Prosecution Insights
Last updated: October 26, 2026
Application No. 18/721,615

AIR FILTER WITH SIDE FRAME PIECES REMOVABLY NESTABLE ONTO END FRAME PIECES

Non-Final OA §102§103§112
Filed
Jun 18, 2024
Priority
Dec 22, 2021 — provisional 63/292,623 +1 more
Examiner
MCKENZIE, THOMAS B
Art Unit
Tech Center
Assignee
3M Innovative Properties Company
OA Round
1 (Non-Final)
58%
Grant Probability
Moderate
1-2
OA Rounds
11m
Est. Remaining
80%
With Interview

Examiner Intelligence

Grants 58% of resolved cases
58%
Career Allowance Rate
576 granted / 1001 resolved
-2.5% vs TC avg
Strong +23% interview lift
Without
With
+22.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
56 currently pending
Career history
1073
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
47.1%
+7.1% vs TC avg
§102
19.6%
-20.4% vs TC avg
§112
26.3%
-13.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1001 resolved cases

Office Action

§102 §103 §112
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 Applicant’s election without traverse of Invention I, claims 1–16 in the reply filed on July 20, 2026 is acknowledged. Claim Rejections - 35 USC § 112(b) 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 2, 4, 6, 8–13, 15, and 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 2 recites: 2. The air filter of claim 1 wherein the first and second end frame pieces each exhibit a general U-shape when viewed along a long axis of the end frame piece, wherein the first and second side frame pieces each exhibit a general U-shape when viewed along a long axis of the side frame piece, and wherein with each side frame piece removably nested on an end frame piece, at least portions of upstream and downstream flanges of the side frame piece outwardly overlap at least portions of upstream and downstream flanges of the end frame piece, in an upstream-downstream direction. Emphasis added. Claim 2 is indefinite because it is unclear which end frame piece (the first or second) is referenced by “the end frame piece.” Claim 2 is also indefinite because it is unclear which side frame piece (the first or second) is referenced by “the side frame piece.” Claim 6 is indefinite because it depends from claim 2. Claim 4 recites: 4. The air filter of claim 3 wherein the sealing layers of the first and second side frame pieces each comprise a pressure-sensitive adhesive that is configured to adhesively bond to a corrugated edge of the pleated air filter media. Emphasis added. Claim 4 is indefinite because it is unclear if “a corrugated edge” refers to the “first corrugated edge” or the “second corrugated edge” of claim 1 (or to a different corrugated edge). Claim 6 recites: 6. The air filter of claim 2 wherein at least one terminal portion of each side frame piece comprises an upstream tab that extends in an inward direction beyond an inward edge of the upstream flange of the side frame piece, and wherein the upstream tab is configured to overlap, in an upstream direction, a penultimate portion of an upstream flange of an end frame piece which the side frame piece meets to form a corner of the perimeter support frame. Claim 6 is indefinite because it is unclear whether “at least one terminal portion of each side frame piece” refers to “terminal portions of the first and second side frame pieces” of claim 1 (or to a different terminal portion). Claim 8 recites: 8. The air filter of claim 1 wherein the first and second side frame pieces each comprise at least one friable connection that is configured to allow an unneeded portion of the side frame piece to be removed from a remaining portion of the side frame piece, with the remaining portion of the side frame piece being mountable on a corrugated edge of the pleated air filter media assembly when the pleated air filter media is in the expanded configuration, wherein the location of the friable connection is prechosen so that after the unneeded portion of the side frame piece is removed from the remaining portion of the side frame piece, an elongate length of the remaining portion of the side frame piece matches a span of the pleated air filter media assembly when the pleated air filter media assembly is in the expanded configuration. Emphasis added. Claim 8 is indefinite because it is unclear whether “the side frame piece” refers to the first or second side frame piece. Claim 8 is also indefinite because it is unclear whether “a corrugated edge” refers to the “first corrugated edge” or the “second corrugated edge” of claim 1 (or to a different corrugated edge). Claim 8 is further indefinite because it is unclear whether “the friable connection” refers to the at least one friable connection on the first side frame piece or