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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 35 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the "Use" claims do not purport to claim a process, machine, manufacture, or composition of matter, as required by 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 ").
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.
Claims 17-36 are rejected under 35 U.S.C. 103 as being unpatentable over Juhasz (DE 3901335 A1 – see translation provided by Examiner) in view of Kawamura (JP H05-57308 – see translation provided by Examiner).
With respect to claim 17, Juhasz teaches a silencer for compressed air systems (device of Figure 3, [0001]), comprising: a housing (2) with an inlet opening (defined by openings though portion #5) for a compressed gas flow; a chamber (defined by interior space of housing #2, accommodating perforated disks #13 and damping body #25); a sound damper (25) provided in the chamber ([0016]); a grid (defined by downstream one of perforated disks #13) comprising at least two passages (18) through which the compressed gas flow is adapted to leave the chamber, wherein the at least two passages (18) have an obvious, but unspecified length.
Juhasz fails to teach wherein the at least two passages have a length of at least 3 mm, and wherein a cross-sectional area of the at least two passages respectively decreases from the inlet of a passage until a portion with smallest diameter, and increases from the portion with smallest diameter towards an outlet of the passage.
Juhasz fails to explicitly teach wherein the at least two passages have a length of at least 3 mm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the at least two passages have a length of at least 3 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, specify a length range of the at least two passages would have been well known and obvious to one of ordinary skill in the art, so as to tune the device.
Kawamura teaches a similar gas flow device (Figure 8) having a grid (Figure 6, #5) comprising at least two passages (12, when combined with Juhasz, #18) for gas flow therethrough wherein a cross-sectional area of the at least two passages (12, when combined) respectively decreases from the inlet of a passage until a portion with smallest diameter, and increases from the portion with smallest diameter towards an outlet of the passage (cross-sectional area clearly seen in Figure 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus of Juhasz, with the apparatus of Kawamura so as to prevent the generation of vortices caused by the exhaust gas circulating around the opening periphery of the gas discharge hole, thereby reducing the noise (see Kawamura transition, [0006]-[0007], [0014]).
With respect to claims 18-19, Juhasz and Kawamura teach the silencer of claim 17. Juhasz further teaches wherein the at least two passages (18) have an obvious, but unspecified length.
Juhasz and Kawamura fail to explicitly teach wherein the at least two passages have a length between 4 and 200 mm, or wherein the at least two passages have a length of at least 10 mm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the at least two passages have a length between 4 and 200 mm, or wherein the at least two passages have a length of at least 10 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, specify a length range of the at least two passages would have been well known and obvious to one of ordinary skill in the art, so as to tune the device.
With respect to claims 20-21, Juhasz and Kawamura teach the silencer of claim 17. Juhasz further teaches wherein the grid has an effective surface ratio of an obvious, but unspecified length.
Juhasz and Kawamura fail to explicitly teach wherein the grid has an effective surface ratio between 60% and 90%, or above 80%.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the grid has an effective surface ratio between 60% and 90%, or above 80%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, specify an effective surface ratio of the grid would have been well known and obvious to one of ordinary skill in the art, so as to tune the device.
With respect to claims 22, Juhasz and Kawamura teach the silencer of claim 17. Juhasz further teaches the sound damper (25) which consists of a metal mesh, a foam or the like [0016].
Juhasz and Kawamura fail to explicitly teach wherein the sound damper comprises a fibrous material.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the sound damper comprises a fibrous material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, fibrous materials are well known to have damping characteristics in a similar manner to metal mesh, a foam or the like, and would have been obvious to one of ordinary skill for use in the Juhasz device.
With respect to claims 23-24, Juhasz and Kawamura teach the silencer of claim 17. Juhasz further teaches the at least two passages (18) have a cross-sectional shape.
Juhasz and Kawamura fail to explicitly teach wherein a cross-section of the at least two passages is polygonal or hexagonal.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to wherein a cross-section of the at least two passages is polygonal or hexagonal, since it has been held by the courts that a change in shape or configuration, without any criticality, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See In re Dailey, 149 USPQ 47 (CCPA 1976). It appears that the disclosed device would perform equally well shaped as disclosed by Juhasz as modified.
With respect to claim 25, Juhasz teaches wherein a cross-section of the at least two passages (18) is round (best seen in Figure 2).
With respect to claims 26 and 28-29, Juhasz and Kawamura teach the silencer of claim 17. Juhasz and Kawamura further teaches the at least two passages (Juhasz, #18 when combined with Kawamura, #12) have a cross-sectional area and associated shape.
