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 .
Election/Restrictions
Newly submitted claims 14-18 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: This a method for assembling a filter device. The invention of claim 1 does not need to be assembled in this way and the invention of claim 14 does not require the structure of claim 1.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14-18 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 1 recites the limitations “positioning means” and “pressure means.” Positioning and pressure are functional limitations modifying “means”. Claim 11 recites the limitation “means for translationally positioning the filter element”. Translationally positioning the filter element is a functional limitation that is modifying “means for.”
“Positioning means” can be read upon by a fin or recess on page 8 or something that aligns the lid.
“Pressure means” can be read upon by a pin and cavity as taught in pages 8-9 or something that presses the entrance 18 of the inlet duct 17 against the inlet 6 of lid 3.
“Means for translationally positioning the filter element” can be read upon by a cavity or recess as taught in page 7 or something that positions the filter in the pot.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4-7, and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearson (US20070209341A1) in view of Wright (US20020189216A1).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearson in view of Wright in view of Cambpell (US20140137525A1).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearson in view of Wright in view of Cambpell in view of Taylor (US4915831).
Rejection in view of Pearson and Wright
Claim 1: Pearson teaches a filter element for use in a filter device for the separation of impurities from a gas (abstract teaches collecting material entrained in a gas stream), the filter device including a pot and a lid (Figure 1 shows filter device 50 that has a body 54 and head 52.), comprising: a top cap and a bottom cap with a filter cartridge disposed therebetween (Figure 2 shows a filter in the middle along with top and bottom end caps 4 and 6.), wherein the top cap is provided with an inlet duct that will lead gas to be purified to the filter cartridge, the inlet duct having an entrance and an outlet (The duct is 34, it has inlet 162 and outlet 164.), and wherein the top cap includes positioning means configured to position the top cap in relation to the lid of the filter device ([0187] teaches inter engaging formations such as 90, 91, 154, and 156 in figure 4. These would align the top cap in relation to the filter device. There are also fins 114 taught in [0170] that also align the top cap.) and pressure means configured to press the entrance of the inlet duct against an inlet of the lid after mounting the pot on the lid ([0152] teaches top end cap has port 80. When filter element is locked in the housing, port 80 is received in a downwardly facing socket in the housing head which forms a seal.), wherein the top cap is provided with an extending collar around a periphery thereof configured to rest on an upper edge of the pot (Figure 1 shows that there is an extending collar that rests on the upper edge of the pot 55.), wherein the positioning means includes a positioning member configured to rotationally fix the top cap relative to the lid (Fins 114 or the conduit 34.).
Pearson does not explicitly teach the positioning means including a position member above the extending collar and configured to rotationally fix the top cap relative to the lid by contacting the lid. Pearson teaches a filter element as indicated above. Wright teaches in figures 1-4 a similar filter element that has a top and lid. Wright teaches in [0063] that the top portion above the extending collar 24 has extending deformable tangs 60 which are to be received in a slot 64 in the housing end cap which would rotationally fix the top cap to the lid. It would have been obvious to one of ordinary skill before the effective filing date of the invention to have position means above the extending collar as taught by Wright in the device of Pearson as Wright teaches that this allows the end cap to be connected in the proper position so that the flow conduit is properly located in the end cap ([0063]).
Claim 2: Pearson teaches the positioning means and the pressure means are configured such that the positioning means come into action with the filter device earlier than the pressure means during the mounting of the pot on the lid (Since the port 80 is received in a downward facing socket of the housing head, the fins 114 must be engaged first before the lid is completely seal fitted on.).
Claim 4: Pearson teaches the positioning member is a positioning fin (fins 114).
Claim 5: Pearson the pressure means includes a pin on the top cap ([0152] teaches that the port 80 can be received in a downwardly facing socket in the housing head, which would read upon the pin.).
Claim 6: Pearson teaches the inlet duct includes a seal provided around the entrance ([0032]-[0033] teaches the flow conduit has seals formed at the ends between it and a port in the housing or filter.).
Claim 7: Pearson and Wright do not explicitly teach the seal is an integral part of the top cap. It would have been obvious to one of ordinary skill before the effective filing date of the invention to have the seal be integral since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1993).
Claim 11: Pearson teaches the bottom cap includes means for translationally positioning the filter element in relation to the pot (Figure 19 shows the bottom end cap can have a shield or dome shape which would position it in the pot.).
Claim 12: Wright teaches the positioning member includes a positioning fin that extends in a vertical direction of the filter element, the positioning fin configured to rotationally fix the top cap relative to the lid by contacting the lid (Figure 2 shows that the tangs 60 extend up vertically and fixes to the lid of figure 4.).
Claim 13: Wright teaches the positioning member includes a positioning recess that extends in a vertical direction of the filter element, the positioning recess configured to rotationally fix the top cap relative to the lid by contacting the lid (Figure 2 shows that the tangs 60 have a recess between 62 and 68, this connects to the lid as shown in figure 4 which has projections to fix the lid to the body.).
Rejection in view of Pearson, Wright, and Cambpell
Claim 8: Pearson does not explicitly teach the seal is made out of a thermoplastic elastomer. Cambpell teaches a filter system having a seal made of thermoplastic elastomer in [0046]. Cambpell teaches that a variety of seals can be used for a seal member in a filter and thermoplastic elastomer is a typical seal member that is a compressible and soft member that compresses upon engagement with a housing structure. It would have been obvious to one of ordinary skill before the effective filing date of the invention to use a thermoplastic elastomer in the seal of Pearson as Cambpell teaches that these are typically used in filter seals.
Rejection in view of Pearson, Wright, Cambpell, and Taylor
Claim 10: The prior arts do not explicitly teach the collar is configured to extend over the entire circumference of the upper edge and at least one passage is provided in the collar. Taylor teaches in figure 1 a locking means for a filter cartridge and a head unit. Taylor teaches a collar 48 that extends over the pot 46 and has a passage (where numeral 86) is. Column 5 lines 21-34 teaches that this is so that head and the cartridge won’t be separated unless rotated at a certain angle. It would have been obvious to one of ordinary skill before the effective filing date of the invention to have the collar of Taylor as Taylor teaches this allows for better connection of the head and the body so that it does not disengage inadvertently.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 4-8, and 10-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
ConclusionApplicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PHILLIP Y SHAO whose telephone number is (571)272-8171. The examiner can normally be reached Mon-Fri; 9-5:30.
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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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/P.Y.S/Examiner, Art Unit 1776 07/02/2026
/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
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