Ex Parte BeardDownload PDFPatent Trial and Appeal BoardFeb 23, 201713040758 (P.T.A.B. Feb. 23, 2017) 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. 13/040,758 03/04/2011 John H. Beard 507901 3575 53609 7590 02/27/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER KURTZ, BENJAMIN M ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 02/27/2017 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 M. BEARD Appeal 2016-001755 Application 13/040,758 Technology Center 1700 Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and BRIAN D. RANGE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-001755 Application 13/040,758 Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1—4, 8—11, 15, and 21—30 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Stoehr et al. (US 2005/0274664 Al, pub. Dec. 15, 2005 (“Stoehr”)) in view of Gottwarld-Grill et al. (US 2002/0020662 Al, pub. Feb. 21, 2002 (“Gottwarld-Grill”)), Clausen et al. (US 7,147,110 B2, iss. Dec. 12, 2006 (“Claussen 110”)), and Clausen et al. (US 2003/0132158 Al, pub. July 17, 2003 (“Claussen 158”)). App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention “relates to an apparatus and method for filtering impurities from liquids, such as lubricating oil, hydraulic fluid and the like.” Specification filed Mar. 4, 2011 (“Spec.”) 11. More specifically, the invention is concerned with filters of the type wherein a cylindrical filter media surrounds a hollow center volume and fluid is filtered by passing from the exterior of the media to an interior of the media. Id. 1 5. To resist inward collapse of the filter media in response to a pressure differential across the media, a tube is positioned in the interior of the media to provide structural support. See id. ]Hf 5—7. According to the Specification, filters of this type were known in the art at the time of the invention as being designed for a specified service life, after which they were discarded and replaced with a new filter. Id. 12. Appellant’s arguments in support of patentability of all appealed claims are based on limitations common to claims 1 and 9, the only independent claims on appeal. See App. Br. 6—13. Representative claim 1 is reproduced below: 1 Appellant identifies the real party in interest as Baldwin Filters, Inc. Appeal Brief filed June 9, 2015 (“App. Br.”), 2. 2 Final Office Action mailed Nov. 12, 2014 (“Final Act.”). 2 Appeal 2016-001755 Application 13/040,758 1. A fluid filter assembly comprising: a tubular ring of filter media defining an interior space and having first and second ends, wherein a first end cap is affixed to the first end, and a second end cap is affixed to the second end; a center tube, the center tube having an annular wall defining an internal axial flow passage and a flow axis extending longitudinally through the center tube, a flow inlet through the annular wall, and a first opening at an end of the center tube, wherein fluid is adapted to flow radially through the tubular ring of filter media, through the flow inlet, and along the internal axial flow passage, the center tube permanently secured within the interior space of the filter media axially between the first and second end caps, and wherein the center tube is axially interposed between the first and second end caps such that it does not extend axially beyond either of the first or second end caps', at least one fin integrally formed and unitary with the center tube and projecting radially outwardly from the annular wall, each of said at least one fin covering and in contact with the annular wall over an angular span about the axial flow passage of at least 30 degrees such that the at least one fin has an outer peripheral surface radially supporting an inner periphery of the tubular ring of filter media, wherein the at least one fin includes at least one ramped portion and wherein one of the first and second end caps is a closed end cap, and wherein the other one of the first and second end caps is an open end cap; and wherein the center tube includes at least one end cap connection wall connected to the annular wall, extending radially outward from the annular wall and disposed at an end of the center tube, the end cap connection wall extending integrally from the annular wall to contact the first or second end cap along a contact area, the first or second end cap projecting radially inward from the contact area. App. Br., Claims App’x (emphases added). The Examiner finds Stoehr discloses a fluid filter assembly as claimed, with the exception that Stoehr does not describe its center tube as having the following features: (1) “permanently secured within the interior space of the filter media . . . 3 Appeal 2016-001755 Application 13/040,758 such that it does not extend axially beyond either of the first or second end caps”; and (2) having a fin including “at least one ramped portion” (claims 1 and 9). Final Act. 2—3. The Examiner finds each of Gottwarld-Grill, Clausen 110, and Clausen 158 discloses a fluid filter assembly comprising a tubular ring of filter media having first and second end caps affixed thereto, and a center tube. Id. at 3—5. With respect to above-listed feature (1), the Examiner finds Gottwarld-Grill explicitly describes the center tube as being “permanently secured within the interior space of the filter media[] axially between the first and second end caps . . . such that it does not extend axially beyond either of the first or second end caps.” Id. at 3. The Examiner finds one of ordinary skill in the art would have been motivated to permanently secure Stoehr’s center tube (support dome 10) to the filter media in the manner used by Gottwarld-Grill, based on Gottwarld-Grill’s teaching that this arrangement “provides an elegant solution to the sealing problem between the end disks and the support tube[, and] . . . creates a stable unit between end disk and center tube” (Gottwarld-Grill 113). Final Act. 3^4. The Examiner finds Gottwarld-GrilFs support tube has a grid configuration, whereas Stoehr’s center tube has fins extending radially