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 .
Election/Restrictions
Applicant's election with traverse of claims 12,19, and 22 in the reply filed on 08/03/2026 is acknowledged. The traversal is on the ground(s) that the shared technical is special because it is not disclosed by at least EP0392919A1. This is not found persuasive because at least JP038 (see below) anticipates all three groups identified in the Restriction Requirement, and therefore the shared technical features (claim 12) of claims 12, 19, and 22 are not special.
The requirement is still deemed proper and is therefore made FINAL.
Applicant has elected claim 22, which also requires examination of claims 19 and 12. Claims 13-18 and 20-21 are herein withdrawn.
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, 19, and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 12 recites “a filter part arranged in a filter frame configured to cooperate with a mounting part.” It is unclear if the subject of “configured to cooperate” is “a filter part” or “a filter frame.” The limitation appears to make sense with either interpretation. Accordingly, it is indefinite.
Claim 12 recites “at least one protruding part and/or at least one recess extending along an extension direction substantially perpendicular.” It is unclear if the italicized part refers back only to “recess,” or if it refers back to both “protruding part” and “recess.” The claim can be read either way. Accordingly, it is indefinite.
Claims 12 and 19 are rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: the relationships among the protruding part, recess, further protruding part, and further recess. Claim 12 recites a protruding part and/or a recess, and claim 19 recites a “further” protruding part and/or a “further” recess “arranged respective to receive the at least one protruding part … and/or to be inserted into the at least one recess.” Because of the repeated use of and/or, both the protruding part and the recess are optional in claim 12, and the “further” versions are also optional in claim 19. Because “and/or” A and B means “A alone, B alone, or A and B together, this “stacked” use of and/or allows the following options:
a protruding part and a further protruding part,
a protruding part and a further recess,
a recess and a further recess,
a recess and a further protruding part,
a protruding part and a further recess,
a protruding part and a recess and a further protruding part,
a protruding part and a recess and a further protruding part and a further recess,
a protruding part and a recess and a further recess.
Applicant will appreciate that some of the above combinations allowed by the claims do not make sense, or at least it is unclear how the parts fit together. For example, how would a protruding part form claim 12 and a further protruding part from claim 19 be able to fulfill “…arranged respective to receive the at least one protruding part of the filter frame and/or to be inserted into the at least one recess of the filter frame”? As another example, if there is a protruding part (claim 12) and a further protruding part and a further recess (claim 19), then which parts are mating with which other parts? Will one part be left un-mated?
Claim 19 recites that the parts are “…arranged respective to receive the at least one protruding part of the filter frame and/or to be inserted into the at least one recess of the filter frame.” It is unclear what the purpose of the term “respective” is. This term usually means a particular or separate relationship is being described, e.g., Mary and Susan went to their respective rooms. In the case of the claim, it is unclear what feature is particular or separate to what other feature.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(b) for its dependency upon an above–rejected claim and for the same reasons.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 recites “one further recess” and “one further protruding part.” However, the recess and the protruding part were recited in the parent claim 12 as alternatives, i.e., “and/or.” This allows claim 12 to have a protruding part but not a recess. In that case, it is improper for claim 19 to actively recite the “further” recess and the “further” protruding part because that assumes that at least one of these was necessarily present in the parent claim. Put another way, if claim 12 is read to have a protruding part but no recess, then claim 19 cannot recite a “further” recess. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
For Applicant’s benefit, portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
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.
Claims 12, 19, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “JP038” (JP 2009-128038 A1).
Regarding claim 12, JP038 discloses (fig. 6) a filter for separating particles from a cooling liquid in a nuclear power plant, wherein the filter comprises: a filter part (19/27) arranged in a filter frame (11) configured to cooperate with a mounting part of a component (e.g., the wall of the fuel assembly 14) of the nuclear power plant for mounting of the filter in the component, wherein the filter frame (11) of the filter comprises at least one protruding part (25) and/or at least one recess (23) extending along an extension direction substantially perpendicular to a plane extending along a surface portion of an outer surface of the filter frame (frame 11 has both vertical and horizontal outer surfaces, as well as several slanted/curved outer surfaces, and looking at fig. 6, it appears several such outer surfaces could be selected that 25 or 23 are perpendicular to), wherein the at least one protruding part (25) and/or at least one recess (23) are arranged along the entire circumference of the filter frame along an outer edge of the filter frame (“the groove of the capture pot 23 is provided over the entire circumference
in the same manner as in the first embodiment,” mid-to-lower page 4), and wherein the at least one protruding part (25) and/or at least one recess are arranged to create an obstacle for said particles (20) flowing between the filter frame and the mounting part (“The debris 20 that has risen passes through the gap 28 between the lower tie plate nozzle wall surface 27 and the circumferential protrusion 25 and is stored in the debris catching pot 23. The debris 20 once stored cannot escape from the debris catching pot 23 due to the circumferential protrusion 25,” mid-page 4).
Regarding claim 19, JP038 anticipates every element of the parent claim and further discloses a filter arrangement (fig. 6) configured to be positioned in a nuclear power plant (“boiling water reactor,” abstract), wherein the filter arrangement comprises a mounting part of a component of the nuclear power plant and a filter according to claim 12 (as cited above in response to claim 12), wherein the mounting part comprises at least one further recess (23 if 25 was selected for claim 12) and/or at least one further protruding part arranged respective to receive the at least one protruding part (25 if 23 was selected for claim 12) of the filter frame and/or to be inserted into the at least one recess of the filter frame (“The shape of the debris catching pot 23 is provided with a ring-shaped groove inside the upper part of the lower support structure 11, and a circumferential projection 25 is provided inside the groove so that the debris 20 once captured does not escape,” mid-page 4).
Regarding claim 22, JP038 anticipates every element of the parent claim and further discloses a fuel assembly (14) comprising a filter arrangement according to claim 19 (as cited above in response to claim 19).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 See attached 17-page foreign reference with Examiner highlights.
Prosecution Insights