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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/034141, filed on May 3, 2016.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function (i.e., flange). Such claim limitations are: “means of one or more flange connections” and “means of one or more angled flanges” in claim 41 and “means of a flange connection” in claim 43.
Because these claim limitations are not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitations do not recite sufficient structure, materials, or acts to perform the claimed function.
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 35-46 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.
Claim 35 recites the phrase "wherein one or more inlet openings of the at least one filter module are arranged above in relation to the direction of gravity, in particular directly over, one or more outlet openings of the at least one filter module" in lines 9-11. The scope of the claim is unclear because the phrase does not form a nexus with the structural components in the claim and requires only the spatial relationship between (a) the one or more inlet openings of the at least one filter module and (b) the one or more outlet opening of the at least one filter module. Additionally, "gravity" is interpreted as an external reference direction, not a claimed structure. Claim 35 is indefinite.
Regarding claim 35, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 39, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 39 recites the broad recitation "a longitudinal direction of the filter system," and the claim also recites "a conveying direction of a conveying device of a painting system" which is the narrower statement of the range/limitation. Claim 39 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Regarding claim 41, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) (i.e., by means of one or more angled flanges) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 43 recites the limitation "the filter position" in line 1. There is insufficient antecedent basis for this limitation in the claim. The limitation "a filter position" was not previously recited.
Regarding claim 45, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 45 recites the broad recitation "a frame from profile structural parts", and the claim also recites "a frame formed from…aluminum profiles [of structural parts]" which is the narrower statement of the range/limitation. Claim 45 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. The limitations raise the questions—Is the frame made from profile structural parts? Is the frame made from aluminum profiles of structural parts? For examination on the merits, prior art that teaches one or more filter modules will inherently disclose profile structural parts and aluminum profiles.
Regarding claim 46, the phrase "for example" renders the claim indefinite because it is unclear whether the limitations (i.e., aluminum panels and aluminum composite panels) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination on the merits, prior art that teaches one or more filter modules will inherently disclose the one or more filter modules as metal panels, aluminum panels, or aluminum composite panels. Note that aluminum is a long-known metal.
Claims 36-46 are also rejected for depending from claim 35.
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) 35-37, 39-46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ingram (US 5512100 A).
For claim 35, Ingram discloses a filter system (Figs. 1-4) for separating off contaminants from a stream of untreated gas that contains contaminants, including a base construction through which the stream of untreated gas is guidable (Figs. 1-4; frame 14) and which includes at least one filter module receptacle for receiving at least one filter module (Figs. 1-4; col. 8, l. 50 - col. 9, l. 3), and at least one filter module which is selectively arrangeable on and/or in the at least one filter module receptacle and/or removable therefrom (Figs. 1-4; filter modules 32, 34; col. 8, l. 50 - col. 9, l. 3), wherein the at least one filter module includes a plurality of mutually independent filter elements (Figs. 1-4; cartridge filters 64), and wherein one or more inlet openings of the at least one filter module are arranged above in relation to the direction of gravity (col. 7, ll. 1-9), in particular directly over, one or more outlet openings of the at least one filter module (Figs. 1-4; col. 3, l. 53-col. 4, l. 20; col. 5, l. 23-32; col. 8, l. 50 - col. 9, l. 3).
For claim 36, Ingram discloses wherein a plurality of filter elements are a constituent part of a filter device of the filter module and are flowable through for the stream of untreated gas that is to be cleaned in mutually parallel manner during a filter operation of the filter system (Figs. 1-4; col. 8, l. 50 - col. 9, l. 3).
For claim 37, as interpreted, Ingram discloses wherein the at least one filter module receptacle includes a guide device for guiding, moving and/or immobilizing the at least one filter module in relation to the at least one filter module receptacle (col. 5, ll. 44-50; col. 5, l. 64-col. 6, l. 9).
For claim 39, Ingram discloses wherein the filter system includes a plurality of filter module receptacles and/or filter modules arranged successively in a longitudinal direction of the filter system, in particular in a conveying direction of a conveying device of a painting system (Figs. 1-3).
For claim 40, Ingram discloses wherein the filter system includes a plurality of filter module receptacles that form flow channels of the filter system which are configured for mutually independent through flow (Figs. 1-3; col. 5, ll. 24-32).
For claim 41, Ingram discloses wherein the filter module is sealed with respect to the filter module receptacle by means of one or more flange connections, for example by means of one or more angled flanges (col. 6, ll. 3-13).
