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 7, 12 and 17 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 7 recites the first and second interface members and the connecting member, “all have the same cross-sectional shape along an entire length of the support element.” The claim language appears to require that each interface member and the connecting member have the same cross-sectional shape. This recitation is unclear as the specification clearly does not teach the same cross-sectional shape for these elements. For examination purposes the claim is assumed to recite, “each have a cross-sectional shape that is the same along an entire length of the support element.”
Claims 12 and 17 recite similar limitations to claim 7, are rejected for the same reasons and the same assumptions are made.
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) 10 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cavett US 6,814,660.
Claim 10, Cavett teaches a method of forming a support element comprising: forming a first interface member (see below) and a second interface member (see below) so that the first and second interface members extend along opposing lateral ends of the support element and forming a connecting member (see below) that extends from the first interface member to the second interface member, wherein forming the connecting member comprises forming: a concave portion (see below) extending from the first interface member and a concave portion (see below) extending from the second interface member (fig. 1). The recitation of the support being for use with a filter element in a HVAC system and the connecting member configured to be coupled to a filter media pack so that an end pleat of the media pack extends across at least one of the concave or convex portions is a recitation of an intended use of the method and does not add any further limitations to the claimed invention. The method of Cavett is capable of being used with a filter element in an HVAC system and having an end pleat extend across one of the concave or convex portions.
Claim 13, Cavett teaches a support element comprising: a first interface member (see below), a second interface member (see below) extending along an opposing lateral end of the support element as the first interface member, and a connecting member that extends from the first interface member to the second interface member, the connecting member comprising a concave portion extending from the first interface member and a convex portion extending from the first interface member (fig. 1). The recitation of the support being for a filter element in a HVAC system and the connecting member configured to be coupled to a filter media pack so that an end pleat of the media pack extends across at least one of the concave or convex portions is a recitation of an intended use of the apparatus and does not add any further limitations to the claimed invention. The support element of Cavett is capable of being used with a filter element in an HVAC system and having an end pleat extend across one of the concave or convex portions.
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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 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cavett US 6,814,660.
Claim 1, Cavett teaches a method of making a filter element comprising: aligning a support element (see above) with a pleated filter media pack (54), coupling the support element to the pleated filter media pack, the support element having a connecting member (see above) that extends from a first interface member (see above) to a second interface member (see above) so that the pleated filter media pack extends across the concave and convex portions of the connecting member, the concave portion extends from the first interface member and the convex portion extends from the second interface member (fig. 1). The pleated filter media pack of Cavett with inherently have an end pleat but Cavett does not teach the end pleat being disposed between the first and second interface members or bonding the end pleat to the support element. Bonding an end pleat to a support element would have been obvious to one of ordinary skill in the art as this is a very common technique in the art to secure filter media to a support frame while also preventing bypassing of fluid around the edges of the filter media. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). The recitation of the end pleat being disposed between the interface members is a recitation of reorienting the pleated media to have the pleats oriented vertically instead of horizontally. Shifting the position of an element is unpatentable if shifting the position of the element would not modify the operation of the device, In re Japikse, 86 USPQ 70 (1950). Reorienting the pleated media would not modify the operation of the device as the media would still be able to be supported by the frame and to filter fluid therethrough.
Claim 19, Cavett teaches the support element of claim 13 but does not teach the first and second interface members having different cross-sectional profiles. Cavett teaches a key system is used, namely the shape of the support element, to ensure a proper selection of a filter type for a specific location by allowing only the proper type of filter to be inserted within the assembly (col. 3, lines 60-67). The recited difference of cross-sectional profile is a recitation of a change of shape of the support element. The configuration of the apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant, In re Dailey, 149 USPQ 47 (1966). One of ordinary skill in the art would readily recognize that a difference between the shapes of the interface members is a matter of choice of the shape of the key to ensure a proper filter is used for a specific location.
Allowable Subject Matter
Claims 2-9, 11-12, 14-18 and 20 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to Cavett teaches the method of claim 1 as obvious and the method and support element of claims 10 and 13 as detailed above.
Claims 2-6, Cavett does not teach bonding the end pleat to the concave or convex portions, a curved surface, undulating surface, a planar portion between the convex and concave portions or dispensing adhesive onto a curved surface defined by the concave or convex portions nor would it have been obvious to one of ordinary skill in the art to modify the method of Cavett to arrive at the claimed invention.
Claims 7, 12 and 17, Cavett teaches the first and second interface members each have a same cross-sectional shape along an entire length but does not teach the connecting member having a same cross-sectional shape along its entire length, nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
Claims 8 and 20, Cavett does not teach the connecting member having approximately uniform thickness between the first and second interface members nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
Claim 9, Cavett does not teach the end pleat extends across an entire length of the support element nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
Claims 11 and 14-16, Cavett does not teach the convex or concave portions comprising a curved surface or undulating surface being on a media facing side of the connecting member and being configured to face a filter media pack nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
Claim 18, Cavett does not teach the convex portion is positioned between the concave portion and the second interface member along an entire length of the connecting member nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
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 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,076,679. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
All the limitations of claims 13-20 are recited in claims 1-20 of the ‘679 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
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