the at least one friable connection on the second side frame piece. Claim 8 is also indefinite because it is unclear whether “the remaining portion of the side frame piece” refers to the remaining portion of the first or second side frame piece. Claim 8 is further indefinite because it is unclear whether the unneeded portion of the side frame piece refers to the unneeded portion of the first or second side frame piece. Claim 9 recites: 9. The air filter of claim 7 wherein each of the first and second side frame pieces comprises at least two friable connections that are at first and second prechosen locations along the elongate length of the frame piece, each prechosen location being prechosen to provide a remaining portion of the side frame piece with an elongate length that matches a span of the pleated air filter media assembly when the pleated air filter media assembly is in a desired expanded configuration. Emphasis added. Claim 9 is indefinite because “the frame piece” lacks antecedent basis. Claim 9 is also indefinite because it is unclear whether “the side frame piece” refers to the first or second side frame piece. Claim 9 is further indefinite because it is unclear whether “a desired expanded configuration” refers to the “expanded configuration” of claim 1. The “desired expanded configuration” is also indefinite because “desired” is relative terminology that the disclosure fails to define and for which a person of ordinary skill in the art would be unable to ascertain the meaning of. See MPEP 2173.05(b). Claim 10 recites: 10. The air filter of claim 1 wherein the first and second side frame pieces each comprise at least one foldable connection that is configured to allow an end portion of the side frame piece to be folded 90 degrees relative to a remaining portion of the side frame piece so that, when the pleated air filter media is in the expanded configuration, the remaining portion of the side frame piece is mountable on a corrugated edge of the pleated air filter media assembly and the end portion is mountable on an end of the pleated air filter media assembly with the foldable connection residing at a corner of the expanded pleated air filter media assembly; where each foldable connection is at a prechosen location of the first or second frame piece and wherein at that prechosen location, the foldable connection comprises a line of weakness that extends across the width of the outer sidewall and that allows the outer sidewall to be folded 90 degrees at the line of weakness, and wherein the foldable connection further comprises friable connections in the upstream and downstream flanges that are each aligned with the line of weakness in the outer sidewall. Claim 10 is indefinite because it is unclear whether “the side frame piece” refers to the first or second side frame piece. Claim 10 is also indefinite because it is unclear whether “the remaining portion of the side frame piece” refers to the remaining portion of the first or second side frame piece. Claim 10 is further indefinite because it is unclear whether “a corrugated edge” refers to the “first corrugated edge” or the “second corrugated edge” of claim 1 (or to a different corrugated edge). Claim 10 is also indefinite because it is unclear whether “the end portion” refers to the end portion of the first or second side frame piece. Claim 10 is also indefinite because it is unclear whether “the foldable connection” refers to the foldable connection of the first or second side frame piece. Claim 10 is further indefinite because “the outer sidewall” and “the upstream and downstream flanges” lack antecedent basis. Claim 11 recites: 11. The air filter of claim 1 wherein each of the first and second side frame pieces has a terminal portion that is configured so that an upstream flange of the terminal portion of the side frame piece is attachable to an upstream flange of a terminal portion of an end frame piece which the terminal portion of the side frame piece meets to form a corner of the perimeter support frame and/or is configured so that a downstream flange of the terminal portion of the side frame piece is attachable to a downstream flange of the terminal portion of the end frame piece which the terminal portion of the side frame piece meets to form the corner of the perimeter support frame. Emphasis added. Claim 11 is indefinite because it is unclear whether “the terminal portion of the side frame piece” refers to the terminal portion of the first or second side frame pieces. Claim 11 is also indefinite because it is unclear whether “an end frame piece” refers to the first or second end frame pieces of claim 1 (or to a different end frame piece). Claim 