Ex Parte Frye et al

Patent Trial and Appeal Board

Jan 31, 2013

11569302 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/569,302 12/11/2007 Michael John Ernest Frye KIL01 P-439 6910
277 7590 02/01/2013
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
FORTUNA, ANA M
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
02/01/2013 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 MICHAEL JOHN ERNEST FRYE, SOREN INGEMANN
JENSEN, and PHILIP MCINTYRE
____________

Appeal 2011-012377
Application 11/569,302
Technology Center 1700
____________

Before BRADLEY R. GARRIS, RICHARD E. SCHAFER, and
TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/569,302

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 4, 6-16, 20-23, and 25-32. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.

Appellants claim a filter 200 comprising a distensible member 212
and a plurality of fibers 211, whereby when the distensible member is
distended the fibers are compressed against the filter housing to create a
graduated filter matrix, "and in which recesses or ridges are provided on the
surface of the distensible member" (claim 1; Figs. 2-4). Appellants also
claim a method of operating a filter having a distensible member and a
plurality of fibers secured at a first end of the filter housing which comprises
passing a fluid to be filtered so as to remove solid material from the fluid by
passing the fluid from the first end to the second end of the filter housing
(claim 23).
Representative claims 1 and 23, the only independent claims on
appeal, read as follows:
1. A filter comprising a filter housing having an inlet end
and an outlet end, a distensible member extending
longitudinally of the housing, and a plurality of fibers extending
longitudinally of the housing and being secured at the inlet end,
whereby when the distensible member is distended the fibers
are compressed against the housing to create a graduated filter
matrix between the inlet end and a pinch area between the
distensible member and an inner surface of the housing, and in
which recesses or ridges are provided on the surface of the
distensible member.
23. A method of operating a filter having a filter housing
with a first end and a second end, a distensible member
extending longitudinally of the housing, and a plurality of fibers
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extending longitudinally of the housing and being secured at the
first end; the method comprising distending the distensible
member to compress the fibers against the housing to create a
graduated filter matrix between the first end and a pinch area
between the distensible member and an inner surface of the
housing; and passing a fluid to be filtered from the first end to
the second end; wherein passing the fluid includes passing the
fluid to remove solid material from the fluid by passing the
fluid from the first end to the second end.
Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 1, 2, 4, 6-11, 13-16, 20, 21, and 23 as unpatentable over
Fanqing (US 4,851,136, issued Jul. 25, 1989) in view of Higgins (US
6,180,001 B2, issued Jan. 30, 2001);
claims 12, 20, 21, and 25-31 as unpatentable over Fanqing, Higgins,
and Boye (US 7,104,530 B2, issued Sep. 12, 2006); and
claims 22 and 32 as unpatentable over Fanqing, Higgins, Inacio [US
4,917,797, issued Apr. 17, 1990), and Muller (US 4,219,420, issued Aug.
26, 1980).
The Examiner concedes that the distensible member of Fanqing's filter
does not have recesses or ridges as required by independent apparatus claim
1 (Ans. 3) but concludes that it would have been obvious to provide this
filter with a distensible member having ridges in view of the ridges or
projections 161 on distensible member or diaphragm 153 of the Higgins
filter (id. at 4).
In contesting this obviousness conclusion, Appellants argue that the
filters of Fanqing and Higgins are substantially different and accordingly
that the teachings of these references would not have been combined in the
manner proposed by the Examiner (Br. 6). In support of this argument,
Appellants correctly point out that projections 161 on Higgins' diaphragm
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153 are designed for filtering fluid which passes in a direction perpendicular
to the diaphragm face as opposed to the parallel filtering flow in Fanqing
(id.). Appellants also correctly point out that projections 161 are designed
for mating with corresponding projections 82 on plate 81 of the Higgins
filter whereas the filter of Fanqing contains no such plate or projections (id.).
Appellants' argument is well taken and significantly has not been
rebutted by the Examiner in the Answer (see Ans. 8). Therefore, we find
this argument to be persuasive and reverse each of the Examiner's § 103
rejections of independent apparatus claim 1 and apparatus claims 2, 4, 6-16,
and 20-22 which ultimately depend from claim 1.
Concerning the rejection of independent method claim 23, Appellants'
sole argument is that Fanqing, even if combined with Higgins, fails to
disclose the claim 23 requirement of removing solid material from fluid by
passing the fluid from a first housing end, at which a plurality of fibers are
secured, to a second housing end (Br. 8-9).
However, Fanqing's Figure 3 filter method, which is explicitly cited
by the Examiner (Ans. 3, 8), removes solid material from fluid by passing
the fluid from a first housing end 4 to a second housing end 3 wherein fiber
bundles 11 are secured at the first end via ring 20 and screws 21 (Fig. 3, col.
5, ll. 30-61). For this reason, we find no convincing merit in Appellants'
argued distinction of claim 23 over Fanqing.
We also find no persuasive merit in Appellants' unembellished
argument that Fanqing, even if combined with Higgins and Boye, fails to
disclose a step of releasing the distensible member as required by dependent
method claims 25 and 26 (Br. para. bridging 10-11). The Examiner
explicitly finds that the claimed releasing step is disclosed by Fanqing in
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claim 3 (Ans. 6). Appellants do not specifically address and therefore fail to
reveal error in this finding.
Under the circumstances recounted above, we sustain the Examiner's
§ 103 rejections of method claims 23, 25, and 26.
In rejecting method claims 27-31 as unpatentable over Fanqing,
Higgins, and Boye, the Examiner concludes that it would have been obvious
to provide the filtering method of Fanqing with the features required by
these claims (Ans. 7). Appellants argue that these claims are patentable over
the applied references (Br. 11-12, 14), and we agree. In the rejection of
these claims, the Examiner has failed to specifically identify any disclosure
of the claimed features in the applied references to Fanqing, Higgins, and
Boye1. It follows that the Examiner's obviousness conclusions regarding
these features are mere conclusory statements.
Because "[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements" (In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int’l. Co. v. Teleflex Inc. 550 U.S. 398,

