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 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) 1-4, 7-12, 14-16, and 18-19 is/are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by Roy et al,. US 2019/0046905 (Roy).
Regarding claim 1, Roy discloses a filter element for filtering a liquid (abstract, REF 110, figs. 7-10) from an unfiltered side to a clean side (¶ 0021), the filter element comprising:
A first end cap (REF 116, fig. 7);
A second end cap (see bottom endcap, fig. 10);
A filter medium (REF 110, fig. 10, ¶ 0021) with a hollow interior (figs. 7, 10), the filter medium arranged between the first and second end caps along an axial direction (fig. 10), the first end cap having an opening (REF 702, fig. 7, ¶ 0025) for a flow of a liquid; and
A grip guard (see ‘ribs’ extending from REF 706, fig. 7) arranged in the first opening, said grip guard configured to prevent a finger from penetrating the interior through the first opening (via plurality of ‘ribs’, fig. 7).
Regarding claim 2, Roy discloses a filter element wherein the interior of the filter medium is configured to receive an elastically reversible and compressible compensation element (see hollow interior within REF 110, fig. 10).
Regarding claim 3, Roy discloses a filter element wherein the first end cap (REF 116) has an outwardly protruding connecting piece (see elevated extension of REF 116, fig. 8), the connecting piece accommodating the first opening (REF 702, fig. 7), and the grip guard (i.e. ribs extending from REF 706, fig. 7) is arranged in the connecting piece (fig. 7).
Regarding claim 4, Roy discloses a filter element wherein the connecting piece has a sealing element on its outer side (see o-ring within connecting piece groove, figs. 10-11).
Regarding claim 7, Roy discloses a filter element wherein the interior of the filter medium is located on the clean side (see “central opening 702 that allows filtered fluid to flow out”, ¶ 0025).
Regarding claim 8, Roy discloses a filter element wherein the grip guard (ribs extending from REF 706, fig. 7) is integral with the first end cap (figs. 8-9).
Regarding claim 9, elements drawn to the process by which the end cap is formed are not considered to provide patentable weight since the patentability of the filter element does not rely on its method of production, rather patentability is based on the product itself (MPEP 2113). In this case, there is no structural difference between the end cap of the claim and that recited in the prior art. Therefore, the examiner considers claim 9 to be anticipated by the filter element end cap provided in the prior art as set forth above.
Regarding claim 10, Roy discloses a filter element wherein the grip guard includes a plurality of ribs (see ribs extending from REF 706, fig. 7).
Regarding claim 11, Roy discloses a filter element wherein the ribs extend outwardly from a star point within the first opening (beginning at REF 706 and extending outwardly, fig. 7) in a radial direction perpendicular to the axial direction (figs. 7, 9).
Regarding claim 12, Roy discloses a filter element wherein the ribs are at an angle to a radial direction perpendicular to the axial direction, the angle in a range between 5° and 45° (see ‘sloping angle’ of rib portion connecting REF 706 to spoked portion of REF 702).
Regarding claim 14, Roy discloses a filter element capable of use in a DENOX filter (¶ 0021).
Regarding claim 15, Roy discloses a liquid filter (fig. 10) comprising:
A housing (REF 104, ¶ 0021) having a housing interior, an inlet (REF 1002, ¶ 0028), and an outlet (REF 1008, ¶ 0028); and
A filter element (as relied upon in the rejections set forth above) arranged in the housing interior (fig. 10).
Regarding claim 16, Roy discloses a filter element wherein the connecting piece (see elevated extension of REF 116, fig. 8) is configured to be connected to an outlet of a liquid filter (fig. 10), wherein the grip guard (see ribs extending from REF 706, figs. 7, 9) is arranged at an end section of the connecting piece (fig. 9) facing away from the interior (i.e. extending radially from the circumference of the filter element).
Regarding claim 18, Roy discloses a filter element wherein the ribs (see ribs extending from REF 706, fig. 7) are connected to an inner wall of the first opening (fig. 9).
Regarding claim 19, Roy discloses a filter element wherein the ribs are at an angle to a radial direction perpendicular to the axial direction, the angle in a range between 10° and 30° (see ‘sloping angle’ of rib portion connecting REF 706 to spoked portion of REF 702, where the angle spans continuous angle between 0° and 90°).
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.
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.
Claim(s) 5-6, 13, 17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roy.
Regarding claims 5-6, 13, 17, and 20, Roy does not disclose the diameter of the opening, height of the connecting piece, or maximum distance between adjacent ribs. However, Roy recognizes that those skilled in the art would “readily appreciate that many modifications are possible (e.g. variations in sizes, dimensions, structures, shapes and proportions of the various elements, values of parameters, mounting arrangements, use of materials, colors, orientations, etc.) without materially departing from the novel teachings and advantages of the subject matter described” (¶ 0036).
Therefore, at the time of invention, it would have been obvious to one having ordinary skill in the art to modify those aspects of the claims (i.e. diameter of opening, height of connecting piece, max distance between adjacent ribs) in light of Roy (¶ 0036) since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.05, Section II, Part A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
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