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 .
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “sensors” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent Application No. 18/793,014. Although the conflicting claims are not identical, they are not patentably distinct from each other. While the claims of the '190 patent are not identical to the instant claims, the claims of the '190 patent nevertheless anticipate instant claims 6-20. Anticipation is the epitome of obviousness.
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.
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.
Claim(s) 1-3, 8-10, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ruhland et al (US 20150059297; hereinafter Ruhland).
As regarding claim 1, Ruhland discloses the claimed invention for a modular filter assembly comprising: a tube extending along a central axis from a first end to a second end and configured to receive a filter; an aperture extending through a wall of the tube; an end cap at the first end of the tube; an outlet cap at the second end of the tube; an inlet cap including an inlet extending radially outward from the central axis.
Ruhland does not disclose wherein the inlet cap is configured to be fastened to the aperture in a first configuration and a second configuration, different than the first configuration, and wherein the inlet is in communication with the aperture in each of the first configuration and the second configuration. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to configure the inlet cap such that it may be fastened to the aperture in either a first configuration or a second configuration, different configuration (e.g., by installing the inlet 102 in an inverted orientation or after a 180 degree rotation), while maintaining communication between the inlet and the aperture in both configurations. Such modification merely changes that orientation of the inlet cap and would not impair the operation or intended function of the air filter system having a cyclonic separator.
It well established that rearranging or reversing the orientation of known components of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Where patentability is said to be based upon particular chosen orientations or configuration of otherwise known components recited in the claim, the Applicant must show that the chosen orientations are critical and unexpected results. In the absence of such evidence, selecting one of a finite number of predictable orientations would have been an obvious matter of design choice to a person of ordinary skill in the art.
As regarding claim 2, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified (inherently since the inlet 102 inverted 180 degree) discloses the claimed invention for wherein in the first configuration, the inlet is positioned such that gas received within the tube circulates in a counter-clockwise direction relative to the central axis, and wherein in the second configuration, the inlet is positioned such that gas received within the tube circulates in a clockwise direction relative to the central axis.
As regarding claim 3, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein the outlet cap is fastenable (fig. 1; no number) to the tube at a plurality of radial orientations relative to the central axis.
As regarding claim 8, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein the inlet cap includes a curved surface, and the wall of the tube includes a curved surface (annotated fig. 1).
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As regarding claim 9, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein a radius of an arc of the curved surface of the inlet cap is approximately less than or equal to a radius of an arc of the curved surface of the tube (annotated fig. 1).
As regarding claim 10, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein the curved surface of the inlet cap is configured to at least partially cover the aperture of the tube (annotated fig. 1).
Claims 16-18 and 20 are likewise rejected for the same reasons set forth above with respect to claims 1-3 above.
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ruhland et al (US 20150059297; hereinafter Ruhland) as applied supra, and further in view of Neef et al (US 20210121807; hereinafter Neef).
As regarding claim 4, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention except for wherein the outlet cap is fastenable to a plurality of fastener holes positioned at the second end of the tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the outlet cap is fastenable to a plurality of fastener holes positioned at the second end of the tube in order to enhance filter assembly performance, since it was known in the art as shown in Neef (figs. 2 and 6-8 – about 74).
As regarding claim 5, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention except for wherein the plurality of fastener holes are evenly arranged along an inner circumference of the tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the plurality of fastener holes are evenly arranged along an inner circumference of the tube in order to enhance filter assembly performance, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ruhland et al (US 20150059297; hereinafter Ruhland) as applied supra, and further in view of Osendorf et al (US 20100037570; hereinafter Osendorf).
As regarding claim 6, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention except for wherein the first end of the tube includes a flange extending radially outward from the central axis. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the first end of the tube includes a flange extending radially outward from the central axis in order to enhance filter assembly performance, since it was known in the art as shown in Osendorf (fig. 3 – 22).
As regarding claim 7, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein the end cap is fastenable to the flange (Osendorf: fig. 3 – 22).
Claim(s) 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ruhland et al (US 20150059297; hereinafter Ruhland) as applied supra, and further in view of Hunter et al (US 11796009; hereinafter Hunter).
As regarding claim 11, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention except for two or more brackets, wherein the two or more brackets radially surround an exterior surface of the tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide two or more brackets, wherein the two or more brackets radially surround an exterior surface of the tube in order to enhance filter assembly performance, since it was known in the art as shown in Hunter (fig. 10).
As regarding claim 12, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein each of the two or more brackets (Hunter – fig. 10) includes a curved surface, and wherein a radius of an arc of the curved surface of the brackets is approximately greater than or equal to a radius of an arc of the curved surface of the tube.
As regarding claim 13, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein one of the two or more brackets is an inlet bracket (annotated fig. 1); wherein the inlet bracket includes an opening sized and shaped to receive the inlet of the inlet cap.
As regarding claim 14, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention except for wherein the curved surface of the inlet cap is fastened to an interior surface of the tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the curved surface of the inlet cap is fastened to an interior surface of the tube in order to enhance filter assembly performance, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
As regarding claim 15, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention for wherein each of the two or more brackets include one or more fastener holes at a first side and include one or more fastener holes at a second side, opposite to the first side (Hunter – fig. 1).
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Ruhland et al (US 20150059297; hereinafter Ruhland) as applied supra, and further in view of Burton et al (US 20190111374; hereinafter Burton).
As regarding claim 19, Ruhland as modified discloses all of limitations as set forth above. Ruhland as modified discloses the claimed invention except for wherein the outlet includes one or more bosses extending radially outward from the central axis configured to receive one or more sensors. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the outlet includes one or more bosses extending radially outward from the central axis configured to receive one or more sensors in order to enhance filter assembly performance, since it was known in the art as shown in Burton (fig. 12A: 423).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUNG H BUI whose telephone number is (571)270-7077. The examiner can normally be reached Monday-Friday 8:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. Lebron can be reached at (571) 272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
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