut the filter (see EP 994 spring-biased electrical contact arrangement 22, moveable electrical contact 24, conductive pin 54, spring 23 – figures 1-5 and paragraphs 0004, 0022-0025, 0027-0028, 0032-0033).
Regarding claim 6, EP 994 discloses the invention as discussed above in claim 1. Further, EP 994 discloses one or both of the first electrical connection and the second electrical connection includes a spring strip assembly having a spring strip with a first end operatively coupled to the filter bowl or the filter housing and a second end operable to abut the filter (see EP 994 paragraph 0022 (EP 994 discloses the spring may be in the form of a coil or a leaf spring made from spring metal).).
Claims 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over EP2491994A1 (hereinafter EP 994) in view of US 6237322 B1 (hereinafter US 322).
Regarding claim 7, EP 994 discloses a filter assembly including a filter housing defining an inner cavity, the filter housing having a fluid inlet and a fluid outlet for flowing the fuel or the oil into and out of the inner cavity, a filter bowl removably attached to the filter housing to seal the inner cavity, and a filter disposed in the inner cavity, the filter electrically coupled to the filter bowl at a first electrical connection and the filter electrically coupled to the filter housing at a second electrical connection distinct from the first electrical connection to thereby indirectly electrically couple the filter bowl to the filter housing via the filter, one or both of the first electrical connection and the second electrical connection being compressible upon engagement with the filter (see rejection of claim 1).
EP 994 discloses the fluid treatment element/assembly is used to treat numerous fluids, including a gas, a liquid, or a mixture of gases, liquids, and/or solids, and that “the fluid treatment elements may include filters that may be used to separate one or more substances, e.g., particulates and/or gels, from a fluid, including, for example, a gas, an aqueous liquid, or an oil-based liquid such as fuel” (see EP 994 paragraph 0001). EP 994 does not disclose an aircraft engine, comprising a fuel system including a fuel tank containing fuel for the aircraft engine and a fuel pump flow flowing the fuel to a combustor of the aircraft engine; an oil system including an oil tank containing oil for the aircraft engine and an oil pump for circulating the oil to components of the aircraft engine; and a filter assembly for the fuel system or the oil system.
US 322 discloses hydraulic fuel-driven oil pump for an aircraft gas turbine engine (see US 322 abstract, col 1 lines 26-31; col 2 lines 34-39; col 4 lines 28-42). US 322 discloses that the
hydraulic system pump and fuel pump can be positioned within the fuselage or elsewhere driven by separate electric motors. Separating the oil pump and other fuel/oil system components from the AGB enables the rationalization of these systems and allows designers to reconfigure systems into a compact modular unit including the oil pump, oil/air separator, oil tank, heat exchanger, fuel filter and oil filter. Using pressurized fuel to hydraulically drive the novel centrifugal oil pump, frees the oil pump from location restraints and operating limitations.
(see US 322 col 2 lines 55-65). US 322 discloses that the system comprises a fuel circuit comprising a fuel pump, a input fuel line that draws fuel from a source, such as a fuel tank, and a fuel filter (see US 322 figure 1; col 4 lines 28-39) and an oil circuit comprising a oil pump , an oil tank, and an oil filter (see US 322 col 4 line 54 – col 5 line 5).
US 322 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. aircraft engine, fuel system for an engine and/or oil system for an engine.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the filter assembly, as disclosed in EP 994, into the oil filter, fuel filter or both, as disclosed in US 322, because it would assist with filtering the oil, fuel or both.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the filter assembly, as disclosed in EP 994, into the oil filter, fuel filter or both, as disclosed in US 322, because US 322 discloses an aircraft engine that requires an oil filter and/or fuel filter and EP 994 discloses a filter for filtering various fluids, such as fuel, gasoline and/or oil.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the filter assembly, as disclosed in EP 994, into the oil filter, fuel filter or both, as disclosed in US 322, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. filter a fluid.
Hence, EP 994 in view of US 322 is deemed to disclose an aircraft engine, comprising a fuel system including a fuel tank containing fuel for the aircraft engine and a fuel pump flow flowing the fuel to a combustor of the aircraft engine; an oil system including an oil tank containing oil for the aircraft engine and an oil pump for circulating the oil to components of the aircraft engine; and a filter assembly for the fuel system or the oil system, the filter assembly including a filter housing defining an inner cavity, the filter housing having a fluid inlet and a fluid outlet for flowing the fuel or the oil into and out of the inner cavity, a filter bowl removably attached to the filter housing to seal the inner cavity, and a filter disposed in the inner cavity for filtering the fuel or the oil, the filter electrically coupled to the filter bowl at a first electrical connection and the filter electrically coupled to the filter housing at a second electrical connection distinct from the first electrical connection to thereby indirectly electrically couple the filter bowl to the filter housing via the filter, one or both of the first electrical connection and the second electrical connection being compressible upon engagement with the filter.
