Ex Parte BeardDownload PDFPatent Trial and Appeal BoardDec 19, 201612962756 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 12/962,756 12/08/2010 John Beard 507902 1508 53609 7590 12/21/2016 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER BREWSTER, HAYDEN R ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN BEARD1 Appeal 2015-006787 Application 12/962,756 Technology Center 1700 Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and LILAN REN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 2, 4—8, 13—18, and 21 as unpatentable over Hudgens (US 5,772,873, issued June 30, 1998) in view of Kelly (US 2004/0091654 Al, published May 13, 2004 ). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Baldwin Filters, Inc. is identified as the real party in interest. App. Br. 2. Appeal 2015-006787 Application 12/962,756 Appellant claims a filter 10 comprising a generally cylindrical housing 12, a filter element 14 having a ring or cylinder of filter media 50, the filter element including an open end cap 42 having an outlet, and a dissolvable seal 26 disposed within a chamber 20 containing an additive wherein the dissolvable seal is positioned on an axially interior surface of the open end cap over the outlet thereof (independent claims 2 and 16, Figs. 1-3). A copy of representative claim 2, taken from the Claims Appendix of the Appeal Brief, appears below. 2. A filter, comprising: a generally cylindrical housing having a bottom and a sidewall extending upwardly from the bottom to define an opening, the housing including a cover arrangement positioned in the opening, the cover arrangement including a base plate and a lid, the lid fixedly connected to the sidewall of the housing, the base plate positioned within an interior space of the housing axially below the lid, wherein the base plate includes a central outlet and a plurality of inlets circumscribing the outlet; a seal carried by the lid; the seal configured for axial sealing; a filter element having a ring of filter media and defining a flow path through the filter media and a central passage extending through the ring of filter media, the filter element including an open end cap closing a first axial face of the filter media and a closed end cap closing a second axial face of the filter media, opposite the first axial face, the open end cap including an outlet with a center lying on an axis that extends through a center of the outlet of the base plate; a dissolvable seal positioned to close the flow path through the media; wherein a radially inner-most circumferential surface of the filter element between the closed end cap and the open end cap, an axially interior surface of the open end cap, and an axially interior surface of the closed end cap define an additive 2 Appeal 2015-006787 Application 12/962,756 chamber carrying an additive, the dissolvable seal disposed within the additive chamber on the axially interior surface of the open end cap over the outlet of the open end cap. Appellant presents arguments specifically directed to the independent claims only (App. Br. 5—9). Therefore, the dependent claims will stand or fall with their parent independent claims. We sustain the Examiner’s rejection for the reasons expressed in the Final Action, the Answer, and below. In rejecting the independent claims, the Examiner finds that Hudgens discloses a filter comprising an open end cap with an outlet and a chamber containing an additive enclosed in a dissolvable film or seal enclosure for controlling release of the additive but does not disclose a dissolvable seal over the outlet of the open end cap as claimed (Final Action 3—5). Concerning this deficiency, the Examiner finds that Kelly discloses a filter comprising an additive chamber and a dissolvable seal within the additive chamber on an axially interior surface of an end cap over the end cap outlet for controlling release of the additive {id. at 6—7). The Examiner concludes that it would have been obvious to provide Hudgens’ filter with a dissolvable seal on an axially interior surface of the end cap over the end cap outlet as taught by Kelly in order to obtain an alternate or additional mechanism for controlling release of the additive {id. at 7—8). Appellant argues that the Examiner’s articulated reason for combining Hudgens and Kelly lacks rational underpinnings (App. Br. 5). More specifically, Appellant argues: Because Hudgens already teaches “how to slowly release the SCA [i.e., supplemental coolant additive] into the coolant,” it would not have been obvious to one of ordinary skill in the art at the time of the invention to look to Kelly for, “further 3 Appeal 2015-006787 Application 12/962,756 control of release of coolant additive” because Hudgens has already solved its slow release problem in the use of its osmotic film “to slowly release the SC A into the coolant.” {Id. at 6). In support of this argument, Appellant cites two non-precedential opinions of the Board {id. at 5—6). Appellant’s argument lacks persuasive merit. The Examiner’s conclusion that it would have been obvious to provide Hudgens’ end cap outlet with a dissolvable seal as taught by Kelly is supported by articulated reasoning with rational underpinning. As rationally explained by the Examiner, an artisan would have made this provision in order to obtain an alternate or additional mechanism for controlling additive release as desired by Hudgens via a prior art mechanism having an established release-control function as evidenced by Kelly. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (in assessing the obviousness of claims to a combination of prior art elements, the question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions”). For the reasons fully detailed by the Examiner {see, e.g., Ans. 16 (last |) and 1 bridging 22—23), the proposed combination of Hudgens and Kelly is not undermined by Hudgens’ teaching of an osmotic film for controlling additive release as urged by Appellant. In light of the undisputed findings of the Examiner, we perceive little sense in Appellant’s contention that an artisan would not look to Kelly “because Hudgens has already solved its slow release problem” (App. Br. 6). The erroneous premise of this contention is that an artisan is an automaton. See KSR, 550 U.S. at 420 (“The idea that a designer hoping to make an adjustable electronic pedal would ignore Asano because Asano was designed to solve the constant ratio 4 Appeal 2015-006787 Application 12/962,756 problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). As Appellant acknowledges, the prior Board opinions cited in support of Appellant’s argument are non-precedential (App. Br. 5—6). Because they are non-precedential, we need not and will not discuss these opinions in our disposition of this appeal. The decision of the Examiner is affirmed. 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 5 Copy with citationCopy as parenthetical citation