Ex Parte Bagci et alDownload PDFPatent Trial and Appeal BoardJun 28, 201612354612 (P.T.A.B. Jun. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/354,612 01115/2009 Ismail C. Bagci 116387 7590 06/30/2016 Foley & Lardner LLP 3000 K Street N.W. Suite 600 Washington, DC 20007-5109 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 106389-1838 5126 EXAMINER KEYWORTH, PETER ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 06/30/2016 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ISMAIL C. BAGCI and TERRY W. SHULTS 1 Appeal2015-001604 Application 12/354,612 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's maintained final rejection of claims 1-6 and 8-16. We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We AFFIRM. CLAIMED SUBJECT MATTER Appellants' claimed invention is directed to a fluid filter comprising, inter alia, a housing having a generally open end, a filter element inside the 1 According to Appellants, the Real Party in Interest is Cummings Filtration IP, Inc. Appeal Brief filed June 4, 2014 ("App. Br."), 2. Appeal2015-001604 Application 12/354,612 housing, and a nutplate connected to the housing at the generally open end. Spec. Abstract. A connection structure is disposed on an external side surface of the nutplate, which allows connection to other equipment. Spec. Abstract, claim 1. Claim 1 is illustrative: 1. A fluid filter, comprising: a housing having a generally open end; a filter element disposed inside the housing, the filter element having a media that allows a working fluid to be filtered through the filter media; and a nutplate connected to the housing at the generally open end, the nutplate having an end face including an inlet and an outlet, the inlet allows working fluid to be filtered to enter the generally open end of the housing and flow to the media, and the outlet allows working fluid filtered by the media to exit the generally open end of the housing, the end face including inner and outer seals disposed thereon, the inner seal surrounds one of the inlet or the outlet and is between the inlet and the outlet, and the outer seal surrounds the other of the inlet or the outlet, the inner seal in operation separates the working fluid to be filtered from the working fluid filtered by the media, and the outer seal in operation separates the working fluid from the external environment, and the nutplate including a connection structure disposed on an external side surface thereof, the connection structure being radially outward of the inner and outer seals, the connection structure is connectable to other equipment, wherein the connection structure includes multiple threads extending more than a full tum around the circumference of the external side surface, and the inner seal is one of a gasket or an o-ring. 2 Appeal2015-001604 Application 12/354,612 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103(a): Claims 1, 2, 4-6, and 8-16 as obvious over Setzer (US 4,865,731, issued September 12, 1989) in view of McKenzie (US 6,726,030 Bl, issued April 27, 2004). Claim 3 as obvious over Setzer in view of McKenzie and Bagci et al. (US 2005/0178706 Al, published August 18, 2005). DISCUSSION Having reviewed the Examiner's rejections in light of the arguments advanced by Appellants in the Reply and Appeal Briefs, we are not persuaded that the Examiner erred reversibly in concluding that claims 1-6 and 8-16 are unpatentable for obviousness. We add the following for emphasis. 2 Rejection of Claims l, 2, 4-6, and 8-16 as obvious over Setzer and McKenzie Appellants argue claims 1, 2, 4-6, and 8-16 as a group on the basis of claim 1, to which we limit our discussion. App. Br. 6. To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner's rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 2 We refer to the Final Office Action mailed November 22, 2013 ("Final Act."), the Appeal Brief filed June 4, 2014, the Examiner's Answer mailed September 17, 2014 ("Ans."), and the Reply Brief filed November 17, 2014 ("Reply Br."). 3 Appeal2015-001604 Application 12/354,612 1365-66 (Fed. Cir. 2011) (explaining that even ifthe examiner had failed to make a prima facie case, it has long been the Board's practice to require an appellant to identify the alleged error in the examiner's rejection); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) ("[T]he burden of showing that the error is harmful normally falls upon the party attacking the agency's determination." (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))). The Examiner finds that Setzer discloses a fuel filter comprising an outer casing 16 having a generally open end 16 ", a filter material 18 disposed inside the outer casing 16, an end plate 20 connected to the outer casing 16 at the generally open end 16" having an end face that includes an inlet, an outlet, and inner 22 and outer 24 annular gaskets, and a connection structure 1 7 disposed on an external side surface of the outer casing 16 radially outward of the inner annular gasket 22 and outer annular gasket 24. Final Act. 2. The Examiner finds that Setzer discloses that the connection structure 17 includes multiple threads that extend more than a full tum around the circumference of the external side surface of the outer casing 16. Final Act. 2-3. The Examiner acknowledges that Setzer-disclosing a fuel filter with threads on outer casing 16-does not disclose that the connection structure 1 7 is on the external side surface of the end plate 20 and, to remedy this deficiency in Setzer, relies on McKenzie's end plate disclosure of a fuel filter having a housing 28 and an end plate 34 that includes a threaded collar connection structure 3 8 having multiple threads extending more than a full tum around the circumference of the external side surface of the end plate 34. Final Act. 3. Based on these findings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to place the connection structure disclosed in Setzer-including 4 Appeal2015-001604 Application 12/354,612 multiple threads extending around the circumference of the external side surface-on the end plate as taught by McKenzie to simplify the design and to ease manufacture of the fuel filter by locating all of the connection means, inlets, outlets, and seals on a single element. Final Act. 3; Ans. 3. Appellants contend that Setzer' s end plate is incompatible with McKenzie's threaded collar, and due to this incompatibility, modifying Setzer's end plate in view of McKenzie would involve adding a projecting, threaded collar structure to Setzer' s end plate, which would increase the number of parts in, and complexity of, the fuel filter. App. Br. 9-10. Appellants argue that because of this added complexity, there would not have been a reason to combine the disclosures of Setzer and McKenzie as proposed by the Examiner. App. Br. 10. Appellants' arguments do not address the rejection as set forth by the Examiner, which is not based upon literal bodily incorporation of the threaded collar disclosed in McKenzie into the end plate disclosed in Setzer. Ans. 3. Rather, the rejection is based on the suggestion from the combined teachings of Setzer and McKenzie of including a connection structure Setzer's end plate. Ans. 2-3. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of a primary reference ... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Moreover, Appellants do not directly challenge the Examiner's determination that the proposed modification would simplify the design and manufacture of a fuel cell by locating all of the connection means, inlets, outlets, and seals on a single element. Rather than explaining why one of 5 Appeal2015-001604 Application 12/354,612 ordinary skill in the art would not have expected to simplify the design upon locating all of the connecting means, inlets, outlets, and seals on a single element, Appellants only contend there is a lack of evidentiary support for this proposition. Reply Br. 3; App. Br. 6-13. In doing so, Appellants do not provide persuasive reasoning or evidence establishing why one of ordinary skill in the art would not have been led to the proposed modification. App. Br. 6-13. Nor do Appellants persuasively show that modifying Setzer's end plate to include a connection structure would have been beyond the level of ordinary skill in the art at the time of the invention. Id. Appellants' arguments therefore do not identify reversible error in the prima facie case set forth by the Examiner. Appellants further argue that because the connection structures disclosed by Setzer and McKenzie supposedly have different purposes and perform different functions, one of ordinary skill in the art would not have had a reasonable expectation that McKenzie's threaded collar could have successfully replaced Setzer's connection structure. App. Br. 10. Appellants also argue that if a threaded collar of the type disclosed in McKenzie was added to Setzer' s end plate, the threaded collar would be located radially inward of at least one of the inner and outer annular gaskets located on Setzer' s end plate, contrary to the recitation in claim 1 that the connection structure is radially outward of the inner and outer seals. App. Br. 11-12. However, like Appellants' arguments discussed above, these arguments are grounded on a literal physical incorporation, that is, the addition of the threaded collar disclosed in McKenzie onto the end plate disclosed in Setzer. Because the rejection as set forth by the Examiner is based on what the combination of teachings would suggest to one of 6 Appeal2015-001604 Application 12/354,612 ordinary skill in the art at the time of the invention, Appellants' arguments are unpersuasive of reversible error. Keller, 642 F.2d at 425. See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Appellants further argue that certain benefits of the claimed fluid filter would not be realized by the proposed combination of Setzer and McKenzie. App. Br. 12. Specifically, Appellants contend that locating external connection threads on a nutplate outside of a sealing region in a fuel filter as recited in claim 1 can reduce the likelihood of possible contaminants entering the fluid filter during the installation process, but a combination of Setzer and McKenzie would include a threaded collar located radially inward of at least one sealing gasket, and would thus lack this benefit. App. Br. 12-13. Again, Appellants' argument is improperly premised on literal, bodily incorporation rather than what the combination of teachings would suggest to one of ordinary skill in the art at the time of the invention, and is thus without merit. Moreover, modifying Setzer's end plate to include a the connection structure of McKenzie would result in the connection structure being radially outward of the inner and outer seals as recited in claim 1, and there is a reasonable basis for that structure reducing the likelihood of possible contaminants entering the fluid filter during the installation process. Because Appellants do not provide any evidence to the contrary, Appellants' arguments lack persuasive merit. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); see also In 7 Appeal2015-001604 Application 12/354,612 re Greenfield, 571F.2d1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants do not identify a patentable distinction between the claimed fuel filter and the fuel filter suggested by the combined disclosures of Setzer and McKenzie. Nor do Appellants identify or persuasively explain any error in the Examiner's reasoning, and the Examiner's basis for the proposed modification of the applied prior art. We therefore sustain the Examiner's rejection of claims 1, 2, 4-6, and 8-16 under 35 U.S.C. § 103(a). Rejection of Claim 3 as obvious over Setzer, McKenzie, and Bagci Appellants rely on contentions that the Examiner erred in rejecting the base claim, independent claim 1, from which claim 3 depends. App. Br. 6. Because we are not persuaded of reversible error in the Examiner's rejection of claim 1, we also sustain the rejection of claim 3 under 35 U.S.C. § 103(a). DECISION The Examiner's rejections of claims 1-6 and 8-16 under 35 U.S.C. § 103(a) are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l). AFFIRMED 8 Copy with citationCopy as parenthetical citation