DETAILED ACTION
Status of Claims:
Claims 1-16 are pending.
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.
Claims 1-16 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.
Regarding Claim 1:
The claim states “an adjustment device for positioning the passage element having the passage opening so as to be adjustable…” It is not clear if the passage element or passage openings are required to be adjustable.
Regarding Claim 7:
The claim states “…are in each case able to be assigned…” It is not clear what “each case” is referring to.
Regarding Claim 10:
The claim states “the adjustment device is specified to position…” It is not clear what “specified to position” is limited to.
Regarding Claim 12:
The claim refers to “the first outlet” and “the second outlet”. There is insufficient antececnt basis for these limitations within the claims. Antecedent basis is provided in claim 6, however claim 12 depends form claim 1.
Regarding Claim 13:
The claim refers to “the feed pipe”. There is insufficient antecedent basis for this limitation within the claims.
Regarding Claim 16:
The claim states “in order to adapt the water filter to water to be anticipated at the installation site”. This limitation renders the claim indefinite because it is not clear what water is anticipated at the installation site.
The claim refers to “the installation site”. There is insufficient antecedent basis for this limitation within the claims.
The remaining claims are indefinite as they depend from an indefinite claim.
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, 2, 10, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 13, and 14 of copending Application No. 18/825,743 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1:
The claims of the copending application disclose the water filter for filtering water, comprising a container for receiving filter elements; an infeed (feed) for feeding water to a passage element, wherein the passage element is arranged within the container; wherein a passage opening is provided in the passage element, and a container opening is provided in the container, and comprising an adjustment device for positioning the passage element having the passage opening so as to be adjustable relative to the container having the container opening (see claim 1).
Regarding Claim 2:
The claims of the copending application disclose the water filter according to claim 1, wherein the water filter is configured for filtering water in a household and/or for filtering water at a maximum flow rate of 20 l/min (see claim 13).
Regarding Claim 10:
The claims of the copending application disclose the water filter according to claim 1, wherein the adjustment device is specified to position the passage element so as to be adjustable relative to the container opening by rotation about an axis (see claim 12).
Regarding Claim 16:
The claims of the copending application disclose the method for operating a water filter according to claim 1, comprising the step: - adjusting a position of the passage element having the passage openings relative to the container having the container openings in order to adapt the water filter to water to be anticipated at the installation site (*adjusting a position…in order to adjust the water filter) (see claim 14).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-3 and 6-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johann et al (US 2023/0144794).
Regarding Claim 1:
Johann teaches the water filter for filtering water, comprising a container (housing 101) (see para. 0117) for receiving filter elements; an infeed (inlet 107) (see para. 0123) for feeding water to a passage element (combination of bypass 109 and actuator 207) (see para. 0131), wherein the passage element is arranged within the container; wherein a passage opening (bypass opening 109) (see para, 0129) is provided in the passage element, and a container opening (passage 121) is provided in the container (see para. 0127), and comprising an adjustment device (control element 204) for positioning the passage element having the passage opening so as to be adjustable relative to the container having the container opening (see para. 0111, 0131).
Regarding Claim 2:
Johann teaches the water filter according to claim 1, wherein the water filter is configured for filtering water in a household (see para. 0006) and/or for filtering water at a maximum flow rate of 20 l/min.
Regarding Claim 3:
Johann teaches the water filter according to claim 1, having a cover (head 102) which closes the container (see para. 0117).
Regarding Claim 6:
Johann teaches the water filter according to claim 3, wherein a first outlet (passage outlet 111) (see para. 0135) and a second outlet (outlet defined by central axial passage 120) (see para. 0140) are provided in the cover.
Regarding Claim 7:
Johann teaches the water filter according to claim 6, wherein the first outlet and the second outlet are in each case able to be assigned at least partially different paths for water running through the container and filter elements disposed in the latter (bypass can be adjusted therefore the paths change) (see para. 0133).
Regarding Claim 8:
Johann teaches the water filter according to claim 1, wherein the container has a continuous opening which is formed by an internal wall (downcomer 104) of the container, wherein the container opening is provided in the internal wall (see para. 0125-0127).
Regarding Claim 9:
Johann teaches the water filter according to claim 1, - wherein the adjustment device (control element 204) is arranged outside of the container (see para. 0131, fig. 1) and/or wherein the adjustment device is accessible and adjustable outside of the container; and/or - wherein the infeed has a feed pipe which is disposed so as to be coaxial with the container and/or with the passage element.
Regarding Claim 10:
Johann teaches the filter according to claim 1, wherein the adjustment device is specified to position the passage element so as to be adjustable relative to the container opening by rotation about an axis (rotated) (see para. 0112).
Regarding Claim 11:
Johann teaches the water filter according to claim 3, wherein the infeed, the cover and/or the container are disposed so as to be concentric with the axis (see para. 0038, 0040).
Regarding Claim 12:
Johann teaches the water filter according to claim 1, wherein the container comprises a container outlet (outlet 202) which is connected to at least the first outlet and/or the second outlet, irrespective of a position of the passage element (see para. 0106, 126).
Regarding Claim 13:
Johann teaches the water filter according to claim 1, wherein an intermediate space is provided between the passage element and the infeed or the feed pipe of the infeed (two coaxial annular passages) (see para. 0040), and wherein a plurality of seals are provided between the passage element and the container (seal 208 and 209) (see para. 0159, 0156).
Regarding Claim 14:
Johann teaches the water filter according to claim 1, wherein the container has a connecting periphery having clearances and/or protrusions for fastening the container to a filter head (coupled to filter head) (see para. 0117).
Regarding Claim 15:
Johann teaches the filter system having a water filter according to claim 1, and a filter head to which the water filter is able to be releasably fastened (threads) (see para. 0117).
Regarding Claim 16:
Johann teaches the method for operating a water filter according to claim 1, comprising the step: - adjusting a position of the passage element )moving the actuator) having the passage openings relative to the container having the container openings in order to adapt the water filter to water to be anticipated at the installation site (see para. 0133).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johann et al (US 2023/0144794) as applied to claim 1 above, and further in view of Wang et al (CN 110156191, English machine translation provided).
Regarding Claim 4:
Johann teaches the water filter according to claim 1.
Johann does not teach the passage element and/or the container are/is produced at least substantially from an inorganic material or from a plastics-free material.
Wang teaches a water filter container made from a plastics-free material (stainless steel) (see pg. 6, 4th paragraph).
Johann and Wang are analogous inventions in the art of water filters. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to replace the unspecified material of Johann with the stainless steel of Wang because it is the simple substitution of one filter container (housing) material with another known filer container material, obviously resulting in a filter able to filter water, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johann et al (US 2023/0144794) as applied to claim 3 above, and further in view of Scholz et al (US 2009/0173675).
Regarding Claim 5:
Johann teaches the water filter according to claim 3.
Johann does not teach the cover is connected to the container in such a manner that releasing the cover from the container in a non-destructive manner is possible only when using a tool.
Scholz teaches a water filter wherein a tool is required to separate components (see para. 0029).
Johann and Scholz are analogous inventions in the art of water filters. It would have been obvious to configure the water filter of Johann to require a tool to separate the cover and container, as disclosed by Scholz because it increases security against manipulation (see Scholz para. 0029).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 7/29/2026
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