Ex Parte Brown et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613612655 (P.T.A.B. Dec. 29, 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. 13/612,655 09/12/2012 Erik P. Brown IL-12377 5856 24981 7590 01/03/2017 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 EXAMINER SHAO, PHILLIP Y LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER 1776 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): llnl-docket@llnl.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK P. BROWN, MARK A. MITCHELL, and RONALD A. BEAULIEU Appeal 2015-008162 Application 13/612,655 Technology Center 1700 Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and JENNIFER R. GUPTA, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 3 and 9. We have jurisdiction over appeal under 35 U.S.C. § 6(b). Appeal 2015-008162 Application 13/612,655 STATEMENT OF THE CASE Claims 3 and 9 of Appellants’ subject matter on appeal are set forth below: 3. An equipment component apparatus consisting of: an equipment component structure having a first unit and a second unit, and an intumescent paint or sealant on said equipment component structure, wherein the equipment component structure is an air filter and wherein said first unit is a fiberglass air filter element and said second unit is a housing and wherein said intumescent paint or sealant is located between said fiberglass air filter element and said housing. 9. An equipment component apparatus consisting of: an equipment component structure having a first unit and a second unit, intumescent paint or sealant means on said equipment component structure for sealing or preventing warpage or deformation or separation of an equipment component in a fire or at high temperatures, wherein the equipment component structure is an air filter means for filtering air and wherein said first unit is an air filter element means for filtering air and said second unit is a housing and wherein said intumescent paint or sealant means is located between said air filter element means for filtering air and said housing. The Examiner relies on the following prior art references as evidence of unpatentability: Hardesty et al. US 6,643,928 B2 Nov. 11, 2003 (hereafter “Hardesty”) 2 Appeal 2015-008162 Application 13/612,655 THE REJECTION Claims 3 and 9 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Hardesty. ANALYSIS Claim interpretation is in dispute in the present appeal. The Examiner’s position is there is no definition for the claims terms “air filter”, “fiberglass air filter element”, “air filter means”, and “air filter element means” present in the Specification.1 Ans. 6—7. The Examiner states that because Appellants do not define any of these terms (air filter, fiberglass air filter element, air filter means, and air filter element means), these terms are given the broadest reasonable interpretation. Id. The Examiner states that, given the broadest reasonable interpretation, an air filter, fiberglass air filter element, air filter means, or air filter element means, can contain any number of parts, such as the ones disclosed in Hardesty, as Hardesty teaches a device for filtering air (reducing emissions), therefore an air filter or air filter element of some kind. Id. In the Reply Brief, Appellants do not dispute the Examiner’s specific claim interpretation, other than to state that the term “consisting of’ precludes these elements.2 Reply Br. 2—10. Appellants’ reliance on the 1 When a claim recites means-plus-function limitations in accordance with 35 U.S.C. § 112, | 6, they are interpreted as the corresponding structures, materials, or acts described in the Specification and equivalents thereof. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). 2 But cf., Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32 (Fed. Cir. 2004) (holding that a bone repair kit “consisting of’ claimed chemicals was infringed by a bone repair kit including a spatula in addition to the claimed 3 Appeal 2015-008162 Application 13/612,655 meaning of the term “consisting of’ is not an adequate response to the Examiner’s claim interpretation. We find no limiting definitions in Appellants’ Specification as to what an air filter includes/excludes or as to what a “housing” includes/excludes, nor do Appellants direct us to any such disclosure. It is noteworthy that Appellants’ Specification, on page 6, discloses that the “intumescent material may be applied in a coating or at specific interfaces (with or without gaskets)”. The Specification also discloses: [t]he present invention has use in preventing leakage at material interfaces and providing fire resistance in filters, gas collectors, scrubbers, ductwork, demisters, and other equipment including units in high temperature systems or systems that may come into contact with flame environments. The gases could be radioactive, hazardous, or valuable gases. The fluids could contain radioactive, hazardous, or valuable particulate. The filters could be HEP A, clean room, sub- HEPA, or a process filters. This invention can be utilized in HEPA and non-HEPA filters, in ventilation/HVAC system, process gas system, and other systems that filter particulate in a fluid. Spec. 6. We agree with the Examiner that one of ordinary skill in the art would have reasonably appreciated that the unspecified process gas filters and “other systems” (id.) and/or the unspecified housings* * 3 would/could include the components disclosed in Hardesty, in support of the prima facie case. chemicals because the presence of the spatula was unrelated to the claimed invention). 3 Indeed, the only occurrence of the term “housing” in Appellants’ Specification, other than in the claims, appears to be Spec. 5 (“The water spray systems in HEPA filter housings used in nearly all DOE facilities . . 4 Appeal 2015-008162 Application 13/612,655 However, assuming, arguendo, that the term “consisting of’ precludes these “extra” Hardesty elements, use of the intumescent sealing element of Hardesty in any air filter/housing seal (such as that of the admitted prior art described at Spec. 2:9-12 in the Background section) would have beenprima facie obvious as a selection of a known material based upon its suitability for its intended use. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945). In view of the above, we introduce a new ground of rejection of claims 3 and 9 under 35 U.S.C. §§ 102(b)/103 as being anticipated by or obvious over Hardesty, pursuant to 37 C.F.R. § 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provide that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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)(v). 5 Appeal 2015-008162 Application 13/612,655 AFFIRMED NEW GROUND OF REJECTION (37 C.F.R. $ 41.50(b)) 6 Copy with citationCopy as parenthetical citation