Donaldson Company, Inc.

Patent Trials and Appeals Board

Dec 22, 2020

2020001131 (P.T.A.B. Dec. 22, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/515,074 03/28/2017 Suresh Laxman Shenoy C00009023.USN4 2624
116849 7590 12/22/2020
Donaldson Company, Inc.
1400 West 94th Street
P.O. Box 1299
Minneapolis, MN 55440-1299
EXAMINER
NGUYEN, VU ANH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
12/22/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@donaldson.com
donaldson_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURESH LAXMAN SHENOY

Appeal 2020-001131
Application 15/515,074
Technology Center 1700
Before FRANCISCO C. PRATS, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 18, 19, 23–26, 29–31, and 48–54. See
Final Act. 1–2.3 We have jurisdiction under 35 U.S.C. § 6(b).

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/515,074 (“’074 App.”) filed Mar. 28, 2017; the Non-Final Office Action
dated May 2, 2018 (“Non-Final Act.”); the Final Office Action dated Dec.
26, 2018 (“Final Act.”); the Appeal Brief filed July 26, 2019 (“Appeal Br.”);
the Examiner’s Answer dated Sept. 25, 2019 (“Ans.”); and the Reply Brief
(“Reply Br.”) filed Nov. 25, 2019.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Donaldson
Company, Inc. Appeal Br. 2.
3 The Final Action rejects, inter alia, claims 14 and 34, but these claims
were cancelled by Appellant in Amendments After Final filed Mar. 26, 2019
and Apr. 25, 2019.
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Application 15/515,074

2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to filter media. Appeal Br. Claims App. 1–3.
The Specification discloses that certain environments of liquid filtration,
particularly oil filtration, require chemical resistance. Spec. 1, ll. 12–13.
According to the Specification, the presence of styrene-containing
copolymer renders fibers, filter media, and filter elements more chemically
resistant to, e.g., hot glycols. Spec. 1, ll. 20–22.
Claim 18, reproduced below from the Claims Appendix, illustrates the
claimed subject matter:
18. A filter medium comprising:
a filter layer comprising multi-component binder fibers;
and
an optional support layer;
wherein each multi-component binder fiber comprises a
core and an outermost sheath comprising a styrene-containing
copolymer selected from a styrene-maleic anhydride
copolymer, a styrene-maleimide copolymer, a styrene-maleic
acid ester copolymer, and a combination thereof.
Claims App. 1.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Kahlbaugh et al.
(“Kahlbaugh”)
US 7,309,372 B2 Dec. 18, 2007
Soane et al. (“Soane”) US 2013/0168323 A1 July 4, 2013

Appeal 2020-001131
Application 15/515,074

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REJECTIONS
The Examiner rejects claims 18, 19, 23–26, 29–31, and 48–54 as
unpatentable under 35 U.S.C. § 103 over Soane in view of Kahlbaugh. Final
Act. 2–3; Ans. 3.
OPINION
In arguing against the Examiner’s rejection of the claims Appellant
does not argue any claim separately from the others. We select claim 18 as
representative for resolving the appeal. 37 C.F.R. § 41.37(c)(1)(iv).
Soane teaches systems and methods for capturing and sequestering an
oily substance admixed with an aqueous fluid stream. Soane ¶ 10. The oily
substance can be floating on an aqueous medium, such as crude oil spilled
upon an open ocean, or emulsified in the aqueous medium or dissolved in
the aqueous medium. Id. ¶ 10. The capture medium can comprise an anchor
substrate and a modifier technology which complexes with oil to form a
removable complex. Id. Abstract. The anchor substrate is a material that
can be modified to bear on its surface an oleophilic capture substance, and
can be formed into sheets. Id. ¶ 17. Soane discloses that cellulose acetate
coated with styrene maleimide copolymer may be used as an anchor
substrate and capture medium. Id. ¶ 99.
Kahlbaugh teaches thermoplastic bicomponent binder fibers combined
with other media, fibers, or filtration components to form thermally bonded
filtration media. Kahlbaugh Abstract. Kahlbaugh discloses, inter alia, a
filtration medium having high capacity for particulate removal from a
moving fluid (air, gas, or liquid) stream. Id. col. 1, ll. 13–16. According to
Kahlbaugh, the components combine “to form a high strength material
having substantial filtration capacity, permeability and filtration lifetime,”
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Application 15/515,074