11 is further indefinite because it is unclear which element “is configured so that a downstream flange…” Claims 12–13 are indefinite because they depend from claim 11. Also, claim 12 recites: 12. The air filter of claim 11 wherein the terminal portions of the first and second side frame pieces are configured to be permanently attachable to the terminal portions of the first and second end frame pieces so that the first and second side frame pieces and the first and second end frame pieces collectively form a perimeter support frame for the pleated air filter media assembly when the pleated air filter media assembly is in the expanded configuration, with the first and second side frame pieces not being removable from the perimeter support frame for use in a perimeter support frame of a different pleated air filter media assembly. Emphasis added. Claim 12 is indefinite because “the terminal portions of the first and second end frame pieces” lack antecedent basis. Claim 12 is also indefinite because it is unclear whether “a perimeter support frame for the pleated air filter media assembly” refers to “a perimeter support frame for the pleated air filter media assembly” of claim 1 (or to a different perimeter support frame). Claim 13 recites: 13. The air filter of claim 11 wherein the terminal portions of the first and second side frame pieces are configured to be detachably attachable to the terminal portions of the first and second end frame pieces so that the first and second side frame pieces and the first and second end frame pieces collectively form a perimeter support frame for the pleated air filter media assembly when the pleated air filter media assembly is in the expanded configuration, with the first and second side frame pieces being removable from the perimeter support frame, and de-mountable from the first and second corrugated edges of the pleated air filter media assembly, so that the first and second side frame pieces can be used to form a perimeter support frame of a different pleated air filter media assembly. Claim 13 is indefinite because “the terminal portions of the first and second end frame pieces” lack antecedent basis. Claim 13 is also indefinite because it is unclear whether “a perimeter support frame for the pleated air filter media assembly” refers to “a perimeter support frame for the pleated air filter media assembly” of claim 1 (or to a different perimeter support frame). Claim 15 recites: 15. The air filter of claim 1 wherein with the air filter in a collapsed configuration, the air filter exhibits a nesting ratio of less than 1.10. Emphasis added. Claim 15 is indefinite because it is unclear whether “a collapsed configuration” refers to “a collapsed configuration” of claim 1 (or to a different collapsed configuration). Claim 16 recites: 16. A framed air filter formed from the air filter of any of claim 1, the framed air filter comprising the pleated air filter media assembly in the expanded configuration and having a perimeter support frame comprising the first and second side frame pieces respectively mounted on first and second corrugated edges of the pleated air filter media assembly and with terminal portions of the first and second side frame pieces attached to terminal portions of the first and second end frame pieces. Emphasis added. Claim 16 is indefinite because it is unclear whether “a perimeter support frame” refers to “a perimeter support frame” of claim 1 (or to a different perimeter support frame). Claim 16 is also indefinite because it is unclear whether “first and second corrugated edges” refers to “first and second opposing corrugated edges” of claim 1 (or different corrugated edges). Claim 16 is further indefinite because it is unclear whether “terminal portions of the first and second side frame pieces” and “terminal portions of the first and second end frame pieces” refers to “terminal portions of the first and second side frame pieces” and “terminal portions of the first and second end frame pieces” of claim 1 (or different terminal portions). Claim Rejections - 35 USC § 112(a) The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The enablement requirement of 35 U.S.C. 112(a) requires that the disclosure provide sufficient information to enable a person of ordinary skill in the art to make and use the full scope of the claimed invention without undue experimentation. The Examiner should consider the Wands factors in making this determination. MPEP 2164.01(a). These factors include: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Id. Here, claim 15 recites: 15. The air filter of claim 1 wherein with the air filter in a collapsed configuration, the air filter