DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of claims 1-18 in the reply filed on 08/19/2026 is acknowledged. With regard to applicant’s allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations rely on the unsupported assumption that the search and the examination of both inventions would be coextensive. However, the issues raised in the examination of apparatus claims are divergent from those raised in the examination of process claims. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/19/2026.
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 16 and 17 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.
Regarding claim 16, “third pluralities of flutes” lacks antecedent basis in the claim.
Regarding claim 17, “the plurality of layers” lacks antecedent basis in the claim. It is unclear whether or not this is referring to the “separate plurality of layers” recited in claim 16.
Claim Rejections - 35 USC § 102/103
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.
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 1-5 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown, US 2015/0211452 ("Brown"). Claims 6-8 are rejected under 35 U.S.C. 103 as being obvious over Brown. Claims 9-11 are rejected under 35 U.S.C. 103 as being obvious over Brown in view of Rocklitz et al., US 2014/0325946 ("Rocklitz")¹. Claims 12-14 are rejected under 35 U.S.C. 103 as being obvious over Brown in view of Decoster et al., US 2018/0369735 ("Decoster").
Claim 1 requires an air filtration element for removal of particulates from an airstream. The air filtration element comprises the structural features of a first plurality of flutes and a second plurality of flutes arranged in a parallel flow configuration with the first plurality of flutes. The second plurality of flutes exhibit differences in flute shape, flute size, flute height, flute width, flute length, cross-flute area, or filter media relative to the first plurality of flutes. The first plurality of flutes and second plurality of flutes have a common upstream and common downstream face.
Claim 1 also requires the performance characteristics of when loading of the filter element with dust under substantially constant velocity, the first plurality of flutes and second plurality of flutes have substantially equal initial pressure drop from the upstream face to the downstream face. The first plurality of flutes has an initial velocity greater than the initial velocity of the second plurality of flutes. The pressure drop across the first plurality of flutes and second plurality of flutes remains substantially equal relative to one another while the velocity of the first and second plurality of flutes is changing relative to one another during dust loading. The velocity across the first plurality of flutes decreases and the velocity across the second plurality of flutes increases at least until the velocity across the second plurality of flutes is greater than the velocity across the first plurality of flutes during dust loading.\
Fig. 5 of Applicants disclosure discloses filter media element 500 with one type of filter media comprising a first plurality of flutes 510 and a second plurality of flutes 520. Spec. Fig. 5, p. 31, 11. 25-31. The first plurality of flutes 510 are wider than the second plurality of flutes 520 but have roughly the same height. Spec. Fig. 5, p. 31, 11. 25-31. Fig. 5 of the instant disclosure has all the structural and performance features of the claimed invention.
Brown teaches a fluted filter media pack 400 for removal of particulates from an airstream. Brown Fig. 4, [0058]. The media pack 400 comprises a first plurality of flutes 406 and a second plurality of flutes 408 arranged in a parallel flow configuration. Id. at Fig. 4, [0058]. Additionally, Brown teaches that its second plurality of flutes 408 have a different shape or cross sectional area than flutes 406. Id. at Fig. 4, [0058]. Furthermore, Brown teaches that its flutes 406 and 408 have a common upstream face and common downstream face. Id. at Fig. 4, [0058].
Brown does not explicitly teach performance parameters such as initial pressure drop, initial velocity, the pressure drop and velocity change during dust loading. However, Brown's Fig. 4 embodiment has the same structural features as Applicant's Fig. 5 embodiment because the filter element is made of a single filter media type, and the first flutes 406 are wider than the second flutes 408, with each flute type 406, 408 having roughly the same height. Since the claimed and prior art products are identical or substantially identical in structure, claimed properties of functions are presumed to be inherent. MPEP 2112.01(I).
Claim 2 requires that for the air filtration media element of claim 1, a transition from the velocity of the first plurality of flutes is greater than the second plurality of flutes to the velocity of the second plurality of flutes being greater than the first plurality of flutes occurs before the media element has loaded to 10 percent of dust loading capacity.
Claim 3 requires that for the air filtration media element of claim 1, a transition from the velocity of the first plurality of flutes being greater than the second plurality of flutes to the velocity of the second plurality of flutes being greater than the first plurality of flutes occurs before the media element has loaded to 15 percent of dust loading capacity.
Claim 4 requires that for the air filtration media element of claim 1, a transition from the velocity of the first plurality of flutes being greater than the second plurality of flutes to the velocity of the second plurality of flutes being greater than the first plurality of flutes occurs before the media element has loaded to 20 percent of dust loading capacity. While Brown does not explicitly disclose any details about velocity transition versus dust loading capacity, the claimed properties of functions are presumed to be inherent since the filter element disclosed by Fig. 5 of the instant disclosure is substantially identical to Brown's filter media 400 of Fig. 4 as they share the same structure and media material as described in claim 1. MPEP 2112.01(I).
Brown's filtration media 400 has a first plurality of flutes 406 arranged in a first plurality of layers and a second plurality of flutes 408 arranged in a second plurality of layers. Brown Fig. 4, [0004].
Claim 6 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 10 to 90 percent of the volume of the media element, and the second plurality of flutes comprises from 90 to 10 percent of the volume of the media element.
