DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 45 and 48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The term “geometric center” is never discussed in the specification of the present application. While it is considered to be supported just from the figures that a geometric center of the ovate inner perimeter can be located closer to the to point than a center of an inscribed circle located within the ovate inner perimeter (as recited in claim 39), it is not considered to be clear enough in the figures to show that the bottom axis intersection point is located exactly at the geometric center, as is required in claim 45. Claim 48 depends from claim 45 and is also rejected.
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 46 and 47 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 46 recites the limitation "the at least two notches" in the first line of page 4. There is insufficient antecedent basis for this limitation in the claim. Claim 47 depends from claim 46 and is also rejected.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 39, 41, and 49 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US Patent Application Publication No. 2008/0110145 to Beer et al. (hereinafter referred to as Beer).
In regard to claim 39, as shown in figures 1 and 2, Beer discloses a filter cartridge having tubular filter media (3) defining an interior surface facing an interior volume of the filter cartridge and an exterior surface facing away from the interior volume. The tubular filter media extends along a tubular filter media length measured along a tube axis extending from a first end, at the second component (2), to a second end, at the first component (1), of the tubular filter media. As shown in figure 2, in a cross-section taken transverse to the tube axis at any location along a majority of the tubular filter media length, the interior surface of the tubular filter media defines an ovate inner perimeter. As shown by the long line in figure 2, the ovate inner perimeter comprises a maximum height (Hmax) measured between a top point and a bottom point, wherein the top point and the bottom point are located on the ovate inner perimeter and an axis of maximum height that extends across the ovate inner perimeter at a location and in an orientation such that the top point and the bottom point are points on the ovate inner perimeter that are furthest apart from each other along any straight line extending across the ovate inner perimeter. The tubular filter media (3) comprises pleats (4) that comprise internal folds located along the interior surface and external folds located along an exterior surface of the tubular filter media. In the shape shown in figure 2, a geometric center of the ovate inner perimeter is located closer to the top point than a center of an inscribed circle located within the ovate inner perimeter. The first and second components (1, 2) form a filter cartridge housing containing the tubular filter media (3). The second component (2) forms a first end cap at the first end of the tubular filter media. The first component (1) forms a second end cap at the second end of the tubular filter media. The first end cap (2) comprises an opening (6) defined by an end cap inner perimeter.
In regard to claim 41, the ovate inner perimeter defines only one line of symmetry about the axis of maximum height, which is generally shown by the long line in figure 2.
In regard to claim 49, as shown in figure 2, the tubular filter media (3) has a consistent thickness measured between the interior surface and the exterior surface when moving about the ovate inner perimeter such that the exterior surface comprises an enlarged ovate outer perimeter.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claims 40 and 42 – 44 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beer.
Beer is discussed above in section 8. In regard to claim 40, Beer shows an ovate inner perimeter having one line of symmetry. Beer does not specifically disclose an ovate inner perimeter that is asymmetric. There is no evidence the exact shape of the inner perimeter is critical. Predictably, a small change in the shape of the inner perimeter can result in an ovate asymmetric shape. The shape predictably can be changed to allow the filter cartridge to better fit in different applications. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Beer to form the ovate inner perimeter in an asymmetric shape in order to better allow it to fit within a different application. It has been held that a particular shape of a structural feature or object is matter of design choice which a person of ordinary skill in the art would find obvious absent persuasive evidence that the particular shape is significant, see In re Dailey, 149 USPQ 47.
In regard to claim 42 – 44, Beer does not specifically disclose that an inscribed circle located within the inner perimeter of the cross-section occupies less than all and 60% or more of an inner area defined by the inner perimeter. The cross-section is not circular, thus the inscribed circle inherently would occupy less than all of the inner area. It cannot be specifically determined from the figures, however, that an inscribed circle would occupy 60% or more of the inner perimeter. As noted above, there is no evidence that the exact shape of the filter cartridge of Beer is critical. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to form the filter cartridge of Beer with a shape such that an inscribed circle located within the inner perimeter of the cross-section occupies less than all and 60% or more of an inner area defined by the inner perimeter given that this provides the filter cartridge with a desired shape to fit within an available space. Similarly, Beer does not specifically disclose that an inscribed circle located within the inner perimeter of the cross-section defines a maximum radial gap between the circle and the inner perimeter that is 0.25 or less of a diameter of the inscribed circle, wherein the maximum radial gap is measured along a radial line extending through a center of the inscribed circle. It also would have been obvious to one of ordinary skill in the art at the time of the invention to form the filter cartridge of Beer with a shape such that an inscribed circle located within the inner perimeter of the cross-section defines a maximum radial gap between the circle and the inner perimeter that is 0.25 or less of a diameter of the inscribed circle, wherein the maximum radial gap is measured along a radial line extending through a center of the inscribed circle given that this provides the filter cartridge with a desired shape to fit within an available space.
Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in the claim, the applicant must show that the chosen dimensions are critical, see In re Woodruff, 16 USPQ2d 1934.
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 39 – 49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 37 of U.S. Patent No. 9,630,134. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 – 37 of the ‘134 patent teach or suggest all of the features in claims 39 – 49 of the present application. In regard to claim 39 of the present application, claims 1 – 37 disclose all of the claimed features except for explicitly requiring a geometric center of the ovate inner perimeter to be located closer to the top point than a center of an inscribed circle locate within the ovate inner perimeter. The claims of the ‘134 disclose a similarly shaped tubular filter media. Predictably, such a shape could be formed where the geometric center of the ovate inner perimeter is located closer to the top point than a center of an inscribed circle located within the ovate inner perimeter. There is no evidence that this particular limitation on the shape of the tubular filter media is critical. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter cartridge in the claims of ‘134 patent to have a shape where a geometric center of the ovate inner perimeter is located closer to the top point than a center of an inscribed circle located within the ovate inner perimeter as this is considered to represent a mere design choice that does not affect the function of the filter cartridge. Claims 1 – 37 of the ‘134 patent disclose all of the features in claims 40 – 49 of the present application.
Claims 50 – 58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 37 of U.S. Patent No. 9,630,134 in view of US Patent No. 11,701,609 or US Patent No. 12,090,435.
As discussed above, claims 1 – 37 of the ‘134 patent are considered to teach or suggest all of the features in claims 39 – 49 of the present application. Claims 1 – 37 of the ‘134 patent are considered to teach or suggest all of the features in claims 50 – 58 of the present application except for the two notches located along the end cap inner perimeter. The ‘609 and ‘435 patents claim similar filter cartridges. Both require two notches located along the end cap inner perimeter (see at least claim 1 of each patent). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the filter cartridge in the claims of ‘134 patent to include two notches located along the end cap inner perimeter as suggested by the ‘609 or ‘435 patent in order to provide a means for the filter cartridge to be mounted to a yoke. Claims 1 – 37 of the ‘134 patent further disclose all of the features in claims 50 – 58 of the present application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773
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