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.
Claim 9 is 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 9 recites the first and second interface members include a protuberance that has a greater dimension relative to the first support element. It is unclear in what way the protuberance can have a greater dimension relative to the first support element because the first and second interface members are claimed as part of the first support element. Any dimension of the protuberance, which is part of the interface member and thereby also part of the first support element, will define a dimension of the first support element. Therefore, it is unclear how the protuberances can have a dimension greater than the dimension of the same structure they define.
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.
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) 11 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cavett US 6,814,660.
Claim 11, Cavett teaches a filter element comprising: a filter media pack (54) including a plurality of pleats including an end pleat, and a first support element including: a first interface member (see below) defining a first lateral end of the first support element, a second interface member (see below) defining a second lateral end of the first support element and a connecting member (see below) coupled to the filter media pack and extending from the first interface member to the second interface member, the connecting member including a concave portion (see below) extending from the first interface member and a convex portion (see below) extending from the second interface member (fig. 1). The recitation of the filter element being for a HVAC system is a recitation of intended use and does not provide any further structural limitations to the apparatus. However, the filter element of Cavett is used in a HVAC system. The pleated filter media pack of Cavett will inherently have an end pleat but Cavett does not teach the end pleat being coupled to the connecting member. The recitation of the end pleat being coupled to the connecting member 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. The end pleat, when attached to the connecting member, will inherently extend in a direction parallel to the interface members. The support element is taken to be the portion that is coupled to the end pleat and therefore the end pleat will extend across an entire length of the first support element.
PNG
media_image1.png
496
640
media_image1.png
Greyscale
Claim 18, Cavett further teaches the first support element is asymmetric about a reference plane extending between the convex and concave portions, the reference plane oriented parallel to at least one of the first or second interface members but not parallel to the lateral direction (fig. 1).
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cavett US 6,814,660 in view of Anoszko et al. US 8,157,881.
Claim 15, Cavett teaches as obvious the filter element of claim 11 that further comprises a second support element coupled to an opposing end of the filter media pack as the first support element (fig. 1). Cavett does not teach the filter media pack is a collapsible extended surface pleated media that is repositionable between a collapsed state and an extended state in which a distance between the first support element and the second support element is greater than in the collapsed state. Collapsible extended surface pleated media are known in the art as demonstrated by Anoszko (col. 1). It would have been obvious to one of ordinary skill in the art to make the filter media pack a collapsible extended surface pleated media because they are easier to store and ship (col. 1, lines 49-57).
Claim 16, Anoszko further teaches a media support element (240) configured to support the filter media pack between the first and second support elements and the limit separation of the first and second support elements so that the first support element is angled relative to the second support element when the filter media pack is in the expanded state (fig. 1).
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 1-4, 7-14 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,076,679.
Claim 1, the limitations of claim 1 are contained in claims 1, 12 and 20 of ‘679.
Claim 11, the limitations of claim 11 are contained in claims 1, 12 and 20 of ‘679.
Claim 19 is directed to a method of making a filter element. The claims of ‘679are directed to a filter element. In order for the filter element of ‘881 to exist it will inherently be made. The method steps of making the filter element as recited in the claims involve positioning elements in relation to one another and in coupling elements together. In the claims of ‘881 the various structural elements are arranged and coupled and therefore will inherently have to have been positioned and coupled as recited in the method. Therefore, while claim 19 is directed to a method of making, the product made, as claimed in ‘679, will inherently meet the limitations of the claim as the only steps are generic positioning and coupling steps. The limitations of the claim are present in claims 1, 12 and 20 of ‘679.
The additional claim limitations are also recited in claims 1-20 of ‘679.
Claims 5-6 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,076,679 in view of Anoszko et al. US 8,157,881.
‘881 recites all of the limitations of claims 1 and 11 but does not recite a second support element coupled to an opposite end of the filter media pack as the first support element. Anoszko teaches a filter element comprising a first support element (210) and a second support element (210) coupled to an opposite side of the filter media pack as the first support element, wherein the filter media pack is a collapsible extended surface pleated media that is repositionable between a collapsed state and an expanded state in which a distance between the first support element and the second support element is greater than in the collapsed state and a media support element (240) configured to support the filter media pack between the first and second support elements and the limit separation of the first and second support elements so that the first support element is angled relative to the second support element when the filter media pack is in the expanded state (fig. 1, col. 1). It would have been obvious to one of ordinary skill in the art to make the filter media pack a collapsible extended surface pleated media because they are easier to store and ship (col. 1, lines 49-57).
Allowable Subject Matter
Claims 1-10 and 19-20 are allowed over the prior art.
Claims 12-14 and 17 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:
Claims 1 and 19, the closest prior art to Cavett teaches the filter element and method making a filter element as detailed in the rejection of claim 11 above but does not teach the convex portion extending in the lateral direction between the second interface member and the concave portion 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 2-10 and 20 are allowable as depending from one of the above claims.
Claims 12 and 13 the closest prior art to Cavett does not teach the concave or convex portion extends along the entire length of the first support element in the direction parallel to either the first or 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 14, the closest prior art to Cavett does not teach the convex portion positioned between the concave portion and the second interface member along the entire length of the first support element along the direction parallel to either the first or 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 17, the closest prior art to Cavett does not teach the end pleat engaged with a curved surface that is defined by at least a portion of one of the concave or convex portions 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached at 571-270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
Prosecution Insights