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 .
Response to Amendment
The amendment filed August 5th, 2026 has been entered. Claims 1-11, 13-26, and 30-34 remain pending in the application. The amendments to the claims have overcome each and every objection as previously set forth in the Non-Final Office Action mailed June 4th, 2026.
As to the rejection of claims 1-11, 13-26, and 30 under 35 U.S.C. 112(b), the Applicant has not addressed the antecedent basis issue of claim 1 (see pg. 4 of the Non-Final Office Action mailed June 4th, 2026) and the rejection of claims 1-11, 13-26, and 30 under 35 U.S.C. 112(b) has therefore been maintained.
Response to Arguments
Applicant argues that the statutory double patenting rejection of claims 1-11, 13-26, and 30 was made in error. While the Examiner disagrees with this assertion, the amendments to claim 1 have overcome the statutory double patenting rejection. However, upon further consideration, claims 1, 3, 23, and 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 19/245714.
Applicant’s arguments, see Applicant Arguments/Remarks, filed August 5th, 2026, with respect to the rejection of claims 1-5, 7, 11-12, 21-26, and 30 under 35 U.S.C. 102(a)(2) have been fully considered and are persuasive. The rejection of claims 1-5, 7, 11-12, 21-26, and 30 has been withdrawn.
Applicant’s arguments, see Applicant Arguments/Remarks, filed August 5th, 2026, with respect to the rejection of claims 6, 8-10, and 13-20 under 35 U.S.C. 103 have been fully considered and are persuasive. The rejection of claims 6, 8-10, and 13-20 has been withdrawn.
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.
Claims 1, 3, 23, and 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 23 of copending Application No. 19/245714 (hereinafter referred to as ‘714). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of ‘714. Claim 3 is of ‘714 is dependent upon claim 1, and claims 1 and 3 of ‘714 teach all of the limitations as required by claim 1 of the instant application except for the limitation of wherein the substantially cylindrical filter has a height ranging from about 20 to about 100 inches. However, where the only difference is a recitation of relative dimensions, the claimed device is not patentably distinct from the prior art device. Furthermore, claim 3 of ‘714 recites the limitation “wherein the dimensions of the modular filter assembly are about 30 inches by about 30 inches by about 30 inches” and it therefore would have been obvious to one of ordinary skill in the art that the substantially cylindrical filter could have a height of about 20 inches.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of ‘714. Claim 3 is of ‘714 is dependent upon claim 1, and claims 1 and 3 of ‘714 teach all of the limitations as required by claim 3 of the instant application.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 of ‘714. Claim 23 is of ‘714 is dependent upon claim 3, and claims 1, 3, and 23 of ‘714 teach all of the limitations as required by claim 23 of the instant application.
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of ‘714. Claim 3 is of ‘714 is dependent upon claim 1, and claims 1 and 3 of ‘714 teach all of the limitations as required by claim 31 of the instant application.
Claim Objections
Claims 1, 2, 4, and 11 are objected to because of the following informalities:
In claim 1, lines 5-6, “20 to about 100 inches wherein wherein” should read “20 to about 100 inches [[wherein]] wherein”
In claim 1, lines 20 and 26, “with side of length” should read “with sides of length”
In claim 1, line 31, “immediately surrounding environment is less” should read “immediately surrounding environment [[is]] of less”
In claim 1, lines 37 and 41, “efficiency of the filtered airflow is about 50%” should read “efficiency of the filtered airflow [[is]] of about 50%”
In claim 2, line 13, “wherein the modular filter assembly do not exceed” should read “wherein the modular filter assembly [[do]] does not exceed”
In claim 4, lines 14-15, “cylindrical filter and at least one fan” should read “cylindrical fan and the at least one fan”
In claim 11, line 2, “substantially cylindrical comprises” should read “substantially cylindrical filter comprises”
Appropriate correction is required.
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.
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 1-11, 13-26, and 30-34 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 1 recites the limitation “at least one substantially cylindrical filter with maximum diameter between about 8 inches and about 30 inches and height ranging from about 20 to about 100 inches, wherein the at least one substantially cylindrical filter comprises activated carbon with a thickness ranging from about 1 to about 5 inches.” It is unclear how the filter simultaneously meets the limitations of having a height from about 20 to about 100 inches and a thickness of only about 1 to about 5 inches. For example, this could be interpreted to mean only a portion of the filter comprises activated carbon and that portion has a thickness of only about 1 to about 5 inches, or this could be interpreted to mean the filter comprises multiple layers of activated carbon with a thickness of about 1 to about 5 inches and in totality has a height ranging from about 20 to about 100 inches. As the claim may have more than one reasonable interpretation, it is unclear when infringement may occur and the claim is therefore indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “wherein the at least one fan is configured to generate an airspeed of about 10 feet per minute or greater as measured within about 3 inches of each of the three vertices of an equilateral triangle with sides of length between about 7 inches and about 26 inches whose plane is substantially perpendicular to the central axis of the at least one substantially cylindrical filter and within about one inch of where the at least one substantially cylindrical filter exchanges air with the surround environment”, and the claim also recites “wherein the at least one fan is configured to generate an airspeed of about 500 feet per minute or greater as measured within about 3 inches of each of the three vertices of an equilateral triangle with sides of length between about 7 inches and about 26 inches whose plane is substantially perpendicular to the central axis of the at least one substantially cylindrical filter and within one inch of where the at least one fan exchanges air with the surrounding environment” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim 1 recites the limitation "the immediately surrounding environment" in paragraph 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation “wherein the modular filter assembly does not exceed the dimensions of about 30 inches in length by about 30 inches in width by about 45 inches in height.” Claim 2 is dependent upon claim 1, which recites the limitation “at least one substantially cylindrical filter with … a height ranging from about 20 to about 100 inches.” The claim limitation is therefore a contradiction to the limitations of the claim upon which it depends and it is therefore unclear how the limitations of claim 1 can precede the limitations of claim 2. The height of the modular filter assembly will exceed 45 inches in height if the height of the substantially cylindrical filter falls within the upper range of about 20 to about 100 inches. Claims 3-5 recite similarly contradictive limitations and are therefore also indefinite.
