Ex Parte Clayson

Patent Trial and Appeal Board

May 28, 2015

13769010 (P.T.A.B. May. 28, 2015)

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.
13/769,010 02/15/2013 Andrew Clayson 110-0004 4339
89606 7590 05/29/2015
Sean P. O'Hanlon, Esq., PLLC
732 Fords Landing Way
Alexandria, VA 22314
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
05/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW CLAYSON
____________

Appeal 2015-004379
Application 13/769,010
1

Technology Center 1700
___________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 52 through 90, and 92 through 102 under 35
U.S.C. § 103(a) as being unpatentable over the basic combination of
Cunningham (US 3,685,433, issued Aug. 22, 1972) with Andrews
(US 2,332,188, issued Oct. 19, 1943)
2
. Claim 97 was also rejected as
indefinite (Ans. 2).

1
The Real Party in Interest is stated to be Tayflo Filtration, Ltd. (App. Br.
3).
2
The Examiner additionally applied Savage (US 6,095,037 issued Aug. 1,
2000 ) to claims 59 and 63 (Final Action 20; Ans. 17-18); Humbert (US
2,902,161 issued Sep. 1, 1959) or Rigney (US 6,083,392 issued Jul. 4, 2000)
to claim 79 (Final Action 22, 23; Ans. 19); Van Vleet (US 3,616,907 issued
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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

Claim 52 is illustrative of the subject matter on appeal (emphasis
added):
52. A filter apparatus, comprising:
a filter;
a cup for receiving matter from a liquid being filtered, in
use, wherein said filter and said cup form a single cup and filter
body, said cup and filter body comprising at least one annular
cup;3
an inlet located above said filter when the apparatus is in a
use position for delivery of unfiltered liquid to said filter and said
cup;
an outlet for removal of filtered liquid from said filter; and
a filter support comprising a substantially rigid body having
an inner surface which at least in part closely fits with a discharge
side surface of the filter, the filter support comprising at least one
annular portion;
wherein the filter support provides means to transport
filtered liquid from a discharge side of said filter to said outlet;
and
wherein, in use, at least one seal is formed between an
upper end of said filter and an upper end of said filter support by
said liquid, and below said at least one seal the transport means
guides filtered liquid which has passed through said filter to said
outlet.

Nov. 2, 1971) to claims 83 and 84 (Final Action 24); and Kampf (US
4,904,523 issued Feb. 27, 1990) to claim 94 (Final Action 25); and Rigney
to claims 99 to 102 (Final Action 27).
3
The presence of an annular cup requires a double V or W-shaped cross-
section (see, e.g., claim 76; Spec. 7:23-30); thus, it appears dependent claim
70 is inconsistent with claim 52.
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Independent claim 87 recites a cooking apparatus having a cooking
liquid filter apparatus corresponding to the filter apparatus of claim 52, and
independent claim 99 recites a cooking liquid filter apparatus similar to
claim 52and 87 but recites “a plurality of channels” on a surface of the filter
support as the transport means (Claims App’x).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied prior art. We sustain all
of the Examiner’s § 103 rejections essentially for the reasons set out by the
Examiner in the Answer. We also summarily affirm the Examiner’s 112
rejection of claim 97 as indefinite, as Appellant has not provided any
response to that rejection
4
.
We add the following primarily for emphasis.
It is proper in evaluating references to take into account not only the
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826 (CCPA 1968); see also In re Keller, 642 F.2d 413, 425–26
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . Rather, the test is what the combined teachings of the

4
The Examiner did withdraw the rejection of numerous claims under 35
USC 112, fourth paragraph (Ans. 25).
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references would have suggested to those of ordinary skill in the art.”); In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”), and
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.”).
Appellant’s arguments that Cunningham and Andrews, as well as
other applied references such as Rigney, are non-analogous and cannot
properly be combined are not persuasive (Br. 11, 22). As pointed out by the
Examiner, the field of endeavor of the invention, as well as that of the
applied references, is liquid-solid filters (e.g., Ans. 37).
Appellant’s argument that it is not understood how Andrews depicts
an annular cup as recited (Br. 14) is unavailing. The Examiner reasonably
found that Andrews depicts a filter with multiple annular cups similar to the
annular cups formed by Appellant. Notably, Andrews states the filter screen
8 has concentric channels 10 formed by folding or pleating conical filter
screen 8 (Andrews p. 1, col. 2, ll. 30-35). Appellant likewise folds or pleats
a conical filter screen 100 to obtain one or more annular cups/concentric
channels (e.g., compare Spec. Figs. 3, 4, 12 with Andrews Fig. 1)
Appellant further contends that none of the applied prior art explicitly
teaches or suggests “in use, at least one seal” as recited in the claims (Br.
16). This argument is unavailing for essentially the reasons set out by the
Examiner (e.g., Ans. 26, 27, 30). Furthermore, it is well established that
when there is a reason to conclude that the structure of the prior art is
capable of performing the claimed function, the burden shifts to the
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applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See, e.g., In re Schreiber,128
F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s de facto mere allegations that
Cunningham does not describe a comparable seal to the claimed seal (Br. 16,
17) are not sufficient to refute the Examiner’s reasonable findings that the
filter and oil being filtered are comparable to Appellant’s filter and oil being
filtered as claimed and disclosed, and thus the structure of Cunningham is
capable of forming a seal “in use” as recited in claim 52 (as well as claims
87 and 90) (e.g., Ans. 6, 26, 27). Notably, Appellant has not identified any
conditions necessary to produce their seal that are not taught or suggested in
the applied prior art, and has not provided any evidence or persuasive
technical reasoning to refute the Examiner’s determination that
Cunningham’s filter and filter support are likewise capable of forming a
seal.
Appellant also does not provide any persuasive technical reasoning or
credible evidence to refute the Examiner’s determination that it would have
been prima facie obvious to use a known filter configuration as taught in
Andrews for the known predictable advantage of increased filter area, for the
shape of the cooking oil filter and its support shell as exemplified in
Cunningham. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–418 (2007)
(The predictable use of prior art elements or steps according to their
established function is ordinarily obvious; further, the “inferences and
creative steps that a person of ordinary skill in the art would employ” can be
taken into account). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421.
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Thus, Appellant’s arguments that the applied prior art fails to render
obvious the claimed invention are unavailing, and a preponderance of the
evidence supports the Examiner’s reasonable position that it would have
been prima facie obvious to use a filter comprising at least one annular cup
in Cunningham as suggested by Andrews.
With respect to all the separately argued claims, we determine that a
preponderance of the evidence supports the Examiner’s position (Ans. 34–
44; Br. 18–24).
For the foregoing reasons and for those reasons set forth in the
Answer, giving due weight to Appellant’s arguments, we determine that the
preponderance of evidence weighs in favor of obviousness for the subject
matter of the claims on appeal,.
Accordingly, all of the Examiner’s rejections under 35 U.S.C. § 103
are affirmed.
DECISION
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
mat