exhibits a nesting ratio of less than 1.10. Emphasis added. The breadth of the claims allows for a nesting ratio of 0 to 1.10. The nature of the invention does not allow for a nesting ratio below 1 because the disclosure illustrates the nesting ratio as being the ratio of height Hs/He, with Hs necessarily being larger than He (due to the thickness of nested side frame piece 138). See Spec. Fig. 8, p. 16, ll. 11–25. The state of the prior art would not allow for a nesting ratio below 1 because the thickness of the material of the side frame piece nested onto the end frame piece would prevent a nesting ratio below 1. The disclosure fails to provide guidance or working examples for a nesting ratio below 1. Instead, the lowest nesting ratio provided is 1.01. Id. To overcome this rejection, claim 15 could be amended to read: 15. The air filter of claim 1 wherein with the air filter in a collapsed configuration, the air filter exhibits a nesting ratio of less than 1.10 and at least 1.01. Claim Rejections - 35 USC § 102 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 1–3, 7–9, 11, 12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schuld et al., US 2008/0034718 A1. Regarding claim 1, Schuld teaches a filter in a collapsed configuration, which reads on the claimed “air filter in a collapsed configuration.” See Schuld Fig. 2, [0010]. The filter comprises a pleated filter media 12, which reads on the “pleated air filter media assembly.” See Schuld Figs. 2–4, [0030]. The filter media 12: Exhibits a pleat direction, as claimed, which is the vertical direction of the media 12, as seen in Figs. 1–4; Is expandable along an expanding-contracting direction that is orthogonal to the pleat direction, as claimed, which is the horizontal direction, as seen in Figs. 1–4; Has left and right-hand ends, which read on the “first and second opposing ends,” as seen in Figs. 1–4; Has top and bottom ends, which read on the “first and second opposing corrugated edges,” as seen in Figs. 2–4. The filter also has side panels 66 that are permanently attached to the left and right-hand ends of the filter media 12. See Schuld Figs. 2–4, [0023]. The left-hand side panel 66 reads on the “first end frame piece.” The right-hand side panel 66 reads on the “second end frame piece.” The filter further comprises a top, left folding panel 26 and a bottom, right folding panel 26, which read on the “first side frame piece” and the “second side frame piece,” respectively. See Schuld Fig. 2, [0018]. The folding panels 26 are removably nested onto the left and right-hand side panels 66, as claimed, as seen in Fig. 2 where the folding panels 26 are fitted over the side panels 66 in the folded configuration. Id. at Fig. 2, [0028]. Also, the folding panels 26 are configured to be removed from the nested position on the side panels 66 and mounted on the top and bottom edges of the filter media 12 when the filter media 12 is in an expanded configuration, as claimed, as seen in Fig. 4. See Schuld Fig. 4, [0027]. Also, free ends 32 of the top, left and bottom, right folding panels 26 (“terminal portions of the first and second side frame pieces”) are configured to be attached to end portions of the side panels 66 (“terminal portions of the first and second end frame pieces”) so that the folding panels 26 and the side panels 66 collectively form a filter frame 10 (the “perimeter support frame”) for the filter media 12 when the filter media 12 is in the unfolded configuration, as claimed. See Schuld Fig. 4, [0027]. PNG media_image1.png 1000 1220 media_image1.png Greyscale Regarding claim 2, Schuld teaches that the side panels 66 (the “first and second end frame pieces”) each exhibit a general U-shape when viewed along a long axis of each side panel 66, as claimed, as seen in Fig. 1. Also, the folding panels 26 (the “first and second side frame pieces”) exhibit a general U-shape when viewed along a long axis of each folding panel 26, as seen in Fig. 1. Further, with each folding panel 26 is removably nested on a side panel 66, at least portions of upstream and downstream flanges (the front and back vertical frame walls 70 of folding panels 26) outwardly overlap at least portions of upstream and downstream flanges (the front and back vertical frame walls 70 of side panels 66) in an upstream-downstream direction, as claimed, as seen in Figs. 1 and 2. See Schuld Figs. 1, 2, [0024]. Regarding claim 3, Schuld teaches that the top left and bottom right folding panels 26 (the “first side frame piece” and the “second side frame piece”) each comprise an outer sidewall (the exterior structure of the folding panels 26) and a sealing layer disposed on an inward surface of the outer sidewall and extends along at least a portion of an elongate length of the inward surface of the outer sidewall on each folding panel 26 (the interior portion of each folding panels 26 that contacts the top of the filter media 12), as claimed, as seen in Figs. 1–4. The sealing layer of each of the top left and bottom right folding panels 26 is capable of being occulisvely contacted by the top and bottom edges of the filter media 12 when the top and bottom folding panels 26 are mounted on the top and bottom edges of the filter media 12, as claimed, as seen in Fig. 4 where the interior of each of the folding panels 26 contacts the top and bottom edges of the filter media 12. Regarding claim 7, Schuld teaches that the left and right-hand side panels 66 (the “first and second end frame pieces”) provide first and second handles whereby the filter media 12 can be expanded from the unfolded configuration (Fig. 2) to the unfolded configuration (Fig. 4), as claimed, because the side panels 66 could be gripped to unfold the filter media 12. Regarding claims 8 and 9, Schuld is interpreted such that the top end assembly 20 (which includes the top, left folding panel 26) and the bottom end assembly 20 (including the bottom, right folding panel 26) read on the first and second side frame pieces. The end assemblies 20 each comprise two living hinges 34, which reads on the “at least one friable connection” (claim 8) and “at least two friable connections that are at first and second prechosen locations along the elongate length of the frame piece.” See Schuld Fig. 2, [0018]. Each living hinge 34 is capable of allowing an unneeded portion of the end assemblies 20 to be removed from a remaining portion of the end assembly 20 with the remaining portion of the end assembly 20 being mountable on top or bottom edge of the filter media 12 in the unfolded configuration and with the living hinge 34 being selected so that after the unneeded portion of the end assembly 20 being removed, and elongate length of the remaining portion matches a span of the filter media 12 when in the unfolded configuration (claim 8), with each prechosen location being prechosen to provide a remaining portion of the end assembly 20 with an elongate length that matches a span of the filter media 12 when in the unfolded configuration (claim 9), as claimed, because the end assembly 20 could be cut at the living hinge 34 with the remaining portion of the end assembly 20 attached to the filter media 12. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). Regarding claims 11 and 12, Schuld teaches that each of the folding panels 26 (the “first and second side frame pieces”) has a terminal portion that is configured so that an upstream and downstream flange of the terminal portion is attachable to an upstream and downstream flange, respectively, of a terminal portion of each side panel 66 (the “first and second end frame pieces”), as claimed, as seen in the annotated figure below. The terminal portions of the folding panels 26 are capable of being permanently attachable to the terminal portions of the side panels 66 to form the perimeter support frame of the filter media 12 in the unfolded configuration with the folding portions 26 not being removable from the perimeter support frame or use with a different filter media assembly, as claimed, because the frame seen in Fig. 1 could remain in the expanded configuration if a user decided to keep it in this position. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). PNG media_image2.png 831 1291 media_image2.png Greyscale Regarding claim 14, Schuld teaches that the filter comprises locks 50 (the “dead-stop, non-elastic entity”) with a first terminal end that is attached to the left-hand side panel 66 and a second terminal end that is attached to the right-hand side panel 66 with an elongate length chosen to limit the expansion of the filter media 12 to a desired span, as claimed. See Schuld Fig. 1, [0019]. Regarding claim 16, Schuld teaches a framed filter formed from the filter. See Schuld Fig. 4, [0027]. The framed filter comprises the filter media 12 in the unfolded configuration and having the perimeter support frame comprising the folding panels 26 respectively mounted on the top and bottom corrugated edges of the filter media 12 with terminal portions of the folding panels 26 attached to terminal portions of the side panels 66, as claimed. Id. 