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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,383,188 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee Reminder
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 11,383,188 (“the ‘188 patent”). A review of the maintenance fee status for the ‘188 patent shows the 3.5 year fee has been paid and the first day to pay the 7.5 year fee opens July 12, 2029, the surcharge starts January 15, 2030, and the last day to pay is July 12, 2030.
Amendments
The claim amendments of July 10, 2024 do not comply with 37 CFR 1.173(b)-(g). 37 CFR 1.173(d)(1) “The matter to be omitted by reissue must be enclosed in brackets”. 37 CFR 1.173(d)(2) states “The matter to be added by reissue must be underlined”. The Applicant is also reminded that 37 CFR 1.173(g) states that all amendments must be made relative to the patent.
Further, claims 15-21, are not underlined.
Consent of Assignee
The person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and the person who signed it has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012).
Reissue Declaration
While the error statement is proper in that it lists two phrases, “hollow capsule housing” and “filter module”, from original independent patent claims 1 and 5 are not in new independent claims 15, 18, 20, and 21, the limitation, “module alignment element” is not proper for the error statement as it includes limitations that are impermissible recapture of surrendered subject matter, and thus, cannot support a proper reissue application.
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
While the checkbox at the bottom of page 2 of 2 of the 3 page reissue declaration including the error statement is checked stating additional joint inventors are named on 1 supplemental sheet(s) PTO/AIA /10 attached thereto, the supplemental sheet for declaration is not attached but filed as a separate file/paper. As such, it is not clear whether the other two inventors saw the first two pages of the reissue declaration including information such as the error statement when they signed the supplemental sheet. Thus the declaration is improper and a newly executed declaration with all 6 of the pages should be attached and filed together as one paper/file.
Claim Rejections - 35 USC § 251: Reissue Declaration
Claims 1-21 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251: Recapture
Claims 15-21 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Claims 15-21 are broader than claims 1-14. Claim 15-21 does not require many of the limitations of claims 1-14, particularly, “a module alignment element, arranged in, and moveable axially in…wherein the plurality of horizontally arranged outwardly extending ears can contact an inner surface of the second upper bowl portion forming the inner diameter” (emphasis added).
Therefore step 1 of the three-step test is met for claims 15-21.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘188 patent, the Examiner rejected claims 1, 3-5, and 9-10 as unpatentable over Reeder et al. (US-4964984) in view of Lin (US-20150174514) and Pall (US-4361483) and Diemer et al. (US-20040094467), rejected claim 2 as unpatentable over Lin in view of Pall and Diemer et al., rejected claim 6 as unpatentable over Reeder et al. in view of Lin, Pall, and Diemer et al., rejected claims 7-8 as unpatentable over Reeder et al. in view of Lin, Pall, and Diemer et al. in the non-final rejection mailed April 2, 2021. The Applicant responded with arguments and amendments. The Applicant cancelled claim 2, amended independent claims 1 and 6 to add the limitation, “in, and moveable axially in”, and argued Lin teaches insert/alignment module 220 is not moveable axially as Lin discloses the goal is to maintain the structural integrity, strength, and airtight and fluid tight seal of the insert/alignment module in the filter capsule in the last paragraph of page 7 to the third paragraph of page 8 in the response filed June 10, 2021. The Examiner maintained the rejection of pending claims 1 and 3-10 stating that the movement reducing noise is not in the claims, the specification cannot be read into the claims, and as Lin’s insert/alignment module is placed axially in the filter capsule it is moveable axially in a final rejection mailed on July 9, 2021. The Applicant responded with an Request for Continued Examination (RCE) amending the independent claims adding the limitation, “during filtration”, add new dependent claim 11, and arguing Lin teaches insert/alignment module 220 is not moveable axially during filtration as Lin discloses the goal is to maintain the structural integrity, strength, and airtight and fluid tight seal of the insert/alignment module in the filter capsule in the first full paragraph of page 7 to the last paragraph of page 7 in the response filed October 5, 2021. The Examiner rejected claims 1, and 3-10 under 35 USC 112(a)/first paragraph for new matter/lack of written description as the specification did not disclose the alignment module moveable during filtration, and maintained the rejections of pending claims 1 and 3-10 stating that the movement reducing noise is not in the claims, the specification cannot be read into the claims, and as Lin’s insert/alignment module is placed axially in the filter capsule it is moveable axially, and rejected new claim 11 as unpatentable over Reeder et al. in view of Lin, Pall, Diemer et al., and Pall’LS (NPL) in a non-final rejection mailed December 15, 2021. The Applicant filed a response on January 28, 2022, deleting, “during filtration”, from the independent claims, adding “wherein the plurality of horizontally arranged outwardly extending ears can contact an inner surface of the second upper bowl portion forming the inner diameter, arguing Lin teaches insert/alignment module 220 is not moveable axially as Lin discloses the goal is to maintain the structural integrity, strength, and airtight and fluid tight seal of the insert/alignment module in the filter capsule and Lin does not teach the extending ears of the amended claims in the first full paragraph of page 7 to the third full paragraph of page 9, and adding new dependent claims 12-15. The Examiner allowed claims 1 and 3-15 on May 12, 2022.
Therefore, the Patent Owner amended claim 1 and 6 to add the limitations of “in, and moveable axially in” and “wherein the plurality of horizontally arranged outwardly extending ears can contact an inner surface of the second upper bowl portion forming the inner diameter” and argued that the prior art did not include these limitations. Therefore, the newly presented claims must include the limitations of “in, and moveable axially in” and “wherein the plurality of horizontally arranged outwardly extending ears can contact an inner surface of the second upper bowl portion forming the inner diameter” and the argued limitation. Claims 15-21 fail to disclose any of the limitations added to the claims to make them allowable.
Therefore, the limitations of “in, and moveable axially in” and “wherein the plurality of horizontally arranged outwardly extending ears can contact an inner surface of the second upper bowl portion forming the inner diameter” are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claims 15-21 are being broadened to omit the surrendered subject matter.
Therefore step 2 of the three-part test is met.
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
Therefore, the third step of the analysis does not need to be performed for claims 15-21.
Therefore, claims 15-21 improperly recapture surrendered subject matter.
Claims 15-21 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections - 35 USC § 251: Original Patent
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. at 1356. The Federal Circuit adopted the Supreme Court's explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification’ ”. Id. at 1359. The Federal Circuit further stated that although wording in 35 USC 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
Based on Antares a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, the patent disclosure discloses a filter capsule assembly with valves for venting, integrity testing, and recovering additional fluid from the filter, but does not disclose the subcombination of the valves in any other use. Although claims 15-17 include the limitation, “for a filter capsule”, this is intended use and does not provide any structural features to the valves. Thus claims 15-17 only require a valve capable of being used with a filter capsule and do not actually require the filter capsule or any of it parts. As such claims 15-17 read on any valve, such as the valve on the outside of a home. The four corners of the patent fail to provide support for a valve alone and only discloses a particular use with a filter capsule. As such claims 15-17 are not drawn to the same invention of the original patent.
Therefore, claims 15-17, which are directed to any valve with an outlet port, spindle, and actuator knob that does not move the outlet port when turned, do not satisfy the “original patent” requirement.
Claims 15-17 are rejected under 35 USC 251 for not claiming subject matter directed to the invention disclosed in the original patent.
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.
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Claim(s) 15-18 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by EMD Millipore Corporation (WO-2016109230, referred to hereinafter as “EMD”). Regarding Claim 15, EMD discloses a valve 100 for a filter capsule 50, the valve comprising a valve outlet port 158, a valve spindle A, and actuator knob B, wherein operation of the actuator knob moves the valve spindle to open and close the valve without moving the valve outlet port (see particularly Fig. 12 and annotated Fig. 12 above) (Figures 1-12).
Regarding Claim 16, EMD disclose wherein the spindle includes two grooves C, each groove including an O-ring in the groove (see particularly Fig. 12 and annotated Fig. 12 above) (Figures 1-12).
Regarding Claim 17, EMD discloses an outlet fitting D (see particularly Fig. 12 and annotated Fig. 12 above) (Figures 1-12).
Regarding Claim 18, EMD discloses a filter capsule 50 comprising a housing 52 having an inlet 56 and an outlet 60 and an internal fluid port (where 100 enters 52), and a valve 100 in fluid communication with the internal fluid flow port and with an external environment to the filter capsule, the valve comprising a valve outlet port 158, a valve spindle A, and actuator knob B, wherein operation of the actuator knob moves the valve spindle to open and close the valve without moving the valve outlet port (see particularly Fig. 12 and annotated Fig. 12 above) (Figures 1-12).
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.
Claim(s) 19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EMD. Regarding Claim 19, EMD discloses an additional valve 62 in fluid communication with an additional internal fluid port (wherein 62 enters 52) and with an external environment to the filter capsule, the additional valve comprising a valve outlet port 158, a valve spindle A, and actuator knob B, wherein operation of the actuator knob moves the valve spindle to open and close the valve without moving the valve outlet port (as stated as lines 20-21 of page 12, valve 100 and valve 62 may be of similar construction and thus the valve 100 in Figure 12 can be used as valve 62 in the filter capsule 50 in Figure 6) (see particularly Fig. 12 and annotated Fig. 12 above) (Figures 1-12).
If in the alternative using valve 100 of Figure 12 for valve 62 of Figure 6 is not expressly disclosed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the simple substitution of the known valve 100 of Figure 12 for the known valve 62 of Figure 6 to achieve the predictable result of allowing the filter capsule to be vented. (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007))
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over EMD. Regarding Claim 20, EMD discloses a method of venting (see lines 23-24 of page 12) a filter capsule 50 comprising a housing 52 having an inlet 56 and an outlet 60 and an internal fluid flow port (where 100 enters 52), a filter 40 and a valve 100 in fluid communication with the internal fluid flow port and an external environment to the filter capsule, the valve comprising a valve outlet port 158, a valve spindle A, and actuator knob B, wherein operation of the actuator knob moves the valve spindle to open and close the valve without moving the valve outlet port (see particularly Fig. 12 and annotated Fig. 12 above), the method comprising closing the valve, opening the valve to vent air or gas from the filter capsule, and closing the valve (see page 14, lines 2-8) (Figures 1-12). EMD does not expressly disclose partially filling the filter capsule with fluid.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform this step as it would have been the normal and expected operation for the disclosed venting operation of the filter capsule.
Regarding Claim 21, EMD discloses a method of recovering additional fluid from (see lines 5-7 of page 9, sampling is recovering additional fluid) a filter capsule 50 comprising a housing 52 having an inlet 56 and an outlet 60 and an internal fluid flow port (where 100 enters 52), a filter 40 and a valve 100 in fluid communication with the internal fluid flow port and an external environment to the filter capsule, the valve comprising a valve outlet port 158, a valve spindle A, and actuator knob B, wherein operation of the actuator knob moves the valve spindle to open and close the valve without moving the valve outlet port (see particularly Fig. 12 and annotated Fig. 12 above), the method comprising closing the valve, opening the valve to allow air or gas to push additional fluid from the filter capsule, and closing the valve (see page 14, lines 2-8) (Figures 1-12). EMD does not expressly disclose passing fluid through the filter.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform this step as it would have been the normal and expected operation for the disclosed recovering of additional fluid operation of the filter capsule.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
CONFEREES:
/Terrence R. Till/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993