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
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/EP2022/079720, filed 25 October 2022) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority (DE102022000510.7, filed 10 February 2022) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 13 is objected to because of the following informalities:
“said annular discs consisting at least partially of cellulose”.
Claims 15 and 26-28 are objected to because of the following informalities:
“said at least one constriction or aperture point dividing the fluid volume stream”.
Claim 19 is objected to because of the following informalities:
“by adjacent spacers between the individual annular filter discs”.
Claim 20 is objected to because of the following informalities:
“comprises an element material, wherein the element material is closed disc-shaped…”.
Appropriate correction is required.
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.
Claims 12-14, 16, 18-30 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.
Regarding Claim 12, it is unclear which subject the phrase “which is surrounded by the respective element material” is modifying, i.e., (1) an unfiltered medium side or (2) a filtrate side. The Examiner will assume Applicant intended the latter. Claims 23, 24, and 26 are also rejected due to their dependence on Claim 12.
Regarding Claim 13, it is unclear which filter element is being referenced by “the filter element” in line 2 and again in line 3; Claim 11 previously introduced “different filter elements” and specifically, “a first filter element”, and “a second filter element”. Claims 25 and 27 are also rejected due to their dependence on Claim 13.
Regarding Claim 14, there are insufficient antecedent bases for “the bottom” and “the top”; while it seems that Applicant is referencing the “structural unit”, there has been no orientation claimed for the structural unit for one of ordinary skill in the art to differentiate between a top and a bottom. Claim 28 is also rejected due to its dependence on Claim 14.
Regarding Claims 14, 24, and 25, there is insufficient antecedent basis for “each case”.
Regarding Claims 14, 24, and 25, there is insufficient antecedent basis for “the ends”.
Regarding Claims 14, 24, and 25, there is insufficient antecedent basis for “the filtrate stream”.
Regarding Claim 16, there is insufficient antecedent basis for “the fluid outlet”. Claim 29 is also rejected due to its dependence on Claim 16.
Regarding Claim 16, it is unclear which filter element is being referenced by “the filter element” in line 3 and again in line 4; Claim 11 previously introduced “different filter elements” and specifically, “a first filter element…configured to clean particles”, and “a second filter element…to clean oil oxidation products”.
Regarding Claim 16, there is insufficient antecedent basis for “the adjacent inlet”.
Regarding Claim 16, there is insufficient antecedent basis for “the filtrate side”.
Regarding Claims 18 and 30, there is insufficient antecedent basis for “all filter discs”; the Examiner will assume Applicant intended to claim dependency from Claim 13 instead of Claim 11.
Regarding Claims 18 and 30, there is insufficient antecedent basis for “the cellulose material”.
Regarding Claims 18 and 30, there is insufficient antecedent basis for “the annular filter discs”; the Examiner will assume Applicant intended to claim dependency from Claim 13 instead of Claim 11.
Regarding Claim 19, there is insufficient antecedent basis for “the individual annular filter discs”; the Examiner will assume Applicant intended to claim dependency from Claim 13 instead of Claim 11.
Regarding Claims 20-23, it is unclear which filter element is being referenced by “the filter element” in lines 1-2 of each claim; Claim 11 previously introduced “different filter elements” and specifically, “a first filter element”, and “a second filter element”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11, 12, 14, 21, and 24 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by ROPER (US 20210331095 A1).
Regarding Claim 11, ROPER discloses a filter comprising a housing with an inlet and outlets and further, a first filter element and a second filter element (i.e., a filter apparatus comprising a combination of different filter elements combined to form a structural unit; p0006) for the treatment of a fluid, e.g., oil (i.e., to clean oil oxidation products from a fluid stream; p0001). The inlet and outlets define an axis arranged parallel to the axis of the housing (p0027), the housing being substantially cylindrical (p0026). The first filter element is arranged at one axial end of the housing, e.g., at the inlet or at the outlet (i.e., a first filter element of the filter elements; p0045) and is configured to remove particles/contaminants from the fluid (i.e., configured to clean particles; p0044); the second filter element is arranged on the opposite axial end to the first filter element adjacent one of the outlets (i.e., a second filter element of the filter elements; p0076). ROPER further discloses the filter is configured such that fluid flows from the inlet through the first filter and to an outlet and from the inlet through the second filter and to an outlet (i.e., the filter elements being mounted in parallel to each other for the respective cleaning of the fluid stream; p0010).