Juhasz fails to explicitly teach wherein a portion with a smallest diameter of the at least two passages has a cross-sectional area between 80% and 95% of the cross-sectional area of the inlet of at least two passages and/or the outlet of at least two passages; or wherein a cross-sectional area of at least two passages is larger at the inlet of at least two passages than at the portion with a smallest diameter and the outlet of at least two passages, and the cross-sectional area of the at least two passages is larger at the outlet of at least two passages than at the portion with the smallest diameter; or wherein across-sectional area of at least two passages is larger at the outlet of at least two passages than at the portion with a smallest diameter and the inlet of at least two passages, and the cross-sectional area of at least two passages is larger at the inlet of at least two passages than at the portion with the smallest diameter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein a portion with a smallest diameter of the at least two passages has a cross-sectional area between 80% and 95% of the cross-sectional area of the inlet of at least two passages and/or the outlet of at least two passages; or wherein a cross-sectional area of at least two passages is larger at the inlet of at least two passages than at the portion with a smallest diameter and the outlet of at least two passages, and the cross-sectional area of the at least two passages is larger at the outlet of at least two passages than at the portion with the smallest diameter; or wherein across-sectional area of at least two passages is larger at the outlet of at least two passages than at the portion with a smallest diameter and the inlet of at least two passages, and the cross-sectional area of at least two passages is larger at the inlet of at least two passages than at the portion with the smallest diameter, since it has been held by the courts that a change in shape or configuration, without any criticality, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See In re Dailey, 149 USPQ 47 (CCPA 1976). It appears that the disclosed device would perform equally well shaped as disclosed by Juhasz as modified. Further, Applicant has not established any criticality to the claimed cross-sectional shapes of the passages, and altering the shape of the cross-sections of the passages would have been obvious to one of ordinary skill.
With respect to claim 27, Juhasz and Kawamura teach wherein the inlet of the at least two passages (Juhasz, #18 when combined with Kawamura, #12) and the outlet of the at least two passages have the same cross-sectional area. It is noted that Figure 6 of Kawamura shows the inlet and outlet of passage #12 having the same cross-sectional area.
With respect to claim 30, Juhasz teaches a skirt (defined by downstream-most portion of housing #2 extending beyond downstream one of perforated disks #13) arranged downstream of the grid (13), wherein the skirt is adapted to guide the compressed gas leaving the at least two passages (18) of the grid (18).
With respect to claim 31, Juhasz teaches wherein the skirt (defined by downstream-most portion of housing #2 extending beyond downstream one of perforated disks #13) has a cylindrical, polygonal, or hexagonal cross-section, or a combination of different cross-sections.
With respect to claim 32, Juhasz teaches wherein the skirt (defined by downstream-most portion of housing #2 extending beyond downstream one of perforated disks #13) has a constant cross-sectional area, or a cross-sectional area increasing or decreasing over a length of the skirt in a downstream direction.
With respect to claims 33-34, Juhasz and Kawamura teach the silencer of claim 30. Juhasz further teaches wherein the skirt (defined by downstream-most portion of housing #2 extending beyond downstream one of perforated disks #13) has an obvious, but unspecified length.
Juhasz and Kawamura fail to explicitly teach wherein the skirt has a length between 2 and 200 mm, or wherein the skirt has a length of at least 50 mm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the skirt has a length between 2 and 200 mm, or wherein the skirt has a length of at least 50 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, specify a skirt length range would have been well known and obvious to one of ordinary skill in the art, so as to tune the device.
With respect to claim 35, Juhasz teaches wherein a cross-sectional area of the skirt (defined by downstream-most portion of housing #2 extending beyond downstream one of perforated disks #13) at the inlet of the skirt is larger than a sum of the cross-sectional areas of all passages (18) at their respective outlets.
With respect to claim 36, Juhasz teaches Use of a silencer according to claim 17 (device of Figure 3) for a braking system of a commercial vehicle ([0001]). It is considered to be well known and inherent that air brakes are commonly used in commercial trucking vehicles.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 17-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-35 of copending Application No. 19/111,167 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter of the current application is contained in the patented claims previously indicated.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pertinent arts of record relating to Applicant’s disclosure are disclosed in the PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY AUSTIN LUKS whose telephone number is (571)272-2707. The examiner can normally be reached Monday-Friday (9:00-5:00).
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/JEREMY A LUKS/Primary Examiner, Art Unit 2837
