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 Objections
Claim 8 is objected to because of the following informalities, and should be:
“…a second particle counter connected to the second fluid path assembly…”
Appropriate correction is required.
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.
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Claims 1, 8, and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 and 19 of U.S. Patent No. 12,105,003. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are anticipated by the claims of U.S. Patent ‘003.
(Note: although the current application is filed as a Divisional application, the current application is not a proper Divisional since it is not only directed to the unelected claims of the parent application – in other words, the current claims are different from the non-elected claims in the parent; therefore, a Double Patenting rejection is proper)
Regarding claim 1, U.S. Patent ‘003 claims (claim 16):
A system for testing a filter comprising: (the method of claim 16 is performed by the system/structure claimed in the steps of claim 16)
a container configured to receive a testing solution; (claim 16)
a first passageway in fluid communication with the container; (claim 16)
a second passageway connecting to the first passageway, (claim 16) wherein the filter is arranged between the first passageway and the second passageway; (implicit in claim 16)
a first particle counter connected to the first passageway (claim 16); and
a second particle counter connected to the second passageway; (claim 16)
wherein the testing solution contains a number of particles; (claim 16)
wherein the number of the particles in the testing solution is known and a particle size of the particles in the testing solution is known (claim 16), and wherein the number of the particles in the testing solution is 100/ml to 500/ml and the particle size of the particles in the testing solution is 20 nanometers to 50 nanometers. (claim 16)
Regarding claim 8, U.S. Patent ‘003 claims (claim 16):
A system for testing a filter comprising: (the method of claim 16 is performed by the system/structure claimed in the steps of claim 16)
a first fluid path assembly; (claim 16)
a first particle counter connected to the first fluid path assembly; (claim 16)
a second fluid path assembly; and (claim 16)
a second particle counter connected to the first fluid path assembly; (claim 16)
wherein the first fluid path assembly is configured to introduce a testing solution with a number of particles to pass through the filter (claim 16), and wherein a particle size of the particles in the testing solution is 20 nanometers to 50 nanometers and the number of the particles in the testing solution is 100/ml to 500/ml; (claim 16)
wherein the second fluid path assembly is configured to receive the testing solution that has passed through the filter. (implicit in claim 16)
Regarding claim 11, U.S. Patent ‘003 claims (claim 19):
The system of claim 8, wherein the first fluid path assembly comprises a first pressure gauge configured to detect a pressure of the testing solution in the first fluid path assembly. (claim 19)
Regarding claim 12, U.S. Patent ‘003 claims (claim 19):
The system of claim 11, wherein the second fluid path assembly comprises a second pressure gauge configured to detect a pressure of the testing solution in the second fluid path assembly. (claim 19)
Allowable Subject Matter
Claims 15-20 are allowed.
Claims 2-7, 9-10, and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Juhasz (U.S. Pub. 2003/0078751) discloses a system for testing a filter where contaminants are measured before and after passing through a filter.
Yoshida et al. (U.S. Pub. 20030015045) discloses a system that can detect/count particles in the nanometer range.
Schaefer et al. (U.S. Pub. 2004/0038013) discloses a filter capable of filtering particles in the nanometer range.
Liang et al. (U.S. Pub. 2006/0187070) discloses a system that determines the need to change a filter based on a particle count before and after a filter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin Schmitt, whose telephone number is (571) 270-7930. The examiner can normally be reached M-F | 8:30-5:00.
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/BENJAMIN R SCHMITT/Primary Examiner, Art Unit 2852
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