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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schuld et al., US 2008/0034718 A1 in view of Lise, US 2012/0317944 A1. Regarding claim 4, Schuld teaches the limitations of claim 3, as explained above. Schuld differs from claim 4 because it is silent as to the sealing layers each comprising a pressure-sensitive adhesive that is configured to adhesively bond to a top or bottom edge of the filter media 12, as claimed. But Lise teaches a framed air filter comprising that is attached to a filter media using a pressure-sensitive adhesive. See Lise [0043]. The adhesive is beneficial because it provides a secure attachment between the filter media and the frame. Id. It would have been obvious to use a pressure-sensitive adhesive to connect the folding panels 26 to the top and bottom edges of the filter media 12 in the unfolded configuration to provide a secure connection between the folding panels 26 and the filter media 12. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schuld et al., US 2008/0034718 A1 in view of Elliott, US 2017/0312678 A1 in view of Kometani et al., US 5,720,790. Regarding claim 5, Schuld teaches the limitations of claim 3, as explained above. Schuld differs from claim 5 because it is silent as to the sealing layers each comprise a resiliently compressible gasket material. But Elliott teaches an air filter comprising a frame sealingly attached to filter element, where the frame has a pad 32 of fibrous material of a similar material of the filter element to engage with the ends of pleats in the filter element. See Elliott Fig. 2, [0040]. The pad 32 is beneficial because it minimizes air flow past the ends of the pleats. Id. It would have been obvious for the sealing layers on the inside of the folding panels 26 of Schuld to comprise the pads 32 of Elliott to minimize the flow of air past the ends of the pleats where the folding panels 26 contact the filter media 12. Schuld as modified differs from claim 5 because it is silent as to the pads 32 being made of a resiliently compressible material. But Kometani teaches a filter element comprising a filter element F having a compressible seal portion 220 (interpreted as resiliently compressible) that is made from the same filter material as the filter material of the filter element. See Kometani Fig. 2, col. 3, l. 53–col. 4, l. 13, clm. 1. It would have been obvious for the pad 32 of Schuld as modified to be made from the material of the seal portion 220 of Kometani because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Schuld et al., US 2008/0034718 A1. Regarding claim 15, Schuld teaches the limitations of claim 1, as explained above. Schuld differs from claim 15 because it is silent as to the dimensions of the filter. Therefore, the reference fails to provide enough information to teach the filter has a nesting ratio of less than 1.10 in a collapsed configuration. But the folding portions 26 nest with the side portions 66 in the unfolded configuration (seen in Fig. 2) to make it easier to ship the filter with the folded configuration occupying a minimum amount of space. See Schuld [0028]. It would have been obvious to use routine experimentation to determine the optimal nesting ratio (ratio of the height of the filter to the nested folding portions 26 compared to the height of the filter to the side portions 66 without the nested folding portions 26) to minimize the amount of space that the filter takes up for shipping. See MPEP 2144.05, subsection II (where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Noe et al., US 2021/0101103 A1 (collapsible disposable filter); Barry et al., US 2020/0001220 A1 (variable air filter); Zhang et al., US 10,406,472 B2 (collapsible air filter); Schuld, US 10,286,351 B2 (filter with flexible side seal); Baldinger, US 2018/0193783 A1 (collapsible pleated filter); Jurisch et al., US 9,862,339 B2 (collapsible air filter); Butler et al., US 2015/0082988 (air filter with frame); Gillian, US 2013/0205732 A1 (collapsible pleated air filter); Anoszko et al., US 8,157,881 B1 (collapsible air filter); Ashwood et al., US 8,092,567 B2 (flexible size adjustable air filter); Privitt et al., US 2009/0077937 A1 (collapsible filter); Stein et al., US 5,968,217 (expandable filter cartridge); Osendorf et al., US 5,840,094 (expandable air filter). Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM. 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, Jennifer Dieterle can be reached at 571-270-7872. 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. T. BENNETT MCKENZIE Primary Examiner Art Unit 1776 /T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
Read full office action

Prosecution Timeline

Jun 18, 2024
Application Filed
Oct 05, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
58%
Grant Probability
80%
With Interview (+22.7%)
3y 3m (~11m remaining)
Median Time to Grant
Low
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