Ex Parte Brown et al

Patent Trial and Appeal Board

Dec 29, 2016

13612655 (P.T.A.B. Dec. 29, 2016)

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”)
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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
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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 . .
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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).
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Appeal 2015-008162
Application 13/612,655
AFFIRMED
NEW GROUND OF REJECTION (37 C.F.R. $ 41.50(b))
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