therefrom. Advisory Action mailed Jan. 27, 2015 (“Advisory Act.”), 3. The Examiner finds, therefore, that one of ordinary skill in the art would have looked to Clausen 110 to ascertain a way of securing and sealing, within a cylindrical filter media, a center tube having radially extending fins. Id. The Examiner finds Clausen 110 discloses a center tube with fins, similarly shaped to the center tube of Stoehr, and that “the center tube [is] permanently secured within the interior space of the filter medial axially between the first and second end caps . . . such that it does not extend axially beyond either of the first or second end caps and wherein the center tube includes 4 Appeal 2016-001755 Application 13/040,758 at least one end cap connection wall (80, 84) connected to the annular wall.” Final Act. 4. The Examiner finds one of ordinary skill in the art would have understood that Stoehr’s center tube could be “secured to the end caps via potting [compound] to form an adequate seal between the end caps and the center tube” as described in Clausen 110 (5:55—60) to achieve “an elegant solution to the sealing problem between the end disks and the support tube[, and] . . . create[] a stable unit between end disk and center tube” (Gottwarld-Grill 113). Final Act. 4. With respect to above-listed feature (2), the Examiner finds the center tube of Clausen 158 includes a fin that has a ramped portion and an outer peripheral surface that radially supports an inner periphery of the filter media. Id. at 5. The Examiner finds one of ordinary skill in the art would have utilized Clausen 158’s fin structure for the center tube of Stoehr based on Clausen 158’s teaching that this structure “facilitate [s] the movement of fuel along the length of the support core, as well as provide [s] uniform support along the inside surface of the filter” (Clausen 158152). Final Act. 5. Appellant requests reversal of the Examiner’s rejections on the basis that: (1) the Examiner’s proposed modification of Stoehr to permanently fix the center tube to the end caps would render Stoehr’s filter assembly unsatisfactory for its intended purpose (App. Br. 6—8); and (2) the Examiner’s reasons for modifying Stoehr are not supported by the evidence of record, but are based on improper hindsight reasoning {id. at 8—13). Appellant’s arguments are not persuasive for the reasons explained in the Response to Argument section of the Examiner’s Answer (mailed Sept. 24, 2015 (“Ans.”)), 10—14. We add the following to address the arguments in the Reply Brief (filed Nov. 23, 2015 (“Reply Br.”)). 5 Appeal 2016-001755 Application 13/040,758 Appellant asserts that permanently fixing Stoehr’s center tube (support dome 10) to the end caps would render Stoehr’s filter assembly unsatisfactory for its intended purpose, because Stoehr’s filter assembly requires a reusable center tube, and is designed so that only filter element 6 requires replacement in order to keep cost and complexity of the replaceable element as low as possible. Reply Br. 7 (citing Stoehr || 16, 33—34). Having reviewed Stoehr’s disclosure in its entirety, we agree with the Examiner that Appellant’s argument is not supported by the reference. See Ans. 10—11. Stoehr describes a filter assembly comprising a settling chamber for collected dirt particles that is easily accessible for cleaning and, therefore, preferably removable from the filter. Stoehr || 16—17. Stoehr discloses, “[f]or example,” that the settling chamber could be cleaned “during a so-called filter change, when a replaceable filter element is changed, or replaced.” Id. 116. We do not agree with Appellant that the ordinary artisan would have understood Stoehr’s explicit description of filter element 6 as being replaceable as implying that all other components, including support dome 10, must be reusable. Nor do we find any indication in paragraphs 33—34, or any other disclosure in Stoehr, that the disclosed filter assembly is limited to one in which only filter element 6 is replaceable. Given Gottwarld-Grill’s disclosure of the advantages provided by permanently securing a support tube within the interior space of the filter media (see Gottwarld-Grill 113), the Examiner had a reasonable basis for finding one of ordinary skill would have modified Stoehr’s assembly so as to use a filter assembly wherein the center tube is secured permanently to the filter media in the manner recited in independent claims 1 and 9. Appellant argues the Examiner relied on improper hindsight reasoning in finding one of ordinary skill in the art would have modified Stoehr’s assembly to 6 Appeal 2016-001755 Application 13/040,758 improve stability, contending Stoehr does not disclose any stability problems. See Reply Br. 9—11. Appellant further argues modification of Stoehr’s filter assembly as proposed by the Examiner would reduce the available filter media and filtration capabilities of Stoehr. Id. at 8—9. Appellant’s arguments are not convincing because they are not supported by persuasive evidence. Specifically, Appellant relies solely on attorney argument, which is not sufficient to refute the Examiner’s finding (see Ans. 12—14) that one of ordinary skill in the art would have recognized that the structures of Gottwarld- Grill and Clausen 110 are merely functional equivalents of the filter assembly described in Stoehr, and, therefore, would have possessed the requisite skills to modify Stoehr so as to use a filter assembly wherein the center tube is secured permanently to the filter media in the manner recited in independent claims 1 and 9. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot take the place of evidence); In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (noting that an Examiner's statement is accepted as true when an appellant fails to present contradicting evidence). In sum, for the reasons stated above, and in the Final Office Action, the Advisory Action, and the Examiner’s Answer, we affirm the Examiner’s decision to reject claims 1—4, 8—11, 15, and 21—30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation