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 § 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.
Claim 7 is 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 7 defines a structural limitation (diameter of the plurality of openings) on a material worked upon (foreign substances in raw water). The filter could be used to treat a variety of different liquids and some liquids could contain foreign substances of an extremely small size (ions). As such, the range of diameter for the plurality of openings is indefinite as one skilled in the art would not know the range of the diameter of openings based on the claim language.
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.
Claim(s) 1, 7, and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Pulek et al. (US 2003/0006186).
Regarding claim 1, Pulek teaches a filter member, comprising: a cylinder part extending in one direction (perforated cylindrical core); a filter hollow part which is formed inside the cylinder part to pass through along the one direction and allows the inside of the cylinder part to be in communication along the one direction; and a filtering part (filter medium) disposed to surround the cylinder part from radially outside and configured to filter raw water flowing through the filter hollow part, the filtering part comprises a main filtering part (imperforate filter medium and first few sections of the perforated filter layers) which has one end coupled to the outer circumferential surface of the cylinder part and extends from the one end toward the other end and which is wound at least one time along the outer circumferential surface of the cylinder part to surround the outer circumferential surface of the cylinder part; and a sub-filtering part (the last perforated filter layers) which has one end coupled to the other end of the main filtering part and extends from the one end toward the other end and which is wound along the outer circumference of the main filtering part to surround the outer circumference of the main filtering part, wherein the sub-filtering part comprises a plurality of openings forming passages which the raw water passes through to enter the main filtering part (Figs. 7-13 and [0068]-[0094]).
It is noted that Pulek teaches the filtering material is wound around the core many times (Fig. 9) and the lengths of the main filtering material appears to be able to wrap around the core at least once (Figs. 7-8 and 10-13). However, Pulek never states that the length of the main filtering part is wrapped at least once around the core. One skilled in the art would expect the length of the main filtering part to be long enough to wrap around the core at least once, or it would have been obvious in order to provide enough of the main filtering material to surround the core thereby ensuring the fluid being treated to flow through the main filtering material for at least a portion of the treatment operation.
Regarding claim 7, it is submitted that the perforated openings in the sub filtering part would fit the diameter of the range claimed/implied.
Regarding claim 11, Pulek teaches the main filtering part can be one piece (Fig. 13) and the surrounding limitations are also taught.
Regarding claim 12, the limitations are directed to how the fluid to be treated flows through the filter. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). In this case, the operation and flow patterns claimed are dependent on the design of the filter structure surrounding the filter itself and not to any specific structure of the filter. Pulek is capable of being used as claimed and would therefore meet the claimed intended use limitations.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pulek et al. (US 2003/0006186) in view of Kasten (US 3,415,384).
Regarding claims 2-4, it is submitted that while the perforated openings shown in Figs. 13D could be surrounded by what could be termed as ribs, one skilled in the art could also find the perforations to not be surrounded by “ribs” as well. Kasten teaches a similar apparatus of a rolled filter having a main filtering part (18) and a sub-filtering part (screen 50) that is coupled and extends outward of the main filtering part. Said filtering part is formed from a screen, which is essentially a combination of different sets of parallel ribs forming an opening (Figs. 4-8 and C3/L30-C4/L11). As such, one skilled in the art would have found it obvious to modify the mostly perforated portion of the sub filtering part to be comprised of a screen as claimed as such designs are known in the art and would provide similar desired functions with a reasonable expectation of success.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pulek et al. (US 2003/0006186).
Regarding claim 5, Pulek teaches the sub filtering part a first and second sub end as claimed but Pulek fails to teach the two sub ends are coupled to each other. However, optimizing the desired length of the various sections is considered in Pulek ([0046]) and optimizing the length of the sub filtering part so that the two sub ends of the sub filtering layer is able to couple with one another would have been an obvious matter of making the sub filtering layer surround the inner core at least once.
Regarding claim 6, it is submitted that if the sub filtering part is considered to be the last perforated filter layers (16c 320A 420A), the length shown is less than equal to the length of the other main filtering part, or it would have been obvious to adjust the length of the desired filtering layers in order to achieve the desired treatment results and flow rates.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pulek et al. (US 2003/0006186) in view of Knappe et al. (US 2009/0145838).
Regarding claims 8-10, Pulek teaches that the filter is comprised of multiple layers with the sub filtering part coupled to at least one of the main filtering parts but fails to teach the filter includes a plurality of main filtering parts spaced apart at the same angle. Knappe teaches for a similar wound filter having multiple layers, the wound filter can comprise multiple filter layers (3) that appear to be spaced apart at the same angle (Fig. 1). As such, one skilled in the art would have found it obvious to provide duplicate main filtering parts as claimed as such a design is known and used in the art and would provide multiple filtering pathways.
Allowable Subject Matter
Claims 13-16 are allowed.
It is noted that Arold et al. (US 2005/0029192 and Hirozawa et al. (US 2014/0231332) are relevant to the potential flow patterns and design of the filter structure housing and inlets. However, even when said art is combined with Pulek, the housing, inlet structure, and conduits claimed would not have been considered obvious as the Pulek filter member in the specific filter structure would require many different prior art references to teach all claimed limitations leading to impermissible hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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