1 In the Response to Argument section of the Answer, the Examiner
relies on the non-applied reference to Muller as disclosing at least some of
the features required by claims 27-31 (Ans. 10-11). We will not consider
Muller in assessing the rejection of these claims because it is not included in
the statement (or body) of this rejection. See In re Hoch, 428 F.2d 1341,
1342 n.3 (CCPA 1970). Similarly, in the Response to Argument section of
the Answer, the Examiner states that Boye "teaches filtering the [sic] while
providing a gas and gas bubbles formation and adapting the fil[t]er inlet in
connection with a source of gas (column 8, lines 21-38, element 412)" (Ans.
10). Significantly, the Examiner has not cited this teaching in the rejection
itself and has not explained in either the rejection or the Response to
Argument how this teaching supports an obviousness conclusion for any of
claims 27-31. For these reasons, the belatedly-identified teaching of Boye
fails to support the obviousness rejection under review.
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417-18 (2007)), we will not sustain the Examiner's § 103 rejection of
method claims 27-31 as unpatentable over Fanqing, Higgins, and Boye.
Finally, we also will not sustain the Examiner's § 103 rejection of
method claim 32 as unpatentable over Fanqing, Higgins, Inacio, and Muller.
The Examiner concludes that it would have been obvious to provide the
filter of Fanqing's method with the claimed feature of at least two serially
arranged distensible members in view of Inacio2 (Ans. 7-8). Appellants
reasonably argue that the Examiner's obviousness conclusion is improper
because Inacio's teaching relates to fluid flowing perpendicular to the
longitudinal axis of the fibers and therefore is inapplicable to Fanqing's
method wherein fluid flows parallel not perpendicular to the longitudinal
axis (Br. para. bridging 13-14). Based on the record before us, this argument
is persuasive especially since it has not been rebutted by the Examiner in the
Answer (see Ans. 11).
For the above stated reasons, we have sustained the rejections of
claims 23, 25, and 26 but not the rejections of remaining claims 1, 2, 4, 6-16,
20-22, and 27-32.
The decision of the Examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

2 In the rejection of claim 32, the Examiner identifies certain features
said to be taught by the Muller reference (Ans. para. bridging 7-8).
However, these features are unrelated to the serially-arranged feature of the
rejected claim.
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