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 § 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 1-11 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 claims 1, 2 and 9 the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The remainder of the claims depend from the above.
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) 1-4 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JPH08155333A (‘333).
For claim 1, the ‘333 reference discloses a filtering system for filtering air, in particular for a vehicle (intended use of the apparatus), comprising containing a filter configured to filter particles out of the air (figure 3, object 24), the filter comprising a flow path through which the air passes (figure 3, object 26), an ionizer (figure 3 object 24), comprising an electrode assembly, through which the flow path passes upstream of the filter, wherein the electrode assembly comprises an electrode that has at least one emitter and a counter electrode (figure 3, objects 22 and 23), between which there is a voltage for generating a corona discharge in the air, when in operation (method of using the apparatus), wherein the filter comprises at least one electrically conductive section and at least one dielectric section (figure 3, objects 25-27), which are arranged successively along the flow path (figure 3, objects 25-27), containing an electric line that connects at least one of the conductive sections to the counter electrode (figure 3 object 28), and a Z-diode in the line with which the electrical connection between the at least one conductive section and the counter electrode (figure 3, object 30) is disconnected when the at least one conductive section and the counter electrode are at the same electrical potential (method of using the apparatus).
For claim 2, the ’333 reference discloses the filtering system contains a power source (figure 3 object 28) for obtaining the voltage between the electrode and counter electrode (method of use), the electrode is connected to a first pole, the power source and the counter electrode are connected to a second pole (figure 20 object 28), when the ionizer is in operation (method of use), the line connects the counter electrode and the at least one conductive section to the second pole, and the Z-diode is between the second pole and the at least one conductive section in the line (figure 3, objects 28 an 30).
For claim 3, the ‘333 reference discloses the at least one conductive section is downstream of one of the static sections (figure 3, objects 26 and 27).
For claim 4, the limitations of the electrode has a negative polarity and the counter electrode forms the counter-potential in the regular operating mode and in the reactivation mode are the method of using the apparatus which the ‘333 apparatus (figure 3) is capable of. Also see claim 2 of ‘333.
For claim 8, the ‘333 reference discloses the static section and the conductive section form layers in the filter (figure 3, objects 25-26).
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) 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH08155333A as applied in claim 1 above and further in view of Performance of Ionizer Assisted Air Filtration (Belok).
For claims 5 and 11, the ‘333 reference discloses that the at least one emitter and the filter are spaced apart (as shown above and in figure 3). The reference does not disclose the specific distance.
‘333 states that the distance between the filter and that of the emitter should be a sufficient distance so as to not cause arc discharge (page 3/7 mid page).
Belok further discloses that optimum distance varied with both the upstream particle concentration, air velocity and the type of filter being used page 11/31).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the ‘333 reference to arrive at the at least one emitter and the filter are spaced apart, wherein the distance from the at least one emitter to the filter along the flow path is between 0 mm and 30 mm, or 7 mm as the courts have recognized this variable as a result effective variable (‘333 and Belok as shown above) and the courts have held that that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 6, 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH08155333A as applied in claim 1 above and further in view of Sato US 20180078950 (‘950).
For claims 6 and 7 the ‘333 reference discloses the at least one emitter protruding (figure 3, object 22). The refence does not disclose the electrode has rods that are spaced apart in the direction transverse to the flow path nor the counter electrode contains, or is an electrically conductive grid through which the flow path passes.
The ‘950 reference discloses the electrode has rods that are spaced apart in the direction transverse to the flow path and the counter electrode contains, or is an electrically conductive grid through which the flow path passes (figures 15 and paragraphs [0102] and [0126]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the ‘333 reference to include the electrode has rods that are spaced apart in the direction transverse to the flow path and the counter electrode contains, or is an electrically conductive grid through which the flow path passes (‘950, figure 15 and paragraph [0102] and [0126]) so as to improve collection efficiency of particles having a small diameter.
For claim 9, the ‘333 reference discloses the filtering system according to claim 1 (as shown above). The reference does not disclose the filtering system within an air conditioner, the air conditioner also including a heat exchanger.
The ‘950 reference discloses a similar filter system within an air conditioner and the air conditioner also including a heat exchange (paragraphs [0128] and [0129]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the ‘333 reference to include the filtering system of claim 1 within an air conditioner, the air conditioner also including a heat exchanger (‘950 paragraphs [0128] and [0129]) so as to effectively filter air being treated by the air conditioner unit.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH08155333A and Sato US 20180078950 (‘950) as applied in claim 9 above and further in view of Cantoni US 4,629,479 (‘479).
For claim 10, the ‘333 and ‘950 combination discloses that of claim 9 but does not disclose the air conditioner containing claim 1 within a vehicle.
The ‘479 reference discloses a similar type apparatus being included within a vehicle (abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of ‘333 and ‘950 to claim 9 within a vehicle (‘479 abstract) so as to effectively filter the air entering the filter cabin.