Regarding Claim 12, ROPER discloses the filter apparatus of Claim 11. As indicated earlier, ROPER discloses the first filter element is adjacent the inlet and the second filter element is adjacent the outlet; as further shown in FIG. 1c, the first filter element 13 and the second filter element 15 are vertically arranged and adjacent each other in the housing (i.e., the filter elements form the structural unit by being arranged on top of each other; p0120; FIG. 1c reproduced below). As further shown, the first filter element 13 comprises a filter membrane 14 whereby unfiltered medium passes through inwardly toward the axial center of the housing to yield a treated fluid (p0134). Similarly, the second filter element 15 comprises a cellulose filter 16 that separates an untreated fluid side in separation chamber 50 from a treated fluid side exiting through outlet 22 (p0135; p0136) (i.e., the filter elements… separate an unfiltered medium side from a filtrate side, which is surrounded by the respective element material).
[AltContent: textbox (Cap)][AltContent: textbox (Outlet)][AltContent: textbox (Cellulose filter)][AltContent: textbox (Filter membrane)] [AltContent: textbox (First filter element)]
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Regarding Claims 14 and 24, ROPER discloses the filter apparatus of Claims 11 and 12, respectively. As shown in FIG. 1c, the filter includes a cap 10 and a housing 12 serving as respective end caps for each axial end (i.e., an end cap at the ends; one of said end caps sealing the filter element for particle cleaning at the bottom and the other end cap sealing the filter element for cleaning oil oxidation products at the top; p0126). The filter includes a first outlet 20 and a second outlet 22 on either axial end (i.e., comprising a through opening for the filtrate stream; p0124).
Regarding Claim 21, ROPER discloses the filter apparatus of Claim 11. ROPER further discloses the first filter element comprises pleats so as to be pleated (p0062); the first filter element further comprises a layered structure (i.e., the filter element comprises a pleated, multi-layered element material for particle cleaning; p0072).
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.
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) 13, 18-20, 22, 23, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over ROPER (US 20210331095 A1) in view of PULEK et al. (US 20030173283 A1).
Regarding Claims 13, 22, and 23, ROPER discloses the filter apparatus of Claims 11, 11, and 12, respectively. ROPER further discloses the first filter element comprises a filter membrane comprising a pleated arrangement to capture contaminants on the surface of the pleats (i.e., the filter element comprises a pleated element material for particle cleaning; p0062). ROPER is deficient in disclosing the second filter element is formed by individual annular discs arranged on top of one another to receive oil oxidation products, said discs consisting at least partially of cellulose (Claim 13) or consisting completely of cellulose (Claim 22).
PULEK discloses a fluid filtration apparatus 10 with a filter assembly 14 having a plurality of axially stacked fluid filtration units 16, 18, 20 (p0059); as shown in FIGs. 1 and 2, the filtration units are annular discs (i.e., the second filter element is formed by individual annular discs arranged on top of one another).
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The filter medium is made from fibers, e.g., cellulose (i.e., said discs consisting at least partially of cellulose (Claim 13); p0046); the prior art further recognizes cellulose filters (i.e., said discs consisting completely of cellulose (Claim 22); p0012). Advantageously, the use of stacked disc-filter cartridges over other filtration systems is the relatively larger surface area of filter material for the same footprint/volume, especially for the filtration of fluids/oils (i.e., to receive the oil oxidation products; p0009). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute the stacked annular filter discs taught by PULEK for the second filter element disclosed by ROPER.
Regarding Claim 18, modified ROPER makes obvious the filter apparatus of Claim 13. PULEK further discloses the filter medium is made from a material of substantially the same construct in formulation and fabrication (i.e., all filter discs with the cellulose material have the same filter properties; the annular filter discs are all constructed in the same manner with regard to their element material; p0048).
Furthermore, the limitation requiring “the annular filter discs are all constructed in the same manner with regard to their element material” is directed to a process. A recitation of the process by which the claimed invention is produced does not provide any patentable weight to this product claim. If the prior art discloses a product that is identical or similar to the instantly claimed product, then the prior art anticipates said invention regardless of the process by which the product is formed.
Regarding Claim 19, modified ROPER makes obvious the filter apparatus of Claim 13. PULEK further shows in FIG. 6, a separator element 33 is positioned between filter medium elements 27 and 28 (i.e., the individual annular filter discs have recesses on the outer circumferential side which are formed by incisions, indentations or by adjacent spacers between the filter discs; p0061).
