13261693 (P.T.A.B. Jan. 12, 2017)

Ex Parte Eberle et al

Patent Trial and Appeal BoardJan 12, 2017

13261693 (P.T.A.B. Jan. 12, 2017)

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. 13/261,693 07/15/2013 Richard Eberle 2015-60614 7288 513 7590 01/17/2017 WENDEROTH, LIND & PONACK, L.L.P. 1030 15th Street, N.W., Suite 400 East Washington, DC 20005-1503 EXAMINER ORME, PATRICK JAMES ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 01/17/2017 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): ddalecki@wenderoth.com eoa@ wenderoth. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD EBERLE, MICHA KREIBIG, THOMAS SCHOLL, MARKUS DEWES, and SVEN BRALL Appeal 2016-000892 Application 13/261,693 Technology Center 1700 Before CHUNG K. PAK, TERRY J. OWENS, and N. WHITNEY WILSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ rejection of claims 30-40. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a filter for filtering fluids contaminated with water admixture. Claim 30 is illustrative: 30. A filter device for fluids contaminated with water admixture comprising: a filter housing having an element receptacle therein, said element receptacle having an upwardly projecting receiving pipe connection; a filter element being in said filter housing on said element receptacle, having a filter medium separating an Appeal 2016-000892 Application 13/261,693 untreated side thereof from a treated side thereof during filtration and having an end cap with a central pipe support projecting therefrom, said central pipe support being received in said receiving pipe connection; a water collecting unit in said filter housing having separated first and second collecting chambers receiving water discharged on said treated side and said untreated side, respectively, said first collecting chamber being inside said second collecting chamber, said first collecting chamber including a hollow cylinder closed on a base side thereof and open on an upper end thereof, an end edge of said upper end being connected to said element receptacle by a first sealing ring connected to a lower end edge of receiving pipe connection; and sealing rings between said central pipe support and said receiving pipe connection providing a sealed connection therebetween. Popoff The References US 4,740,299 Apr. 26, 1988 Fremont US 2008/0135469 A1 June 12, 2008 Hoverson US 2009/0184041 A1 July 23, 2009 The Rejections The claims stand rejected under 35 U.S.C. § 103 asi follows: claims 30—37, 39 and 40 over Fremont in view of Hoverson and claim 38 over Fremont in view of Hoverson and Popoff.1 1 A rejection of claims 30-40 provisionally on the ground of nonstatutory obviousness-type double patenting over claims 9 and 11 of copending Application No. 13/261,418 in view of Fremont, Hoverson and Popoff has been overcome by a terminal disclaimer (Ans. 2). A rejection of claims lb- 29, 32 and 40 under 35 U.S.C. § 112, second paragraph is withdrawn in the Examiner’s Answer (id.). 2 Appeal 2016-000892 Application 13/261,693 OPINION We reverse the rejections. We need address only the independent claim (30). That claim requires an end cap with a central pipe support projecting therefrom and being received in a receiving pipe connection. To meet that claim requirement the Examiner relies upon Fremont (Final Act. 12-13). Fremont discloses a water admixture-contaminated oil filter comprising a bottom end plate (18) flflf 53, 73; Fig. 8). The Examiner finds that Fremont discloses “an end cap with a central pipe support projecting therefrom (Fig. 8, items 13 [second filter], 18 (outer perimeter with vertical and horizontal structure above element receptacle portion of item 18)), said central pipe support being received in said receiving pipe connection (Fig. 8, item 18 (structural features integrated))” (Final Act. 12—13). ‘“[DJuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.’” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ receiving pipe connection (receptacle pipe 49) constitutes a seat for the central pipe connection (35) (Spec. 8; Fig. 2). The Examiner does not address the Appellants’ disclosure and establish that the broadest reasonable interpretation of the claim limitation “central pipe support being received in said receiving pipe connection” consistent therewith includes a central pipe support/receiving pipe connection integral structure. 3 Appeal 2016-000892 Application 13/261,693 Thus, the Examiner has not set forth a factual basis which is sufficient to support a prima facie case of obviousness of the Appellants’ claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejection. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 30-37, 39 and 40 over Fremont in view of Ho verson and claim 38 over Fremont in view of Hoverson and Popoff are reversed. It is ordered that the Examiner’s decision is reversed REVERSED 4