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 without traverse of Group I (Claims 1-10) in the reply filed on 8/11/2026 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
“Cutting means” invokes 112(f) and is described in the instant specification as a “band saw” and thus is interpreted to be similar moving blade cutting devices.
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) 1-3 and 6-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Duffy (US 6,926,781).
Examiner submits any air filter system having the recited elements is a system for forming a custom air filter as claimed. The Examiner note a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). The instant claims recite nothing more than a cutting means and a supply of frame material with a given structure. The air filter itself is not claimed at all as part of the system and any system having the cutting means and supply of frame material satisfies the claim. Examiner notes many claims are essentially directed to function and intended use and have minimal effect in limiting system structure.
Regarding Claims 1-3, Duffy system for forming a custom air filter comprising (See col. 1, lines 6-12 and col. 2, lines 1-6, and note it is clear the filters discussed and formed are air filters):
a cutting means [40] for cutting a at least one frame member of an outer frame on an air filter to form cut frame member and filter (See col. 8, lines 5-19, wherein the intermediate air filter including both the frame [12] and filter material [14] are cut by a cutting means to form an intermediate filer [38]; teaching a cutting device such as a rotary blade, which is a moving blade cutting means).
Duffy teaches a supply roll [24], i.e. a supply of strip framing material [12], i.e. a length of frame material (See col. 6, lines 22-39). Examiner notes cutting and folding are intend use of the frame material that only define the structure, thusframe material must have the characteristics of the substitute frame material, which comprises a substrate comprising a carboard base foldable to form two flanges, a pressure sensitive adhesive on the substrate, and a removable release layer on the base and area to become flanges (See col. 6, lines 55-58, col. 7, lines 20-30, col. 8, lines 34-46, col. 9, lines 37-60, col. 12, lines 16-35, and Figs. 2-4, wherein support material strip [12] has adhesive on the framing material strips, i.e. paperboard substrate, that is a pressure sensitive adhesive covered with a release layer that is removed prior to application to the filter media [14] and is intended to folded on the edges of the filter, such as along parallel spaced-apart score lines provided in the strip [12] for said folding, to press onto an air filter to form frame edges thereof, i.e. a custom air filter; note paperboard is a type of cardboard). Examiner notes the supplying roll of strip framing material is exactly the same as the supply of framing material framed.
The process in which is the system is used is NOT part of the claimed system, and merely defines a structure for the cutting means and supply such that it must be capable of being used in such a process as recited. It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,228-29 (CCPA 1971 ); In re Danly, 263 F.2d 844,847, 120 USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Further, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Examiner submits for reasons articulated above, i.e. paperboard substrate with scored fold lines for flanges with a pressure sensitive adhesive having removable release layer thereon is a roll supply, is a supply frame material have all the structure as claimed.
Regarding Claim 6, the cut surface is a material worked on not claimed as part of the system. Note that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). An apparatus need merely be capable of performing the claimed functions on the claimed material worked on. The frames as claimed can a do get applied to opposing side of a filter. Note functional limitations, as described above, only limit the system so far as they limit the structure of the system. The instant system is ONLY a cutting means and a supply of frame material, nothing more.
Claims 7-10 are almost entirely functional limitations and have minimal effect on limiting the structure of the claimed system, which as repeated numerously above, is merely a cutting means and a supply of frame material. As described above, because the cutting means can cut the frame material and filter, it has a structure capable of doing so any way the filters are fed to it, be they previously cut or not. Likewise, the strip framing material is cuttable and transversely foldable (since it is cut and folded within the process in Duffy) and theoretically capable of being applied in any desired arrangement on a filter. Applicant is attempting to claim a method in a system claim without providing structure for said method. Any operator could cut and apply the supply to a filter my hand however they like, and the frame material claimed is essentially identical to that claimed.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duffy as applied to Claim 1, and further in view of Yoshii (US 2002/0064629) and Miaskoff (US 4,031,793).
Regarding Claims 4, Duffy teaches the system of Claim 1 as described above. Duffy also teaches a rotary blade as the cutting and teaches the specific cutting means for cutting a filter is not limited (See col. 8, lines 5-18),but fails to teach a band saw. However, it is well-known in cutting that both circular saw/rotary blades are a similar cutting means to band saws, each using a rapidly moving serrated blade for cutting, and each known to have similar applicability for cutting a corrugated material such as a filter (See, for example, Yoshii, page 1, paragraph [0009] and page 2, paragraph [0014], wherein circular saws and band saw are said to have similar cutting applicability for corrugated materials that may be utilized as filters). Thus, it at least would have been obvious to a person having ordinary skill in the art at the time of invention to utilize a band saw for cutting the filter instead of a circular saw in Duffy. Duffy indicates various cutting means are suitable for cutting filters and the prior art indicates band saws and circular saws are known alternatives for similar cutting applications. Thus, a band saw would have predictably been a suitable alternative cutting means for cutting the filter.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duffy and Yoshii as applied to Claim 4, and further in view of Miaskoff (US 4,031,793) and/or Athanasoulas (US 3,661,037).
Regarding Claim 5, Duffy and Yoshii teach the system of Claim 4 as described above. Although the direction of the slope of a band saw blades is not expressed explicitly in Yoshii, it would have been apparent any known band saw blades would have predictably been suitable. Examiner band saw are well known to have asymmetrical blades, i.e. a horizontal side and a sloped side, wherein the sloped side is the cutting side (See, for example, Miaskoff, col. 2, lines 28-53 and Fig. 1, teaching the sloped side [12] as the cutting side; also see Athanasoulas, Fig. 1, illustrating a clear depiction of the slope and horizontal sides meeting at a point in a band saw blade). Thus, it at least would have been obvious to a person having ordinary skill in the art at the time of invention to utilize asymmetrical serrated band saw blades when using a band saw as claimed. Such blades are generally known to be oriented as such in band saws for cutting, including similar shapes, and whether the sloped side cuts, and the horizontal meet as a point is largely a design choice in saw design within known suitable designs. Changes in shape are a matter of choice and are considered obvious to a person having ordinary skill in the art absent persuasive evidence that the shape is significant. In re Dailey, 357 F.2d 669 (CCPA 1966).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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