Ex Parte Darnell et al

Board of Patent Appeals and Interferences

Jan 13, 2011

11189433 (B.P.A.I. Jan. 13, 2011)

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.
11/189,433 07/26/2005 Justin R. Darnell PARKP0172USA 9090
49458 7590 01/14/2011
DON W. BULSON (PARK)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE / 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
01/14/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN R. DARNELL and LESTER E. HOLMES
____________

Appeal 2010-000957
Application 11/189,433
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON,
and TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-8, 10-16, and 18-24. We have jurisdiction under
35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000957
Application 11/189,433

We REVERSE.
Appellants claim a flat panel filter 10 for inline connection between
inlet and outlet fluid flow ducts comprising a box-shape housing 40 having
at opposite axial ends fluid inlet and outlet openings, a filter 41 retained in
the housing, and a plurality of hook-like fingers 31 on the housing at one of
the openings and projecting axially from the peripheral edge at the one
opening, the hook-like fingers being arranged along three of the sides of the
peripheral edge "with the open portion of the hook-like fingers opening in
the same transaxial direction" (claim 1; figs. 1-4).
Representative claim 1 reads as follows:
1. A flat panel filter for inline connection between inlet and outlet
fluid flow ducts, comprising
a box-shape housing configured to form a section of an inline fluid
flow duct system, the housing having at opposite axial ends fluid inlet and
outlet openings, and a flow path between the fluid inlet and outlet openings,
the fluid inlet and outlet openings each being surrounded by a respective
generally rectangular peripheral edge of the housing with each peripheral
edge having four sides,

a filter retained in the housing in the flow path between the fluid inlet
and outlet openings for filtration of a fluid flowing therebetween, and

a plurality of hook-like fingers on the housing at one of the openings
of the housing, the hook-like fingers projecting axially from the peripheral
edge at said one opening and being configured to engage an inline fluid flow
duct to resist removal of the housing from such an inline fluid flow duct, and
the hook-like fingers being arranged along three of the sides of the
peripheral edge with the open portion of the hook-like fingers opening in the
same transaxial direction.

Under 35 U.S.C. § 103(a), the Examiner rejects:
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Appeal 2010-000957
Application 11/189,433

claims 1-4, 6, 10-16, 18, and 20 as unpatentable over Gillingham (US
5,820,646, issued Oct. 13, 1998) in view of Gomez (US 6,267,793 B1,
issued Jul. 31, 2001);
claim 5 as unpatentable over Gillingham, Gomez, and Spearman (US
5,376,270, issued Dec. 27, 1994) or Matkovich (US 4,798,676, issued Jan.
17, 1989) or Vokes (US 2,364,573, issued Dec. 5, 1944) or Stopyra (US
5,980,600, issued Nov. 9, 1999); and
claims 7, 8, 19, and 21-24 as unpatentable over Gillingham, Gomez,
and Coulonvaux (US 6,051,042, issued Apr. 18, 2000).
The pivotal issue in this appeal is whether the Examiner has
established a prima facie case of obviousness for the independent claim 1
limitation "the hook-like fingers being arranged . . . with the open portion of
the hook-like fingers opening in the same transaxial direction" and the
corresponding limitation of claim 20 which is the only other independent
claim on appeal.
With respect to this issue, the Examiner rejects the independent claims
based on the following findings of fact and concomitant obviousness
conclusion:
Gillingham also teaches the hook like fingers being arranged along all
sides of the peripheral edge but does not teach the open portion of the hook
like fingers opening in the same trans-axial direction. Gomez teaches a flat
panel filter being rectangular having hook like fingers (54) along the sides of
the peripheral edge with open portions of the hook like fingers opening in
the same trans-axial direction (fig. 2). It would have been obvious to one of
ordinary skill in the art at the time the invention was made to use a hook like
finger in the manner taught in Gomez because the substitution of one known
element for another, mainly the substitution of one type of connector for
another, would have yielded predictable results to one of ordinary skill in the
3
Appeal 2010-000957
Application 11/189,433

art at the time of the invention, KSR International Co. v. Teleflex Inc., 82
USPQ2d 1385 (2007).
(Ans. 4).

Appellants argue that, contrary to the Examiner's above quoted
finding, "the latches 54 of Gomez do not open in the same transaxial
direction" (App. Br. 10). According to Appellants, "[t]his is clearly evident
from Fig. 2 of Gomez [which shows that] [t]he latches 54 on the side of the
filter unit 28 closer to the viewer open to the right while those on the side
away from the viewer open to the left" (id.).
Appellants' argument is factually correct. As plainly shown in Figure
2 of Gomez, the latches 54 (which are respectively closer to and away from
the viewer) open in opposing directions rather than in the same transaxial
direction as claimed by Appellants. The Examiner's contrary finding is
erroneous and directly contradicted by Gomez. It follows that the
Examiner's above quoted conclusion of obviousness is likewise erroneous
since it is based on an incorrect finding of fact.
In rejecting certain dependent claims, the Examiner makes the
unembellished conclusion that it would have been obvious "to use the hooks
as taught by Coulonvaux with the filter of Gillingham and Gomez because
the hooks accommodate convenient locking, convenient unlocking, and
convenient manufacture" (Ans. 9). In this rejection, the Examiner does not
expressly rely upon Coulonvaux to supply the previously discussed
deficiency of Gomez. Nevertheless, in order to render the disposition of this
appeal clear and complete, it is appropriate to express our agreement with
Appellants (App. Br. 15) that the record before us fails to support any
implicit proposition by the Examiner that Coulonvaux would have suggested
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Appeal 2010-000957
Application 11/189,433

Appellants' independent claim requirement for hook-like fingers having
open portions which open in the same transaxial direction.
In this regard, we emphasize that, in Coulonvaux, the filter assembly
is cylindrical and the locking assembly 90 (which the Examiner
characterizes as containing hooks) is configured to operate by relative
rotational movement of the cylindrical cover 9 with respect to the cylindrical
body member 8 (col. 8, ll. 45-48; figs. 4-7). The Examiner has provided the
appeal record with no reasonably specific explanation of why and how the
cylindrical and rotational arrangements of Coulonvaux would have
suggested providing a box-shape housing with hook-like fingers having open
portions opening in the same transaxial direction as required by Appellants'
independent claims.
For the reasons expressed above, we cannot sustain any of the § 103
rejections advanced by the Examiner in this appeal.

The decision of the Examiner is reversed.

REVERSED

Ssl
WARREN A. SKLAR, ESQ.
RENNER, OTTO, BOISSELLE & SKLAR
1621 EUCLID AVE. - 19TH FLOOR
CLEVELAND OH 44115
5