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 Status
Claims 1-13 are rejected.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8: “characterized by at least one disposable filter capsule” should be replaced with --characterized by the at least one disposable filter capsule--.
Appropriate correction is required.
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.
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Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,121,863 in view of Magnusson et al. (US 5,328,609). Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,121,863 claims all the claimed subject matter except the cartridge one on top of the other in an axial direction and wherein at least three filter cartridges are firmly mounted with the housing. Magnusson discloses a filter construction 30 having two filter elements 86, 52, one on top of the other in an axial direction, as shown in Fig. 4, in order to provide multi-stage filtration for water (see col. 1, lines 6-10). Magnusson further teaches three filter cartridges 86, 52, 54, firmly mounted within a housing 32, as shown in Fig. 4. It would have been obvious to one of ordinary skill in the art to modify U.S. Patent No. 12,121,863 by providing the cartridges one on top of each other and by providing three cartridges, as taught by Magnusson, in order to provide multi-stage filtration and improve the effectiveness of the filtration (see col. 1, lines 6-10).
Allowable Subject Matter
Claims 1-13 would be allowable if rewritten or amended to overcome the double patenting rejection(s) and objection set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 1 is allowed because the prior art of record does not show or suggest a disposable filter capsule for a filtration device, comprising: each of the at least two filter cartridges having a hollow core area surrounded by a pleated filter medium and an outer area delimited on an inner side by the pleated filter medium and delimited on an outer side by the housing, the filter medium being a hydrophilic filter material, wherein the at least two filter cartridges in the disposable filter capsule are configured as sterile filters for a redundant sterile filtration, wherein at least one vent valve is attached to each of the at least two filter cartridges, wherein all components of the disposable filter capsule consist of sterilizable materials; and wherein each of the at least two filter cartridges is integrity-testable individually, in combination with the remaining limitations in the claim. Magnusson et al. (US 5,328,609), Clendenning et al. (US 2007/0034564), Burbank et al. (US 2013/0327691) and Chancellor et al. (US 2005/0035048) lack these limitations and it would have not been obvious to modify because there is no reason or suggestion to do so and the filters would not operate as intended.
Claims 2-13 would be allowed due to their dependency on claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Clendenning et al. (US 2007/0034564) teaches a pleated filter medium. Burbank et al. (US 2013/0327691) teaches a filtration system having an air vent. Chancellor et al. (US 2005/0035048) teaches a filtration system having a plurality of filter cartridges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE GONZALEZ whose telephone number is (571)272-5502. The examiner can normally be reached M-F 9-5:30.
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/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