For claim 42, Ingram discloses wherein for sealing with respect to the filter module receptacle, the filter module is pushed against one or more flanges and is immobilized in this position. The phrase “wherein for sealing with respect to the filter module receptacle, the filter module is pushed against one or more flanges and is immobilized in this position” is interpreted as an intended use/result. The instant invention is an apparatus. Apparatus claims are distinguished from the prior art in terms of structure rather than intended use or function. See MPEP § 2114.
For claim 43, Ingram discloses wherein in the filter position of the filter module, the filter module is sealed with respect to the filter module receptacle on an input side and/or on an output side by means of a flange connection (col. 6, ll. 3-13).
For claim 44, Ingram discloses wherein one or more filter elements are formed as disposable filter elements. The wherein phrase is interpreted as an intended use/result. The instant invention is an apparatus. Apparatus claims are distinguished from the prior art in terms of structure rather than intended use or function. See MPEP § 2114.
For claim 45, as interpreted, Ingram discloses wherein one or more filter modules include a frame formed from profile structural parts (col. 5, ll. 44-50), in particular aluminum profiles.
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.
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) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ingram in view of Kreeger (US 4590884 A).
For claim 38, Ingram does not explicitly disclose wherein the guide device includes a rail guide and/or a roller guide. Kreeger is analogous art and does disclose a guide device include a rail guide and/or a roller guide (Fig.1; col. 4, ll. 3-12). One of ordinary skill in the art would have found it obvious to substitute the guide device that includes a rail guide and/or a roller guide taught in Kreeger for the guide device included with the filter module receptacle of Ingram since the selection of art recognized structural equivalents would have been available as an art recognized substitute at the filing date of the current invention with a reasonable expectation for success. See MPEP § 2144.06.
Claim(s) 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ingram in view of Tank (US 4498913 A).
For claim 46, as interpreted, Ingram does not explicitly disclose wherein surface structural parts of the filter module (col. 5, ll. 44-50) are metal panels, for example aluminum panels or aluminum composite panels. Tank is analogous art and does disclose surface structural parts of the filter module are metal panels (Fig; col. 1, l. 62 – col. 2, l. 5). One of ordinary skill in the art would have found it obvious to substitute the sheet metal taught in Tank for the surface structural parts of the filter module of Ingram since the selection of art recognized structural equivalents would have been available as an art recognized substitute at the filing date of the current invention with a reasonable expectation for success. See MPEP § 2144.06.
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 35-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,596,504, claims 1-18 of U.S. Patent No. 11,117,080, claims 1-15 of U.S. Patent No. 11,666,850, and claims 1-10 of U.S. Patent No. 12,076,682. Although the claims at issue are not identical, the claims are not patentably distinct from each other because of the scope of the subject matter a filter system for separating off contaminants from a stream of untreated gas that contains contaminants, including a base construction through which the stream of untreated gas is guidable and which includes at least one filter module receptacle for receiving at least one filter module, and at least one filter module which is selectively arrangeable on and/or in the at least one filter module receptacle and/or removable therefrom, wherein the at least one filter module includes a plurality of mutually independent filter elements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicants are directed to consider additional pertinent prior art included on the Notice of References Cited (PTOL 892) attached herewith. Also, see the prior art examples provided below in response to this correspondence. Examples follow:
US 20130186049 A1 & US 8961642 B2: filter elements 122; filter module 102; filter elements 122; Figs. 1-2.
US 5107756 A: conventional cartridge cabinet operation is well known in the industry; cartridge filters 42; fan cabinet 58; Figs. 1-4, 7.
US 4498913 A: filter module; elastomeric gasket to provide an airtight seal with filter module; Fig.
US 20110274827 A1: filter module; base body 174; filter elements 172; filter module 132; Fig. 3; metal plate.
US 20140366798 A1: separation region 44; filter unit 52; filter space 62; latches 102; filter module 40 detachably connected to air guiding ducts 38; filter housing 46; filter inlet 48; duct outlet connection piece 50; intermediate duct 56 has an inlet flange 60; Figs. 1-3.
US 20160023231 A1: Figs. 1-2;
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONJI TURNER whose telephone number is (571)272-1203. The examiner can normally be reached Monday - Friday, 10:00 am - 2:00 pm (EST).
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/SONJI TURNER/Examiner, Art Unit 1776 August 13, 2026
/Jennifer Dieterle/ Supervisory Patent Examiner, Art Unit 1776
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