Regarding claim 8, EP 994 in view of US 322 discloses the invention as discussed above in claim 7. Further, EP 994 in view of US 322 discloses one or both of the first electrical connection and the second electrical connection is operable to allow the filter to displace in a direction parallel to a direction of abutment between the filter and the first electrical connection or the second electrical connection (see rejection of claim 2).
Regarding claim 9, EP 994 in view of US 322 discloses the invention as discussed above in claim 7. Further, EP 994 in view of US 322 discloses one of the first electrical connection and the second electrical connection is a protrusion protruding from the filter bowl or the filter housing and operable to engage the filter (see rejection of claim 4).
Regarding claim 10, EP 994 in view of US 322 discloses the invention as discussed above in claim 7. Further, EP 994 in view of US 322 discloses one or both of the first electrical connection and the second electrical connection is a spring pin assembly having a spring operatively coupled to the filter bowl or the filter housing and a pin at a distal end of the spring and operable to engage the filter (see rejection of claim 5).
Regarding claim 11, EP 994 in view of US 322 discloses the invention as discussed above in claim 7. Further, EP 994 in view of US 322 discloses one or both of the first electrical connection and the second electrical connection is a spring strip assembly having a spring strip operatively coupled to the filter bowl or the filter housing at a first end operable to engage the filter at a second end (see rejection of claim 6).
Regarding claim 12, EP 994 discloses a method for assembling a filter assembly (see EP 994 abstract and paragraph 0027; see also rejection of claim 1).
EP 994 does not disclose a filter assembly in an aircraft engine.
The disclosure of US 322 is discussed above and it has been established that US 322 is analogous prior art.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to assemble a filter assembly and to incorporate the filter assembly, as disclosed in EP 994, into the oil filter, fuel filter or both, as disclosed in US 322, because it would assist with filtering the oil, fuel or both.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to assemble a filter assembly and to incorporate the filter assembly, as disclosed in EP 994, into the oil filter, fuel filter or both, as disclosed in US 322, because US 322 discloses an aircraft engine that requires an oil filter and/or fuel filter and EP 994 discloses a filter for filtering various fluids, such as fuel, gasoline and/or oil.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to assemble a filter assembly and to incorporate the filter assembly, as disclosed in EP 994, into the oil filter, fuel filter or both, as disclosed in US 322, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. filter a fluid.
Hence, EP 994 in view of US 322 is deemed to disclose method for assembling a filter assembly in an aircraft engine.
EP 994 in view of US 322 discloses installing a filter in an inner cavity of a filter housing, said installing including establishing a first electrical connection between the filter and the filter housing (see EP 994 paragraphs 0027, 0033).
EP 994 in view of US 322 discloses securing a filter bowl to the filter housing to seal the inner cavity, said securing including establishing a second electrical connection between the filter and the filter bowl, the second electrical connection being distinct from the first electrical connection (see EP 994 paragraphs 0026-0028, 0033).
Regarding claim 13, EP 994 in view of US 322 discloses the invention as discussed above in claim 12. Further, EP 994 in view of US 322 discloses one or both of establishing the first electrical connection between the filter and the filter housing and establishing the second electrical connection between the filter and the filter bowl includes engaging the filter with one of the filter housing and the filter with a flexible electrical connection (see rejection of claims 4-6
Regarding claim 14, EP 994 in view of US 322 discloses the invention as discussed above in claim 13. Further, EP 994 in view of US 322 discloses engaging the filter with one of the filter housing and the filter with a flexible electrical connection includes engaging the filter with one of the filter housing and the filter via a spring strip assembly (see rejection of claim 6).
Regarding claim 15, EP 994 in view of US 322 discloses the invention as discussed above in claim 13. Further, EP 994 in view of US 322 discloses engaging the filter with one of the filter housing and the filter with a flexible electrical connection includes engaging the filter with one of the filter housing and the filter via a spring pin assembly (see rejection of claim 15).
Regarding claim 16, EP 994 in view of US 322 discloses the invention as discussed above in claim 12. Further, EP 994 in view of US 322 discloses establishing the first electrical connection between the filter and the filter housing or establishing the second electrical connection between the filter and the filter bowl includes engaging a protrusion protruding from the filter housing or the filter bowl with the filter (see rejection of claim 4).
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERNADETTE K MCGANN whose telephone number is (571)272-5367. The examiner can normally be reached M-F 7:00 am -3:30 pm (EST).
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, Ben Lebron can be reached on 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
Prosecution Insights