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 .
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Specification
The disclosure is objected to because of the following informalities: Paragraph [0001], line 2, --, now US Patent No. 12,147,871 issued on Nov. 19, 2024,-- should be inserted after “17/688,720 filed March 7, 2022”. Appropriate correction is required.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the recited limitation such as “configuring the pleat detector to steadily translate the filter material relative to the mounting board;” (emphasis added), as recited in claim 32; is not supported by the disclosure. There is nothing in the disclosure describing/supporting the above recited limitations. Correction and/or clarification is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19-23 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the pleat counter, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). Therefore, in order for the recited apparatus for counting pleats comprising a corrugated sheet of filter material, the pleat counter and the necessary structural connections between the pleat counter and other elements of the apparatus must be clearly defined (See Abstract, paragraphs [0029] – [0030] and in conjunction with Fig. 1).
Claims 32-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The recitations such as “configuring the pleat detector to steadily translate the filter material relative to the mounting board;”(emphasis added), as recited in the base claim 32, is not described in the application as originally filed. Therefore, the above recitations in the claims is seen as new matter. Applicant is required to cancel the new matter in the reply to this Office action.
Claims 32-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claimed limitation that “configuring the pleat detector to steadily translate the filter material relative to the mounting board;” (emphasis added), in base claim 32, has not been enabled in the specification. The details of such claimed function is not seen in the description of the preferred embodiment. For example, it is not clear as currently defined, how the pleat detector (108 in instant Fig. 3) to steadily translate the filter material relative to the mounting board.
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 19-31 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 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 necessary structural connections between “the mounting board and one or more sensors” and other elements of the apparatus must be clearly defined. Note that claim 19 is an apparatus claim and the structural cooperative relationships between the elements of the apparatus are necessary for it to provide intended function/result(s) such as counting pleats. Furthermore, Claims 20-23 are rendered indefinite by the deficiencies of the base Claim 19.
Claim 24 is indefinite because of the recitation, as recited "A pleat counter, comprising: a mounting board; one or more sensors attached to the mounting board; a pleat detector mounted underneath the mounting board; and an interface between the pleat counter and a data processing system." (emphasis added). It is unclear how the interface is a part of the pleat counter but it is also an element that is arranged between the pleat counter and the data processing system. Furthermore, Claims 25-31 are rendered indefinite by the deficiencies of the base Claim 24.
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) 19-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Loje (US 3,935,997).
With regard to claim 19, Loje’s Figs. 1-5 shows an apparatus for counting pleats comprising a corrugated sheet of filter material (5), comprising a mounting board (103) for supporting one or more sensors (134); a pleat detector (140) for detecting individual pleats; and one or more circuit boards for communicating signals from the pleat detector to a data processing system (150, also see Figs 3 and 4; see column 2, lines 10-65).
With regard to claim 20, wherein the one or more sensors are configured for detecting individual pleats comprising the filter material (see column 2, lines 10-65).
With regard to claim 21, wherein the one or more circuit boards comprise an interface (132) for translating electrical signals between the one or more sensors and the data processing system (150, also see Figs 3 and 4; see column 2, lines 10-65).
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) 22 an 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Loje (US 3,935,997).
With regard to claims 22 and 23, note the above discussion with regard to claim 19 that the recited apparatus for counting pleats of the present application is anticipated by Loje, except for not disclosing the data processing system displays graphical controls configured to facilitate selecting a pleat interval and calibrating the apparatus, as recited in the claims. However, it is well known in the art that circuit designers utilize graphical control elements to facilitate user interaction, of which fact official notice is taken by the Examiner. Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate a graphical control element into Loje’s apparatus in order to allow a user to easily select a desired parameter, such as pleat spacing.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 19-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-8 of U.S. Patent No. 11,281,960. Although the claims at issue are not identical, they are not patentably distinct from each other because they can be interpreted to describe substantially identical, very similar claimed limitations, or being obvious which are shown below:
Instant application 18/920,761
U.S. Patent No. 11,281,960
Claim 19: An apparatus for counting pleats comprising a corrugated sheet of filter material, comprising: a mounting board for supporting one or more sensors; a pleat detector for detecting individual pleats; and one or more circuit boards for communicating signals from the pleat detector to a data processing system.
Claim 22: The apparatus of claim 21, wherein the data processing system displays graphical controls configured to facilitate selecting a pleat interval.
Claim 20: The apparatus of claim 19, wherein the one or more sensors are configured for detecting individual pleats comprising the filter material.
Claim 21: The apparatus of claim 19, wherein the one or more circuit boards comprise an interface for translating electrical signals between the one or more sensors and the data processing system.
Claim 1: A pleat counter, comprising: a mounting board for supporting one or more sensors; a pleat detector configured to identify a target pleat count for counting a number of pleats comprising a corrugated sheet of filter material whereby the pleat detector is mounted underneath the mounting board; the pleat detector comprising a pleat counter and a plurality of sensors configured to detect the presence of individual pleats; a data processing system coupled to the pleat detector; a set count screen that includes graphical controls that enable the selection of a number of pleats to include in a pleat interval; and an interface for coupling the pleat counter with the data processing system.
Claim 8: The pleat counter of claim 1, wherein the pleat detector includes one or more sensors configured to detect the presence of individual corrugations comprising the corrugated sheet of filter material.
Claim 6: The pleat counter of claim 5, wherein wiring and one or more circuit boards are configured to communicate electrical signals between the interface and the pleat detector.
Claim 7: The pleat counter of claim 6, wherein the one or more circuit boards are configured to translate the electrical signals provided by the pleat detector into signals that are recognizable by the data processing system.
With regard to claim 23, it would have been obvious that wherein the data processing system displays graphical controls configured to facilitate calibrating the apparatus as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI L NGUYEN whose telephone number is 571-272-1747. The examiner can normally be reached on Monday-Friday from 09:00am to 06:00pm Eastern time.
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/HAI L NGUYEN/Primary Examiner, Art Unit 2842 March 8, 2026