Ex Parte Barratt

Patent Trial and Appeal Board

Apr 23, 2013

12708669 (P.T.A.B. Apr. 23, 2013)

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

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Application 12/708,669

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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
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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.,
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Application 12/708,669

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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).
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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.
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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

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