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and can maintain “filtration capacity for substantial periods of time at
substantial flow rates and substantial efficiency.” Id. col. 3, ll. 10–15.
The Examiner finds that Soane teaches the use of a styrene-maleimide
copolymer to complex with, and therefore enable the removal of, a target oil
in an aqueous fluid stream, but does not provide details of a particular filter
system, or teach a filter medium comprising a filter layer comprising
multicomponent fibers. Non-Final Act. 4. On the subject of a filter medium
for removing an oil from an aqueous stream, the Examiner finds that
Kahlbaugh discloses a filter medium that comprises a support and a filter
layer comprising glass fibers and thermoplastic bicomponent fibers. Id. at
4–5. Pointing to Kahlbaugh’s asserted advantages, the Examiner concludes
that it would have been obvious to a person having ordinary skill in the art
(“PHOSITA”) to have replaced the cellulose acetate fibers in Soane’s filter
medium with Kahlbaugh’s combination of glass fibers and bicomponent
thermoplastic fibers to achieve the benefits identified in Kahlbaugh. Id. at 5.
Appellant argues that a PHOSITA would not have expected the
benefits achieved by Kahlbaugh in removing particulate from a mobile fluid
stream would be applicable to the coated fibers of Soane in removing a
target oil from an aqueous fluid stream using a capture medium. Appeal Br.
10. Appellant argues that Kahlbaugh’s teaching of removing particulate
from air and gas streams at high temperatures (above the melting point of a
portion of the bicomponent fiber) is distinct from Soane’s teaching of
removing oil from an aqueous surface at room temperature. Appeal Br. 10.
In response to the Examiner finding that “oil droplets in a water taught
by Soane are exactly the particulates in fluid stream taught by Kahlbaugh”
(Final Act. 3), Appellant argues that the finding is inconsistent with the text
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Application 15/515,074

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and teachings of Kahlbaugh. Reply Br. 2–5. Specifically, Appellant argues
that Kahlbaugh describes non-solid materials, such as entrained oils, as
“droplets,” and solid materials such as carbon contaminants as “particles.”
Id. at 3. In addition, Appellant asserts that Kahlbaugh teaches filter media
for removing particulate from air and gas streams using a sieving mechanism
and size exclusion, but does not teach that its filter media could be used to
separate contaminating fuel from water. Id.
Kahlbaugh describes particulates as follows:
The media layer can have a defined pore size for the purpose of
removing particulates from fluid streams having a particle size
of about 0.01 to 100 micrometers, from gas streams containing
liquids in the form of a mist having droplet size of about 0.01 to
100 micrometers, from aqueous streams having a particle size
of about 0.1 to 100 micrometers[,] from non-aqueous streams
having a particle size of about 0.05 to 100 micrometers[,] or
from fuel, lubricant or hydraulic streams having a particle size
of about 0.05 to 100 micrometers.
Kahlbaugh col. 6, l. 65–col. 7, l. 7 (emphasis added). In comparing removal
of particulates of 0.01 to 100 micrometers in size from fluid streams with
removal of droplets of the same size (0.01 to 100 micrometers) from gas
streams, Kahlbaugh can be read as reasonably suggesting to a PHOSITA
that droplets in the form of a mist in a gas stream are analogous to
particulates in fluid streams and can be removed by the disclosed filter
medium. See id.
Kahlbaugh states “[t]he filter and filter medium [of the invention]
comprises a non-woven web made suitable for particulate removal from
mobile liquids and gasses [sic] using permeability, efficiency, loading and
other filtration parameters.” Id. col. 1, ll. 16–20. Thus, Kahlbaugh
envisions filtering gases with its invention. Id. Appellant asserts that the
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Application 15/515,074

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pores in Kahlbaugh would be ineffective at trapping fuel contained in water,
but provides no explanation of why Kahlbaugh’s filter medium would trap
0.01 to 100 micrometer particles, but not droplets of the same size,
especially when Kahlbaugh teaches trapping droplets in a gas stream. See
Reply Br. 4.
“One of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.”
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005). As noted above, the Examiner relies on Kahlbaugh’s
asserted advantages as the motivation for replacing the cellulose acetate
fibers in Soane’s filter medium with Kahlbaugh’s combination of glass
fibers and bicomponent thermoplastic fibers, to achieve the benefits
identified in Kahlbaugh. Non-Final Act. 5. The Examiner therefore
provides the requisite “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). The differences between Soane and
Kahlbaugh pointed out by Appellant are insufficient to rebut the Examiner’s
prima facie case. The Examiner’s explanation of the reasons a person of
ordinary skill in the art would have had to combine the prior art teachings is
sufficient when an allowance is made for “the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
We sustain the rejection of claim 18 as obvious over Soane in view of
Kahlbaugh. Appellant argues all pending claims as a group, therefore, we
also sustain the rejection of claims 19, 23–26, 29–31, and 48–54 over the
same references. 37 C.F.R. § 41.37(c)(1)(iv).
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Application 15/515,074

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CONCLUSION
The Examiner’s decision to reject claims 18, 19, 23–26, 29–31, and
48–54 is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18, 19, 23–
26, 29–31,
48–54
103 Soane, Kahlbaugh 18, 19, 23–
26, 29–31,
48–54

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED