Ex Parte BarrattDownload PDFPatent Trial and Appeal BoardApr 23, 201312708669 (P.T.A.B. Apr. 23, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/708,669 02/19/2010 Thomas R. BARRATT 20713-0012-C1 4986 65885 7590 04/23/2013 MCNEES WALLACE & NURICK LLC 100 PINE STREET P.O. BOX 1166 HARRISBURG, PA 17108-1166 EXAMINER JONES, CHRISTOPHER P ART UNIT PAPER NUMBER 1776 MAIL DATE DELIVERY MODE 04/23/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS R. BARRATT ____________ Appeal 2012-001194 Application 12/708,669 Technology Center 1700 ____________ Before RICHARD TORCZON, CATHERINE Q. TIMM, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001944 Application 12/708,669 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-11 and 15-22. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the claimed subject matter: 1. A lubricant coalescing element for use in a gas compression system, the lubricant coalescing element comprising: a substantially cylindrical outer screen having a center axis; at least one filter positioned inside the outer screen and being coaxial with the outer screen; and a drainage system in contact with the at least one filter to drain lubricant out of the at least one filter in a direction perpendicular to the center axis and to provide a flow path for the lubricant to the outer screen. The Examiner maintains the following rejections: 1) Claims 1-11 under 35 U.S.C. § 102(b) as being anticipated by Pall (US 4,050,237 issued Sept. 27, 1977); and 2) Claims 15-22 under 35 U.S.C. § 103(a) as unpatentable over Barratt (US 2005/0022551A1 published Feb. 3, 2005) in view of Pall. ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s finding that the subject matter of Appellant’s Appeal 2012-001944 Application 12/708,669 3 claims 1-11 is anticipated by Pall. We likewise find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claims 15-22 is unpatentable over the prior art as applied. Accordingly, we sustain both of the Examiner’s rejections on appeal substantially for the reasons set forth in the Answer. We provide the following for emphasis only. It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. The main issue on appeal for claim 1 (as well as for independent claim 15) turns on whether the language “a drainage system in contact with the at least one filter to drain lubricant out of the at least one filter in a direction perpendicular to the center axis and to provide a flow path for the lubricant to the outer screen” encompasses the wire mesh 7 with or without stripper (ST) of Pall. We do not find Appellant’s argument that these elements do not function to drain or remove oil from the coalescer filter C of Pall (Br. 6) persuasive. Claim 1 is directed to an apparatus. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends on the claimed structure, not on the use or purpose of that structure, Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., Appeal 2012-001944 Application 12/708,669 4 289 F.3d 801, 809 (Fed. Cir. 2002), or the function or result of that structure. In re Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1949). If the prior art structure possesses all the claimed characteristics including the capability of performing the claimed function, then there is a prima facie case of unpatentability. In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971). Appellant’s opinion that filter 7 and stripper ST cannot function to drain lubricant from filter C of Pall in the recited direction falls short of establishing reversible error by persuasive argument or objective evidence, especially since Pall is directed to a demister assembly, including coalescer C, designed to remove oil from gases, similar to Appellant’s claimed lubricant coalescing element. Appellant’s argument that the demister of Pall cannot be turned on its side to a horizontal orientation (Br. 8) is not persuasive, especially since Appellant’s Specification states that the inventive separator arrangement may be arranged horizontally or vertically (Spec. para. [0025]). Appellant’s argument that gravity would cause the oil to drain if Pall’s demister were turned on its side, not the mesh 7 or stripper ST (Br. 9) is unavailing, as claim 1 also does not preclude the use of gravity to assist in the drainage of the oil. While the Examiner has set forth a broad interpretation of the claim language (Ans. 4-6, 11, 12), Appellant has not pointed to any definitions in the Specification or otherwise clearly explained why the Examiner’s interpretation is unreasonable. Notably, Appellant has not provided any evidence, or any persuasive line of technical reasoning, explaining why the Examiner’s broadest reasonable interpretation is in error (see generally Br.; no Reply Br. has been filed). Appeal 2012-001944 Application 12/708,669 5 Furthermore, Pall Figure 1 (detail, right) shows oil exiting to the sump both in parallel and perpendicularly to the central axis (Ans. 5, 11). Accordingly, the drainage system of Pall explicitly performs some perpendicular flow. Moreover, Pall teaches that a person having ordinary skill in the art would know that the configuration of the passage is not critical as long the passage diameters are small enough to coalesce droplets. (Pall 2:63-3:7.) Pall's illustration of oil draining perpendicularly and in parallel is consistent with this teaching. Accordingly, to a person having ordinary skill in the art, draining lubricant along either axis (or both) was a known solution. With respect to the separately argued dependent claims, a preponderance of the evidence also supports the Examiner’s position that the lubricant coalescing device of Pall encompasses the language of these claims (Ans. 12, 13). Furthermore, Appellant has not shown any error in the Examiner’s position that “the capillarity of aluminum wire mesh screen 7 would necessarily be capable of reducing surface tension at the point of contact” (Ans. 13; Br. generally). Nor has Appellant shown any error in the Examiner’s reasonable interpretation of the term “positioned opposite one another” as recited in claim 11 (id.). With respect to the § 103 rejection of claims 15-22 based on Barratt and Pall, Appellant relies upon essentially the same arguments regarding Pall as applied to claims 1-11 (Br. 13-17). Accordingly, we sustain both of the rejections on appeal. ORDER The rejection of claims 1-11 under 35 U.S.C. § 102(b) is affirmed. Appeal 2012-001944 Application 12/708,669 6 The rejection of claims 15-22 under 35 U.S.C. § 103(a) are affirmed. 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). AFFIRMED bar Copy with citationCopy as parenthetical citation