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 1-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18/770901 (‘901) in view of JPH08155333A.
Claims 1 and 2 corresponds to claim 1 and 7 of ‘901 except the Z-diode in the line.
As shown above the ‘333 reference discloses these limitations.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘901 to include the Z-diode in the line as shown by ‘333 to allow for a voltage drop means.
Claim 3 of the current application corresponds to claims 8 and 9 of ‘901.
Claim 4 of the current application corresponds to claim 4 of ‘901.
Claim 5 and 11 of the current application corresponds to claim 14 of ‘901.
Claim 7 of the current application corresponds to claim 1 and 4 of ‘901.
Claim 8 of the current application corresponds to claims 1, 8 and 9 of ‘901.
Claims 6, 9 and 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18/770901 (‘901) in view of JPH08155333A and Sato US 20180078950 (‘950).
Claim 6 of the current application corresponds to claim 1 of ‘901 except for the electrode has rods that are spaced apart in the direction transverse to the flow path from which at least one emitter protrude. As shown above, this is disclosed by ‘950.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘901 to includes the configuration of the electrode as disclosed in ‘950 (‘950, figure 15 and paragraph [0102] and [0126]) so as to improve collection efficiency of particles having a small diameter.
Claims 9 and 10 of the current application correspond to claim 1 of ‘901 other than the disclosure of one heat exchanger. As shown above, the ‘950 reference discloses the air conditioner.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘901 to include the air conditioner also including a heat exchanger (‘950 paragraphs [0128] and [0129]) so as to effectively control the temperature of the air being treated by the air conditioner unit.
Claims 1-4, 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 of copending Application No. 18770911 (‘911) in view of JPH08155333A.
Claim 1, 3 and 9 of the currently application correspond to claim 1, 5 and 9 of ‘911 except for the electric line that connects at least one of the conductive sections to the counter electrode and the Z-diode in the line.
As shown above the ‘333 reference discloses these limitations.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘911 to include the electric line that connects at least one of the conductive sections to the counter electrode and the Z-diode in the line as shown by ‘333 to effectively provide charge to the dust particles and also allowing for a voltage drop means.
Claims 2 and 4 of the current application corresponds to claim 4 and 5 of ‘911.
Claim 8 of the current applications corresponds to claims 13, 14 and 16 of ‘911.
Claims 5 and 11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18770911 (‘911) in view of JPH08155333A and Performance of Ionizer Assisted Air Filtration (Belok).
Claims 5 and 11 corresponds to claim 1 of ‘911 except ‘911 does not specifically state the distances between the emitter and the filter but does not does not disclose the specific distance.
‘333 states that the distance between the filter and that of the emitter should be a sufficient distance so as to not cause arc discharge (page 3/7 mid page).
Belok further discloses that optimum distance varied with both the upstream particle concentration, air velocity and the type of filter being used page 11/31).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the ‘911 reference to arrive at the at least one emitter and the filter are spaced apart, wherein the distance from the at least one emitter to the filter along the flow path is between 0 mm and 30 mm, or 7 mm as the courts have recognized this variable as a result effective variable (‘333 and Belok as shown above) and the courts have held that that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claims 6 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18770911 (‘911) in view of JPH08155333A and Sato US 20180078950 (‘950).
Claims 6 and 7 of the current application correspond to claim 1 of ‘911 but do not disclose the refence does not disclose the electrode has rods that are spaced apart in the direction transverse to the flow path nor the counter electrode contains, or is an electrically conductive grid through which the flow path passes.
The ‘950 reference discloses the electrode has rods that are spaced apart in the direction transverse to the flow path and the counter electrode contains, or is an electrically conductive grid through which the flow path passes (figures 15 and paragraphs [0102] and [0126]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘911 to include the electrode has rods that are spaced apart in the direction transverse to the flow path and the counter electrode contains, or is an electrically conductive grid through which the flow path passes (‘950, figure 15 and paragraph [0102] and [0126]) so as to improve collection efficiency of particles having a small diameter.
Claims 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18770911 (‘911) in view of JPH08155333A, Sato US 20180078950 (‘950) and Cantoni US 4,629,479 (‘479).
Claim 10 of the current application corresponds to claims 1 of ‘911 including the limitations of ‘333 as stated above. ‘911 does not disclose a vehicle with the air conditioner of claim 1.
The ‘479 reference discloses a similar type apparatus being included within a vehicle (abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of ‘911, ‘333 and ‘950 within a vehicle (‘479 abstract) so as to effectively filter the air entering the filter cabin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER ROSE ORLANDO whose telephone number is (571)270-3149. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AMBER ROSE ORLANDO
Primary Examiner
Art Unit 1731
/AMBER R ORLANDO/Primary Examiner, Art Unit 1731
Prosecution Insights