[AltContent: textbox (Separator element)][AltContent: textbox (Filter medium element)][AltContent: textbox (Filter medium element)]
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Regarding Claim 20, ROPER discloses the filter apparatus of Claim 11. ROPER is deficient in disclosing the filter element comprises an element material or that the element material is closed disc-shaped and is formed by a filter blank.
PULEK discloses a fluid filtration apparatus 10 with a filter assembly 14 having a plurality of axially stacked fluid filtration units 16, 18, 20 (p0059); as shown in FIGs. 1 and 2, the filtration units are annular discs (i.e., the element material is closed disc-shaped). The filter medium is made from fibers, e.g., cellulose (p0046); the prior art further recognizes cellulose filters (i.e., the filter element comprises an element material; p0012). Advantageously, the use of disc-filter cartridges over other filtration systems is the relatively larger surface area of filter material for the same footprint/volume, especially for the filtration of fluids/oils (p0009). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute the discs taught by PULEK for the second filter element disclosed by ROPER.
Furthermore, the limitation requiring “formed by a filter blank” is directed to a process. A recitation of the process by which the claimed invention is produced does not provide any patentable weight to this product claim. If the prior art discloses a product that is identical or similar to the instantly claimed product, then the prior art anticipates said invention regardless of the process by which the product is formed.
Regarding Claim 25, modified ROPER makes obvious the filter apparatus of Claim 13. As shown in FIG. 1c of ROPER, the filter includes a cap 10 and a housing 12 serving as respective end caps for each axial end (i.e., an end cap at the ends; one of said end caps sealing the filter element for particle cleaning at the bottom and the other end cap sealing the filter element for cleaning oil oxidation products at the top; p0126). The filter includes a first outlet 20 and a second outlet 22 on either axial end (i.e., comprising a through opening for the filtrate stream; p0124).
Claim(s) 15-17, 26, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over ROPER (US 20210331095 A1) in view of GB 860,871 A.
Regarding Claims 15, 16, 26, and 27, ROPER discloses the filter apparatus of Claim 11. ROPER is deficient in disclosing at least one constriction or aperture point provided on the filtrate side of the structural unit, said point dividing the fluid volume stream between the individual filter elements in a predefinable ratio (Claims 15, 26, and 27) or that the constriction or aperture point is arranged at the fluid outlet of the filter element for particle filtration and at the adjacent inlet of the filter element for cleaning oil oxidation products on the filtrate side (Claim 16).
GB ‘871 discloses a purification apparatus/system comprising clarifying and filtering elements and utilized for the treatment of a stream of oil (pg. 2, lines 36-46). The clarifying and filtering elements 6 and 5, respectively, are superposed coaxially in a casing 1 (pg. 2, lines 47-54) and are separated by a channel 11 at the downstream end of a central opening in the filtering element and at the upstream end of the clarifying element (pg.2, lines 78-85). This channel provides an annular gap having a reduced cross-sectional area that results in an increased flow of pressure/flow through the clarifying element (i.e., at least one constriction or aperture point provided on the filtrate side of the structural unit, said point dividing the fluid volume stream between the individual filter elements in a predefinable ratio (Claims 15, 26, and 27); the constriction or aperture point is arranged at the fluid outlet of the filter element for particle filtration and at the adjacent inlet of the filter element for cleaning oil oxidation products on the filtrate side (Claim 16); pg. 2, lines 80-85). This advantageously provides sufficient pressure to overcome clogs/increased pressure drop across the clarifying element so that throughput through the apparatus/system can be maintained (pg. 1, lines 47-61). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide a constriction or aperture point as disclosed by GB ‘871 in the filter apparatus disclosed by ROPER.
Regarding Claim 17, modified ROPER makes obvious the filter apparatus of Claim 15. GB ‘871 further discloses a fluid-tight packing 10 inserted between the clarifying and filtering elements 6 and 5 (i.e., the constriction or aperture point is arranged in an intermediate cap between one filter element and the other filter element; pg. 3, lines 82-87).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
MOUHEBATY et al. (US 20040035769 A1) discloses a dual stage bypass valve for use in dual filter multi-media filtration assemblies.
STRAEFFER et al. (US 20050279694 A1) discloses stacked filter units.
HESSE et al. (US 20210003250 A1) discloses a filter element for filtering lubricating oil comprising a stacked fine filter sage and a main filter stage in parallel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
Prosecution Insights