Claim 7 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 20 to 40 percent of the volume of the media element, and the second plurality of flutes comprises from 60 to 80 percent of the volume of the media element.
Claim 8 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 40 to 60 percent of the volume of the media element, and the second plurality of flutes comprises from 60 to 40 percent of the volume of the media element. Brown does not explicitly disclose the volume ratio between first plurality of flutes 406 and second plurality of flutes 408. However, Brown discloses that the volume asymmetry measures the media volume ratio of the larger media volume bounded by the flute peaks to the smaller media volume bounded by opposite flute peaks. Brown [0059]. Brown also discloses that media volume asymmetry is beneficial for improved fluid flow and improved loading performance. Brown [0060]. It would have been obvious to use routine experimentation to optimize the volume ratio of first plurality of flutes 406 and second plurality of flutes 408 to be within the range disclosed in claims 6-8 for enhanced filter performance. MPEP 2144.05(II). Additionally, instant disclosure does not teach this content is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2144.05(III)(A).
Claim 9 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 10 to 90 percent of the media surface area of the media element, and the second plurality of flutes comprises from 90 to 10 percent of the media surface area of the media element.
Claim 10 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 20 to 40 percent of the media surface area of the media element, and the second plurality of flutes comprises from 60 to 80 percent of the media surface area of the media element.
Claim 11 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 40 to 60 percent of media surface area of the media element, and the second plurality of flutes comprises from 60 to 40 percent of the media surface area of the media element.
Brown does not explicitly disclose the surface area ratio between first plurality of flutes 406 and second plurality of flutes 408. In the analogous art of fluted filtration media, Rocklitz discloses that increasing the surface area of the media can enhance the filtration performance. Rocklitz [0083]. It would have been obvious to use routine experimentation to optimize the surface area ratio of first plurality of flutes 406 and second plurality of flutes 408 to be within the range disclosed in claims 9-11 for enhanced filter performance. MPEP 2144.05(II). Additionally, instant disclosure does not teach this content is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2144.05(11I)(A).
Claim 12 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 10 to 90 percent of the inlet face of the media element, and the second plurality of flutes 20comprises from 90 to 10 percent of the inlet face of the media element.
Claim 13 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 20 to 40 percent of the inlet face of the media element, and the second plurality of flutes comprises from 60 to 80 percent of the inlet face of the media element. Claim 14 requires that for the air filtration media element of claim 1, the first plurality of flutes comprises from 40 to 60 percent of the inlet face of the media element, and the second plurality of flutes comprises from 60 to 40 percent of the inlet face of the media element. Brown does not explicitly disclose the inlet face ratio between first plurality of flutes 406 and second plurality of flutes 408. In the analogous art of fluted filters, Decoster discloses that the inlet faces effect filter performance. Decoster [0288]. It would have been obvious to use routine experimentation to optimize the inlet face ratio of first plurality of flutes 406 and second plurality of flutes 408 to be within the range disclosed in claims 12-14 for enhanced filter performance. MPEP 2144.05(II). Additionally, instant disclosure does not teach this content is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2144.05(III)(A).
Claim 15 requires that the air filtration media element of claim 1, further comprises a third plurality of flutes arranged in parallel flow with the first and second plurality of flutes. The first, second, and third plurality of flutes exhibit differences in flute shape, flute size, flute height, flute width, flute length, cross-flute arca, or filter media. Brown's filter media pack 400 further comprises a third plurality of flutes (the flute between protrusions 417 and 418) arranged in parallel flow with the first and second plurality of flutes 406 and 408. Brown Fig. 4, [0058]. The third plurality of flutes exhibits difference in flute shape, size, height, width, and cross-flute area as compared to flutes 406 and 408. Brown Fig. 4.
Claim 16 requires that for the air filtration media element of claim 15, each of the first, second, and third pluralities of flutes is arranged in a separate plurality of layers. Brown's first, second and third pluralities of flutes are arranged in a separate plurality of layers. Brown Fig. 4. 400
Claim 17 requires that for the air filtration media element of claim 16, the separate plurality of layers media are arranged in a wound or stacked configuration. Brown's separate plurality of layers media 400 can be arranged in a stacked configuration as shown in Brown Fig. 18, [0083].
Claim 18 requires that for the air filtration media element of claim 1, the differences in flute shape, flute size, flute height, flute width, flute length, cross-flute area or filter media are regular and repeating. Brown shows that the differences of flute 406 and 408 in flute shape, flute size, flute height, flute width, flute length, cross-flute area or filter media are regular and repeating. Brown Fig. 4, [0045].
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,596,893 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the present claims are found in claims 1-18 of USPN 11,596,893. The difference between the application claims 1-18 and U.S. Patent No. 11,596,893 B2, claims 1-18 lies in the fact that U.S. Patent No. 11,596,893 B2 claims 1-18 included more elements and is thus more specific. Thus the invention of claims 1-18 of U.S. Patent No. 11,596,893 B2 is in effect a “species” of the "generic” invention of application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 1-18 are anticipated by claims 1-18 of U.S. Patent No. 11,596,893 B2, it is not patentably distinct from claims 1-18 of U.S. Patent No. 11,596,893 B2.
Conclusion
This is a CON of applicant's earlier Application No. 16/438,183. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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.
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/CHRISTOPHER P JONES/Primary Examiner, Art Unit 1776
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