Claim 17 recites the limitation “wherein the controller adjusts the speed of the at least one fan when one or more of the presence of a vapor air contaminant is detected external to the modular filter assembly and a total vapor air contamination concentration threshold is exceeded external to the modular filter assembly.” Claim 17 is indefinite because it is a single claim which claims both an apparatus and the method steps for using the apparatus. Specifically, claim 17 is an apparatus claim because it is to a “modular filter assembly.” The italicized limitations describe method steps for using the apparatus. Therefore, claim 17 is indefinite because it is unclear whether infringement would occur when the apparatus is created that allows the method steps to be performed, or whether infringement requires that the method steps are actually performed. See MPEP § 2173.05(p)(ii).
Claim 18 recites the limitation “wherein the controller adjusts the speed of the at least one fan based on when one or more of a filter fouling threshold of the at least one substantially cylindrical filter is exceeded and the current threshold is exceeded in relation to a set amount of time.” Claim 18 is indefinite because it is a single claim which claims both an apparatus and the method steps for using the apparatus. Specifically, claim 18 is an apparatus claim because it is to a “modular filter assembly.” The italicized limitations describe method steps for using the apparatus. Therefore, claim 18 is indefinite because it is unclear whether infringement would occur when the apparatus is created that allows the method steps to be performed, or whether infringement requires that the method steps are actually performed. See MPEP § 2173.05(p)(ii).
Claim 21 recites the limitation “wherein the dimensions of the modular filter assembly do not exceed about 30 inches by about 30 inches by about 30 inches.” It is unclear what these measurements are drawn to (length, width, height, etc.) and at which point from the device said measurements are taken (vertically, horizontally, from a central axis point, etc.).
Claim 25 recites the limitation “wherein the dimensions of the modular filter assembly do not exceed about 30 inches by about 30 inches by about 45 inches.” It is unclear what these measurements are drawn to (length, width, height, etc.) and at which point from the device said measurements are taken (vertically, horizontally, from a central axis point, etc.).
Claim 30 recites the limitation “wherein the modular filter assembly consumes about 35 watts or less.” Claim 30 is indefinite because it is a single claim which claims both an apparatus and the method steps for using the apparatus. Specifically, claim 30 is an apparatus claim because it is to a “modular filter assembly.” The italicized limitations describe method steps for using the apparatus. Therefore, claim 30 is indefinite because it is unclear whether infringement would occur when the apparatus is created that allows the method steps to be performed, or whether infringement requires that the method steps are actually performed. See MPEP § 2173.05(p)(ii).
Claim 31 recites the limitation “wherein a cross-sectional shape of the substantially cylindrical filter is one of substantially circular, substantially square, substantially triangular, or any other similar cross-sectional shape known to the skilled artisan.” (emphasis added) The term “similar” is indefinite as it is not clear what applicant intends to cover by the recitation “similar cross-sectional shape.” Additionally, it is unclear how a substantially cylindrical filter is capable of having a cross-sectional shape that is substantially square, substantially triangular, or any other similar cross-sectional shape while still meeting the limitation of a cylindrical filter.
Claim 34 recites the limitation “wherein air is exchanged with the surround environment.” Claim 34 is indefinite because it is a single claim which claims both an apparatus and the method steps for using the apparatus. Specifically, claim 34 is an apparatus claim because it is to a “modular filter assembly.” The italicized limitations describe method steps for using the apparatus. Therefore, claim 34 is indefinite because it is unclear whether infringement would occur when the apparatus is created that allows the method steps to be performed, or whether infringement requires that the method steps are actually performed. See MPEP § 2173.05(p)(ii).
Claim 34 recites the limitation “wherein air is exchanged with the surrounding environment.” It is unclear at which point the air is to be exchanged (at the inlet, outlet, the location of the fan, etc.) and it is unclear whether the exchange occurs with the mixed-flow fan or with the entire filter assembly itself. As the claim may have more than one reasonable interpretation, it is unclear when infringement may occur and the claim is therefore indefinite.
Claims 6-11 and 16, which are dependent upon claim 1, are likewise 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Blum (US 2023/0338603 A1) teaches a modular filter assembly for protection against pathogens and pollutants.
Wesley (US 2023/0221019 A1) teaches a modular filter asssembly with a cylindrical filter and fan.
Ruia (US 2023/0304683 A1) teaches a modular filter assembly with a stacked configuration of a HEPA filter and a chemical adsorption filter.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL MARIE SLAUGOVSKY whose telephone number is (571)272-0188. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL MARIE SLAUGOVSKY/Examiner, Art Unit 1776
/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
