Ex Parte Chiga

Patent Trial and Appeal Board

Apr 14, 2016

12091950 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/091,950 04/29/2008 Antonio Chiga
33712 7590 04/18/2016
HAUPTMAN HAM, LLP (ITW)
2318 Mill Rd
Suite 1400
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21774 (713-1849) 7041
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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):
itw@ipfirm.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO CHI GA 1
Appeal2014-005105
Application 12/091,950
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Antonio Chiga ("Chiga") timely appeals under 35 U.S.C. § 134(a)
from the Final Rejection2 of claims 1-17, which are all of the pending
claims. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is listed as Filtertek S.A. (Appeal Brief,
filed 16 October 2013 ("Br."), 2.)
2 Office action mailed 20 May 2013 ("Final Rejection"; cited as "FR").
Appeal2014-005105
Application 12/091,950
OPfNION
A. Introduction 3
The subject matter on appeal relates to an annular filter in an annular
housing. The '950 Specification teaches that in a conventional filter
housing, a ring of plastic [a gasket] seals the top of the filter to the top of the
housing, and the bottom of the filter to the bottom of the housing. (Spec. 1,
11. 17-27.) In the invention, the filter is joined directly to the end walls.
(Id. at 2, 11. 2-5). The reduced number of housing parts (two instead of four)
is said to permit the filter and housing to be manufactured "in a single step
and in a corresponding mold since both weldings can be performed
simultaneously." (Id. at 11. 16-19.)
Claim 1 is representative of the dispositive issues and reads:
A filter, comprising:
an annular housing including
an opening; a top part and a bottom part connected to the
top part, wherein
the top and bottom parts have end walls, respectively, and
the opening extends through the annular housing along
an axis of the housing;
a filter element located in the housing and having end
faces which face and are directly joined to the end walls
of the top and bottom parts, respectively;
an inlet; and
an outlet which is separated from the inlet by the filter
element.
3 Application 12/091,950, Filter, especially fuel filter, filed 29 April 2008 as
the national phase of PCT/EP06/11248, filed 23 November 2006, claiming
the benefit of GERMANY 20 2005 018 435.7, filed 23 November 2005. We
refer to the '"950 Specification," which we cite as "Spec."
2
Appeal2014-005105
Application 12/091,950
(Claims App., Br. 19; some indentation, paragraphing, and emphasis added.)
An embodiment of the claimed invention is illustrated in Figures 1
and 2 of the Specification, which are reproduced below. Fig. 1 shows an
elevation cross section, while
Fig. 2 shows a plan view cross
section, both through the middle -1'1-
of the filter and housing. The
annular (ring-shaped) structure
of housing 1O[4J is apparent, as is
the hole passing through the
housing along the axis of the filter,
which is indicated by the central
dashed line in Fig. 1 and the
intersection of dashed lines in Fig. 2).
(Figs. 1 and 2 show elevation and plan cross sections, respectively}
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
3
Appeal2014-005105
Application 12/091,950
The Examiner maintains the following grounds of rejection5' 6 :
A. Claims 1, 7, 12, 15, and 1 7 stand rejected under
35 U.S.C. § 102(b) in view ofLee. 7
Al. Claims 2-6, 13, and 14 stand rejected under
35 U.S.C. § 103(a) in view of Lee.
A2. Claims 8-11 and 16 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Lee and Hedgepeth. 8
A3. Claim 14 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Lee and Terhune. 9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Chiga urges the Examiner erred in finding that Lee describes a filter
having an annular housing.
5 Examiner's Answer mailed 21November2013 ("Ans.").
6 Rejections under 35 U.S.C. § 112(1) (written description) and§ 112(2)
have been withdrawn. (Ans. 11.)
7 Wilbur W. Lee et al., Disposable filter unit, U.S. Patent No. 3,872,008
(1975).
8 Richard E. Hedgepeth and Theodore M. Bryson, Filter for liquid fuel, U.S.
Patent No. 6, 171,492 B 1 (2001 ).
9 Ralph Terhune and Gerald Branchcomb, Oil filter, U.S. Patent
No. 5.674.393 (1997).
4
Appeal2014-005105
Application 12/091,950
The Examiner finds
that Lee, in Figures 1-3,
reproduced to the right,
describes a filter
housing 10 having an
annular top 21, and an
annular bottom 22. (FR 5,
11. 9-11.)
{Lee, Figs. 1, 2, and 3, show elevation, elevation cross section, and plan
views of a filter housing, respectively}
5
Appeal2014-005105
Application 12/091,950
The Examiner has not directed our attention to any definition or
disclosure in the '950 Specification indicating that Chiga intends to give the
term "annular" a broader interpretation than the ordinary meaning, which is
"ring-shaped." As Chiga insists, the filter housing described by Lee is not
ring-shaped, because it lacks a central hole along the axis 35 (shown in
Fig. 2).
Independent claims 8 and 12 contain similar limitations regarding the
annular shape of the filter housing.
Because a limitation of the claimed subject matter has not been shown
to be described by Lee, we reverse the rejection for anticipation.
The Examiner makes no findings regarding further teachings of Lee or
of the remaining references that cure this flaw. We therefore reverse the
rejections for obviousness.
C. Order
It is ORDERED that the rejection of claims 1-17 is reversed.
REVERSED
6