Ex parte Beier et al.

Board of Patent Appeals and Interferences

Jul 19, 1999

08146901 (B.P.A.I. Jul. 19, 1999)

Application for patent filed October 20, 1993. 1
Amendment of August 22, 1994 (Paper No. 7).2
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte SCOTT B. BEIER
and REX A. ADAMS
______________
Appeal No. 96-2178
Application 08/146,9011
_______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 1 through 21.2
We have carefully considered the record before us, and based thereon, find that we
cannot sustain any of the grounds of rejection of claims 1 through 7 and 12 through 17 under 35 U.S.C.
Appeal No. 96-2178
Application 08/146,901
Grant and other references relied on by the examiner are listed at page 2 of the answer. We refer to3
these references in our opinion by the name associated therewith by the examiner.
We take the statement in the answer (page 4) that “[c]laims 8 through 11 and 18 through 21 are4
rejected under 35 USC 103” as “set forth in the prior Office action paper number 8” to refer to the
three separate grounds of rejection set forth on pages 3-4 of the final rejection of November 29, 1994.
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§ 102(b) as clearly anticipated by Grant, or of the grounds of rejection under 35 U.S.C § 103: claim3
18 through 20 as unpatentable over Grant; claims 8 through 10 as unpatentable over Grant in view of
Decker; and claims 11 and 21 as unpatentable over Kagawa.4
It is well settled that anticipation under § 102 is a question of fact, based on the limitations in the
claims, and that in order to make out a prima facie case of anticipation, the examiner must point out
where each and every element of the claimed invention, arranged as required by the claims, is found in a
single prior art reference, either expressly or under the principles of inherency. See generally In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457, 221 USPQ 481, 485 (Fed.
Cir. 1984). It is equally well settled that the examiner may satisfy his burden of establishing a prima
facie case of obviousness under § 103 by showing some objective teachings or suggestions in the prior
art taken as a whole or that knowledge generally available to one of ordinary skill in the art would have
led that person to combine the relevant teachings of the applied prior art in the proposed manner to
arrive at the claimed invention, including each and every limitation of the claims, without recourse to the
teachings in appellants’ disclosure. See generally, In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The examiner has failed to make out a prima facie case
under either statutory provision.
We begin our consideration of the issues in this appeal by determining the invention
encompassed by independent claims 1, 11, 12 and 14. See generally, Gechter v. Davidson, 116
F.3d 1454, 1457, 1460 & n.3, 43 USPQ2d 1030, 1032, 1035 & n.3 (Fed. Cir. 1997). We find
that claim 1 requires that the “second layer” has “a length and width equal to that of the first layer;”
Appeal No. 96-2178
Application 08/146,901
We observe that Grant teaches that the preparation of “filtration module 62” involves the preparation5
of “first flexible sheet-terminal elements assembly 44” as shown in Fig. 1, wherein “the first flexible
sheet 10 is laminated between terminal elements at each edge section 12 and 14” and “[p]referably, the
terminal elements 20, 24, 32 and 38 are disposed so as not to obstruct the intermediate section 16 of
the flexible sheet 10” (col. 4, lines 24-30). Indeed, Grant discloses that “first flexible sheet 10” has “first
and second edge sections 12 and 14” and an “intermediate” or “interior section 16,” wherein the “first
flexible sheet” is a “thin, lightweight, inert material” that can be, inter alia, “Mylar which most
preferably is no more than 0.002 inches thick” (col. 1, line 60, to col. 2, line 3). A “plurality of slits 56
are cut in the interior section 16 of the first flexible sheet-terminal elements assembly 44,” which slits
define “an elongated ribbon element 58” (col. 6, lines 1-9).
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claim 12 specifies that the sole “layer” has “a plurality of spaced apart openings extending through less
than the entire thickness of the layer;” and claim 14 requires that the sole “layer” has
“a plurality of spaced apart openings extending less than the entire thickness of the layer” and the “walls
separating said openings” have “an upper surface and side wall surfaces formed at an angle relative to
the upper surface” (emphasis supplied). We further find that claim 11 specifies a method wherein “a
first layer” (1) has “slits” cut “completely through the thickness” thereof, (2) is then stretched to “expand
openings formed by the slits,” (3) is then fixed in the “expanded condition,” and (4) is then placed in
“abutting contact with a second layer.”
In comparing the claimed invention as encompassed by independent claims 1, 12 and 14 with
Grant in the manner applied by the examiner under § 102(b) and § 103, we agree with appellants
(brief, pages 5-11 and 14-15) that the examiner has failed to make out a prima facie case of
anticipation and of obviousness. We particularly find that Grant discloses a “filtration module 62” in
Grant Figs. 3 and 4 in which the “terminal elements 20, 24, 32 and 38 are not disposed in overlying
or underlying relationship to the interior section 16, and are thus positioned so as not to obstruct
the interior section 16 and the ribbon elements 58” (col. 7, line 65, to col. 8, line 3 ; emphasis5
supplied). The examiner merely points to Figs. 4, 8 and 9 without explanation why these disclosures
meet all of the claim limitations (answer, pages 3 and 5).
Accordingly, based on this record, we find that the fluid filters taught by Grant do not have any
of the elements specified in claims 1, 12 and 14 which we identified above, and thus, the reference does
not describe a fluid filter which contains all of the required elements arranged as specified in claims 1
Appeal No. 96-2178
Application 08/146,901
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through 7 and 12 through 17 within the meaning of § 102(b). Furthermore, we find no teachings in
Grant, taken alone or combined with Decker, which would have provided one of ordinary skill in the
art with both the suggestion and the reasonable expectation of success of modifying the “filtration
module 62” in order to arrive at the claimed fluid filter as a whole encompassed by claims 8 through 10
and used in the method of claims 18 through 20. Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531.
Indeed, with respect to Decker, the examiner has not explained on this record why the combination of
“sloped walls” of the tube filters of Decker and the “ribbon elements 58” of the “filtration module 62”
of Grant would have resulted in the claimed fluid filters. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Turning now to claims 11 and 21, we agree with appellants (brief, pages 11-14) that Kagawa
does not disclose the four process steps specified in claim 11 as we construed this claim above.
Kagawa teaches a process wherein a specified film is adhered to a fabric by hot pressing, which sole
step causes the film to shrink, as well as simultaneously makes the film microporous (e.g., abstract).
The examiner has not provided on this record any evidence or scientific explanation explaining why one
of ordinary skill in this art would have been motivated to modify the process of Kagawa in order to
arrive at the claimed invention. Indeed, even if the examiner had established that one of ordinary skill in
this art would have recognizd the alleged equivalence of the “formation of the opening being by cutting”
and micropore formation by heat treatment (final rejection, Paper No. 8, page 3) there still remains
several other differences between the claimed and prior art processes which have not been addressed.
We further fail to find on this record any evidence or scientific explanation establishing that the resulting
filter of the Kagawa process is the same or substantially similar to the filter prepared by the process of
claim 11 and claimed in claim 21. Compare In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977).
Accordingly, it is inescapable that the only description of and the only direction to appellants’
claimed invention on the record before us is supplied by appellants’ own specification.
Appeal No. 96-2178
Application 08/146,901
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The examiner’s decision is reversed.
Reversed
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 96-2178
Application 08/146,901
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